Ronald: Welcome. Hello. My name is Ron Dimock and I'm an IP litigation partner in the Toronto office of Gowling WLG, global law firm. On behalf of my partners I welcome you to this webinar, the third in the series about the evidence needed to prove your case in a global IP dispute. This one is about the essential evidence for use in trademark cases. During the life cycle of protecting a good idea, enforcing trademark rights can become an issue on a global scale. Knowing the way to enforce these rights around the world is vital to any successful plan to protect that good idea. Our panel will, today, take a look at the evidence needed to win a trademark case in the courts in Canada, the UK, France, China, Singapore and the United Arab Emirates, respectively. They will also cover both common law and civil law practice, as well as statutory and common law rights. This may be relevant in such cases. Before we begin let me introduce you to our moderator, Kelly Gill, who will then introduce the panel members and direct the discussion. Kelly is a partner in the Gowling's Toronto office and is one of Canada's top IP litigation lawyer. Last year Kelly received the prestigious Trademark Practitioner of the Year Award from Managing Intellectual Property, MIP, for his remarkable success in the court room as well as his contributions as a teacher and writer. Kelly teaches trademark law at Osgoode Law School here in Toronto and is the author of the most cited and well read and best textbook on Canadian trademark law, entitled Fox on Trademarks. I refer to it as Gill on Trademarks and the Supreme Court of Canada refers to it every time it decides a trademark case. Kelly, I now turn the rest of the webinar over to you.
Kelly: Thanks for those kind words, Ron, and welcome everyone. I am really excited about this webinar, our latest in the series, The Life Cycle of a Smart Idea. Today we're looking at key evidence in global trademark disputes. As many of you know, I love trademark law and at its heart it is the infringement action. Today we have a panel of very experienced practitioners from around the world to discuss the evidentiary considerations involved in bringing, hopefully, a successful infringement action. So let me introduce to you to the panel.
Our French trademark litigation expert, Celine Bey, heads the intellectual property practice of Gowling WLG in Paris. She has a deep rooted understanding of French litigation procedure and is a major player in the French market for trademarks, patents and for handling complex Pan-European disputes. Celine will also discuss the specificities of evidence when invoking an EU trademark, subject to the rules of the EU regulation.
From the UK we welcome John Coldham. John co-heads our brands and designs practice and is a recognized expert by national and international rankings. Quotes about him include, that he achieves excellent outcomes around trademark and design infringement issues, and that he offers clear, practical advice and is able to offer sensible solutions to clients. John is the proud holder of two Client Choice Awards and IP stars in both trademarks and designs.
From Canada, James is a litigation partner, trademark agent and patent agent in our Toronto office. James represents clients in trademark litigation before all levels of court in Canada and has particular expertise in opposition and cancellation proceedings before the Trademarks Opposition Board. Notably, and this is true, James was counsel in not one but two recent cases resulting in prison sentences issues by Canada's Federal Court for contempt of court against persistent trademark infringers.
Jia is a senior associate at the Singapore based law firm, JurisAsia, which is in an exclusive association with Gowling WLG. She specializes in trademark portfolio management and contentious proceedings and is fluent in English and Mandarin.
From Dubai we welcome Lin. She advises clients in the Middle East region and overseas, in particular in IP disputes such as infringements, oppositions, cancellation actions, company and domain name disputes and dispute resolution. Lin will focus on the UAE for this session, but if anyone has any questions in relation to other countries in the Middle East, Lin will be available to discuss those in the breakout room after this session.
Finally, Molly is head of IP enforcement at Law. Gowling WLG has forged an exclusive referral arrangement with that firm to provide clients with enhanced seamless access to the Chinese courts and intellectual property offices. Thank you all for joining us today.
So the organization of the webinar today, we are going to focus on the type and format of evidence required by a moving party in an infringement proceeding. The discussion will broadly follow the path of considerations that a trademark owner goes through in deciding whether to commence the proceeding and then prove the infringement. We're going to be discussing, to begin with, what preliminary matters should you consider before initiating litigation. Is there a choice of forum for the infringement proceeding and, if so, does it impact the evidence required? What type of evidence is required to prove your trademark rights? Second part of that question, what type of evidence is required of the infringing activity? How do you obtain it? How do you prove it? Then finally we are going to deal with expert evidence and, particularly, surveys. Can they be used? Should they be used? Please note that following the presentation we will be transferring everyone to various breakout rooms where you'll have the opportunity to speak with one of our presenters in a smaller group setting. Please do stick around for these smaller group chats if you are available.
Let's jump right into the discussion. A few years ago one of our clients received a trademark infringement demand letter and, looking into the matter, it was quite surprising to see that our client actually had the senior rights. So it was quite interesting to be able to write back to this party and say, we absolutely agree with you. There is a likelihood of confusion here but we are the senior party and you have to stop. On that interesting little note, let me ask John, any other types of preliminary considerations other than determining that you actually have the senior rights before initiating the dispute?
