Adidas is suing Pacific Brands, alleging that the latter’s use of 3 stripes on footwear infringes Adidas’ registered trade marks for the “3 Stripes” (the judgment doesn’t identify which trade marks or the Pacific Brands’ product(s) in question).
Adidas gave notice under CM-13 (this is .doc download link, but the terms of the practice note are also set out in the judgment) that it intended to conduct a consumer survey.
It would appear that what Adidas proposed to ask survey respondents was:
After setting out the proposed form and methodology of survey and control to be used the Notice set out the proposed survey questions as follows:
(a) Who do you think makes this shoe?
(b) Why do you say that?
(c) When did you last buy a pair of sports shoes?
Pacific Brands sought an order preventing the survey being undertaken or used. Pacific Brands argued that the survey was a waste of time and money because:
- it had conceded Adidas had a reputation in the 3 stripes trade mark in Australia; and
- whether or not the use of the stripes on Pacific Brands’ footwear was use as a trade mark or, if it was, was deceptively similar to Adidas’ trade marks,
were purely questions of law for the judge alone.
Robertson J refused to block the survey for those reasons at this early stage. His Honour considered that Gummow J’s observations in Interlego
did not support Pacific Brands’ argument.
In support of this proposition, the respondent referred to Interlego AG v Croner Trading Pty Ltd
(1992) 39 FCR 348 at 387-389. I do not so read the passages in the judgment of Gummow J, with whom Black CJ and Lockhart J agreed. It is correct to say that deceptive similarity is a question for the tribunal of fact and is not a matter for any witness to decide but, as the passage cited by Gummow J from Lord Diplock’s judgment in General Electric Co (USA) v General Electric Co Ltd  1 WLR 729 at 738 makes plain, to say that a question is for the tribunal of fact or to describe it as a “jury question” does not mean that evidence going to that question is impermissible.
Adidas is not out of the woods yet. It would appear that Pacific Brands have identified defects in the proposed survey itself. Robertson J indicated what Pacific Brands should have done is identify those defects as part of the CM-13 process.
What the defects may be is not identified (and his Honour was not necessarily agreeing that they were defects). At least questions (a) and (b) set out above seem to be the sort of questions which courts have typically found acceptable, at least since the Jif Lemon case, as they do not involve the survey respondent engaging in undue speculation. I guess we shall have to wait and see if anything further emerges.