lundi, juin 13, 2011

Malaysia: Survey evidence and generic marks: the Malaysian position

Contributed by Shook Lin & Bok Kuala Lumpur


This update looks at the issues surrounding the admissibility and probative value of survey evidence in trademark litigation, and the test to determine whether a mark has become generic.

Survey evidence

Survey evidence has become common in infringement and passing-off actions, although the probative value of such evidence remains contentious. Such evidence is almost always challenged and rejected as being fundamentally flawed. Unlike in the United States, where it is relatively common for defendants to conduct independent market surveys to establish that there is no likelihood of confusion, in Malaysia it is usually the plaintiff that commissions such surveys. Plaintiffs that can afford to finance such exercises are drawn to the perceived value of market surveys undertaken by independent market researchers and private investigators in establishing confusion or likelihood of confusion. The cost of conducting a market survey in Malaysia is relatively reasonable in light of the results produced from such surveys.

In actions for rectification of the Trademarks Register - in particular, for cases where the reason for rectification is non-use - survey evidence is central to a plaintiff's suit. It is imperative that a rectification action based on non-use be filed one month after the last interview is conducted by the market researcher to ensure that the statutory period of non-use is satisfied (ie, that there has been no use of the mark at issue for a continuous period of three years up to one month before the date of application of the rectification proceedings). Over the years the courts have consistently approved and followed judicial principles laid down in decisions of the UK courts and the courts of Commonwealth countries such as Australia and New Zealand when confronted with market survey evidence. The following cases examined some of the legal principles involved in the admissibility of survey evidence and its probative value, and their recent application by the Malaysian High Court.

Guidelines on admissibility and probative value of survey evidence

One of the early leading cases on survey evidence in Malaysia is the Court of Appeal decision in Lim Yew Sing v Hummel International Sports & Leisure A/S.(1) In this case the Court of Appeal was faced with market survey evidence commissioned by the plaintiff to establish that the reputation and goodwill of the mark HUMMEL belonged to or was associated with the plaintiff. The court made several observations on the market survey evidence:

  • The precise instructions given by the plaintiff's solicitors to the surveyors were not in evidence;
  • The heading "HUMMEL and device - research study" did not positively establish whether the trademark being investigated was HUMMEL (M), the offending mark, or HUMMEL (D), the plaintiff's mark;
  • The survey was not signed; and
  • The persons who conducted the survey were not identified.

The court stated that since the survey was challenged, it was incumbent upon the plaintiff to prove its contents by calling the market researchers as witnesses. Since they were not called to prove the survey, it was considered to be hearsay and was therefore inadmissible as evidence.

The court further said that if a survey is to be of any use, it must fairly reflect the factual position at the time when the application to expunge was made. In this regard, the court found that when the survey was conducted (between May 1991 and October 1991), there was no evidence that the respondent's products with the HUMMEL (D) mark were being sold or advertised in Malaysia. Consequently, the market researchers could not have asked their interviewees whether they thought a particular shoe or sports shirt bearing the HUMMEL (D) mark was manufactured by the respondent in Malaysia or another party, since the interviewees would not have been shown the actual products.

The court stated that even if the authorship of a survey is proven to be valid, the survey evidence must still meet the minimum criteria spelled out in Imperial Group plc v Philip Morris Ltd;(2) it concluded that in this case the minimum criteria were not met.

The Court of Appeal clearly identified and dealt with two distinct questions: the admissibility of market survey evidence and the probative value of such evidence. In practice, counsel have a tendency to blur these two questions in argument.