John: I was going to start with that actually, Kelly, because you're right to identify that point. It's rare but not as uncommon as you might think to find that the rights on which the demand letter is based are not in force, or indeed, post-date your own rights. We've been on the receiving end of letters like that in the past too where it's transpired that our client actually has the earlier rights. I can remember at least one case which ended up with the person who wrote to us having to cease their use rather than the other way around. It's always worth checking the register to see whether the claim is built on strong foundations. Once you've determined that the basis on which you're about to complain about a suspected infringement is there, there are various strategic considerations to bear in mind, in terms of how to approach the problem. Clearly the first question is where the infringement is taking place as you will need to take action there, subject to what Celine may be about to say about Pan-European injunctions. Once the jurisdiction is determined the first question is whether there's a basis for an injunction at the outset, which is variously called an interim or preliminary injunction. If you think that might be an option, there are a number of things to prove over and above what's needed for litigation as a whole, particularly in the UK. These factors look at why it has to be now. For example, could this all be sorted out via damages later, or is there some sort of permanent or irreparable harm that would be caused to the brand owner if the alleged infringer is allowed to continue until the full trial? The court will balance this harm against the harm that would be caused to the defendant if an interim injunction is awarded incorrectly and the defendant would otherwise have been allowed to carry on trading.
Kelly: Celine, perhaps you can comment on France and the EU.
Celine: Yes, sure. In addition to what John said, I see two other strategy preliminary consideration prior to initiating an action. Of course, it seems obvious but the first question that you should ask yourself is, on which trademark should I base my action? Especially in Europe because you can base your action either on a national mark, or on the European trademarks or on both. Second question, as John said is very important, where do I find my action? This is particularly true in case of multi-jurisdictional infringements in several countries in Europe. As you may know, under the European trademark regulation you can obtain a Pan-European injunction covering the 27 Member States, if you base your action on the European trademark. So once single action and injunction over the 27 Member States. But for that you have to choose the proper location and you can only go before the national court of the defendant. Therefore there is really a strategy choice to be made before starting the action upfront. Should you choose to try to get this Pan-European injunction, or should you rather go before in another Member State before other jurisdiction where you think you might have a for sure good decision. Meaning that the jurisdiction is much more well experienced in some type of trademark litigation or they are known to be trademark owner friendly, for example. It can be the case for Germany or for France. Also, when you get a first decision in one of those Member States, it may be easier after that to settle the whole case. So the case in other jurisdictions. That's why you absolutely need to have a global view of trademark law, both at national and European level, when you face infringement in different countries in Europe. That's very important.
Kelly: And speaking of different countries, I understand there's a little twist in Singapore if you get your rights wrong in a demand letter. Jia, can you speak to that?
Jia: Thanks, Kelly. For Singapore, actually the issue might be more common than we think since we adopt a first to use system. Which means even if you have a registered mark that may be senior rights by way of prior use so it's therefore very important, pre-action, to properly consider if you have senior rights by conducting proper market research and investigations, because here, if you don't succeed in your claim of infringement, a ... party can actually counter-sue for groundless threats.
Kelly: Good point to know before you embark down the road in Singapore. Molly, for China, of course there are no unregistered trademark rights. Can you speak to the preliminary issues there?
Molly: Sure. Thank you, Kelly. As Kelly has said, unregistered marks do not exist in China, per se, but there are only prior use rights that may allow one to continue to use in certain circumstances but that such prior use is limited. In light of this there's no great significance of seniority of mark because, generally, the seniority of a mark can be ascertained from the CNIPA by registration. Generally, there should not be two identical marks that covers identical goods, or service or even identical sub-classes. So the main strategic consideration in China is that you take action based on registered marks even for sending a letter of demand or warning letter. Usually it is unlikely that you will receive such a letter unless evidence of infringement has already been gathered. So before considering litigation there may be other three ways more effective to enforce trademark rights. They are online taking down, administrative enforcement and criminal enforcement if the infringement constitutes trademark in counterfeiting.
Kelly: Speaking of criminal enforcement, why don't I bring in our criminal enforcer. James, any preliminary considerations for Canada?
James: Thanks, Kelly. For Canada, many of the same considerations already mentioned, are going to be applicable too. Before issuing demands or starting litigation we'll always want to be satisfied that your rights are in fact senior in the Canadian market, specifically. In Canada it's also important to consider, at the outset, whether there's other mechanisms available to achieve a quick and cost effective resolution before launching into full blown litigation. I'm thinking here about things like if they other party's activities are occurring online, would something like a simple take down request be more appropriate? John mentioned the possibility of a preliminary or interlocutory injunction. This is certainly an option in Canada as well but, like other jurisdictions the availability of this remedy, stopping trademark infringement before trial, requires that you move quickly and be able to provide specific evidence of irreparable harm.
Kelly: Thanks, James, and thank you for all those preliminary considerations. Once we've gotten past those first aspects, and in particular making sure that you have the senior rights, some jurisdictions have different possible forums in which to commence the infringement action. If so, does those choices impact the evidence required? James, I'm going to right back to you for Canada.
James: Sure. In Canada the choice of forum is not really going to impact the evidence required. While it's possible to bring trademark claims in the Provincial Courts in Canada, in most cases we do recommend proceeding in the Federal Court of Canada because of the IP expertise of its judges and its ability to grant injunctions and other remedies with national effect. That said, when bringing trademark claims in the Federal Court, there is a choice to be made in terms of the procedure which is used. That choice will greatly impact the way evidence is presented to the court. So trademark claims can either be brought as either an action or what we call an application. This type, an action, is usually what we think of in terms of Canadian litigation. It has all the usual procedural steps including full documentary discovery and oral examinations for discovery, leading to a trial with witnesses testifying live before a judge. In recent years, however, and certainly in my practice, we've made increasing use of the application procedure. Now this is a much more summary procedure which gets the case very quickly before a judge for a final determination. Unlike a traditional action, there's no discovery and evidence is presented to the court in the form of written affidavits. Now, the inability to obtain full discovery of an infringer is a potential drawback, if claiming damages is important, of if the facts of infringement are not straightforward. However, if the real goal is to get a permanent injunction as quickly as possible, the application route can be quite useful. On this point, by way of example, Kelly and I, Kelly you'll remember, we had a case recently where our client's goal was just to obtain a permanent injunction quickly and we proceeded by way of application in that case, and even though it was fully contested by the infringer, we were able to obtain a permanent injunction in just 12 months. Over the years I've had numerous other cases where we've been able to get that permanent injunction in as little as 4 to 6 months, start to finish, using the application procedure. So we found that this summary application procedure is particularly well suited for use in repetitive enforcement campaigns for brand owners. It's a way to quickly, and cost effectively, tidy up the marketplace and it's well suited for addressing small and medium scale infringers that might not otherwise be cost effective to pursue through traditional full blown litigation.
