A multitude of recent cases illustrate the importance of getting evidence right first time round in trade mark actions, including in opposition proceedings.
Cases will fail where the requisite evidence is not provided, no matter how well-known the brand or how clear-cut the case. Conversely, a case can be won on well-crafted evidence. That does not mean that brand owners should 'throw the kitchen sink' at an action – quality is more important than quantity. Evidence must be carefully tailored to support the arguments being made and clearly show what it is alleged to show. Here, we look at a few recent cases which illustrate these points.
- The existence of evidence will not be presumed. The first case involved a failed attempt by the owner of an EUTM for Tour de France to prevent the registration of the mark Tour de X for various sporting equipment and services, largely because it was unable to show a high level of reputation in the "Tour de" element of its mark (more in our feature article here). The case emphasises that decision makers will not take account of their own private knowledge of facts or conduct their own market investigations when judging reputation (or use). Only where a fact is well-known, and relevant to an issue such as similarity of goods, will notice to be taken of it (see eg here).
- Evidence must be of the right quality. In a recent case, an EUTM registration for ICE owned by Gilmar s.p.a. was revoked for non-use in its entirety by the EUIPO Board of Appeal despite the owner submitting more than 2,000 pages of evidence of use (described as an attempt to "impress" it by the Board). The evidence was deficient. In particular, sales invoices submitted did not indicate the product sold, any product codes or any sales dates and there was no other evidence to link the sales to the mark or period of use in question. Taking the evidence in total, it did not support genuine use – quality trumps quantity.
- Evidence must be in the right form. Evidence – even in Registry actions - must comply with detailed rules including as to its content, length and form. Permission is required to deviate from these rules. Decision-makers will expect evidence to be presented in full to them and will not, for example, click on urls in order to retrieve evidence (see eg here).
- Evidence must be verifiable. In a recent case about whether a design registration was valid given an alleged prior Facebook disclosure of a similar design, the EUIPO Board of Appeal noted that online content (including on social media platforms) can be altered retrospectively. As the scope to fabricate evidence with deep fake and other technology increases, we can expect to see more arguments by litigants challenging the veracity of evidence. Digging deeper into online posts to look for supporting time stamp or other data as well as introducing other evidence to support claims might become increasingly necessary.
- Evidence must be solid and not based on probabilities and suppositions. In the Elon v Elton ruling, the Board of Appeal said that online content such as Wikipedia articles did not provide solid evidence that the names ELTON and ELON would be specifically and commonly associated with Elton John and Elon Musk by the average Swedish consumer. The names were largely shown in full in the evidence. Evidence must be concrete and show what it is alleged to show.
- Evidence can be difficult to supplement – at least in the UK. In the EU, there is generally reasonable scope to supplement evidence – at least evidence of use – on appeal to the EUIPO Board of Appeal as illustrated by the recent BIG MAC case (more here). Conversely, it is generally difficult to introduce further evidence down the line and to overturn first instance decisions in UK Registry and court actions (see eg here) – an additional incentive to get evidence right first time in the UK.
- Evidence requirements might change over time. The evidence required, at least in a UK trade mark infringement claim, might change over time. The longer an infringement has been allegedly taking place, the more the UK courts will expect the owners of registered trade marks to produce evidence of actual confusion (for a confusion-based claim) or a change in the economic behaviour of consumers (for an unfair advantage/detriment to reputation claim) (see eg here and here). Although the lack of such evidence is not always fatal, it can be determinative in some cases.
- The right evidence can be decisive. Evidence can relate to a variety of issues, not just the reputation, acquired distinctiveness and use of a mark. In appropriate cases, thought should be given at an early stage of planning as to what evidence might be required. Numerous recent cases have turned on the evidence. For example, in Lifestyle Equities v Royal County of Berkshire Polo Club, evidence that many polo-themed brands co-exist on the market was sufficient to show that the mark alleged to be infringed had low distinctiveness and could be distinguished from the allegedly infringing sign (more here). Conversely, in Vetsure v Petsure, evidence that very few "Vet"- and "Sure"- based brands were present on the market (as well as of actual consumer confusion) contributed towards the Court of Appeal overturning the first instance decision and finding infringement. In Lidl v Tesco, market evidence that consumers understood the use of Tesco's sign as indicating that Tesco was price matching Lidl was held sufficient to establish unfair advantage and passing off (more here). And in the Stihl case, survey evidence contributed towards a finding that the colours orange and grey had acquired distinctiveness throughout the EU for chain saws. Conversely, in AGA v UK Innovations, the High Court was not able to judge whether refurbished products were of inferior quality given the lack of independent expert evidence (more here). While many/most cases can be (and are) decided without any – or with only limited - evidence, carefully crafted evidence can sometimes win the day!
