MARKET SURVEY IN TRADEMARK - JUDICIAL LENS: 

Be it business or Politics, Surveys are important. Trademarks are vital for the business in a way that they contribute directly towards the growth of the business by boosting its viability and visibility in the particular industry. You say it Psychology, we say it a business tactic that consumers prefer products and services from the brands which are trademarked, reason being- It is believed that when you trademark your name or logo, you create a positive impression in the market that you are serious about your quality and branding.

Talking about market survey, it is one of the most powerful tools to analyze the market standing of the product and services. It not only helps businesses identify the possibility of entry of their products in the market but also helps them determine if their brand name can be trademarked or not. 

Having said that, this article will deal with a tip to toe on how the market survey is important in trademark and how the judiciary has contributed on the same.

What is Market Survey?

In simple words, Companies conduct a thorough Market Survey before launching any new product or service in the market. Market Survey shows us whether the brand has attained secondary meaning or acquired distinctiveness in the particular class of goods or service. In order to analyze the significance of the market survey, a detailed, systematic, and procedural questionnaire must be designed and collected from the targeted consumers.

Why do you need it?

It is a best practice to conduct a thorough market survey and search before adopting and investing in a particular brand. In the era of social media and e-commerce, one cannot plead to ignore the fact that they were not aware of the existing brand before adopting a similar and/or identical brand.

  • Market surveys give us a fair idea of the goodwill of the proposed mark in the targeted market.

  •  It can be presented as a  novel and relevant piece of evidence in the courts to show the distinctiveness of a particular mark.

  • The brand owners showcase their goods and/or services on an online platform to gain customers and goodwill. In such a scenario, the chances of brand exploitation are high.

  • It also helps us understand the prominence of the product, brand, or service between the consumers and how much brand visibility is present for the particular product.

In Bennett Coleman & Co. Ltd. v. Steven S LalwaniWIPO took cognizance of the following factors: 

  • The newspapers of the complainant had a worldwide.

  • The newspaper websites would have added to their overall reputation since Internet users around the world could access the sites. 

  • Internet is accessible worldwide; it could not be contended that the trademark of the complainant was not registered in a particular country.

In CADBURY UK LTD vs SOCIÉTÉ DES PRODUITS NESTLÉ SA, ruled that Cadbury had acquired distinctiveness character in its purple color packaging which was ascertained after conducting a public survey that people associate the purple color chocolate bars with Cadbury.

Thus, given below are 7 reasons why the market survey is important:

  1. Avoids Chances of Confusion or Similarity

  2. Proof for the attainment of Secondary Meaning and Acquired Distinctiveness

  3. Gives a Fair Idea about Goodwill and Reputation of the brand in the Market

  4. Novel and Relevant Piece of Evidence in Court

  5. No Ignorance can be pleaded

  6. Helps you understand the Probability of Registration.

  7. Saves Time, Cost and Efforts put in during the Trademark Process

What do the Courts say?

Indian Judiciary in many of its cases has highlighted and recommended the prospective proprietors to conduct a proper market survey and search. Here are few cases highlighted for your reference: 

In Prestige Housewares India Ltd and Anr v Gupta Light House and Anr, the IPAB held “Proprietor is expected to conduct a trademark registry search, market search to ascertain about any similar and/or identical mark already in use”.

In Info Edge (India) Pvt. Ltd. v/s. Shailesh Gupta & Anr, Delhi High Court held that “If an item is promoted in a specific region or spot under an expressive name and has increased notoriety thereunder, that name which recognized it from contending items; it will be secured against distinct use.”

In Aegon Life Insurance Company Limited v/s Aviva Life Insurance Company India Ltd., Bombay High Court held that “High sales and expenses cannot be the sole criteria and the Plaintiff must show market trends, market surveys, etc. to show that this is indeed how the public now perceives the mark and not as a mere description.”

In Brooke Bond Lipton India Ltd. vs Girnar ExportsThe Intellectual Property Appellate Board has stated that “market survey evidence should have relevance on the date of making application for registration of a trademark to determine distinctiveness, goodwill or reputation”

The End Note:

Conducting a market survey consists a high amount of relevance to prove the genuineness and knowledge of the product in the market to protect the rights of the owners during the litigation or prosecution proceedings. It is advised, recommended, and suggested to do a thorough trademark search, market survey, research, and analysis before applying for any mark. It would save you from unwanted surprises. 

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