Kelly: John, can you speak to similar litigation options in the UK?
John: Yeah. There are a number of litigation options in the UK now, all of which have the same standing as each other as they're all part of the High Court, but they're run differently from each other so they all have different pros and cons. There's the lower cost Intellectual Property Enterprise Court, sometimes called IPEC. There's a middle option which is called the shorter trial scheme, and then for the biggest cases there's still the full High Court option, but that's now only really used for the very biggest trademark cases. The lower cost options are more streamlined. They limit disclosure, the length of evidence and so on. There is also more active case management by the court, meaning that you really have to justify why a step, such as expert evidence, is going to help the court to decide the case. These options need considering carefully. Are you relying on disclosure quite heavily in connection with the claim? If so, you might want to shy away from the options where the default is little or no disclosure. But then again you might want the court to order a very focused disclosure from your opponent, but hide behind the lack of general disclosures to stop there being too much of a reciprocal order against you. It's really important to consider these factors from the outset when choosing the forum in the UK.
Kelly: That's somewhat similar to what James described for Canada. Lin, for the UAE, any options available there that you can discuss?
Lin: Thank you, Kelly. One thing to bear in mind is that the UAE is made up of 7 emirates; Abu Dhabi, Ajman, Dubai, Ras Al-Khaimah, Sharjah, Fujairah and Umm al Quwain. Which court to file an infringement case depends on which emirate the infringement takes place. Abu Dhabi, Ajman, Fujairah, Sharjah and Umm al Quwain are integrated into the Federal Court system which includes the Court of First Instance, Courts of Appeal and the Federal Supreme Court in Abu Dhabi. Dubai has it's own court system which includes the Court of First Instance, Appeal Court and the Court of Causation. Ras Al-Khaimah also has its own court system which includes the Court of First Instance and Appeals Court, only. In terms of evidence to support a court case, there are no emirate specific requirements and all types of evidence can be used. If you have a case running in the Dubai court, and a separate case running in Abu Dhabi court, much of the same evidence can be used for both cases. The UAE is civil law system, so unlike Canada and the UK, the common law tort of passing off is not available. It is possible to base a case solely on unregistered rights, however, it's usually very challenging and difficult to win solely on this basis. Additionally, there are no binding precedent systems, therefore each case is determined on its own merits and facts. That said, past court decisions from the UAE and other countries may have persuasive value. Sending a pre-action letter is recommended but not mandatory in the UAE. You will not be penalized by the court if you haven't sent a letter before filing the case. Another thing to bear in mind is the language and format of a UAE court case. All pleading and hearings are in Arabic and notarized and legalized power of attorney is mandatory to file the case in any of the emirates and a local Emirati advocate must be appointed to present the case before the court. All supporting evidence must also be in Arabic, therefore if you are submitting documents issued by a non-UAE authority, this must be certified and legalized up to the UAE Embassy in the country of issuance and have a certified Arabic translation in order for it to be admissible.
Kelly: Let's turn to Molly, and China, where there are a number of different options available. Molly?
Molly: Yes. Thank you, Kelly. In China we have three main options based on evidence collected at different levels. For administrative enforcement, it is essential to provide infringing product samples or photos, infringing stock area and estimated quantities of infringing products. We would advise notarized purchase when infringing product bear only similar but not identical marks because authorities may hesitate, or even refuse, to take action on such marks. I have had some cases about administrative enforcement concerning infringing product, very similar mark or identical mark on similar goods. Some of them were successful, some failed. All were corrected at a later stage. The main advantage of this option is speedy and cost effective compared with civil litigation. Second option is for criminal enforcement. First of all, the infringing mark should be identical. We need to prove that counterfeit samples and the sales ultimate information, if possible the suspect production premises and stock area. The main advantage is that the criminal investigation is likely to take out and enforce a counterfeit network from the sales to manufacturer. In some cases even the counterfeit packaging supplier. However, it is difficult to identify criminal clues as counterfeiters are usually highly alerted in China. For civil litigation, in general, the forensic evidence in China should be notarized. Such as the infringing product obtained by the notarized purchase, the web page, the brochure or other promotion materials of the defendant's offering the infringing products. In addition, when they file civil lawsuit when the criminal proceeding is ongoing, obtaining both a criminal judgment and compensation as well. Kelly?
Kelly: Thanks, Molly. Let's start moving into the real heart of the question here. You've considered preliminary matters. You've considered the jurisdiction and the court system. You now have to prove the proceeding. You're obviously asserting some form of senior trademark rights but what type of evidence is required to prove those rights? Celine, can you speak to the situation in France and the EU, please?
