Ruling upholds finding of reasonable likelihood of confusion between marks for chocolate
The Federal Court of Appeal dismissed Promotion in Motion, Inc.’s appeal against a decision upholding that it failed to demonstrate the absence of a reasonable likelihood of confusion between its proposed marks and Hershey Chocolate & Confectionery LLC’s registered trademarks.
In Promotion in Motion, Inc. (PIM Brands, Inc.) v. Hershey Chocolate & Confectionery LLC, 2026 FCA 40, the appellant PIM manufactured and distributed candy. The respondent Hershey manufactured chocolates and snacks, imported and sold via its wholly owned subsidiary, Hershey Canada Inc.
In 2013, PIM applied to register the SWISSKISS marks, comprising a word mark and a design mark, for chocolates of Swiss origin. Hershey opposed the registration of the SWISSKISS marks based on its trademarks registered in association with chocolate candy.
In March 2020, at the Trademarks Opposition Board, the registrar of trademarks denied PIM’s applications for the SWISSKISS marks based on a failure to show, on a balance of probabilities, the lack of a reasonable likelihood of confusion between the parties’ marks under ss. 12(1)(d) and 16(3)(a) of the Trademarks Act, 1985.
In July 2020, PIM applied to set aside the registrar’s decision. As new evidence, PIM showed certification mark registrations for SUISSE, SWITZERLAND, and SWISS for chocolate and chocolate products in the name of Chocosuisse.
According to PIM, this evidence established that Chocosuisse owned descriptive certification marks for chocolate and chocolate products originating from Switzerland and that PIM had permission to use these marks.
PIM also submitted affidavits from survey experts who conducted online surveys to measure the extent to which consumers would mistakenly assume a logo was Hershey’s based on its use of the element KISS.
Meanwhile, Hershey asked its own expert to implement a modified version of the PIM experts’ surveys.
In April 2024, the Federal Court dismissed the appeal upon finding no reviewable error in the registrar’s refusal to register the SWISSKISS marks.
The judge declined to admit the surveys as evidence due to validity and reliability concerns. According to her, while the surveys should have shown the mark for up to eight seconds before it disappeared, the experts had not checked whether participants could use the back button in internet browsers to review the image.
Federal Court ruling upheld
The Federal Court of Appeal dismissed the appeal with costs.
First, the appeal court saw no error in the Federal Court’s focus on the KISS component of the marks. Describing KISS as the most striking part of PIM’s and Hershey’s marks, the appeal court found a meaningful degree of resemblance between the parties’ marks.
Regarding the SWISS element of the SWISSKISS marks, the appeal court saw no error in the judge’s analysis of descriptive certification marks, specifically its finding that the SWISS component was a descriptive certification mark that did not impact the confusion analysis.
The appeal court acknowledged that a mark’s first syllable or word (in this case, SWISS) was often its most significant distinguishing characteristic. However, given that many traders used the term SWISS in association with chocolate, the appeal court ruled that consumers would not focus on the first syllable or word when looking at PIM’s marks.
The appeal court explained that the SWISS element, which described the location of the chocolates’ production, had little to no distinctiveness. According to the appeal court, even if incorporating a geographic area protected by a certification mark into a traditional trademark could somehow make it more distinctive, the word SWISS would remain primarily descriptive.
Next, the appeal court found no error in the Federal Court’s rejection of the survey evidence as inadmissible.
The appeal court accepted that the judge erred in treating the absence of a “person in the loop” as a factor for excluding PIM experts’ affidavits without further analyzing the circumstances of the experts’ conduct of the surveys.
However, the appeal court did not deem this flaw an overriding error. The appeal court deferred to the judge’s other reasons for reaching her conclusion, given their factual basis in the record.
