The Consumer as the Empirical Measure of Trade Mark Law

AuthorKimberlee Weatherall
Publication Date01 Jan 2017
The Consumer as the Empirical Measure of Trade
Mark Law
Kimberlee Weatherall
Although consumer responses to signs and symbols lie at the heart of trade mark law, courts
blow hot and cold on the relevance of empirical evidence – such as surveys and experiments –
to establish how consumers respond to alleged infringing marks. This ambivalence is related to
deeper rifts between trade mark doctrine and the science around consumer decision-making.
This article engages with an approach in ‘Law and Science’ literature: looking at how cognitive
psychology and related disciplines conceptualise consumer decision-making, and how counter-
intuitive lawyers’approaches appear from this perspective. It demonstrates how, especially when
proving confusion, decision-makers in trade mark demand the impossible of empiricists and
are simultaneously blind to the weaknesses of other sources of proof. A principled divergence,
without seeking to collapse the gaps between legal and scientific approaches, but taking certain
small steps, could reduce current problems of proof and contribute to better-informed, more
empirically grounded decisions.
Does trade mark law care about real world consumers, or imagined ones? One
frequently stated goal of trade mark law is a concern to protect consumers from
being misled by signs and symbols as they seek and acquire goods and services.1
But lawyers and judges are not the only ones interested in how people respond
to signs like words, colours, and shapes. A great deal of academic research is
devoted to the study of human and consumer information processing, memory,
and behaviour. Fields like cognitive psychology in particular have developed a
wide range of empirical methods for testing how people respond to signs.2The
casual observer might expect that courts and other trade mark decision-makers
would welcome direct empirical evidence using these methods – surveys,
Associate Professor of Law, The University of Sydney. This research has been supported by Aus-
tralian Research Council Linkage grant LP120100249. The author thanks William Gummow, Joseph
Campbell, Gary Edmond and two anonymous reviewersfor their feedback on drafts of this paper and
thanks in particular to Michael Humphreys, Jennifer Burt, and Sarah Kelly for the interdisciplinary
collaborations that inform this paper.
1 The relevance of consumer protection goals to trade mark law is clear despite scholarly debate
over the exact rolesuch goals play: C. Dent, ‘Confusion in a legal regime built on deception: the
case of trade marks’ (2015) 5 Queen Mary Journal of Intellectual Property 2, 2; G. Dinwoodie and
D. Gangjee, ‘The Image of the Consumer in European Trade Mark Law’ in D. Leczykiewicz
and S. Weatherill (eds), The Images of the Consumer in EU Law: Legislation, Free Movement
and Competition Law (Oxford: Hart Publishing, 2016) 339; M. McKenna, ‘The Normative
Foundations of Trademark Law’ (2007) 82 Notre Dame Law Review 1839.
2 Cognitive psychology is the study of higher mental processes such as attention, language use,
memory,perception, problem solving, and thinking. The potential of other disciplines – market-
ing, linguistics, semiotics – to provide insights relevant to trade mark decision-making requires
separate, in-depth consideration.
C2017 The Author. The Modern Law Review C2017 The Modern Law Review Limited. (2017) 80(1) MLR 57–87
Published by John Wiley& Sons Ltd, 9600 Garsington Road, Oxford OX4 2DQ, UK and 350 Main Street, Malden, MA 02148, USA
The Consumer and Trade Mark Law
laboratory or field experiments3– that could provide insights into how people
respond to trade marks, and whether ordinary people are likely to be con-
fused by alleged infringers’ activities. Moreover, scientific evidence in trade
mark cases is not beset by some of the difficulties commonly affecting its use
in court. Legal questions in trade mark operate at a general or population
level (how do average consumers respond) rather than an individual level (how
would this particular individual respond). In this respect, trade mark law stands
in contrast to tort, where there may be a logical gap between population-level
evidence of a causal relationship and use of that information in individual cases.4
In many jurisdictions, however, courts blow hot and cold on the use of
empirical evidence in trade mark cases. Some courts will allow surveys to
establish consumer awareness of a plaintiff’s mark,5but hesitate where surveys
are tendered to prove the likelihood that consumers will be confused by an
alleged infringing use. Others are reluctant to accept surveys at all. In the UK
and Australia, this generalised reluctance has been particularly marked in recent
times.6In Interflora Inc vMarks and Spencer Plc,7(Interflora I) the UK Court of
Appeal established rules that make rejection of surveys the default position in
trade mark and passing off cases. Surveys are assessed according to a strict cost-
benefit analysis, with a presumption that only in rare cases would the benefits
outweigh the costs. Australian courts have similarly rejected even empirical
evidence carefully designed to test consumer confusion.
As has been well-documented in recent literature,8one reason for courts’
ambivalence is that the questions which courts must decide in trade mark law –
whether a particular mark is distinctive and ought therefore to be registered
(with the exclusive rights that creates), and whether an activity constitutes
infringement and is therefore prohibited – are not exclusively factual. They also
incorporate important normative dimensions: whether a trade mark owner’s
3 I use the term ‘empirical’ to refer specifically to survey,or quasi-sur veyor experimental evidence
that tests consumer responses to trade marks. This is narrower than Dinwoodie and Gangjee,
who include advertising expenditure, turnover, press mentions (n 1 above, 350) butbroader than
Davis who confines empirical evidence to tests of the disputed mark: J. Davis, ‘Revisiting the
average consumer: an uncertain presence in European trade mark law’ [2015] IPQ 15, 26–29.
4 See, D.Faigman, J. Monahan and C. Slobogin, ‘Group to Individual (G2i) Inference in Scientific
Expert Testimony’ (2014) 81 University of Chicago Law Review 417; D. Hamer,‘Probability, Anti-
resilience, and the Weight of Expectation’ (2012) 11 Law, Probability and Risk 135.
5Windsurfing Chiemsee Produktions-vBoots- und Segelzubehor Walter Huber (C-108/97) [1999]
ECR I-2779 at [53]; Enterprise Holdings Inc vEuropcar Group UK Limited [2014] ETMR 50.
6 Cases are discussed below. Canadian case law is similar: Masterpiece Inc vAlavida Lifestyles Inc
[2011] 2 SCR 387 (Masterpiece Inc). A multijurisdictional INTA study suggests widespread judicial
hesitation over surveysto prove confusion: INTA Courts and Tribunals Sub-Committee,Repor t
on Best Practices in Conducting Surveys in Trademark Matters (2013) (INTA Report). According to
the report, courts express general skepticism in New Zealand, Canada, Japan, India, Costa Rica,
El Salvador, Guatemala, Honduras, Mexico, Nicaragua, and Venezuela. Country reports for
Spain, Israel, Belgium, Brazil and Panama note surveys can be used but cite only cases relating
to consumer awareness. Even in the US, where survey evidence is a commonplace, research
suggests it is less important to results than conventional wisdom holds: B. Beebe, ‘An Empirical
Study of the Multifactor Tests for Trademark Infringement’ (2006) 94 California Law Review
1581; G. Austin, ‘Trademarks and the Burdened Imagination’ (2004) 69 Brooklyn Law Review
7Interflora Inc vMarks & Spencer Plc [2013] 2 All ER 663.
8 Dinwoodie and Gangjee, n 1 above; Davis, n 3 above.
58 C2017 The Author. The Modern Law Review C2017 The Modern Law Review Limited.
(2017) 80(1) MLR 57–87

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