Recently, the High Court applied the criteria laid down in Imperial Group plc and followed by the Court of Appeal in Lim Yew Sing to Sanbos (M) Sdn Bhd v Tiong Mak Liquor Trading (M) Sdn Bhd(3) and Consitex SA v TCL Marketing Sdn Bhd.(4)

In Sanbos the plaintiff adduced market survey evidence in an attempt to show possible deception and confusion more than 15 months after filing its application for an interlocutory injunction for trademark infringement and passing off. The court reiterated the guidelines in Imperial Group plc and held that in order for market survey evidence to be admissible, the following guidelines, among others, must be observed:

  • The interviewees must be selected so as to represent a relevant cross-section of the public;
  • The size must be statistically significant;
  • The survey must be conducted fairly; and
  • All of the surveys carried out must be disclosed, including:
    • the number carried out;
    • how they were conducted; and
    • the total number of persons involved.

The minimum criteria set out in Imperial Group plc were intended to assist in ascertaining the probative value of market survey evidence (ie, its validity), and not its admissibility as evidence in court. The question of whether market survey evidence is admissible must necessarily be guided by the rules of evidence, which would include a consideration of whether the actual material upon which the market survey seeks to be admitted is hearsay. It will be hearsay, and thus inadmissible, if the object of the evidence is to establish the truth of what is contained in the statement.

In Customglass Boats Ltd v Salthouse Brothers Ltd(5) this subject was addressed by the court which, in the course of examining US authorities on the subject, held that such evidence was not hearsay, and that even if it did fall within the technical concept of hearsay evidence (ie, statements made out of court), it would still be admissible as an exception to the hearsay rule because the object of such evidence was to exhibit the existence of a particular state of mind shared by a designated class of person and not the truth of those statements. This exception to the hearsay rule may be found in various judicial dicta of high authority in Malaysia. It was also opined in this case that such evidence was necessary as it was relevant to establish a particular state of mind and was the best possible evidence available to show such a state of public opinion (and preferable to a parade of witnesses or any other substitute purporting to represent the public). Customglass Boats Ltd has been approved and followed by the Malaysian courts.

In Sanbos the court further added that the results of a market survey will be of no value if it is not sufficiently well designed and the answers are not sufficiently well analysed. In this case it was held that the survey evidence suffered from fundamental defects as it failed to comply with the minimum criteria laid down in Imperial Group plc and thus had no probative value. Some of the defects noted by the court were as follows:

  • The survey was not conducted among relevant persons or a relevant cross-section of the public;
  • The questionnaires did not have the date and time of the interview and some were not signed and not answered;
  • The interviewees were not shown the plaintiff's products; and
  • The questions were leading questions.

In Consitex SA the plaintiff had similarly adduced market survey evidence to strengthen its case on confusion within the industry and the public between its own mark and the defendant's mark. The market survey was conducted some five months before the trial commenced and around four years after the suit was filed. In this case the court also rejected the market survey evidence and made several observations as follows:

  • The questions were mostly leading questions and were biased;
  • There was no accurate or verbatim recording of the answers;
  • None of the interviewees was called as a witness, although some had agreed to be witnesses; and
  • The questions were in English.

Regarding the complaint that the questions were in English, the court stated that a majority of Malaysians do not use English as their first language and hence it was highly likely that the interviewees might not have understood the questions clearly or at all. On the issue that none of the interviewees was called as a witness, although some had agreed to be witnesses, the court added that it would draw an adverse inference against the plaintiff for failure to call these interviewees to testify.

Comment

It would appear from recent High Court decisions that in order for market survey evidence to be admissible and have significant probative value, strict adherence to the criteria laid down in Imperial Group plc is crucial. More importantly, all of the parties involved, including the client, solicitors, market researchers and questionnaire designers, must work together to ensure that the market survey is conducted in a meaningful manner.

For further information on this topic please contact Michael Soo, Lee Lin Li or Olivia Khor at Shook Lin & Bok Kuala Lumpur by telephone (+60 3 2031 1788), fax (+60 3 2031 1775) or email (michaelsoo@shooklin.com.my, linli@shooklin.com.my or oliviakhor@shooklin.com.my).

Endnotes

(1) [1996] 3 MLJ 7.

(2) [1984] RPC 293.

(3) [2008] 3 MLJ 100.

(4) [2008] 3 MLJ 574.

(5) 1976) 22 RPC 589.