The use of survey evidence
Endorsed by the Court
• Windsurfing Chiemsee Produktions- und
Vertriebs GmbH (WSC) v Boots- und
Segelzubehör Walter Huber (C-108/97) and
Franz Attenberger (C-109/97),53
• Case C-210/96 Gut Springenheide and Tusky
[1998] ECR I-4657, paragraph 37)
• Judgment of 21 November 2012, T-338/11,
‘photo.com’, para. 42
• In that regard, account must be taken of, in particular,
the market share held by the mark; how intensive,
geographically widespread and long-standing use of
the mark has been; the amount invested by the
undertaking in promoting the mark; the proportion of
the relevant class of persons who, by virtue of the
mark, identify the goods or services as originating from
a particular undertaking; statements from chambers of
commerce and industry or other trade and professional
associations; and opinion polls (Shape of a lighter,
paragraph 64 and the case-law cited).
Ohim Guidelines
• 2.12.8.4 Opinion polls and surveys
Opinion polls concerning the level of recognition
of the trade mark by the relevant public on the
market in question can, if conducted properly,
constitute one of the most direct kinds of
evidence, since they can show the actual
perception of the relevant public.
Area of use of surveys
• Acquired distinctiveness
• Lack of distinctive character: DECISION OF 3 MAY 2013 – R
1006/2011-2 – DEVICE OF A LIPSTICK KISS PRINT (FIG.
MARK)
• Proof of use
• Enhanced distinctiveness
• Confusion
• Trade mark has become generic
• Use of a sign with more then local significance: DECISION
OF 19 DECEMBER 2013 – R 1294/2011-1 – CULTURE (FIG.
MARK)
• Reputation
Admissibility
• Ohim Guidelines:
• 1. Whether or not it has been conducted by an
independent and recognised research institute or
company, in order to determine the reliability of
the source of the evidence.
• 2. The number and profile (sex, age, occupation
and background) of the interviewees, in order to
evaluate whether the results of the survey are
representative of the different kinds of potential
consumers of the goods in question.
• 3. The method and circumstances under
which the survey was carried out and the
complete list of questions included in the
questionnaire. It is also important to know
how and in what order the questions were
formulated, in order to ascertain whether the
respondents were confronted with leading
questions.
• 4. Whether the percentage reflected in the
survey corresponds to the total amount of
persons questioned or only to those who
actually replied.
Independance
• DECISION OF 27 MARCH 2014 – R 540/2013-2 – SHAPE OF
A BOTTLE (THREE-DIMENSIONAL MARK)
• 49 In particular, the surveys do not seem to be carried out
by the well-known GFK company, as the applicant argues,
but rather by one Mr. Philip Malivore who, according to his
own declaration attached to the surveys and dated 11
October 2012, is only ‘a former director of GFK’. The Board
is thus perplexed as to how a former employee can be
authorised to use the logo of GfK on each and every page
of the surveys when he is now ‘an independent market
research consultant’ and ‘act[s] as a tutor … at Nottingham
Law School (LLM in Intellectual property Litigation)’. These
facts cast considerable doubt on the source, reliability and
independent nature of the surveys.
Size of the sample
• Ohim Guidelines
• In principle, samples of 1 000 – 2 000
interviewees are considered sufficient,
provided they are representative of the type
of consumer concerned.
• Ampafrance SA v OHIM, Case T-164/03,
paragraphs 78 to 83:
• Moreover, in the present case, a group of
2,017 people questioned should be regarded
as being large enough to be representative.
• R 1345/2010-1 ‘Fukato Fukato (fig.)’
• In support of its claim under Article 8(5) CTMR, the
opponent relies exclusively on an opinion poll that was
carried out in 2007. That opinion poll was conducted
by an independent company. In principle, samples of 1
000–2 000 interviewees are considered sufficient,
provided they are representative of the type of
consumer concerned. The opponent’s opinion poll was
based on a sample of 500 interviewees, which is not
sufficient in respect of the services for which
reputation is claimed
• DECISION OF 18 FEBRUARY 2013– R 1671/2011-2
– DEVICE OF AN ELK (FIG. MARK) / DEVICE OF AN
ELK (FIG. MARK) et al.
