Survey Evidence Deemed Inadmissible In SWISSKISS And KISSES Chocolate Trademark Dispute

On April 9, 2024, in Promotion In Motion Inc. v Hershey Chocolate & Confectionery LLC, 2024 FC 556, the Federal Court of Canada (FC) upheld a decision of the Trademarks Opposition Board (TMOB) finding that there was a likelihood of confusion between the applicant’s SWISSKISS trademarks and Hershey’s KISSES and/or KISS trademarks for chocolate.

On appeal, both parties filed extensive new evidence, including expert survey evidence.  The FC found that the survey evidence filed by Promotion in Motion Inc. (PIM) suffered from reliability and validity issues that made it inadmissible, including a problematic online survey format and questions that created a priming bias through repeated use of “Swiss chocolate”. Hershey conceded that its survey evidence was only necessary if PIM’s expert evidence was deemed admissible and material. Thus, the FC determined that the parties’ survey evidence was immaterial.

The FC concluded that only one affidavit filed by PIM was material.  This affidavit indicated that the word mark “SWISS” as it relates to chocolate is a certification mark owned by Chocosuisse.  The FC held that this evidence would have had a bearing on the TMOB’s interpretation of the word SWISS, and therefore the evidence was material and required a de novo review on this issue.

In conducting a de novo analysis, the FC noted that PIM failed to mention or realize that the SWISS certification mark is registered under section 25 of the Trademarks Act, which permits registration of certification marks which are descriptive of geographic locations.  The FC concluded that “a descriptive certification mark (SWISS) cannot simultaneously distinguish goods of a certain geographic origin (chocolate of Swiss origin) and a certain trader (PIM) in particular.”  Therefore, the FC agreed with the TMOB’s conclusion that SWISS is incapable of distinguishing PIM’s SWISSKISS marks from Hershey’s KISS and KISSES marks because the word SWISS is descriptive of the place of origin of PIM’s chocolates.

The FC held that the TMOB had not committed any reviewable errors in its confusion analysis, and ultimately dismissed the appeal with costs.

Summary By: Michelle Noonan