Survey as evidence in trademark proceedings

On 30 June 2021 the new rules of the CP12 Common Practice on Evidence in Trademark Appeal Proceedings became binding in Poland. The CP12 was adopted by the EUIPO Management Board in November 2020 and published the European Union at the end of March 2021. The rules were adopted by the Polish Patent Office and apply to proceedings commenced after 30 June 2021.

CP12 is the first convergence initiative in the area of trademark appeal proceedings. It focuses on delivering a set of recommendations concerning evidence – in particular, its types, means, sources and identification of relevant dates, as well as its structure and presentation, and the treatment of confidential evidence.

Even though CP12 deals with evidence in trademark proceedings in general, its potential applicability may go beyond appeal proceedings. Its recommendations may therefore be used in wider contexts including first-instance trademark proceedings.

The new rules provide a non-exhaustive list of means of evidence. They include invoices, catalogues, advertisements, official and public documents and witness statements, among many other documents. There is a focus on market surveys, in particular their structure, methodology, requirements for a survey provider and consumer sample groups. The document comprises a checklist and a support tool to assess the content and standard of a survey.

Pursuant to the CP12 guidelines, surveys should be conducted by independent research institutes, companies or other independent experts. The experts commissioned to conduct them should have relevant knowledge and/or experience. A specialised company or institution is preferable, as it has a greater understanding of the purpose of the survey and can therefore and reliably structure and conduct the survey, as well as interpret the results. Nevertheless, the report should not be rejected solely on the grounds that the survey conductor is not a known, international or a large organisation, provided that all key elements of the report are properly defined and explained, and the methodology meets industry standards.

According to CP12, a sample size of 1,000 to 2,000 consumers is considered to be sufficient. In some cases, where goods and services are more specialised or specific, the sample size may comprise of an even lower number of consumers. It is striking that the acquired distinctiveness or reputation, which may be a powerful asset in many cases for trademark owners, may be claimed in the market survey conducted among a relatively small number of people. Such a low threshold may be very beneficial to those who are claiming acquired distinctiveness or reputation of a trademark and very harmful for those who are on the opposite side of the proceedings.

Moreover, despite defining the minimum consumer sample size, the CP12 does not define the minimum threshold for the results of such a survey. The minimum percentage of recognition in order to claim acquired distinctiveness or reputation of a trademark is still unknown.

There has not been any defined minimum sample size in Poland. However, with regard to the minimum percentage of recognition for acquired distinctiveness or reputation of a trademark, the rules have changed over the years. In the late 1980s, trademarks were considered to be reputable if their recognition exceeded 70% or even 80% among potential consumers. Later that very high threshold was significantly lowered to between 20% and 30%.

Market surveys may be useful to establish the relationship between a sign and a particular entrepreneur. However, a public opinion poll is not necessary for a situation where the duration and intensity of use are combined with the exclusive use of the sign at issue. In this case, the sign as a whole becomes fixed in the mind of the consumer and gains acquired distinctiveness.

There were even cases where the Supreme Administrative Court did not take into account the market survey, as it did not affect the outcome of the case (see SAC decision dated 06.08.2015, II GSK 1413/2014). In one case the court stated that it was justified at the first instance to reject the results of a public opinion poll on the fact that consumers know the sign. The court may, on its own motion or upon request, take into account documentary evidence, if it helps to clarify significant doubts in the case. As in the abovementioned case, in the first instance, the court correctly assessed the lack of similarity between the trademarks, the examination of common knowledge of the earlier trademark was pointless.

According to Polish doctrine, market surveys have limited significance, being just one of many forms of evidence in trademark proceedings. They should not be the main form, but supplementary, and supported by other forms of evidence. This is because the surveys may be conducted incorrectly or the questions may have been biased.