Celine: Yes, of course. First, to prove your trademark right, of course apart from having to provide for the official certificate of registration of your trademark, you have to prove use of your trademark. It is the case in France. It is the case elsewhere in Europe because this rule comes from European directive so it applies everywhere. Basically, for the action, the trademark action, the infringement action to be admissible you are first to prove that your trademark has been used within the 5 past years. The evidence should be provided up front. This is not an obligation but it is really recommended to provide the evidence with the writ of summons in order to avoid incidental proceedings before the trial judge by the defendant. This is the case in France and this considerably slowed down the procedure. So you really better well prepare your case and get all the evidence of use up front with the writ of summons in order to avoid those proceedings. If you invoke a European trademark and if you seek a Pan-European injunction, as we talked about a few moments ago, the burden of proof can be greater. Meaning that evidence must be shown, evidence of use of the trademark must be shown for significant part of the European Union. So it would depend on the nature of the goods and services and the market at stake, but it can well be that you have to prove use in more than one single Member State of the European Union. If you invoke a well known trademark, as well you will have to prove the reputation of your trademark. A French court will not take reputation into account or will even dismiss your action if you have not provided solid evidence of reputation. So to demonstrate a use or reputation the letter of evidence should not be under estimated. Just because the trademark is known, even if it is very well known like Chanel or L'Oreal in France, that does not mean that minimal evidence can be provided. The evidence requirement is the same for all trademarks. So you must be very careful in providing public evidence of objective use of the trademark. So using use of the sign as a trademark, and not as a company name or domain name, and also quantitative evidence. Not just evidence from the company itself. That will not be enough, and we all remind that McDonald's lost their famous Big Mac trademark in 2019, just because of the low level of proof that was provided before the European Office. So you must be careful that bringing an infringement action does not backfire and result in a decision simply of inadmissibility.
Kelly: Very good points that you'll have to remember when considering moving in Europe. Jia, for Singapore, similar considerations?
Jia: Yes. Other than relying on your prior registrations you will need solid proof. So you can, or will need to, prove prior use of the mark by filing evidence of your sales and advertising figures in Singapore, or even elsewhere in the world, particularly if you're relying on well known grounds. In determining if the mark is well known, the Act does provide the following factors, which also considers using the reputation of the mark overseas. So first would be the degree to which the trademark is known to, or recognized by any relevant sector of the public in Singapore. We see that survey evidence can be used to prove this point. The duration extent and geographical area of any use or promotion of the mark. Any foreign applications or registrations for the mark and the duration of such registrations. Even any successful enforcement of any right in the mark in any country and to the extent to which the mark was recognized, as well known, by the competent authorities of that country or territory. Finally, the court will also consider any value associated with the mark. So in asserting reputation of the mark in Singapore we find that survey evidence does come in helpful but there are limitations and these will be discussed later. We find in practice, however, unless there is very strong evidence that the mark is very recognized overseas, we do in most circumstances require some form of use or promotion of the mark in Singapore, still.
Kelly: Thank you. It is interesting that Singapore does take into consideration the reputation of the mark, outside of Singapore. James, for Canada, does such a situation exist?
James: Sure, let me give you some thoughts on that, Kelly. In Canada, a trademark owner can advance claims, either based on infringement of its registered rights or passing off based on its unregistered or common law trademark rights. To prove registered rights, the trademark registration certificate itself is sufficient to prove ownership. That said, even in an infringement action based on registered rights, as the plaintiff you would typically also be providing evidence of the history of use of the mark in Canada, the manner of the use of the mark in Canada and the extent of the use of the mark in Canada. Now for claims based on unregistered or common law rights, specific evidence showing the plaintiff's length of use, manner of use and extent of use is absolutely essential in order to prove senior rights. Typically this evidence would take the form of documentary evidence and testimony speaking to the history and development of the brand. Specimen showing use of the mark over the entire period of use. Sales revenues, sales volumes, evidence about marketing activity specific to Canada, all of which is going to be used to demonstrate the extent of use and reputation in the Canadian market. Tying into a point that was mentioned before, with recent changes to the Trademarks Act in Canada in 2019, it's not longer necessary to demonstrate use in order to obtain a trademark registration and, at the same time, it's not necessary under current Canadian law to demonstrate use before suing on a registration. However, whether in a case like that you're going to be able to obtain all the usual remedies for trademark infringement and the absence of use in Canada, that's still an open question and something that we expect to see Canadian courts grapple with sooner rather than later.
Kelly: On that point, there is a piece of legislation that deals with that in Canada that has not been declared in force. Speaking to what remedies are available, if any, if you haven't used the mark that's registered in Canada, as of yet during that first 3 year period. Lin, for Dubai.
Lin: Thanks, Kelly. Similar to what James mentioned in Canada, and Jia Ling mentioned for Singapore, a prior UAE trademark registration is of course the strongest basis to prove that you are the owner of earlier trademark rights. In cases where you need to submit additional supporting evidence to demonstrate prior use, fame or the infringement itself, all types of evidence can be used. This can take the form of certified copies of registration certificates, trade licences or official UAE end documents. All of these of course have to be in Arabic or have a certified Arabic translation. Any trademark registrations which are not in the correct name will be disregarded so ensure that trademark assignments are recorded with the trademark office. If you are submitting non-UAE official documents, these must be certified, legalized up to UAE Embassy in the country of issuance, and again, also have to have a certified Arabic translation. Any non-Arabic documents without a translation will not be taken into account. Witness evidence is possible but it's rarely presented in the UAE courts. Expert evidence is commonly used and the court will often appoint an expert to assist them as there is no specialized IP judges. Affidavits and sworn declarations may also be submitted but these are usually not taken into account. If you are submitting use evidence to demonstrate well known rights in the UAE, similar to what Jia Ling mentioned for Singapore, this usually needs to be substantial, extensive and spanning over a long period of time. The additional factor to take into account for a UAE case, it can be quite expensive to complete all evidence because the additional factor of the legalization and the translation cost. So while it's great that all types of evidence can be used, just because you can submit it doesn't mean that you should, and it's not uncommon for parties to include everything that they can think of to support a case including evidence which is irrelevant to try to intimidate the other party. This is more likely to annoy the judge rather than work in their favour.
