Promotion In Motion Inc. v. Hershey Chocolate & Confectionery LLC

Promotion In Motion, Inc. v. Hershey Chocolate & Confectionery LLC
Court (s) Database
Federal Court Decisions
Date
2024-04-09
Neutral citation
2024 FC 556
File numbers
T-853-20
Decision Content
Date: 20240409
Docket: T-853-20
Citation: 2024 FC 556
Ottawa, Ontario, April 9, 2024
PRESENT: The Honourable Madam Justice Tsimberis
BETWEEN:
PROMOTION IN MOTION, INC.
DBA PIM BRANDS, INC.
Applicant
and
HERSHEY CHOCOLATE & CONFECTIONERY LLC
Respondent
JUDGMENT AND REASONS
I. Overview [1] This is an appeal by the Applicant Promotion in Motion, Inc. dba PIM Brands, Inc. [PIM], under section 56 of the Trademarks Act, RSC 1985, c T-13 [TMA], challenging the decision of the Trademarks Opposition Board [Board] dated March 27, 2020 (2020 TMOB 56) [Decision]. PIM sought to register the trademarks SWISSKISS (word) [SWISSKISS Trademark] and SWISSKISS & Design [SWISSKISS & Design Trademark] depicted below for the goods “Chocolate of Swiss origin” [collectively, the SWISSKISS Trademarks]. The Respondent Hershey Chocolate & Confectionery LLC [Hershey] successfully opposed PIM’s trademark applications based on several registered KISS and KISSES trademarks, which the Board decided based primarily on Hershey’s registration Nos. TMA733,263 for the KISSES trademark [KISSES Trademark] and TMA833,060 for the KISS trademark [KISS Trademark] [collectively “Hershey’s Trademarks”], registered in association with the goods “solid chocolate candy with or without ingredients such as nuts” and “chocolate candy” respectively.
[2] In its Decision, the Board refused PIM’s applications for the SWISSKISS Trademarks. The Board concluded that PIM’s evidence did not show that the term “kiss” is generic in Canada in association with chocolate and that the KISSES and KISS trademarks are devoid of protection in Canada in association with chocolate. The Board found there was a likelihood of confusion between PIM’s SWISSKISS Trademarks and Hershey’s Trademarks, under the grounds of opposition pursuant to sections 12(1)(d) and 16(3)(a) of the TMA.
[3] In this appeal, PIM seeks an Order granting its appeal, setting aside the Decision, and directing the Registrar of Trademarks to allow the applications for the SWISSKISS Trademarks. PIM files extensive new evidence that it argues would have materially affected the Board’s findings of fact. PIM also argues that the Board made a number of errors in its analysis of whether KISS is a generic term and in its confusion analysis.
[4] PIM confirmed at the hearing of this appeal that it had abandoned the alleged errors elaborated at paragraphs 13(h), 13(i) and 13(k) of its Notice of Application, which it had failed to address in its written representations on appeal.
[5] Setting aside those alleged errors that were confirmed abandoned, PIM asserts in its Notice of Application that the Board committed the following errors that are its grounds of appeal:
13. In particular, and without limitation, the Registrar made the following legal errors:
(a) The Registrar erred in law in concluding that the Respondent had used its KISS or KISSES trademark separate and apart from the HERSHEY’s trademark and the associated trade dress. There was no evidence of any such use;
(b) In the alternative, the Registrar erred in law in concluding that any use of the Respondent’s KISS and KISSES trademarks, per se, was more than de minimis;
(c) The Registrar erred in law in concluding that while there was “substantial” evidence showing generic use of the word KISS in association with “a small piece of candy”, that evidence did not equally apply to the Respondent’s HERSHEY’S KISSES chocolate confection which is also “a small piece of [chocolate] candy” “…wrapped in paper or foil”;
(d) The Registrar erred in law in dissecting the Applicant’s Marks, which comprise the coined word SWISSKISS and not SWISS and KISS, as suggested by the Registrar;
(e) The Registrar erred in law in failing to consider the distinctive design elements incorporated in the Applicant’s SWISSKISS & Design mark, but rather treated the two Applicant’s Marks as equivalent;
(f) The Registrar erred in law in holding that the word SWISS, in the context of the Applicant’s Marks, was not capable of distinguishing the Applicant’s Marks from the Respondent’s KISS and KISSES trademarks, or precluding any likelihood of confusion. In the context of chocolate, the word SWISS connotes chocolate of SWISS origin (as intended by the Applicant), whereas the Respondent’s Trademarks connote the founder of the Hershey’s chocolate brand, Milton S. Hershey, and chocolate made in Hershey, Pennsylvania, U.S.A. This evidence was unchallenged, and it was an error of law for the Registrar not to apply it when assessing the grounds of opposition;
(g) The Registrar erred in law when holding that the KISS element of the Respondent’s trademarks was “the most striking element”, when that element is generic and descriptive, or in the alternative has a “relatively low degree of inherent distinctiveness”. As a matter of law, a striking element must be capable of serving as a source identifier, and the KISS or KISSES element in the Respondent’s trademarks cannot serve this function, as the source identifier is always the HERSHEY’s house mark;
(j) The Registrar erred in law when assessing the grounds of opposition in failing to accord significant weight to the first part of the coined word in the Applicant’s Marks – SWISS – which is entirely different from any word in the trademarks relied upon by the Respondent;
(l) The Registrar erred in law in upholding the Section 12(1)(d) and 16(3)(a) grounds of opposition.