• 600 not suffficient with regard to the population
of Italy
• DECISION OF 2 FEBRUARY 2015 – R 392/2013-4 –
GOLDEN EAGLE (FIG. MARK) / RED CUP ET AL.
• 510 not sufficient considering the size of the
population in Germany
• DECISION OF 1 SEPTEMBER 2011 – R 1696/20101 – CC rent a car / RENT A CAR et al at par. 41
• In addition, the survey is limited to a sample of
1922 persons, which is not representative in
respect of a country with more than 60 million
inhabitants. As a result, the Board does not
attach any probative value to this opinion poll.
• DECISION OF 11 DECEMBER 2012 – R 513/2011-2 – SHAPE
OF A FOUR-FINGER CHOCOLATE BAR (3D MARK) par 70.
• 514 persons sufficient for the Netherlands (0.003 percent
of the population)
• 81 The Board considers that a sample of population higher
• than 1000 individuals in countries with a population lower
than 10 million is particularly high,
• 82 Contrary to the Cancellation Division’s opinion, 264
individuals is a sample with statistical significance since it
represented, in 2001, approximately 0.003% of the
population, which is a rate higher than, for example, the
sample population
• DECISION OF 23 NOVEMBER 2010 – R
240/2004 – WATERFORD STELLENBOSCH (FIG.)
/ WATERFORD
• 500 persons for the UK is sufficient
• DECISION OF 19 DECEMBER 2013 – R
1294/2011-1 – CULTURE (FIG. MARK)
• 200 interviewees is sufficient
• DÉCISION DU 11MAI 2004 – R 105/2003-1 –
BRACELET-MONTRE (MARQUE
TRIDIMENSIONNELLE) at par. 39
• But not 70 for the UK
Selection of the sample
• Randomly
• Ohim Guidelines (2.12.8.4)
• R 1191/2010-4 ‘MÁS KOLOMBIANA …Y QUÉ MÁS!!
(fig.) (par. 27)
• The survey submitted by the opponent does not
provide conclusive information to demonstrate that
the earlier sign is well-known to the Spanish public for
aerated waters as the interviewees were carefully
selected on the basis of their origin, that is,
Colombians resident in Spain. This is only a very small
part of the population living in Spain
Profile of the sample
• DECISION OF 17 JUNE 2014 – R 107/2014-5 –
Eros Helios (FIG. MARK) / HELIOS et al.
• The survey evidence should indicate how the
respondents have been selected and on what
basis
• DECISION OF 11 DECEMBER 2012 – R
513/2011-2 – SHAPE OF A FOUR-FINGER
CHOCOLATE BAR (3D MARK) (at par. 61)
• Number, age,gender, regions, occupation ect…
• The sample must be representative
• Should be composed of all actual and
prospective costumers
• What is the target population and what is the
survey population
• Discussing the differences between the two of
them and the consequences of that
differences on the result
The relevant consumer
•
Castellblanch, SA v OHIM, Case T-29/04, it held, at paragraphs 65 to 68
•
It is apparent from the Gallup survey that the mark CRISTAL enjoys almost the same renown as the
mark Dom Pérignon both in France and in Italy and the United Kingdom.
The Gallup survey studied the ‗reputation of prestige champagne vintages in France, Italy and in
the United Kingdom‘ in February 1999. It is apparent from the part entitled ‗Context, objectives and
methodology‘ that the intervener‘s representatives wished to carry out a brand awareness survey of
champagne of the mark CRISTAL ‗among hotels, restaurants and upscale wine cellars‘ and that the
‗information was collected from wine waiters or chief cellarmen in hotels, restaurants and upscale
wine cellars‘. In each of the countries studied 100 interviews were carried out.
It must be noted that the survey shows the renown of the mark CRISTAL for only a part of the
relevant public. It did not look into the renown of the mark CRISTAL amongst average consumers,
but amongst professional consumers who, moreover, are highly specialized in the field. In
addition, the other documents produced by the intervener also show renown only for a specialized
public, since they are mostly extracts from specialist newspapers in the wine-producing business. It
cannot be established from those documents that the mark CRISTAL enjoys a reputation amongst
average French consumers”.