Kelly: Yeah, you don't want to annoy the judge.
Lin: No.
Kelly: In any jurisdiction. John, similar considerations in the UK?
John: As a number of my colleagues have already said, depending on the context you may need to prove you've used the rights in question. In the UK, similar to the EU, a mark is liable to non-use if it hasn't been used in the last 5 years. So there may be a challenge if the defendant doesn't believe that it has. There may also be a need to prove that your mark has inherent or acquired distinctiveness and that the mark has not, through an act or omission of the brand owner, become generic. If you're claiming that the mark has a reputation, which you don't need to do for every type of trademark infringement, and as such you want to be able to prevent an infringement on dissimilar goods and services, then you will need to be able to prove that you have the requisite reputation amongst the relevant consumers. This isn't a terribly high bar. You don't have to be Coca-Cola but you do need to be able to demonstrate the consumers would create a link between your brand and the infringer, and, that such a link in the minds of the consumers would cause unfair advantage or detriment. We've had recent cases where the court has found the reputation and the link to be present but the trademark owner has fallen at the final hurdle of proving that this link has caused an unfair advantage or detriment. It's important to remember that it's the evidence in the case that counts. As Celine was saying about the Big Mac case. Even if you're trademark has a huge reputation, if the evidence before the court does not prove that reputation, the court will find against you. Focused and relevant evidence is the key and it's often done badly by litigants.
Kelly: Sometimes I've seen people sort of get caught up in the fact that they assume everybody knows the brand that they're representing, but as you have all pointed out, you have to prove that before the court. Molly, for China again, the difference in this approach with the first to file, first to use difference.
Molly: Yeah, Kelly, you're right. China is a first to file, not a first to use, jurisdiction and that prior use rights are limited, except for well known trademark rights. So evidence for judicial recognition of well known trademark rights usually covers in three aspects, mainly concerned in China. One is from IP owner, the evidence that the sales area of the products using the trademark, the duration of a continuous use and the promotion activities. From official records, if there is, to prove the mark has been protected as a well known trademark and from public resources, information such as industrial ranking, market share and market research report are useful. Kelly.
Kelly: Thanks, Molly. So let's move onto the next stage in the infringement action. As the moving party you're alleging that the defendant is infringing certain trademark rights. You've proved those rights now, hopefully. What type of evidence is required of the infringing activity and how do you obtain it? How do you prove it? Celine, in France there's no discovery, how does it go about there?
Celine: No, there is no discovery. Not like in some common law jurisdictions. We have a slight different approach here. The burden of proof is really on the claimants and in France you do not start a trademark litigation, or any other IP right litigation, without having already secured evidence of infringements and, to a certain extent possible, to your prejudice. We can use any type of evidence. It is free. You can use belief report. You can use belief purchase but we have a specific procedure to gather evidence up front, which is called the saisie-contrefaçon, it's a seizure of goods. It's a court order so you go and see the President of the Civil Courts to obtain this authorization and the President allows you to have a bailiff go to the defendant's headquarters, or anywhere you think you can find evidence of infringement, and bailiff is allowed to go there with the police, if needed, with experts, with any ... person that would be able to go and look into the computers, the network systems of the defendant, etcetera. So it's a very powerful tool. You can gather information on anyone involved in the counterfeiting, searching for the manufacturer, for the importer, any intermediaries, re-sellers, distribution network you can also obtain evidence of the extent of infringement, mainly commercial documents with figures of sale, prices, margin, etcetera. The bailiff is also authorized to ask questions and to report on the declaration that are made during the operation and all these will be used later on before the court. This is very powerful. Of course this can be challenged later on in the proceedings so we have to do things really carefully. To draft the request, the motion and the order very carefully and the bailiff has to really follow the court order in order to avoid any cancellation later on of the court order or of the operation. But if you're seizure is successful, it can really help settling a case even before heading to start proceedings, and also it's a very good mean to get information that could be used in other jurisdictions, in other litigations abroad, because the bailiff is usually allowed to access the defendant's computer system so it can well obtain information that could be useful in other litigation elsewhere. The French judges have already said, several times, that there is nothing prevents the claimant from using those evidence in other litigations. So this is really a powerful tool that we have here in France, Kelly.
Kelly: It certainly is a very powerful tool. It's more powerful than I think many of our discovery processes in Canada. I kind of wish we had it here as a point of default. Molly, in China there's also no discovery process. How do you go about obtaining evidence of the infringement?
