In proving “likelihood of confusion” where plaintiffs assert deceptive similarity in trademark infringement cases, two types of evidence have been traditionally put before Indian courts. The first involves a visual comparison of the marks. The second relies on the use of trade experts (experienced industry professionals) to strengthen the visual comparison claim. While the Trade Marks Act, 1999, mandates a statutory presumption (albeit rebuttable) of confusion in the case of a contest between identical trademarks straddling identical classes of goods or services, the burden of proving confusion lies with the trademark owner in all other cases.
Courts and tribunals in India have accorded a degree of approval to survey evidence aimed at demonstrating consumer confusion, but the use of survey evidence has not become a routine practice. Courts and tribunals sometimes hold that survey evidence is inadmissible because of lack of relevant questions, poor methodology, lack of objectivity, hearsay issues, etc. However, surveys may be useful when public opinion is considered for the purpose of determining likelihood of confusion, distinctiveness, strength of the mark, etc.
Over the past two decades a body of case law has been established on submitting survey evidence in Indian trademark cases.
In Ayushakti Ayurved Pvt Ltd and Anr v Hindustan Lever Ltd (2003), Bombay High Court accepted the survey evidence filed, holding that there is no reason why survey evidence should not be admissible. However, some Indian courts have cautioned that that market survey evidence should be relied on only after it is presented and tested by cross-examination of witnesses at trial and not at the interlocutory stage.
In Time Warner Entertainment Co v AK Das (1997), Delhi High Court, however, while deciding whether Home Box Office (HBO) had a spillover reputation in India, allowed reliance on market survey evidence filed by way of affidavits at the interlocutory stage. This decision was approved in Fedders North American v Show Line & Ors (2006), where the court again required survey reports to be supported by affidavits to ensure its compliance with the Indian Evidence Act, 1872.
In Samsonite Corporation v Vijay Sales (1998), Delhi High Court held that the survey has to be tested at trial where witnesses (who conducted the survey) would be subject to cross-examination. This reasoning was approved by Kerala High Court in PP Hamsa v Syed Agencies (1990).
In Stokely Van Camp Inc and Anr v Heinz India Pvt Ltd (2010), Delhi High Court rejected the survey since the concerned parties were not put to cross-examination and the survey was conducted after filing the suit. Patna High Court in Orchid Health Care v Aglowmed Ltd (2010) held the survey report to be inaccurate, but provided no guidance on admissibility.
The Intellectual Property Appellate Board (IPAB), which hears appeals against decisions of the Registrar of Trade Marks, takes note when parties do not conduct surveys, where such surveys might have been useful. InPrestige Housewares India Ltd and Anr v Gupta Light House and Anr (2007), the IPAB pointed out that the defendant had not done a market survey to ascertain the availability of a mark. In Brooke Bond Lipton India Ltd v Girnar Exports and Anr (2006), the IPAB laid down the prerequisite that for a survey report to be relied as evidence the report should be available on the date of filing the application for trademark registration.
The Indian Intellectual Property Office’s Draft Manual on Trademark Practice and Procedure also proposes to prescribe some guidelines for conducting surveys that may be useful and allow for the admissibility of a survey in a legal forum. The draft guidelines cover the selection of interviewees, the number of people invited to take part in the survey, the number of people who actually participated in the survey, the disclosure of exact answers to the survey questions, etc.
The manual further cautions that questions forming part of the survey questionnaire should not be leading and recommends that the survey use open questions such as “What comes to your mind when you see this picture?” instead of suggestive questions such as “Does this picture remind you of Brand A?”
In addition to the guidelines and the case law, one additional aspect that must be explored is the cost of conducting the survey. Conducting a survey is generally a costly and time consuming affair, which needs to be built into litigation strategy and resorted to prior to the filing of any litigation.
Survey evidence can be particularly helpful in cases involving (deceptively) similar trademarks, as opposed to identical trademarks. Subject to admissibility issues, survey evidence is likely to be compelling for judges grappling with the issue of likelihood of confusion under section 29 of the Trade Marks Act. Case law going back to the 1990s and guidelines such as those mentioned above have established that it is indeed permissible to submit survey evidence before Indian courts and tribunals. While this process is still at a nascent stage, it is expected to develop further in the future.
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