•
•
How is the interview conducted
• DECISION OF 11 DECEMBER 2012 – R
513/2011-2 – SHAPE OF A FOUR-FINGER
CHOCOLATE BAR (3D MARK) (at par. 61)
• face-to-face, internet, telephone
Response rate
• DECISION OF 17 JUNE 2014 – R 107/2014-5 –
Eros Helios (FIG. MARK) / HELIOS et al.
• The survey should indicate the response rate
Time
• Judgment of 12/07/2006, T-277/04, ‘Vitacoat’,
paras 38-39
• in principle it is not inconceivable that a survey
compiled some time before or after the filing
date could contain useful indications, although it
is clear that its evidential value is likely to vary
depending on whether the period covered is
close to or distant from the filing date or priority
date of the trade mark application at issue.
• DECISION OF 27 MARCH 2014 – R 540/2013-2
– SHAPE OF A BOTTLE (THREE-DIMENSIONAL
MARK) (at par. 51)
• Therefore, even if it is accepted that the fact
that all these surveys took place after 29
December 2011 (i.e. filing date of the CTM
application) does not, in principle, annul their
corroborating probative value[…]
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DECISION OF 11 DECEMBER 2012 – R 513/2011-2 – SHAPE OF A FOUR-FINGER CHOCOLATE BAR
(3D MARK)
66 It must be noted that, according to the case-law of the Court, evidence of the use
of a mark which is adduced subsequent to the date of filing the application can be
taken into account only if it enables drawing conclusions on the use of the mark
as it was on that date (see, to that effect, order of 27 January 2004, C-259/02,
‘Laboratoire de la mer’, para. 31, and order of 5 October 2004, C-192/03 P,
‘BSS’, para. 41). In the present case, the fact that all these surveys took place
after 23 March 2007 (filing date of the application for the declaration of
invalidity) does not diminish their supporting probative value since, bearing in
mind that the data contained in these surveys does not measure the immediate
effect produced by a specific action but results from a market development
process, the time between that relevant date and the survey period is relatively
short (less than a year). Furthermore, the market share and ranking figures
provided by the Nielsen table for 2005, 2006 and 2007 do not show important
oscillations from one year to the other, which shows a certain stability of the
market trend.
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DECISION OF 19 DECEMBER 2013 – R 1294/2011-1 – CULTURE (FIG. MARK)
In addition, the applicant puts forward a market survey carried out by Dansk
Detail among its members between 21 and 27 November 2009.
44 In this regard, the CTM proprietor claims that such survey should not be taken
into account as it was carried out after the relevant period of time and the
Cancellation Division considered it was not reliable on account of the
contradictions existing between some of the answers.
45 However, since that survey also relates to periods which are prior to the filing of
the contested mark, it is actually capable of showing the awareness among the
Danish public as of the filing date of the contested mark.
46 Indeed, as the CTM proprietor himself acknowledged, one of the questions,
namely, question No 2 referred to the perception of the public at the relevant
period. The interviewees have been asked for how long they had been aware of
the trade mark ‘Culture’ and 21.4% or 24 persons of 169 reported that they had
known of the mark for four to five years, and 15.2% or 17 persons answered that
they had known of the mark for five to ten years. One person reported that it had
known of the mark for more than ten years and 57 of the interviewees skipped the
question. Therefore, putting together these results, it appears that 36.6% of the
interviewees have known of the mark for four to ten years, which is a relevant
fact in order to assess the awareness of the Danish public at the relevant period.
• A survey conducted five years before the
relevant date is not admissible
• DECISION OF 19 DECEMBER 2014 – R
1207/2014-5 DEVICE OF A JUMPING ANIMAL
(FIG. MARK) / PUMA (FIG. MARK) et al.
•
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DECISION OF 13 NOVEMBER 2012 – R 101/2011-2 – pink ribbon / PINK RIBBON et
al.
