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| John McKeown |
Hershey Chocolate & Confectionery LLC opposed PIM’s trademark applications based on several registered KISS and KISSES trademarks. The opposition proceeded to a hearing. The Trademark Opposition Board decided the opposition based primarily on Hershey’s registration Nos. TMA733,263 for the KISSES trademark and TMA833,060 for the KISS trademark, registered in association with the goods “solid chocolate candy with or without ingredients such as nuts” and “chocolate candy” respectively.
Trademark Opposition Board
The board held that PIM had not satisfied its burden on a balance of probabilities to show no reasonable likelihood of confusion between its SWISSKISS Trademarks and Hershey’s Trademarks.
The hearing officer said the question was whether the average Canadian consumer, with an imperfect recollection of the trademark KISSES and/or KISS in association with chocolate when they see a Swiss chocolate product bearing the trademark SWISSKISS (or SWISSKISS & Design), would think that the products come from the same source. If any scope of protection is given to the registrations of the Hershey’s Trademarks that question must be answered in the affirmative.
The SWISSKISS trademarks consist of the descriptive term “SWISS” preceding the term “KISS” for which there are already registered rights in Canada in association with chocolate. It is reasonable to assume that consumers familiar with the trademark KISSES and/or KISS in association with chocolate would think that Swiss chocolate bearing the trademarks SWISSKISS and SWISSKISS & Design comes from the same entity as the owner of the registered marks, or has been, at the very least, approved, licensed or sponsored by the owner of those registered marks.
The hearing officer considered that PIM’s SWISSKISS trademarks were not circumscribed by any particular colour or packaging style that might help to reduce the likelihood of confusion in the marketplace. On the contrary, the registration of the SWISSKISS trademarks would entitle the PIM to depict its marks in any colour or get-up PIM might choose.
Appeal
PIM argued that the board committed a reviewable error in its finding that PIM had not satisfied its burden to show that there was no reasonable likelihood of confusion between its SWISSKISS trademarks, as applied for, and Hershey’s registered KISS and KISSES trademarks. In addition, it was asserted that the board committed a reviewable error in its finding that PIM’s evidence was insufficient to determine whether the word “KISS” is generic for chocolate, and that the KISS and KISSES trademarks were generic or otherwise devoid of distinctiveness in association with chocolate in Canada.
Survey evidence
PIM filed significant new evidence on the appeal. The first area of evidence related to a survey conducted online by way of an Internet-based questionnaire between Sept. 1 and 24, 2020, with 454 online Canadian participants who were Swiss chocolate purchasers who have bought from a retail store at least once in the past three months or intend to buy in the next three months. The participants were shown, among other things, the SWISSKISS & Design mark.
The purpose of the research was to measure the source, if any, that consumers attribute to the SWISSKISS & Design mark, in particular, to measure the extent, if any, to which consumers would mistakenly infer that this mark is sourced by Hershey based on its use of the word “KISS” in the logo.
It was concluded that the majority of survey participants either did not identify the SWISSKISS & Design logo with a specific source or identified its source as a company with the same name as that shown in the logo. There was no statistically significant evidence of the mistaken inference that Hershey was the source of the product using the SWISSKISS & Design logo.
A second similar survey was carried out to assess the general impression associated with the SWISSKISS (word) brand and to measure to which extent, if any, purchasers of Swiss chocolate at a retail store mistakenly infer that SWISSKISS originates from Hershey. This survey concluded that:
- There was no meaningful statistical evidence (two per cent spontaneous association and one per cent association as the maker) that HERSHEY was associated with the SWISSKISS brand shown in the test group.
- Plus or minus the margin of error (1.77 per cent) applicable to this proportion of three per cent, this means that total mistaken inference with Hershey would range from 1.23 per cent to 4.77 per cent.
- The association with Hershey for the test group was not statistically different from associations to other brands spontaneously mentioned such as Lindt or Nestle.
- The awareness of Hershey and its Hershey’s Kisses chocolate product remained high (95 per cent in the test group and 97 per cent in the control group). The fact that only three per cent of the test group associated SWISSKISS to Hershey further suggests consumers do not, to any meaningful extent, associate SWISSKISS to Hershey.
Hersey arranged to carry out a modified version of the surveys carried out on behalf of PIM This study concluded that:
- There was a 10 per cent spontaneous association between Hershey and the SWISSKISS brand shown in the test group, well above unaided associations to other chocolate.
- The trademarks KISS and KISSES benefit from a strong association with Hershey.
Hersey also attacked the PIM surveys on the basis the questionnaires created a priming bias by repeating “Swiss chocolate” rather than “chocolate,” which led to false or skewed conclusions. The judge said that her familiarity with these types of trademark market research surveys used to help the decision-maker in trademark matters made her acutely aware of these issues.
The survey evidence put forth in both the Corbin Affidavit and Bourque Affidavit, like all expert evidence, must meet the following four conjunctive requirements set out by the Supreme Court of Canada for the court to find it admissible:
- relevance;
- necessity in assisting the trier of fact (in the sense that the evidence is outside the experience and knowledge of a judge);
- the absence of any exclusionary rule; and
- a properly qualified expert.
Relevance in survey evidence includes the requirements relating to validity and reliability. The survey must be valid (in that the right questions were put to the right pool of survey participants in the right way and in the right circumstances to produce the evidence sought). The survey must also be reliable in that if it were repeated to a different sample in the pertinent population on a different occasion, it would produce the same results.
The judge found that the right questions were not put to the PIM survey participants, rendering the survey design and its results invalid. “Swiss chocolate” was mentioned to survey participants at least seven or eight times in the survey questions. “Swiss chocolate” was in the screening questions (three or four times depending on their answers). “Swiss chocolate” was again in each of the four key questions in the questionnaire, so potentially up to another four times as part of the questionnaire (depending on the answers and flow through the screener and questionnaire).
The systematic and repeated inclusion of “Swiss chocolate” in each of the survey questions would result in the participants being primed into thinking of brands of Swiss chocolates and providing responses that relate only to Swiss chocolate brands or companies.
The PIM surveys were also said to be flawed in that PIM’s experts could not assure the court that the participants were the consumers in question and that the responses were given by the participants themselves (rather than another person [e.g., their child] filling out the survey for the registered panel member to obtain the honorarium); and the participants were free of external influence and external information.
While PIM presented additional arguments, they did not involve errors of law but involved questions of mixed fact and law and, in the judge’s view, there were no extricable questions of law in issue. The applicable standard of review on the balance of the alleged errors and their components was a palpable and overriding error. PIM was not able to overcome this high threshold.
Conclusion
Many people accept that survey evidence should be used more frequently in trademark cases as, when properly presented, it tends to be objective. Ideally, the method of approaching the problem should be more standardized, and Internet surveys should be favoured as they tend to be cheaper. We need to find practical ways to deal with survey evidence.
John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.
The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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