[6] While none of these alleged errors are quite “issues” in and of themselves, they are all specific alleged errors that contribute to the real issues at play. The Court understands the gist of these alleged errors amount to issues of:
What is the applicable standard of review given the new evidence filed by both parties?
Did the Board commit a reviewable error in its finding that PIM had not satisfied its burden of proof to show that there is no reasonable likelihood of confusion between its SWISSKISS Trademarks, as applied for, and Hershey’s registered KISS and KISSES Trademarks?
Did the Board commit a reviewable error in its findings that PIM’s evidence was insufficient to determine the word “KISS” is generic specifically for chocolate, and therefore the KISS and KISSES Trademarks are generic or otherwise devoid of distinctiveness in association with chocolate in Canada?
[7] For the reasons that follow, I find that most of the parties’ extensive new evidence submitted to the Court is either inadmissible or immaterial or not of a probative value such that it would not have impacted the Board’s analysis and does not justify reconsideration of any issues on a de novo basis. However, as one of PIM’s new affidavits is material, I will consider on a de novo basis the issue of whether SWISS, as part of the SWISSKISS Trademarks, is descriptive of the geographic origin of PIM’s chocolates of Swiss origin and therefore lacks inherent distinctiveness as the Member of the Board found in his Decision. I further find, on a review of the Decision described as below, that PIM has not demonstrated any reviewable errors with the Board’s confusion analysis in concluding that the SWISSKISS Trademarks are not registrable, and PIM is not entitled to their registration. As such, the Board’s Decision should be upheld and PIM’s appeal is dismissed with costs to Hershey.
II. Background A. PIM’s Applications and Hershey’s Oppositions [8] On February 5, 2013, PIM filed application No. 1,612,723 to register the SWISSKISS Trademark [SWISSKISS Trademark Application] and application No. 1,612,724 to register the SWISSKISS & Design Trademark [SWISSKISS & Design Trademark Application] based on proposed use in association with the goods "Chocolate of Swiss origin". The SWISSKISS Trademark Application was advertised for opposition purposes on March 12, 2014, and the SWISSKISS & Design Trademark Application was advertised on October 23, 2013.
[9] On April 28, 2014, Hershey filed a Statement of Opposition against the SWISSKISS Trademark Application and on December 13, 2013, filed a Statement of Opposition against the SWISSKISS & Design Application pursuant to section 38 of the TMA. Since the Statements of Opposition were filed before the TMA’s amendment on June 17, 2019, all references in this judgment are to the TMA as amended, with the exception of references to the grounds of opposition, which refer to the TMA as it read before it was amended (see section 70 of the TMA, which provides that section 38(2) of the TMA, as it read prior to June 17, 2019, applies to applications advertised prior to that date). The grounds of opposition are identical in both oppositions and Hershey pleaded grounds of opposition based on the sections 12(1)(d), 16(3)(a), 16(3)(b), 2, as well as 30(e) and 30(i) of the TMA.