52 The Board adds that the evidence post-dating the filing date of the CTM
application may not be sufficient on its own to demonstrate reputation on this
filing date, however it is not irrelevant either. Given that reputation is usually
built up over a certain period of time and cannot simply be switched on and off,
and that certain kinds of evidence (for example, surveys) are not necessarily
available before the relevant date, such evidence must be evaluated on the basis
of its contents and in conjunction with the rest of the evidence (see also, by
analogy order of 27 January 2004, C-259/02, ‘Laboratoire de la mer’, para. 31).
• DECISION OF 23 NOVEMBER 2010 – R 240/2004 –
WATERFORD STELLENBOSCH (FIG.) / WATERFORD
•
• 55 The Boards finds that the survey is reliable from the
point of view of its independence, methodology and
relevance in time.
• 56 First, from the time viewpoint, a survey conducted
in July 2000 is appropriate for establishing the
reputation of the earlier mark at the moment the
contested mark was applied for (December 1999), as
recognition is normally the result of a long process in
time and generally cannot be built up instantly
• It is irrelevant whether the consumer
associates a sign with the right undertaking
• What matters is that it associates it with an
undertaking
• Decision of 27 February 2015 R 1787/2014-5
‘Irresistibly smooth’, par. 28-30
• The survey should be conducted in relation of
the products covered by the application
• The survey was conducted in relation with
specialist periodicals but the mark was
registered for periodicals in general
• DECISION OF 4 DECEMBER 2014 – R
1121/2014-4 – BRAUWELT, par. 27
What questions should be asked
• Filter questions to reduce guessing (I have no clue)
• Open ended questions (what comes to your mind…?)
• In Case T-304/06,
• 108 Lastly, as regards the opinion poll cited by the applicant, it is
apparent from the results of that poll, which was produced by the
applicant before OHIM and included in the file on the proceedings
before the Board of Appeal sent to the Court, that in reply to a
spontaneous, open question, that is to say, without any suggestion
of possible answers, two thirds of those polled associated the
name Mozart, in the context of the goods covered by the disputed
mark, with Mozartkugeln.
• Use of probes to clarify ambiguous answers (any thing else?)
• Suggestive questions disqualify the survey
• Case T-344/03,
• 35 In respect of the results of the opinion poll carried out in
January 2000, they are also irrelevant. It should be observed in that
respect that that poll was carried out three and a half years after
the filing of the Community trade mark application. Further, as the
Board of Appeal noted in paragraphs 13 and 14 of the contested
decision, the conclusions reached by that poll do not have
evidential value since the question ‘If you had to define the
superior quality of a product, which one word would you use?’
induced consumers to reply by using common expressions such as
‘good’, ‘excellent’, ‘delicious’ and ‘best’, but did not provide a means
for analysing the meaning which a metaphoric indication like ‘oro’
could evoke for consumers.
• DECISION OF 11 DECEMBER 2012 – R
513/2011-2 – SHAPE OF A FOUR-FINGER
CHOCOLATE BAR (3D MARK) at par. 70
• I show you a candy (or a biscuit) product. Can
you tell me which product this reminds you
of?’ (top-of-mind recognition)
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Unclear questions
DECISION OF 6 OCTOBER 2011 – R 1635/2010-1 – Pro V / PRO-V et al.
26 In the course of the present appeal, the opponent has filed a Market Study in
Spain. This study shows recognition of the trade mark ‘Pantene Pro-V’ by 96.2%
of the participants. In addition, more then 96% of the respondents perceive the
mark as a ‘prestigious mark’.
27 However, the Board notes that the questions submitted to the participants ( is
pro-v a prestigious mark) are rather suggestive and are leading to the answers. In
addition they imply legal concepts and considerations. Indeed, the legal
community has been debating the concept of what constitutes ‘a prestigious mark’
for decades. The same remark applies to the notion of ‘damaging the image and
prestige of […] and ‘the negative effect on the perception of the quality of the
Pantene Pro-V/Pro-V trademark’. In addition, it is unclear whether the 1005
persons who answered the questionnaire remains representative of the initial
sample. As a result, the Board does not attach any probative value to this Opinion
poll.
Acquired distinctiveness surveys
• respondents are asked whether they associate
the claimed trademark with a product of one
company or more than one company, and
then are asked why they think that.
