In trademark appeal, Federal Court finds survey evidence inadmissible due to reliability and validity issues
Background
In Promotion in Motion Inc. v. Hershey Chocolate & Confectionery LLC, the Federal Court dismissed an appeal brought under section 56 of the Trademarks Act of a decision from the Trademarks Opposition Board, which had refused PIM’s applications for the trademarks SWISSKISS and SWISSKISS & Design. The Board had found that there was a likelihood of confusion between PIM’s SWISSKISS trademarks and Hershey’s KISS and KISSES trademarks.
Both parties filed new evidence before the Federal Court. PIM filed six new affidavits, three of which contained expert evidence. Hershey filed three new affidavits, two of which contained expert evidence.
PIM’s new evidence
Two of PIM’s expert affidavits contained survey evidence. The Court found that these affidavits met the necessity requirement but found validity and reliability issues that rendered them inadmissible (or at the very least made their evidence not of “probative value” such that it would have impacted the Board’s analysis).
The Court found the validity of PIM’s surveys was impacted by the following issues:
- The questions created a priming bias in the results by systematically and repeatedly mentioning “Swiss chocolate”;
- The online survey format did not provide assurances concerning the identity of the person who filled out the survey (there was no expert verification or video recording);
- The expert did not know the impact that the participants’ potential use of the “back” button could have on the results of the survey.
In addition, the Court identified the following reliability issues with PIM’s surveys:
- It was unclear whether the survey results could be repeated in an in-person survey;
- It was unclear whether the survey results “would accurately reflect the level of confusion in the actual Canadian Swiss-chocolate consuming population.”
Finally, the Court highlighted the fundamental issue that a survey conducted by an expert falls within an exception to the hearsay rule. However, the identified design flaws lead to the conclusion that “the survey of the participants’ opinions were not professionally conducted by the experts.”
The Court concluded that PIM’s expert affidavits containing survey evidence were inadmissible and therefore immaterial.
With respect to the rest of the new evidence filed by PIM, the Court only found one affidavit to be material: the Papaconstantinou 2 Affidavit. This affidavit explained that the word mark “SWISS”, as it relates to chocolate, is a certification mark. The Court found this evidence would have had a bearing on the Board’s interpretation of the word SWISS in SWISSKISS.
Hershey’s new evidence
Hershey had conceded—and the Court agreed—that Hershey’s new evidence was only necessary if PIM’s new expert evidence was admissible and material to the appeal. In light of the Court’s findings that PIM’s expert evidence was inadmissible and immaterial, the Court concluded that Hershey’s new evidence was immaterial.
Standard of review
In a statutory appeal under subsection 56(1) of the Trademarks Act, the Court applies the appellate standards of review if no new evidence is adduced by the parties or the evidence filed is not material. If the new evidence is material, the Court will conduct a de novo analysis, but only with respect to the specific issues to which the evidence relates.
Because the Court had only found that the new Papaconstantinou 2 Affidavit was material, the Court would only conduct a de novo analysis “on the alleged errors as they relate to the interpretation of the word SWISS as descriptive of the geographic origin of PIM’s chocolates of Swiss origin”. The other alleged errors involved questions of fact or questions of mixed fact and law and were reviewable on the standard of palpable and overriding error.
Confusion analysis
The Court found that PIM had not demonstrated any palpable and overriding error on the alleged issues of fact or of mixed fact and law.
Concerning the interpretation of the word SWISS, for which the Court performed a de novo analysis, PIM’s argument was that “the word SWISS (i) is a registered certification mark, (ii) enjoys distinctiveness as a matter of law, (iii) enjoys distinctiveness that makes it a dominant and striking element of PIM’s SWISSKISS Trademarks, and (iv) is incapable of precluding alleged confusion with HERSHEY’S KISSES marks, including KISS.”
The Court highlighted that PIM failed to mention or realize that the SWISS certification mark is a descriptive certification mark registered under section 25 of the Trademarks Act. By virtue of section 25, descriptive certification marks are registrable “despite their otherwise-unregistrable character as clearly descriptive of the place of origin of goods or services.” The new evidence reinforced the finding that SWISS is not distinctive or PIM’s chocolates and does not preclude confusion. The Court found that “there was no logical way for [PIM’s] argument on how the law surrounding certification marks operates to succeed.”
Conclusion
The Federal Court dismissed the appeal, with costs.
A copy of the decision is available here.