[10] PIM filed and served a counter statement in each of the applications in which it denied Hershey’s allegations. In essence, PIM submitted that there is no likelihood of confusion between the Hershey’s Trademarks and the SWISSKISS Trademarks because (1) the words HERSHEY or HERSHEY’S and SWISS, the dominant portions of the parties’ respective trademarks, could not be more different visually; (2) PIM would never use any of the familiar elements associated with the HERSHEY’S KISSES product, e.g., a conical shape or a ribbon extruding vertically from the peak of the candy wrapping; (3) the evidence is that the word “kiss” describes a type of confection, namely, a bite-sized confection. “kiss” is thus a generic word and (a) Hershey cannot assert exclusive rights over the same, and (b) because “kiss” is the only element shared by both parties’ marks, over which Hershey cannot assert exclusive rights over, there is no likelihood of confusion ; and (4) in United States trademark infringement and dilution litigation between the parties, it was held that the defendant PIM’s SWISSKISS product does not infringe or dilute the plaintiff Hershey’s valid trademark for KISSES.
[11] Before the Board, both parties filed evidence comprising multiple affidavits, which evidence is summarized as follows, with all affiants except Pete Vanslyke and Anastassia Trifonova having been cross-examined:
Hershey’s evidence-in-chief consisted of certified copies of the trademark registrations and applications for KISS and KISSES on which it relied and the Affidavit of Pete Vanslyke (the Director, Marketing of Hershey Canada Inc.), sworn on July 7, 2014 [Vanslyke Affidavit]. The Vanslyke Affidavit introduced 26 exhibits, and attested to, inter alia, the use of Hershey's trademarks in association with chocolates and other goods and services in Canada. The sales, promotion and advertising include scripts for television advertisements, blocking charts for when KISSES-branded television, Internet, and print advertising was aired/distributed, copies of KISSES-branded television commercials in both English and French, cross-promotions Hershey has participated in (i.e., Shoppers Drug Mart), and even non-food products like Christmas ornaments and tote bags prominently using the KISSES marks.
PIM’s evidence consisted of (i) the Affidavit of Michael G. Rosenberg (the founder, President and CEO of PIM), sworn on November 30, 2016 [Rosenberg 1 Affidavit] and (ii) the Affidavit of Anastassia Trifonova (law student employed by PIM’s trademark agents), sworn on December 2, 2015 [Trifonova 1 Affidavit]. The Rosenberg 1 Affidavit describes the history of the SWISSKISS brand, and introduces 36 exhibits of various confectionary conference directories and buyer guides, a dictionary excerpt, various brands that also use “Kiss” or “Kisses” in product names, and the parties’ legal dispute- in the United States. The Trifonova 1 Affidavit includes the results of several online searches for candy recipes and products, which include “Kiss” or “Kisses” in product names, as well as several online dictionary entries for the word “Kiss”.
Hershey’s reply evidence consisted of the Affidavit of Laurence Virtue-Deshaies (a lawyer with Hershey’s agent), sworn on March 24, 2017 [Virtue-Deshaies Affidavit]. This affidavit includes several screenshots of websites (including many identified in the Trifonova 1 Affidavit) and particulars of trademark applications on the Canadian Intellectual Property Office [CIPO] website.
With leave by the Registrar, PIM filed the Supplemental Affidavit of Anastassia Trifonova, sworn on September 20, 2017 [Trifonova 2 Affidavit]. The Trifonova 2 Affidavit includes information and screenshots from the website of a Newfoundland company named Purity Factories, identifying products including the word “Kisses” in the name.
[12] On behalf of the Registrar, the Board found in favour of Hershey in respect of the s.12(1)(d) registrability ground and the s. 16(3)(a) non-entitlement ground, and considered it unnecessary to address the remaining grounds of opposition. On the s. 12(1)(d) registrability ground, the Board held that PIM had not satisfied its onus on a balance of probabilities to demonstrate no reasonable likelihood of confusion between its SWISSKISS Trademarks and Hershey’s Trademarks and its conclusion is summarized at paras 78 through 80 of its Decision reproduced hereinafter:
Conclusion regarding the section 12(1)(d) ground
[78] Ultimately, the question in this case is 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. In my view, if I am to afford any scope of protection to registrations TMA733,263 and TMA833,060, I must answer that question in the affirmative.
[79] The Applicant’s Marks are comprised of a descriptive term “SWISS” preceding the term “KISS” for which there are already registered rights in Canada in association with chocolate. I find it 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.
[80] In considering this issue, I must take into account that the Applicant’s Word Mark Application and Design Mark Application are not circumscribed by any particular colour or packaging style that might help to reduce the likelihood of confusion in the marketplace. To the contrary, registration of the Applicant’s Word Mark and Design Mark would entitle the Applicant to depict the Marks in any colour or get-up the Applicant might choose.
