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When a trade mark isn’t distinctive from the start, for instance because it describes the goods, the applicant must prove that use has made it distinctive. Applicants often ask whether they should get statements from others in their trade or pay for a survey. Both could help, but only in certain situations, and surveys are rarely necessary. This article explains when trade evidence helps and how much weight it carries, why surveys are usually unnecessary, how to run one properly if you do and how the UKIPO handles this kind of evidence.
Trade evidence- when it helps and when it doesn’t
Trade evidence consists of statements from other people in the same trade, such as chambers of commerce, trade or professional associations or individual traders. These say that the mark has a distinctive character, and they back up the applicant’s own evidence such as invoices, packaging and adverts.
It helps when there is doubt about whether the mark has been used widely enough to become distinctive for a significant proportion of the relevant consumers. It can also be useful where the goods or services are highly specialised, and the trade are some or all of the customers. For example, if a product is specialist machinery bought mainly by other businesses, statements from those businesses may carry real weight because their view is the one that matters.
It may be less helpful where the doubt is whether use has taught ordinary consumers to see the mark as a brand. The exception is when it comes from traders who deal directly with ordinary consumers and have seen how they react to the mark. However, for non-specialised goods, trade experts know much more than the public, so their view may not match consumers. It can still show the mark is unique in the trade.
How much weight it carries
Trade evidence carries more weight when it is sworn, when it comes from someone with standing, and when the witness is independent. A sworn statement counts for more, especially where the mark is highly descriptive or has little distinctive character to begin with. On standing, a trade association representative or a trade journal editor is taken at face value, but other witnesses need to explain how they were chosen. On independence, the statement should say whether the witness has any relationship with the applicant. Evidence from people the applicant controls, such as manufacturers, distributors or licensees, gets very little weight because they may not be neutral.
Surveys
A survey is usually superfluous. The case normally turns on three things such as how non-distinctive the mark is, whether the exhibits show use as a brand, and whether the use shows a substantial business. It only helps in rare cases, where it suggests a significant proportion of consumers see the mark as a brand despite the other facts.
If you do run a survey
The people surveyed must be a cross-section of the relevant public, meaning people who buy that kind of goods, not only the applicant’s customers. You should disclose how people were chosen, the numbers, the sign shown, and the exact answers, and the questionnaire should not name the applicant. The questions must be open, not leading, and should not ask people to guess. Association is not enough, because many people may name a company only because it is the best-known user of that kind of sign. Asking who people associate with a sign is therefore a poor test of whether it works as a trade mark.
How the UKIPO handles it
Examiners avoid saying they are requiring or requesting evidence. They say what needs to be proved and leave the applicant to decide how. They may give an opinion if asked, but all the evidence is judged based on its merits.
Key takeaways
Trade evidence is most useful when it is sworn, comes from independent people in the trade, and explains how the witness knows the mark. It helps most where use is in doubt, or the goods are specialised, and less where the question is whether ordinary consumers see the mark as a brand. A survey is rarely necessary, because your own evidence of use usually does the same job. If you do choose to run one, make sure the people asked to represent the relevant public and the questions are open and not leading. If you are unsure what evidence your applicant needs, the Trade Mark Room can advise before you file.
