The Federal Court KISSES away Survey Evidence

In the case of Promotion In Motion Inc v Hershey Chocolate & Confectionery LLC, the Federal Court rejected an appeal filed pursuant to section 56 of the Trademarks Act, challenging a ruling by the Trademarks Opposition Board (“TMOB”). The TMOB had previously denied PIM’s request for trademark registration of SWISSKISS and SWISSKISS & Design, citing that there was a likelihood of confusion with Hershey’s trademarks for KISS and KISSES.

On appeal, both parties filed additional evidence consisting of various affidavits. PIM filed six new affidavits, two of which included expert opinions centered around survey evidence. The Court held that, while the survey evidence reports met the requirement of necessity, they were ultimately inadmissible due to validity and reliability issues, including biased questioning and uncertainty regarding the survey methodology’s accuracy. Further, the Court held that the survey evidence contained a series of design flaws that created an issue in that “the survey of the participants’ opinions were not professionally conducted by the experts”. The only affidavit filed by PIM that the Court gave consideration to clarified the nature of the term “SWISS” as a certification mark in the context of chocolate.

When determining the appropriate standard of review, under subsection 56(1) of the Trademarks Act, if no new evidence is adduced or if the evidence provided is deemed immaterial, the Court applies appellate standards of review. If new evidence is material, the Court applies a de novo analysis, focusing solely on issues related to that evidence. In this case, the Court conducted a de novo analysis solely concerning the interpretation of the term "SWISS" as it pertained to PIM's chocolates.

The Federal Court held that the term "SWISS" in the SWISSKISS Trademarks, when associated with "chocolate of Swiss origin," functions as a descriptive certification mark under section 25 of the Trademarks Act. This classification mandates that it exclusively denotes the geographic origin of the goods and cannot simultaneously identify a specific trader. 

Furthermore, PIM failed to establish any errors by the TMOB regarding the likelihood of confusion between its SWISSKISS Trademarks and Hershey's KISS and KISSES Trademarks, nor in the determination of the generic nature of "KISS" in the context of chocolate.

Ultimately, PIM's appeal was dismissed and Hershey was awarded costs.