[13] The Board then found that Hershey had met its initial evidential burden to demonstrate use of the trademark KISSES and/or KISS in Canada prior to the filing date of the applications for the SWISSKISS Trademarks and found Hershey’s s. 16(3)(a) non-entitlement ground successful for the same reasons and based on the same analysis of the issue of a likelihood of confusion. The heart of the Board’s conclusion on the non-entitlement ground is at paras 83 and 84 of its Decision reproduced hereinafter:
[83] As noted above, the Opponent’s evidence indicates that it has used the trademark KISSES in Canada in association with chocolate continuously since 1962. The extent of the Opponent’s use of the trademark KISS appears to be much less than the trademark KISSES; nevertheless, the Vanslyke Affidavit includes examples of the Opponent’s use of the trademark KISS from prior to the material date for this ground [see Exhibit “F” to the Vanslyke Affidavit which includes examples of the use of the trademark KISS prior to December 31, 2008]. There is no evidence to suggest that the Opponent has abandoned the trademarks KISSES or KISS as of the dates of advertisement of the Applications. Consequently, the Opponent has met its initial evidential burden with respect to the section 16(3)(a) ground of opposition.
[84] The Opponent having met its initial burden, in my view, the analysis of the issue of a likelihood of confusion under the section 16(3)(a) ground of opposition is effectively identical to that for the section 12(1)(d) ground. That is to say, the earlier material date for the section 16(3)(a) ground does not materially change the analysis.
B. The Parties’ New Evidence on Appeal [14] Both parties filed extensive new evidence in this appeal, further to section 56(5) of the TMA.
(1) PIM’s New Evidence [15] On appeal, PIM filed certified copies of the file histories of its applications for the SWISSKISS Trademarks and the following six (6) new affidavits, 3 of which are affidavits with expert evidence:
(a) Rosenberg 2 Affidavit [16] The second affidavit of Michael Rosenberg, sworn on December 4, 2020 [Rosenberg 2 Affidavit], appears to respond to paragraph 51 of the Decision, where the Board distinguished the analysis in the US infringement and dilution action involving product packaging and the Board’s analysis is centred on the trademarks subject of the applications where, for example, the SWISSKISS word mark entitles the owner to depict the mark in whatever font, style, colour it may choose. At paragraph 51, the Board stated, “I am obliged to consider the possibility that the Applicant might well choose to depict its Marks in a colour and packaging get-up that more closely resembles that of the Opponent, as compared to the specific packaging that was before the Court in the U.S. Infringement Action”.
[17] The Rosenberg 2 Affidavit states that PIM has, at no time, intended to depict either of the SWISSKISS Trademarks in any way that resembles the HERSHEY’S KISSES product and/or their packaging, which is inconsistent with its marketing of a premium Swiss chocolate. He also confirms that PIM will not use packaging “get-up” that in any way is similar to that currently being used for HERSHEY’S KISSES products, being a conical teardrop-shaped foil wrapped chocolate with a ribbon extending from the peak of the wrapper or the same shade of brown that Hershey uses.
[18] Based on his own experience as described in the Rosenberg 1 Affidavit, Mr. Rosenberg claims the colour brown is commonly used to market chocolate products and PIM may need to use a shade or shades of brown as part of the marketing of, at least, certain flavours of chocolate, but PIM will not use any packaging that is in any way similar to HERSHEY’S KISSES.
(b) Corbin Affidavit [19] The Affidavit of Dr. Ruth Corbin, sworn on November 24, 2020 [Corbin Affidavit], includes 3 exhibits:
Exhibit A – Certificate Concerning Code of Conduct for Expert Witnesses signed on November 3, 2020;
Exhibit B – Curriculum Vitae of Dr. Corbin dated October 2020; and,
Exhibit C – Full Research Report dated October 27, 2020, along with all materials employed and with detailed tables of data.
[20] Dr. Corbin is the Chair and former Managing Partner of CorbinPartners Inc. [CorbinPartners], a marketing science company that conducts market research. Marks & Clerk Law LLP [Marks & Clerk] , on behalf of their client PIM, retained Dr. Corbin and CorbinPartners to plan, design and implement a survey of Canadians who have purchased from a retail store, or intend to purchase, Swiss chocolate. The purpose of the research was to measure the source, if any, that consumers attribute to the SWISSKISS & Design logo (i.e., the SWISSKISS & Design Trademark) and, in particular, to measure the extent, if any, to which consumers would mistakenly infer that the logo is sourced by Hershey based on its use of the word “KISS” in the logo.
