Markwell Clarizio LLP

Federal Court Finds Flaws in Online Survey Evidence and Reminds About Descriptive Certification Marks

The Federal Court (Tsimberis J.) dismissed an appeal by Promotion in Motion, Inc. (“PIM”) from a Trademark Opposition Board (“Board”) decision refusing PIM’s applications to register its SWISSKISS mark and SWISSKISS & Design mark in association with “chocolate of Swiss origin”. Hershey Chocolate & Confectionary LLC (“Hershey”) successfully opposed PIM’s applications based on Hershey’s registered KISS and KISSES trademarks associated with chocolate candy.

Promotion in Motion Inc v Hershey Chocolate & Confectionary LLC, 2024 FC 556

PIM alleged many grounds of appeal and filed extensive new evidence in addition to the evidence before the Board. Two interesting issues in this case were:

  1. the admissibility/materiality of PIM’s online survey evidence; and
  2. the distinction between general certification marks and descriptive certification marks.

Online Survey Evidence

Most of the new evidence filed by PIM on appeal was held by the Court to be inadmissible or immaterial. PIM filed affidavits of two experts (Dr. Corbin and Mr. Bourque) relating to survey evidence purporting to show that there was no likelihood of confusion. The surveys were conducted on the Internet and were targeted towards Canadian consumers who purchased or were going to purchase Swiss chocolates. Dr. Corbin concluded from her survey that most participants did not identify the SWISSKISS & Design mark with any specific source. Mr. Bourque concluded from his survey (which used a questionnaire prepared by Dr. Corbin) that there was no meaningful statistical evidence of an association between Hershey and the SWISSKISS brand, despite an extremely high awareness of Hershey and the Hershey’s Kisses chocolate product.

Both expert reports were held to be inadmissible for failing to meet the validity and reliability requirements under Canadian law. To be valid, a survey ensure “that the right questions [are] put to the right pool of survey participants in the right way and in the right circumstances”. And to be reliable, a survey must be designed such that “if it were repeated to a different sample in the pertinent population on a different occasion, it would produce the same results”.

The Court based its decision on the fact that there were significant design flaws in both surveys.

First, the survey questions created a “priming bias” through repeated mentions of “Swiss chocolates” such that survey participants were primed to ignore other non-Swiss chocolate manufacturers.

Second, the questions were not put to the participants “in the right way”. The survey was administered through the Internet so the experts could not attest to the identity of each participant or ensure that they were answering without consulting external sources of information.

Third, the experts were unaware that participants could click the “back” button on their Internet browsers to return to a previous part of the survey. This allowed participants to bypass the time limit set for viewing the trademarks in the survey. The availability of the “back” button, combined with the experts’ inability to monitor the participants as they responded, made it unclear whether the online survey designs accurately simulated the “imperfect recollection of a trademark of a casual consumer in a hurry”.

This case shows the value of properly designed and executed in-person surveys (which would avoid some of the issues described above) and highlights the issues of validity and reliability that a party must safeguard against when administering online surveys.

Certification Marks

The Court conducted a de novo analysis of whether the word SWISS in the SWISSKISS trademarks lacks inherent distinctiveness because it is descriptive of the geographic origin of PIM’s chocolate. PIM filed fresh evidence of certification mark registrations for SWISS, SUISSE, and SWITZERLAND, held by a third party. PIM argued that the word SWISS, as a certification mark, must be distinctive and the most striking element of the SWISSKISS trademark.

The Court rejected PIM’s argument because the third party certification marks it relied on are registered exclusively as descriptive certification marks under Section 25 of the Trademarks Act (“Act”), which are different from general certification marks under Section 23.

Descriptive certification marks protect particular goods or services originating from a common place of origin and are prima facie unregistrable under Section 1 of the Act. By contrast, general certification marks must not be clearly descriptive or deceptively misdescriptive of the wares or services in association with which they are used.

The fact that SWISS was registered as a descriptive certification mark supported the Board’s finding that the word SWISS in the SWISSKISS trademark is descriptive of the geographic origin of PIM’s chocolate and therefore not inherently distinctive of PIM’s wares. The Court found that the Board did not err in concluding that the word SWISS is incapable of distinguishing PIM’s SWISSKISS marks from Hershey’s KISS and KISSES marks.

The Court concluded that PIM failed to prove any of its grounds of appeal. The appeal was dismissed with costs. PIM may appeal as of right to the Federal Court of Appeal within 30 days.