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Guidelines about survey of trademark recognition by consumers
PTAB announced guidelines about survey of trademark recognition by consumers
In a trademark dispute, it is necessary to determine whether a trademark has a strong or weak recognition, whether a trademark has obtained recognition by use, whether a trademark is a well-known mark, and whether a trademark has similarity with others or possibility of causing confusion. Since all the matters are related to how a trademark is ‘recognized’ by consumers, evidence of consumer recognition is necessarily presented to the court. Accordingly, ‘consumer brand awareness survey’ that shows a degree of recognition of a trademark among general consumers is actively used in trademark dispute cases.
For example, in a case where the Korean patent court had to determine whether the trademark (
) for which application for registration is filed fell under Article 34(1)(xiii) of the Korean Trademark Act due to its similarity with the prior trademark (
) that was deemed to be recognized as representing a product of a certain person by consumers in other countries such as Poland, the court used the result of a consumer brand awareness survey as one of the grounds for acknowledging the trademark as well known. The court decided that “in the market of vitamin and mineral brands in Poland, the prior trademark shows brand recognition having top-of-mind awareness of 30%, voluntary awareness of 66%, and awareness by stimulus of 90%, and advertising recognition having top-of-mind awareness of 15%, voluntary awareness of 32%, and awareness by stimulus of 42%. The prior trademark ranked second place following the Centrum in the most recognized brands. Thus, in Poland. around the time the trademark was filed, which was December 31, 2008, there are sufficient grounds to presume that the prior trademark had been widely known and recognized as a brand which at least represents a trademark or a product of a certain person” (Patent Court Decision No. 2011Huh11231 rendered on April 27, 2012).
Meanwhile, as the consumer brand awareness survey is utilized more in cases of trademark dispute, there is an increase, in practice, in disputing the credibility of the investigation results such as fairness, feasibility, objectivity, etc. of survey results submitted by opposition parties.
In response to this trend, in April 2019, the Patent Trial and Appeal Board announced the guidelines of a survey method for ensuring credibility of a survey of consumer awareness of a trademark which is submitted to the organization. The following is a summary of the guidelines:
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▣ When a respective party submits ‘a consumer awareness survey’ as evidence to support an assertion that a trademark is a well-known trademark or has distinctiveness, an Examiner must make a decision by collectively considering the following in his/her evaluation of credibility of the survey:
1) A survey must be conducted using a research method verified by a reliable polling organization. - The reliability of the polling organization must be determined considering the size of the organization, the number of times it has conducted surveys, its number of full-time expert personnel, etc., but need to consider if various restrictions are imposed on the organization, etc. - Active organizations registered with the National Election Survey Deliberation Commission (approx. 80 organizations) such as Korea Gallup, Korea Media Research, Real Meter, etc. are regarded as independent polling organizations.
2) Characteristics of a typical consumer of a subject trademark or product (e.g. region, gender, age, etc.) must be reflected upon. - When characteristics of a product are important (e.g. a product for women or a medicine for treating certain disorder or disease, etc.), the characteristics should be reflected because the sampling method may vary for a product.
3) Research methods require high reliability. - A response rate below 30% indicates low reliability whereas a response rate of 50% or more indicates high reliability. However, in case of a response rate ranging from 30% to 50%, there is a room for discretion or determination. - A number of response sample may be flexible depending on a type of an item. In general, a sample of less than 500 people indicates low reliability, and a sample of 1000 people or more indicates high reliability. - A questioning method must be clear and not be leading questions. ○ A question must be about one subject and consist of clear and concise sentences. ○A question must not make respondents to guess on unclear matters, and must have the same meaning to all respondents. ○ A question must not be beyond the capabilities and experiences of respondents, and shall not adopt a certain example or ask an unrelated matter in order to express general circumstances. ○ A survey conducted using an unverified method by an unverified organization lacks reliability. ○ A survey which was conducted after a considerable period of time had passed from a point of determination lacks reliability because perception of consumers at the time cannot be reflected.
※ Source: Board Trial Rules of PTAB and ‘guidelines on the survey of trademark recognition,’ KIPO, 2019 |
The above guidelines are significant in that they establish clear standards of reliability for the effective use of the customer recognition surveys. Thus, it is necessary for the parties trying to use the customer recognition surveys in trials to promote reliability and effectiveness of the survey results by considering whether a population selected in a survey design step sufficiently reflects actual trade circumstances, whether the collected samples appropriately represent the population, whether control variables for reducing errors are appropriately set, whether there are any factors skewing the results, etc.