Brand owners often need to prove, in the context of Intellectual Property related proceedings, the existence of certain circumstances surrounding their brand or products in the marketplace. While pure legal work and consequent need to count with the services of skilled Intellectual Property attorneys and litigators is unavoidable, not only for formal reasons but indeed to put forward the correct legal argument, the production of evidence that support said legal argument is equally necessary to build a winning case.

The evidence available to parties involved in Intellectual Property proceedings is of different nature and its strength and feasibility depend on the concrete ground to be proved. The standards of valuable evidence, the requisites that it has to possess as well as the threshold of strength that it can have and thus the convincing effects that it might display in the context of an Intellectual Property related proceeding, have been set by the case law and they are often reflected in Intellectual Property Offices Guidelines, such as those of the EU trademark office (EUIPO). In this respect, see, eg.

The importance of producing independent surveys based Intellectual Property Reports

In general, it can be said that ruling authorities, being them Courts or Patent and Trademark Offices, privilege evidence that provide objective information and proceeds from independent parties.

For example, one of the most valuable means to prove the well-known character of a trademark before the relevant authorities (as said Patent and Trademark offices, Courts, etc.) is preparing and producing market surveys and related intellectual property reports which will eventually provide independent and objective evidence as to the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods.

This is also true in relation to other kind of Intellectual Property related reports, such as trademark confusion and association reports or products viability reports, eg. in cases of look alike, that might help to reinforce the position of a party in trademark, industrial design or unfair competition litigation proceedings or are simply needed, on a preemptive basis, to launch a certain brand or product into the market with the less risk exposure from an Intellectual Property perspective.

Additionally, use of surveys and related reports might also become useful when it is necessary to show the existence of the trademark secondary meaning, i.e. the acquired distinctiveness of a trademark which initially lacked this condition and it has instead become apt, because of its use, to eventually distinguish a company’s goods and services to those of other competitors in the marketplace.

Survey based IP, a matter of two disciplines

In order to count with this kind of objective evidence that will eventually have some value to be considered by and thus to convince the Intellectual Property ruling authorities of the arguments put forward in a legal brief, companies and lawyers involved in trademark, industrial designs and unfair competition cases have to count with the services of an independent company with the necessary skills and expertise to produce this kind of reports.

However, in general, said entities are recognized for its expertise in market investigations, often for marketing and advertising purposes, but are not necessarily involved with the Intellectual Property legal business, nor count within the same team with professionals skilled in Intellectual Property law and, in particular, with skilled trademark and design litigators and attorneys who are aware and updated as to the standards required by the case law in relation to this kind of surveys and reports. Said skills are determinant in designing a correct survey and eventually come out with a valid and convincing report.

In view of the above and in order to avoid loss of time and money in obtaining evidence which will eventually not produce any consistent effects in favor of the party involved in the proceedings, legal professionals should actively participate and supervise the work and the resulting report.

This has, evidently, several downsides: the first one and more evident, is that the global costs for the client will scale up; the second, is that the intellectual property report can hardly be defended as “independent” and “objective”; additionally, both teams involved, lawyers and marketers, are seldom able to coordinate themselves and understand each other work needs and requisites with effectiveness; finally, especially when the report has to be defended in an oral hearing by one designated person, it becomes really challenging to have someone able to explain all the circumstances surrounding the report, the reasons as to why the survey was designed in a certain way, as well as, in particular, how did he/she came out with a certain result.

#NotOnlyIdeas offers valuable Intellectual Property related reports based on transparent and well working market investigation methodology

The two souls of #NotonlyIdeas, Intellectual Property and Market research, combine together to offer the best intellectual property reports based on surveys and market investigations available in the market, perfectly shaped around the instant case needs and the EU case law standards. Our reports are certified by both Intellectual Property experienced attorneys and litigators and market investigators and are aimed to Intellectual Property firms as well as businesses aiming to produce strong evidence before the Courts, Patent and Trademark Offices and certifying authorities or which simply seek guidance as to the launch of a product or a brand in the marketplace.