Molly: Yeah, you're right, Kelly. In China there's no discovery process. We have a pretty much do it yourself evidence gathering jurisdiction. So here I would like to share four aspects. Evidence gathering becomes a very current and relevant topic in China. The means to gather evidence have been somewhat curtailed from November 2021, that is just last November, due to a new privacy laws that have been enacted. Notwithstanding the changes, the plaintiff basically have to made out its case and to submit evidence themselves and there's usually little pressure on putative infringers to disclose evidence of their operations. So the plaintiff has to show trademark infringement and connect such infringement to the defendant by evidence which usually has to be notarized. The infringing evidence can be collected by onsite visits as well as online. Here are some of them. Like the suspecting infringing product and its photos were self-invoiced or receipt affixed with company chalk. The official seal of the company serves as official execution means of that company. Then warning letters sent out earlier to the defendant, and a punishment decision issued by administrative authorities in their enforcement action against the defendant, due to said infringement. If the infringing products are sold online, one effective means to gather evidence of the levels of infringement is to petition evidence from the online B2B and a B2C portals, which have revenue records generated through their sites, if the transaction is made on such online platform. Kelly.
Kelly: Interesting. Thank you. Lin, for the UAE, similar types of evidence gathering methods?
Lin: Yes, correct. Same as for France and China, there's also no discovery process in the UAE. Molly mentioned that China is a do it yourself evidence gathering jurisdiction. The UAE is pretty much the same. So we would usually conduct a pre-action investigation, with the help of a local investigator, which involves doing an onsite visit to gather evidence of the infringement and obtain information held by the infringer. As mentioned already, the court themselves likely appoint an expert who may conduct their own investigation to gather evidence, however, as this happens during the proceedings, the defendant is already aware of the case filed against them. It's not unusual for the court expert report not to be as comprehensive as the report from our own investigation. As mentioned, and I keep pointing out, all evidence must be in Arabic so if you're going to submit any infringement evidence from an investigation, including an investigation report, these all need to be in Arabic. The appointed local Emirati advocate is usually not a specialized IP lawyer. So although they may have handled IP cases, you essentially have to do all the work for them, so it's essential to have all the evidence organized and translated to make it easy for them to just present it to the judge.
Kelly: I really find this interesting. The lack of discovery or availability of discovery in the different jurisdictions and how you deal with it. John, can you speak to that from the UK perspective?
John: Yeah, sure. Perhaps in contrast to those who've already spoken on this question, disclosure is available in the UK, but as I mentioned earlier, different court options in the UK limit the extent of it in different ways. In all the courts the judges are looking at the question of disclosure quite critically at the moment and testing the extent to which it's likely to be of a real assistance. That said, I've seen many cases in which disclosure, or discovery, has been allowed and it has been very relevant to the outcome of the case. Especially on some particular issue such as the extent to which the use made by the defendant was in accordance with honest practices in industrial and commercial matters. It goes without saying that there has to be some evidence that there's an infringement taking place. You can simply have evidence that an infringement is about to take place. One of the few examples of us retaining some Latin in the UK system, with a so-called quia timet action. You will usually have at least some evidence of actual infringement. This could be an offer for sale under the mark or it could be actual sales. It's always a good idea to do a test purchase if you can. It depends what it is. If it's deep sea drilling equipment it can be harder. But especially where there's a risk that the goods could be a resale of your genuine goods. If they are your goods, and you've exhausted your rights, this will kill your claim and could even lead to some counterclaims. The test purchase can provide useful information as well. Not just about the fact that there is an infringement taking place, but who's responsible for the infringement. For example, the packaging can sometimes provide the importer details, the manufacturer details and so on. It's always important to make sure you identify the correct counterparty and so the test purchase can help with that. Although there's no strict requirement to demonstrate actual confusion in cases where likelihood of confusion is required, it can obviously help and in some cases where significant time has passed, where the brands have been alongside each other, the lack of actual confusion can be something but we've seen defendants choosing to rely on as evidence that confusion isn't likely. To that end, it's often useful to see if there's any examples online of confusion. I've seen cases where consumers have taken to the internet to complain that they've bought the wrong thing and they're annoyed about it. This could be nightmare evidence for a client. Nobody likes to see annoyed consumers but of course it's fantastic for helping you prove your case and we've seen some cases disappear overnight when we've presented that kind of evidence. I've also seen increasing uses of internet evidence in a number of different types of cases. We've won cases off the back of it. But there are things you have to be very careful in relation to such evidence. The most obvious one is in an increasingly globalized world, how do you know that you're supposedly confused consumer is (a) based in your jurisdiction, here in the UK, and (b) is genuinely confused, and (c) they don't have some kind of axe to grind in some other way, like they're an ex-employee of one of the parties, or something like that. Just making trouble. Therefore it is important not to take these online comments at face value but to delve a little bit deeper into them. Another aspect that's required is to prove that the marks are sufficiently similar. This is a matter of legal argument to some extent but the state of the market, more generally, can help provide useful context.
Kelly: Yeah, certainly in Canada, which I'm going to ask James to speak to in a second, evidence of actual confusion or lack of actual confusion is beginning to gain more weight amongst the court. James, can you speak to the evidence of infringement in Canada?
James: Certainly. Happy to do that, Kelly. At a bare minimum, you will need to put forward evidence showing how the infringer's mark is actually being used and how it appears in the marketplace. Like others have mentioned, this kind of evidence is usually obtained through sample purchases. In the online retail world, usually we would put forward website captures documenting the infringer's website and the entire purchasing and payment process. In either case, whether we talk about bricks and mortar on one hand or online on the other hand, we would often work with a private investigator to do this. To make test purchases and conduct other investigations into the infringer and his activities. Like you just mentioned, Kelly, and like John mentioned in the UK, evidence of actual consumer confusion in Canada can be very compelling, though it's by no means necessary. The final point to make here is that the full extent of the infringer's activities can be obtained through discovery, if you proceed by way of the ordinary action route in Canada. During the documentary and oral discovery phases of Canadian litigation an infringer's going to be compelled to produce samples of its products, its packaging, its advertising materials and so forth. Importantly, discovery can also be used to compel the infringer's sales information. Full records of its sales of its infringing products, information about its manufacturers, distributors and so forth, everyone else who's involved in the chain. Now on this point we often find that engaging with accounting, or other financial experts, at an early state is important to ensure that during the discovery phase the right questions are asked of the infringer and the right documents and answers are extracted, so that you're in a good position to prove your case on damages when you get to trial.
