The use of a trademark helps consumers memorize products and choose them in the future. In this case, the sociological survey can help the right holder to prove the recognizability and originality of their own trademark.
A trademark is used to distinguish and isolate products. The ultimate goal of using a visual identity is improving consumer awareness. A trademark is designed to highlight the product in the minds of buyers, to make the product memorable. Therefore, conducting sociological surveys allows professionals to determine the degree of familiarity of a trademark, or the likelihood of misleading consumers through the use of identical or similar trademarks by different manufacturers.
There are several cases where the results of a sociological survey can help the competent authorities to assess the recognizability of a trademark by consumers and the distinctiveness of the designation, as follows.
- Right holder files application with Rospatent for recognition of the trademark as well-known.
- Third party disputes the trademark applied for registration or files an opposition against the validity of an already registered trademark.
- Rights of a trademark owner are infringed due to the use of an identical or confusingly similar mark and the right holder takes legal action for protection of rights.
A sociological survey, regardless of the reason for conducting it, has the following common features.
- Conducting a survey is a right, not an obligation of the right holder or another person. The procedure is carried out on their own initiative, without the involvement of state authorities considering an application for recognition of a trademark as notorious, an opposition to the registration or operation of a trademark or a dispute on the protection of the rights of a trademark owner.
- Purpose of research is to determine whether or not there is a certain level of trademark recognition by consumers, its familiarity to the average consumer, the mixing of signs in the perception of the consumer, etc.
- Research is conducted by independent organizations, specializing in conducting sociological research.
- Consumer chooses the company that conducts the research and pays for it independently.
It is worth noting that the survey can be carried out both at the initiative of the trademark owner, and at the request of another interested person, if there is a legal dispute about the right to a trademark.
Sociological survey when recognizing notorious status of a trademark
According to the provisions of Article 1508 of the Civil Code of the Russian Federation (hereinafter the Civil Code), at the initiative of the right holder who believes that its trademark has become notorious in Russia through intensive use, such a designation may be recognized as a notorious trademark.
In order for a designation to acquire such a status the trademark owner must confirm the recognizability of the visual identity. The Civil Code does not contain a list of information that may serve as evidence of common knowledge. Thus, the right holder may attach to the application any documents which, in its opinion, confirm the publicity of the designation.
The use of the results of a sociological survey in this case can be considered a successful and justified way of proving notorious status. For explanatory purposes, the Ministry of Economic Development of the Russian Federation approved in 2001 Guidelines on Conducting Consumer Surveys on Publicity of Trademark in Russia.1
These Guidelines refer to the following.
- Territory of the survey. According to paragraph 3.3 of the above-mentioned enactment: “It is desirable to cover at least six localities of the Russian Federation with the survey. At the same time, it is a good idea to conduct the survey in the cities of Moscow and St. Petersburg. The right holder chooses the remaining localities independently, based on the territory where the goods are sold to a greater extent, the peculiarities of production of the goods and other indicators.
- Number of respondents. According to paragraph 3.4 of the Guidelines, it is advisable that the number of respondents interviewed should be not less than: “... 500 in any two localities and less than 125 in every other locality.” The maximum number is unlimited.
- Questions, the presence of which is a priority in the study (paragraph 3.6 of the Guidelines):
- whether the consumer is aware with the trademark;
- which person, in its opinion, is the owner of the trademark or the manufacturer of goods marked with this trademark;
- how long has the consumer been aware of the trademark;
- the source of information about this trademark for the respondent.
Sociological survey as evidence of the presence or absence of trademark similarity and confusion in the minds of consumers
Currently, there are no legal provisions governing the procedure for conducting sociological research in this area. There is no uniformly described methodology or list of questions to be posed. Drawing an analogy with a survey in the field of notorious trademarks, we can assume that it is appropriate to ask the following questions:
- Whether the consumer is aware with the trademark;
- Whether the consumer knows which company owns the trademark;
- What is the source of information about the trademark;
- Whether the presented trademarks seem similar to each other;
- Does it seem to the consumer that he or she could confuse these marks if they were on goods in the same range of products.
The results of the survey are attached as evidence of the person’s perception. The authorized body has the right to take into account the results of a sociological survey, but they do not necessarily influence the decision made.
To summarize the above, it is worth noting the following:
- Conducting a sociological survey is optional. The interested person has the right to conduct a survey, and the authorized body has the right to take the results of the survey into account. At the same time, there are no obligations of the designated subjects in this field.
- There are no strictly established requirements to the order of conducting sociological surveys or a clearly described list of questions to be answered by respondents.
- The results of a sociological survey provide data on the perception of the trademark by the end user, which helps the competent authorities to conclude on the presence or absence of similarities between trademarks, as well as to assess the recognizability of the designation and the existence of a connection in the perception of consumers between the trademark and the goods.
1Order of the Ministry of Economic Development of Russian Federation of June 1, 2001 No. 74 On Approval of Guidelines on Conducting Consumer Surveys on Publicity of Trademark in Russia.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63