[21] The survey was conducted online by way of an Internet-based questionnaire between September 1st and 24th, 2020, with a total of four hundred and fifty-four (454) online Canadian participants who were Swiss chocolate purchasers who have purchased from a retail store at least once in the past three (3) months or intend to purchase in the next three (3) months. Three hundred and thirty (330) were Test Group participants being shown the image of the SWISSKISS & Design logo depicted hereinafter and one hundred and twenty-four (124) were Control Group participants being shown the image of the SWISSWISH & Design logo depicted hereinafter:
Test Group
Control Group
[22] All 454 participants in both the Test Group and the Control Group answered the same series of questions, including anything known about Swiss chocolate products using the logo shown, and what company puts out Swiss chocolate using the logo shown. If a company was identified, participants were asked for reasons that company was named. The Control Group was included to permit an inference of cause and effect, with a control group performing a similar function to a placebo in a medical experiment in order to infer that perceptions were caused by the SWISSKISS & Design logo being tested as opposed to random guessing. The survey’s findings and methodology are contained in the Exhibit C - Full Research Report [Corbin SWISSKISS & Design Study]. The results of Corbin SWISSKISS & Design Study are:
As shown in Figure ES-1, the majority of Test Group participants shown the SWISSKISS & Design logo could not identify any specific company source of the logo. Almost a quarter (24%) of Test Group participants named SWISSKISS, the product name, as the company source. Two percent (2%) of Test Group participants were deemed to have mistakenly inferred the source of the SWISSKISS & Design logo to be Hershey, either by mentioning “Hershey” or referring to the “KISS(ES)” product:
No one (0%) of the Control Group participants (shown the SWISSWISH logo) mistakenly inferred the source of the SWISSWISH & Design logo to be Hershey, either by mentioning “Hershey” or referring to the “KISS(ES)” product.
[23] The Corbin SWISSKISS & Design Study 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; and,
There was no statistically significant evidence of mistaken inference that Hershey is the source of the product using the SWISSKISS & Design logo.
(c) Bourque Affidavit [24] The Affidavit of Mr. Christian Bourque, sworn on November 26, 2020 [Bourque Affidavit], includes 3 exhibits:
· Exhibit A - Curriculum Vitae of Mr. Bourque;
Exhibit B - Certificate Concerning Code of Conduct for Expert Witnesses signed on November 26, 2020; and,
Exhibit C - Research Report dated November 23, 2020, and Appendices.
[25] Mr. Bourque is the Executive Vice-President and Senior Partner at Leger, a market and public opinion research firm. Marks & Clerk, on behalf of their client PIM, retained Mr. Bourque and Leger to conduct a survey of Canadians who are Swiss chocolate purchasers. The purpose of the research was to assess general impressions of 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. Mr. Bourque was provided with a survey questionnaire that he was told was prepared by Dr. Corbin, which related to a logo. After reviewing the questionnaire to ensure it was suitable for the mandate he was given, he proceeded to use it for his research study.
[26] The survey was conducted online by way of an Internet-based questionnaire between October 5th and 16th, 2020 with a total of five hundred and fifteen (515) online participants who were screened as Swiss chocolate purchasers as detailed above. Three hundred and fifty-five (355) Test Group participants were shown the image of the SWISSKISS brand and one hundred and fifty-six (156) Control Group participants were shown the SWISSWISH brand. All 515 of the participants answered the same series of questions as in the Corbin SWISSKISS & Design Study, including anything known about Swiss chocolate products using the brand shown, and what company puts out Swiss chocolate using the brand shown. The survey's findings and methodology are contained in the Exhibit C - Research Report of Leger [Bourque SWISSKISS Study]. The results of the Bourque SWISSKISS Study are:
As shown in Figure below, 41% of Test Group participants (shown the SWISSKISS brand) named SWISSKISS, the product name, as the company source. A total of 3% of Test Group participants (2% spontaneous association and 1% association as the maker) associated HERSHEY to the SWISSKISS brand shown.
No one (0%) of the Control Group participants (shown the SWISSWISH brand) mistakenly inferred the source of the SWISSWISH to be Hershey.