Kelly: Absolutely. Jia, similar types of evidence gathering for Singapore?
Jia: Yes, Kelly. Similar to the UK and Canada, evidence of infringing use pre-action is typically obtained by engaging private investigators. For online purchases this can be a screenshot of the infringing use and websites. For offline purchases this could be a test purchase of the alleged infringing product. Discovery is also available here. Parties will have to disclose all documents in their possession. Custody of power. Just like to touch a bit on another way of gathering infringement evidence in Singapore, which is typically known as a customs recordal system. So in Singapore there's official recorder system, which means you don't get to record your mark with customs and expect them to monitor for counterfeits or infringing products, but you do get to provide written notice with specific information on any suspected importation of infringing goods to the customs to activate enforcement. So security in the form of a money deposit or guarantee showed by a bank and a letter of undertaking to bear all related costs should be provided. The written notice is valid for 60 days. Once the infringing goods are seized, the rights holder must initiate infringement action within 10 working days.
Kelly: Great. Okay. So, let's move onto the last topic for the panel today and that is expert evidence. The popularity and acceptance of expert evidence in trademark infringement proceedings, particularly surveys, can be quite different depending on the jurisdiction. So, let me ask you, is expert evidence considered a necessity in your jurisdiction, potentially helpful, or is it frowned upon? Molly, what about China?
Molly: In China, trademark infringement law suits rarely adopt expert evidence, and even if adopted, it is usually for examining product quality or certain characteristics of the product to prove whether a logo on the product label is a general description or not. Consumer survey is used in a very limited number of cases. It can serve as a piece of evidence to prove whether an alleged trademark causes confusion with the plaintiff's rights. The effectiveness of survey is usually determined by three main elements. One is a questionnaire should be designed in a reasonable manner for assessing the confusion. Second is that the survey is conduct by an independent third party and the whole process is notarized. Third is that the proper selection of audience, location and a scale, for scale ... the number of people.
Kelly: Now in France, in Europe, quite a different approach. Celine.
Celine: Yes, thanks, Kelly. It is a little bit different but it's true that the same condition as Molly just described, expect notarization apply in France to appreciate the effectiveness of a survey. The opinion polls on survey are highly valued by French courts and European court for establishing the reputation of a trademark. They are commonly used as well by lawyers and by the parties to try to rule out the likelihood of confusion but, of course, it is quite complicated to do. It is very much contested by the adverse party and it is somewhat rejected. The surveys must be really handed with care. You have to really drive the polling institute. You have to pay really attention to the drafting of the question. Of course the question should not lead to the responses. The people interviewed must be selected really with attention. It must be representative and it is often the issue that we have with those types of evidence. Of course it is very useful if you have few evidence but note that it can be really costly, especially if you have to prove reputation, or you try to put likelihood of confusion on more than one single State. So if you have to prove for different countries in Europe it can be very costly in the end, Kelly.
Kelly: Yeah, I think you hit upon two good points with respect to survey evidence. One, may have to be done meticulously and fairly and, two, particularly if you're following all those guidelines, they can be very costly. Jia, are surveys typical in Singapore?
Jia: Quite typical. So expert evidence is not a necessity but can be potentially helpful. Such evidence is usually introduced in the form of surveillance, by way of expert evidence, especially if there's no actual evidence of confusion or deception. So surveys are guiding by the absence of such does not preclude the finding of a likelihood of confusion. In particular the way the survey is formulated is very important. Similar to what Celine mentioned for France and the EU, similar considerations apply for Singapore. Survey respondents must be selected and the questions should not be leading or designed to cross-examine the person surveyed. The results must also clearly show there's reliance on a mark's badges of origin. The report should at least set out the purpose of the survey, details on methodology, the full results of the survey and the statistical analysis.
Kelly: Great and, John, in the UK it's a little bit different again.
John: Yeah and the short answer is that surveys are in the UK, and indeed expert evidence more generally, is frowned upon. Even where surveys have been permitted, my view is they're often departed from by judges where they don't accord with what they think the right answer is. There's always a basis to attack a survey. They are trying to solicit an unsolicited response so will, by necessity, always be slightly artificial. Witness collection exercises now fall under the umbrella of surveys, and so they're had to get through as well, which is a shame because we've had more fun with them in the past. To rely on a survey you will have to be willing to risk a lot of money. You effectively have to do the survey in order to demonstrate to a court why you should be given permission for one. The other side will then object and there will probably be an expensive hearing to work out if it should be allowed. Similarly, the last decade has seen the a decline in the use of so-called branding experts. Unless there's an area where the judge can't be expected to apply their own consumer perceptions to the situation and therefore there may be some argument for such experts, in particularly specialist areas, but generally we don't tend to see them either.
Kelly: So quite a different approach. In the UAE, Lin, what's the approach to survey and other expert evidence there?
