Decision

Promotion in Motion, Inc. (PIM Brands, Inc.) v. Hershey Chocolate & Confectionery LLC, 2026 FCA 40

Justice Webb; Justice de Montigny; Justice Pamel - 2026-02-25

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This appeal raises the following two key issues: a) Did the Federal Court [see 2024 FC 556] err in focusing on the KISS element of the marks and in holding that the SWISS element is a descriptive certification mark that cannot be distinctive? b) Did the Federal Court err in concluding that the survey evidence filed by the parties is inadmissible? ... we can also infer that section 12 was not meant to apply to descriptive certification marks; otherwise, the exclusion of paragraph 12(1)(d) as a ground for non registrability in section 25 would have been redundant. ... The SWISS component of the SWISSKISS Marks remains descriptive of the area where the chocolate goods are produced, and has therefore no (or very little) distinctiveness. That would remain the case even if one were prepared to accept that the incorporation of a geographic location protected by a certification mark into a traditional trademark could somehow heighten its distinctiveness. ... The admissibility of online evidence, just as any other type of evidence, is an issue that is to be determined on a case-by-case basis; in my view, the Federal Court judge erred in concluding that the absence of a “person in the loop” (as is the case, by definition, in any online survey) was a factor to exclude [the surveys] ... Bearing in mind the broad scope of options defendants have in designing a survey to lower the chances of finding confusion in a named-source test (for example, by narrowing or broadening the population identified for a survey, or creating conditions deviating from a realistic simulation of how the properties of a product are encountered by the actual relevant population), a failure to find confusion in such a survey cannot prove the opposite. The percentage of confusion in a name-source test is therefore irrelevant to the question ultimately to be decided by the Board or the Federal Court. ... For all of the foregoing reasons, I am of the view that the appeal should be dismissed, with costs.

Decision relates to:

 

Canadian Intellectual Property