The questions should be aimed at
receiving a spontaneous response
•
Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG v OHIM (Johnson's Veterinary
Products Limited intervening), Case T-277/04, the General Court held, at paras 38
to 39
•
In the present case the evidential value of the 1997 survey is weakened, as the
Board of Appeal rightly observes, by the fact that the interviewees did not answer
spontaneously, since the questionnaires used showed them the sign at issue and
mentioned the goods. That finding is not called into question by the applicant‘s
argument, first that it was necessary to specify the goods concerned to prevent the
interviewees indicating trademarks for food intended for human consumption and,
second, that a survey without any reference to the mark concerned leads to useful
results only in cases where the marks enjoy a high degree of recognition
(‗berühmte Marken‘) (see paragraph 27 above). It would have been possible to
mention to the interviewees the goods concerned without referring to the
VITAKRAFT marks or to show them a list of different marks one of which was the
earlier sign at issue .
• BIC SA v OHIM, Case T -262/04, paragraphs 82 to 89
• As for the survey of smokers in November 2002 in France, Italy, Ireland,
Greece, Sweden and Portugal, the Court finds that a drawing or
photograph of only BIC lighters, without any verbal or figurative features,
was shown to the people who were questioned, and they were asked which
mark they associated most with the image of that lighter. It cannot
therefore be concluded that that survey shows that a significant
proportion of French, Italian, Irish, Greek, Swedish and Portuguese
consumers identifies, by means of the mark applied for, the product in
question as originating from the BIC company rather than another
company. It would have been another matter if different lighter shapes
had been shown during the survey instead of the single shape of the
trademark applied for. It would have been possible in that case to take
into account the number of people who spontaneously and without being
influenced attributed the picture of the shape in question to BIC.
Fair and non leading questions
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DECISION OF 11 DECEMBER 2012 – R 513/2011-2 – SHAPE OF A FOUR-FINGER
CHOCOLATE BAR (3D MARK)
63 This data is supported by the surveys carried out in France on July 2007 by TNS
Sofres and in Italy on March 2008 by GfK Marktforschung, which, after the
question of ‘we are now going to talk about confectionery. When you see this
picture, which products come to mind? (France) / ‘I would now like to show you a
sweet or a biscuit product. Could you please tell me what this product makes you
think of? (Italy)’, shows a ‘top of mind’ spontaneous attribution of the product
with the shape of the contested mark to ‘Kit Kat/Nestlé’ of 46% in France and of
44.8% among buyers/eaters of sweets/biscuits (‘relevant public’) in Italy. These
surveys point out that other possible answers to that question were
‘chocolate/chocolate bar’ without specifying a brand. This information leads the
Board to assume that the above mentioned question was asked without
influencing the public to recognise a trade mark.
•
DECISION OF 22 MARCH 2005 – R 496/2003-4 – 9 TELECOM / -T-e-l-e-k-o-m- (FIG. MARK) at par. 29
•
Question 1, ‘Have you seen this image before in connection with goods and services?’, was designed as a so-called
‘closed question’ giving the interviewee three possibilities to answer: ‘Yes, I have seen it before’, ‘Yes, it seems
familiar to me’, ‘No, I have never seen it before’.
The second question, ‘With which goods and services do you associate this image?’,
was a so-called ‘open question’ allowing for six answers.
The third question, ‘Have you seen this image before in conjunction with telecommunications such
as with the telephone, faxes etc.?’ again was a closed question with the three
answering options set out above.
Question four, ‘To you, does the image represent a very specific company or do you think that this image is used
by several different companies within the telecommunications sector and
accordingly by companies that do not have anything to do with each other?’, left
the three answering options: ‘It represents a very specific company’, ‘It is used by
several different companies’ and ‘Do not know how to respond to the question?’.
Question 5A asked: ‘Can you tell me what this company is called?’ In this case,
only ‘Telekom’ was named, question 5B insisted: ‘What sort of company is that?
Can you describe it more precisely for me?’ Question 5C further clarified: ‘When
you said ‘Telekom’, did you mean one of the successor companies of Deutsche
Bundespost or did you mean a completely different company which also has the
word “Telekom” in its company name?’, and left the two possible answering
options. Finally, the last (open) question asked: ‘Can you tell me what these
companies are called?