Lin: In the UAE survey evidence can be submitted to the court but it's not regulated and there's no proper guidance. Survey evidence may be accepted at the discretion of the judge but in most cases they do not bear much weight in comparison with other evidence that has been submitted. Surveys are usually intended to obtain evidence on distinctiveness, reputation and similarity and often include the degree of recognition of the marks. There's a degree of similarity between the marks and there's a degree of which the public are confused by the rival marks. Most of the time, survey evidence is merely guiding and not conclusive, so in the absence of a survey it doesn't really hugely impact the case.
Kelly: Very good. James, for Canada, which I would describe as a sort of love/hate/love/hate relationship with expert evidence. What do you say about that?
James: Yeah, absolutely and, Kelly, frankly this is a question where we should be switching seats and you should be giving the answer. You, of course, not only authored the leading text on trademarks, generally, but also have co-authored a book on survey evidence in trademark cases, in particular and, of course, for counsel in the leading case on survey evidence in a few of my cases in front of the Supreme Court. That said, I'll give you my thoughts and I'm sure you'll jump in and correct me if I step out of line here. The short answer is that survey evidence is by no means a necessity in Canada, though it can be helpful in some cases. Canadian courts have tended to characterize trademark confusion as being a matter of common sense and stated that judges are well placed to make that assessment without most types of expert evidence. That said, they do recognize that surveys are one type of expert evidence which can be useful, and that's because they have the potential to provide empirical evidence demonstrating consumer reactions in the marketplace, which is exactly the question which a judge in a trademark confusion case is trying to decide. Now, oftentimes for various reasons, it's not possible to put forward evidence of actual consumer confusion resulting from the infringement and in those cases survey evidence can stand as a useful proxy for this type of consumer reaction. So provided that the survey is designed properly, as some of the other panelists have mentioned, Canadian courts may find it to be necessary, relevant and helpful, and of course, as always, the last thing you want to do is go to the trouble and expense of running a survey only for the court to tell you later that it's inadmissible or relevant. But I think it's fair to say we're now at a point where Canadian courts, and commentators like Kelly, have given trademark owners some good detailed guidance to ensure the survey will hopefully be ultimately considered at the end of the day. So the bottom line here for Canada is that survey evidence may be helpful but you should really expect the Canadian courts will scrutinize it fairly closely.
Kelly: You made some very good points there, James, and actually while you were saying it I was just thinking, the last three trademark infringement actions that I've brought, and all of them were successful, I didn't need any survey evidence in those. So, I think the tide has change a little bit in that regard. So that marks the end of the formal panel. We'll shortly open up our breakout rooms where you'll have the opportunity to chat with our panelists. If you signed up for a breakout room, you should see on your screen in a moment, a window where you'll be asked to join the room. Just click join and you'll be automatically brought into that room. Before that I would ask each of the panelists just to summarize a key takeaway point for the audience. As you've probably noticed there are a lot of similarities among the jurisdictions but there are important differences and nuances that need to be taken into consideration. So, Celine, a key takeaway for France.
Celine: Yes, I would say this is the, of course, the specific tool that we have. The Saisie-contrefaçon which is if you can go for it, it's a really powerful tool. It can really give an advantage when you start a litigation in France.
Kelly: John, a key takeaway for the UK.
John: In the UK just remember the different court options that provide different approaches to cases. It's important to consider the pros and cons of each one, early, as they are very different in a number of respects. It's also important to ensure that you've considered all the different ways that you can gather evidence by doing a test purchase to scouring the internet for unlisted evidence of confusion. Finally, it's key to ensure that if you're relying on use, goodwill, reputation that you have focused and targeted evidence to prove these points, and too many brand owners think that they're reputation is taken as read, when actually it's the evidence in the case in hand that counts.
Kelly: Good points. James, a key takeaway for Canada.
James: Sure, Kelly. In Canada one key takeaway is to remember that there is application procedure, which I mentioned earlier today, which is a way to bring infringement matters to the court in a quick and cost effective way. It's an alternative to more traditional litigation with full blown discovery and trial and, as we've talked about today, this option is well suited for repetitive enforcement campaigns based on registered rights where, again, the main goal is to get an injunction against the infringer quickly.
Kelly: Jia, some concluding point for Singapore.
Jia: I just wanted to emphasize the importance of ensuring that clear records of consistent and genuine use of your mark are kept properly, so we do not end up in a situation when enforcing our rights that we are not able to prove from prior use or reputation.
Kelly: Yeah, an excellent point for trademark owners. Lin, your UAE takeaway for the day.
Lin: The main EAU takeaway I would say is to focus your evidence only on relevant material and organize it to make it easy for the judge. If it's not relevant, don't include it.
Kelly: That is a good point I think for any jurisdiction. Always good to keep it relevant. Molly, for China.
Molly: For China is that China is a pretty much to do it yourself jurisdiction when it comes to evidence collection. So ensure you have collect proper evidence before taking any actions.
Kelly: Great. Thank you all. The webinar will be shortly posted, as a recording on our website, if you'd like to watch it again or if you'd like to share it with colleagues. A couple of other notes, as many as you know the Annual INTA Conference will be taking place in person, and virtual, from April 30 to May 4. We have a team of our top tier trademark professionals attending and we hope you'll reach out to them if you'll be attending as well. For now, thank you so much for your attendance today. Thank you to our panel and we look forward to welcoming you again as our webinar series, The Life Cycle of a Smart Idea continues. The next webinar will be on April 27 with the title, How Privilege Can be Used to Protect Your Innovations and Products. Please look out for the invitation and now I invite you all to join us in the different breakout rooms, if you can. Thank you.