[27] The Bourque SWISSKISS Study concluded that:
There is no meaningful statistical evidence (2% spontaneous association and 1% association as the maker) that HERSHEY associated to the SWISSKISS brand shown in the Test Group;
Plus or minus the margin of error (1.77%) applicable to this proportion of 3%, this means that total mistaken inference with Hershey would range from 1.23% to 4.77%;
Furthermore, the association to Hershey for the Test Group was not statistically different than associations to other brands spontaneously mentioned such as Lindt or Nestle;
The awareness of Hershey and its Hershey’s Kisses chocolate product remains extremely high (95% in the Test Group and 97% in the Control Group). The fact that only 3% of the Test Group associated SWISSKISS to Hershey further suggests consumers do not to any meaningful extent associate SWISSKISS to Hershey.
(d) Bradley Affidavit [28] The affidavit of John Bradley, sworn on December 4, 2020 [Bradley Affidavit], sets out his own experience in the confectionary industry that began in 1979 in the UK with Cadbury until 1996, when he joined Cadbury Chocolate Canada Inc. while he was part of the Cadbury Schweppes group of companies, eventually being promoted to Senior Vice-President of marketing for Cadbury Chocolate Canada Inc. before leaving the Cadbury organization in November 2003. Since then, he has worked as a marketing consultant, editor, and documentary personality.
[29] Mr. Bradley was retained by PIM to provide an expert opinion of the likelihood of the SWISSKISS chocolate confectionary produced by PIM being mistakenly attributed by consumers to have been manufactured and retailed by Hershey based on its use of the word “kiss” in the name and logo. His opinion is based on the assumption that the SWISSKISS packaging would not feature HERSHEY’S KISSES’ iconic attributes or background colour, and that the SWISSKISS logo illustrated below will be a different typeface, colour, and angle of illustration to that of the HERSHEY’S KISSES logo:
[30] Based on his knowledge and experience in the chocolate confection industry and the assumptions, Mr. Bradley opines that he “expect(s) only a very low percentage of Canadian consumers to assume SWISSKISS had any association with Hershey and/or HERSHEY’S KISSES. I would expect a higher level of association with the well-known Swiss chocolate brands such as Lindt, Tobler and Suchard, but certainly well under 10% of consumers thinking so.”
[31] Mr. Bradley assessed the chocolate confectionary markets, consumer buying behaviour, packaging design and display strategies, the similar branding strategies of Cadbury and Hershey, brand recognition, and the brand designs for HERSHEY’S KISSES and SWISSKISS. After reviewing the materials, Mr. Bradley’s opinion was that only a small number of consumers would confuse the respective HERSHEY’S KISSES and SWISSKISS Design brands based on his own assessment of a side-by-side comparative analysis of the HERSHEY’S KISSES packaging and the SWISSKISS & Design trademark and the marketing materials provided to him:
[32] Mr. Bradley also considered the different Swiss vs. American provenance of the parties’ respective chocolates, the differential pricing and quality chocolate offering (“premium” Swiss vs. American chocolate). Mr. Bradley indicates that his opinion was formed before being made aware of the Leger/Corbin research, and claims those results were consistent with his opinion. There was no survey associated with his opinion, only Mr. Bradley’s own qualitative analysis. Mr. Bradley concludes by indicating that the methodology used by both Dr. Corbin and Leger is sound and more likely to generate misattribution than would be the case in a live buying situation in-store, as it is asking consumers to apply conscious thought to a question that may well not occur to them in store given the impulse nature of the majority of confectionary purchases.
(e) Papaconstantinou 1 Affidavit [33] The first affidavit from Brianne Papaconstantinou, sworn on November 27, 2020 [Papaconstantinou 1 Affidavit], sets out PIM’s point that they were not advised by Hershey that the trademark registrations relied on had been assigned with a stated effective date of December 27, 2018, to Hershey Canada, and this assignment was recorded by the CIPO on March 8, 2019. This assignment was brought to PIM’s attention during the Board’s oral hearing, where counsel objected to Hershey’s conduct in failing to advise them of the prior assignment and that this omission prejudiced PIM.
(f) Papaconstantinou 2 Affidavit [34] The second affidavit from Brianne Papaconstantinou sworn on June 10, 2023 [Papaconstantinou 2 Affidavit], and only filed with the Court on the morning of this appeal’s hearing, serves to introduce certification mark registrations for SUISSE (TMA324971), SWITZERLAND (TMA325072) and SWISS (TMA325071) for “chocolate and products made of chocolate” in the name of CHOCOSUISSE, Association of Swiss Chocolate Manufacturers cooperative [Chocosuisse], that PIM’s counsel found while preparing for the hearing.