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• DECISION OF 20 FEBRUARY 2015 – R
1504/2014-4 – MOUNTAIN WOLF (FIG. MARK)
/ ERISTOFF (FIG. MARK) et al.
• No follow up questions like what product
comes to your mind when seeing this logo!
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DECISION OF 23 NOVEMBER 2010 – R 240/2004 – WATERFORD STELLENBOSCH (FIG.) / WATERFORD
The population was properly chosen and defined as the general population in the
United Kingdom, taking into account that consumers targeted by the earlier mark
are members of the public at large purchasing crystal products. The sample
chosen was representative of that population in terms of age (six different
segments from 16 to over 65 people), geographical distribution (twelve different
regions representing the nationwide market) and socio-economic profile (four
different categories A, B, C and D, which, according to the National Readership
Survey codes, correspond respectively to upper middle class, middle class, lower
middle class and working class). From the last point of view, it is worthy to note
that the survey focused particularly on the middle class and lower middle class
segments, which can be considered the optimal universe as they are, on the one
hand, the most widespread categories in contemporary Western society and, on
the other hand, those who can afford purchasing goods which are somehow
superfluous, in the sense that they do not cover essential needs, such as crystal
products.
A survey subsequently ‘saved’ by its
publication by a third party
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DECISION OF 22 MARCH 2010 – R 978/2009-2 – CACAOLAT (FIG. MARK) / CACOLAC
23 The Board notes that, as the cancellation applicant rightly points out, the
guidelines deal with evaluating the credibility of opinion polls or market surveys
in the context of Article 8(5) CTMR. In any event, even if the precise
circumstances in which the survey was conducted are not sufficiently known for it
to enjoy a high degree of probative value, it is none the less true that the survey or
its results have been cited in various independent press articles even nine or ten
years after the date (see Objectif Aquitaine, July/August 2004; Arômes Ingrédients
Additifs N° 56 – February/March 2005; TGV Mag – Voie Lactée pour mythe
chocolate – undated). This lends credence to the view that the survey is not totally
devoid of probative value and can thus offer some further indications that the
mark has been used throughout the relevant period.
Late filing of survey evidence
• DECISION OF 24 OCTOBER 2013 – R 273/2013-1
– MOVISTAR UNO / UNO et al.
• 50 The Board does not find that there are
relevant circumstances which would justify the
finding of inadmissibility of the evidence at issue.
In the case at hand, the Board notes that the
belated evidence submitted by the opponent, the
market surveys, is clearly meant to supplement
the evidence already filed before the Opposition
Division within the time-limit.
How to present the survey
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1) the purpose of the survey;
2) a definition of the target population;
3) a description of the sampled population;
4) a description of the sample design;
5) a description of the results of sample implementation;
6) the exact wording of the questions used;
7) a description of any special scoring methods;
8) estimates of sampling error;
9) clearly labeled statistical tables;
10) copies of interviewer instructions, questions, validation results
and code books; and
• 11) objective criteria on how potential respondents could react.
Internet surveys
• The issues
• Difficult to control the survey process without
the guidance of an interviewer
• The potential difficulty to present stimuli to
the respondents via the internet
• The limited ability to obtain complete answers
to open-ended questions since the
respondent has to type the responses himself
• No possibility to clarify responses
• The so called professional ‘respondents’ may
not be representative
• DECISION OF 18 FEBRUARY 2013– R 1671/2011-2
– DEVICE OF AN ELK (FIG. MARK) / DEVICE OF AN
ELK (FIG. MARK) et al.
• Finally, the opponent has not explained the
controlling or verifying conditions under which
this on-line survey was conducted and
consequently, the Board cannot determine that
the answers shown in the survey have not been
obtained without parallel external information.
How to assess the results
• DECISION OF 3 FEBRUARY 2015 – R
2092/2014-5 – GRAU INTREG (FIG. MARK)
• 2% recognition is not representative
• DECISION OF 2 FEBRUARY 2015 – R 392/20134 – GOLDEN EAGLE (FIG. MARK) / RED CUP ET
AL.
• 25% market recognition is not sufficient to
prove enhanced distinctiveness through use