Admissibility of survey evidence: Pacific Brands penalised for ignoring Court procedure
Adidas AG v Pacific Brands Footwear Pty Ltd  FCA 1205
The Federal Court of Australia has dismissed an application by Pacific Brands Footwear to prevent Adidas from relying upon survey evidence in a trade mark infringement case, because Pacific Brands did not first raise its objections to the survey with Adidas, as required by the Court’s published procedures. This case highlights the importance of following such procedures and, in the case of Practice Note CM 13, ensuring that issues of survey methodology are raised with the other party before objecting to the Court.
The Federal Court’s Practice Note on survey evidence
Practice Note CM 13 sets out the procedure which is to be followed when a party seeks to have a survey conducted. This requires a party seeking to carry out a survey to give notice to the other party of:
- the purpose of the proposed survey;
- the issue to which it is to be directed;
- the proposed form and methodology;
- the particular questions that will be asked;
- the introductory statements or instructions that will be given to the persons conducting the survey;
- other controls to be used in the interrogation process.
The parties should attempt to resolve any disagreement about the manner in which the survey is to be conducted, and only after these steps have been taken should the matter of the survey be raised with the Court at a directions hearing.
Pacific Brands objection to Adidas’ survey
Adidas brought proceedings against Pacific Brands for infringement of its 3-stripe trade marks. Adidas proposed to carry out a survey to address the issue of deceptive similarity, and in accordance with Practice Note CM 13, provided notice of their proposed survey to Pacific Brands. Pacific Brands objected to the survey as they considered it unnecessary and inadmissible, and filed an application to prevent Adidas from conducting the survey and from using the resultant evidence.
Pacific Brands challenged the admissibility of Adidas’ survey on the grounds that:
- the question of deceptive similarity is a matter for the judge alone; and
- the proposed survey was flawed.
Deceptive similarity is a question of law
In its application, Pacific Brands submitted that the proposed survey evidence would not be admissible because the issue of deceptive similarity is a question of law to be determined by the judge alone.
Justice Robertson agreed with this proposition but went on to say that this does not mean that evidence going to that question will be impermissible.
The relevant question is whether it is sufficiently clear at this time that the proposed survey could not produce relevant or admissible or sufficiently probative evidence.1
Issues with Adidas’ survey methodology
Pacific Brands also claimed that the methodology and questions of the survey were flawed. Justice Robertson found that these matters should have been dealt with under the Practice Direction and directed Pacific Brands to raise these issues with Adidas, as envisaged by Practice Note CM 13.
Justice Robertson held that the relief sought by Pacific Brands in its application was premature and that the process set out in Practice Note CM 13 had not been completed.
Pacific Brands’ application was dismissed with costs.
Implications for trade mark litigants
Whilst the admissibility of survey evidence is often disputed and ultimately remains at the discretion of the trial judge, the risk that it will be rejected or given little, if any, weight at the trial is reduced if the procedure set out in Practice Note CM 13 is followed. Objections to the form and substance of the survey should only be raised with the Court once that procedure has been carried out.
- A & E Television Networks LLC v Discovery Communications Europe Ltd  EWHC 1038 (Ch)