[35] The applicable test to admit evidence filed at a late stage of a proceeding comes from Atlantic Engraving Ltd. v. Lapointe Rosenstein, 2002 FCA 503 [Atlantic Engraving], and the Applicant pointed to a recent application of this test in Havi Global Solutions LLC v IS Container PTE Ltd, 2020 FC 803 [Havi]. This test requires the filing party to satisfy the Court that the following four factors are met:
The evidence to be adduced will serve the interests of justice;
The evidence will assist the Court;
The evidence will not cause substantial or serious prejudice to the other side; and,
The evidence was not available prior to the cross-examination of the opponent’s affidavits.
(Atlantic Engraving at paras 8-9; see also Havi at paras 33-42)
[36] In post-hearing written submissions on this point, PIM submits that this evidence will serve the interests of justice because it was not before the Board, it contradicts the Board’s findings with respect to SWISS, and it is material. PIM sets out that the SWISS certification mark demonstrates that the SWISS element of PIM’s SWISSKISS Trademarks has distinctive value, namely it points to a character or quality of the associated goods, which the Applicant submits contradicts the holding of the Board that SWISS is merely “descriptive of the geographic origin of the SWISSKISS Goods and thus not inherently distinctive” and undermines the Respondent’s argument on the same. On this basis, PIM submits that the evidence will serve the interests of justice and assist the Court who will have all relevant evidence available to it. PIM also submits it will not cause substantial prejudice to Hershey because it is documentary evidence that does not involve any cross-examination and that Hershey would have the opportunity to make any submissions on this issue. Finally, PIM submits the evidence was not available prior to cross-examinations because they were not aware of it. Ultimately, PIM submits that this SWISS certification mark evidence is material, and will assist the Court in a de novo analysis.
[37] For their part, Hershey conceded at the hearing that they would not be prejudiced. They did, however, oppose the late admission of this affidavit because the evidence was “widely available” to PIM and the public as part of the online public Canadian Trademarks Register Database.
[38] While I agree with Hershey in principle that this evidence was widely available before cross-examinations, I am afforded discretion in weighing the Atlantic Engravings factors in deciding whether or not to allow PIM’s request to file this new evidence at this late stage of the proceeding (see Havi at paras 34, 51). None of these factors is mandatory, and it is within the Court’s discretion to weigh them (see Havi at para 52).
[39] Considering this evidence is being offered as material evidence, specifically within the context of a TMA section 56 appeal and are related to relevant findings of the Board already under appeal before the Court, I find the interests of justice weigh in favour of admitting this evidence.
[40] Given the nature of the evidence that would not involve any cross-examination and in light of Hershey’s concession of a lack of prejudice, I hereby exercise my discretion to accept the Papaconstantinou 2 Affidavit into the record despite its late filing. This is not a determination of materiality though, and I shall address this issue later.
(2) Hershey’s New Evidence [41] On appeal, Hershey filed three new affidavits, two of which are affidavits with expert evidence.
[42] As a preliminary comment, Hershey’s position is that PIM’s new evidence is inadmissible, immaterial, unhelpful, and unnecessary. Stemming from their position and the necessity of proffering their own evidence to respond to this appeal, Hershey claims they only submitted an affidavit from Alexia Wharton to demonstrate continued use of their KISS and KISSES Trademarks since the Vanslyke Affidavit, and the affidavits of Margaret Brigley and Dr. Michael Mulvey serve as responses to PIM’s additional expert evidence in the Corbin and Bourque Affidavits.
[43] Hershey essentially concedes that their own new evidence is only necessary to consider if PIM’s new evidence, in particular the Corbin and Bourque Affidavits, are admissible and material to this appeal. Consequently, if the Corbin and Bourque Affidavits are inadmissible or immaterial to this appeal, this Court additionally does not need to consider the Brigley and Mulvey Affidavits. After reviewing Hershey’s new evidence and without at this point determining materiality, the Mulvey and Brigley Affidavits only inform this Court of the deficiencies of the survey evidence included in the Corbin and Bourque Affidavits, with Brigley intending to present a survey that did not suffer the same deficiencies. I agree with Hershey that I would only need to consider their new evidence if the Corbin and Bourque Affidavits are material.
(a) Wharton Affidavit [44] The affidavit of Alexia Wharton, sworn on April 27, 2021 [Wharton Affidavit], sets out information related to Hershey’s corporate structure, charts and images of Hershey’s relevant marks, additional exhibits to supplement the Vanslyke Affidavit, and various marketing efforts using the KISS mark. Exhibits 3(C), 4(D), 5(D), 6(E), 7(E), 8(G), 12(O), 14(P), and 15(Q) are intended to supplement the corresponding lettered exhibits from the Vanslyke Affidavit.
