At a recent Boult Wade Tennant round table event for clients, the importance of evidence and the issues surrounding it were discussed.
The need to submit evidence in trade mark proceedings is often perceived as a time consuming and costly exercise. We aimed to tackle this head on and demonstrate the steps which could be taken to smooth the process and make it a less stressful experience, if not enjoyable, for all.
Why collect evidence?
Evidence is required primarily to demonstrate use of a trade mark – for example to prove reputation, to defend the registration against a non-use attack or to show that the mark has acquired distinctiveness in order to secure a registration.
Less well known areas where evidence can be useful include in support of arguments that the goods are similar or that a likelihood of confusion exists. Arguing that goods / services are similar is often straightforward and “obvious”. However, with more specialist areas we often need to educate the hearing officer. On the face of it, the goods / services may appear different but within a particular sector there might be good reasons why they are in fact similar; and it is here that evidence is useful to demonstrate this and reinforce our case.
Good storage of evidence results in easy recovery, both in terms of getting it to us quickly, key when we will often be working to a deadline – sometimes only two months, but also in terms of searching the database of evidence for relevant material. Often it will be more than one part of a business that needs to be involved in the collection of material – accounts, marketing, IT and legal, to name but a few, will be involved as different documents are likely to be spread around different departments.
Educating the various teams on a firm-wide basis is key to ensuring that evidence is collected efficiently and can be centralised. Quite often information might be deleted if deemed to be no longer needed, following the end of a marketing campaign for example, even though this is excellent material for submission to a registry. The more people are aware of what is required and of a centralised store, the easier it is.
This wide awareness also helps prevent knowledge gaps if someone were to leave, removing the stress which can result from having to pick up and run an evidence request without previous knowledge. Even knowing where everything is stored is a good start; it is surprising how often we find that only one or two people will know where to find relevant material.
What is needed?
The mantra “less is more” often holds true. No-one at the registry wants to read boxes of evidence when a few invoices might have sufficed. Keeping the examiner onside is an important ancillary consideration.
To best understand what is needed it is often a good idea to conceptualise the evidence gathering exercise as attempting to tell a story – the story of a trade mark. In order to do so effectively we need to be able to show its history and use and set this into context – particularly where we are attempting to demonstrate reputation.
Evidence such as invoices showing sales under the mark, brochures showing goods bearing the mark for sale or providing information on the services on offer and images of the mark on the products are all traditional pieces of data which are highly valued by us and registries.
When backed up with company reports, marketing data and sales figures this all builds into a bigger picture. Any third party corroboration – such as reviews and comments, statistics on website usage etc. are a useful independent method of establishing use and are highly regarded by the registries.
This is of course an ideal world list and we appreciate that not all will be available. A good place to start will be the annual report and invoices / catalogues as these are commonly available – just remember to keep them over a spread of a number of years to ensure there is enough data to rely on.
Finally, in the UK this will need to be tied together with a witness statement made by someone with the relevant knowledge – and this may well need to be several people if no one person has oversight. This is important, especially at the UKIPO, as cross examination is a possibility and there is the ever present prospect of facing down a QC!
Until next time
This discussion was part of our regular events programme. Should you be interested in being included on the invite list please contact your usual trade mark advisor.