(b) Brigley Affidavit [45] The Affidavit of Ms. Margaret Brigley, sworn on April 26, 2021 [Brigley Affidavit], includes three exhibits:
Exhibit A - Curriculum Vitae of Ms. Brigley;
Exhibit B – Acknowledgment of Expert Duty dated April 23, 2021; and,
Exhibit C - Full Report of Survey Results dated April 23, 2021, along with Appendices.
[46] Ms. Brigley is the CEO and Partner of Narrative Research Inc. [Narrative Research], a marketing intelligence and public opinion research firm. St. Lawrence Law Firm LLP, on behalf of their client Hershey, retained Ms. Brigley and Narrative Research to implement a modified version of the survey questionnaires used in the Corbin SWISSKISS & Design Study and the Bourque SWISSKISS Study.
[47] The survey was conducted online by way of an Internet-based questionnaire with a total of six hundred and four (604) online Canadian participants who were chocolate purchasers who have purchased from a retail store at least once in the past three (3) months or intend to purchase in the next three (3) months. Four hundred and four (404) were randomly selected English- or French-speaking participants to form the Test Group being shown the SWISSKISS brand completing the survey between March 25 and 29, 2021 and two hundred (200) were Control Group participants being shown the SWISSWISH brand completing the survey between April 14 and 19, 2021.
[48] All 404 participants in both the Test Group and the Control Group answered the same questionnaire, and were asked to identify the company they believe to sell such a brand of chocolate, and then what company sells chocolate products under the KISS brand and finally, what company sells chocolate products under the KISSES brand. The survey's methodology and findings are contained in the Exhibit C - Full Report of Survey Results [Brigley SWISSKISS Study]. The results of the Brigley SWISSKISS Study are:
After being asked to identify the company they believe to sell such a brand of chocolate, 10% of Test Group participants that had been shown SWISSKISS answered “Hershey’s”, while 2% of the Control Group participants that had been shown SWISSWISH answered “Hershey’s”.
After being asked “What company sells chocolate products under the KISS brand, or are you unable to say?”, 55% of the Test Group participants answered “Hershey’s”, while 59% of the Control Group participants answered “Hershey’s”.
After being asked “What company sells chocolate products under the KISSES brand, or are you unable to say?”, 65% of the Test Group participants answered “Hershey’s”, while 70% of the Control Group participants answered “Hershey’s”.
[49] Based on these results, the Brigley SWISSKISS Study concluded that:
There is a 10% spontaneous association between Hershey and the SWISSKISS brand shown in the Test Group, well above unaided associations to other chocolate brands (such as Lindt or Nestle);
There is no apparent association to Hershey for the Control Group (i.e., SWISSWISH brand); and,
The trademarks KISS and KISSES benefit from a strong association to Hershey.
(c) Mulvey Affidavit (i) Contents of the Mulvey Affidavit [50] Dr. Michael Mulvey’s affidavit, sworn on April 26, 2021 [Mulvey Affidavit], explains that Hershey’s counsel retained him to provide his opinion as an expert in consumer behaviour and consumer research. He was instructed to review the affidavits of Dr. Corbin and Mr. Bourque and comment on the methodology used and to provide his opinion on the relevance of survey evidence to the issue of determining the likelihood of confusion between the trademarks. After setting out his own qualifications as the Section Head of Marketing/OB-HR at the University of Ottawa’s Telfer School of Management, Dr. Mulvey takes issue with Dr. Corbin and Bourque surveys' product category (i.e., "Swiss chocolate" rather than "chocolate"). He states that, by repeating "Swiss chocolate", the surveys create a priming bias and therefore lead to a false or skewed conclusion, as a reasonable person would not refer to an American chocolate maker after being primed so many times with the word "Swiss". He asserts that neither Dr. Corbin’s and Mr. Bourque’s survey results are relevant nor valid.
(ii) Necessity of the Mulvey Affidavit [51] Separate from the issue of whether the Mulvey Affidavit is merely a response to Corbin and Bourque’s survey evidence, I must note that I had separately arrived at the conclusions Dr. Mulvey made with respect to priming bias in the survey questions used in the Corbin and Bourque surveys. My familiarity with these types of trademark market research surveys used to assist the decision-ma