The Admissibility of Online Surveys

The Facts 

Promotion in Motion, Inc. (PIM), PIM sought to register the trademarks SWISSKISS and SWISSKISS & Design as shown below for in association with “Chocolate of Swiss origin” collectively, the “SWISSKISS Trademarks” .We discussed the decision of the Federal Court Judge in the blog post Not a Good Day for the Use of Survey Evidence In Trademark Cases

The Opposition

Hershey Chocolate & Confectionery LLC (Hershey) opposed PIM’s trademark applications based on several of its registered 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, collectively “Hershey’s Trademarks”, registered in association with the goods “solid chocolate candy with or without ingredients such as nuts” and “chocolate candy” respectively.

The Hearing Officer said 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 Appeal to the Federal Court - Promotion In Motion Inc. v. Hershey Chocolate & Confectionery LLC 2024 FC 556

a) The New Evidence 

Both parties filed extensive new evidence. PIM filed an affidavit to introduce a copy certification mark registrations for SUISSE (TMA324,971), SWITZERLAND (TMA325,072) and SWISS (TMA325,071) for “chocolate and products made of chocolate” in the name of Chocosuisse, which is the Association of Swiss Chocolate Manufacturers cooperative. This was meant to show that Chocosuisse owned these descriptive certification marks for chocolate and products made from chocolate originating from Switzerland, and that PIM had permission to use these marks. 

PIM also filed the affidavits of survey experts, Dr. Ruth Corbin and Mr. Christian Bourque related to surveys conducted under their supervision (the “Corbin survey” and the “Bourque survey” respectively). The purpose of these surveys was to measure the source, if any, to which consumers who have purchased Swiss chocolate in retail stores would attribute to the Design Mark and to measure, in particular, the extent to which consumers would mistakenly infer that the logo was sourced by Hershey. Both surveys were conducted online by way of an Internet-based questionnaire. The results of the surveys were that only 2% and 3% respectively of the survey participants mistakenly identified Hershey as the source of the design mark and the word mark.

Hershey contended that PIM’s new evidence was inadmissible, immaterial, unhelpful, and unnecessary. To the extent that the Federal Court would consider the new evidence, Hershey submitted its own additional expert evidence. To address its concern that the Corbin and Bourque surveys were biased because they required that survey participants be previous or future purchasers of Swiss chocolate, Hershey asked its own expert, Ms. Brigley, to implement a modified version of the survey with participants who had purchased or would purchase “chocolate”. After being asked to identify the company they believed was selling the SWISSKISS brand of chocolate, 10% of the test group participants answered Hershey. This was well-above unaided associations to other chocolate brands, and showed that the trademarks KISS and KISSES benefit from a strong association to Hershey.

Another expert, Dr. Michael Mulvey, was also retained by Hershey opined that by repeating “Swiss chocolate”, the PIM surveys created a priming bias which lead to false or skewed conclusions as a reasonable person would not think of an American chocolate maker after having been referred so many times to the word “Swiss”.

b) The Federal Court Decision

The Judge agreed with Hershey that most of PIM’s new evidence was inadmissible and added nothing of significance and would not have affected the Board’s decision in any material way. While the Corbin affidavit and the Bourque affidavit met the necessity and properly qualified experts’ requirements, they both suffered validity and reliability issues that negatively impacted the relevance requirement or at the very least made it such that they did not provide sufficient probative value to be material.

As for validity, the Judge said the survey design and its results were invalid because the right questions were not put to the survey participants. In her view, the repeated inclusion of “Swiss chocolate” in each of the survey questions created a priming bias and resulted in participants ignoring other non-Swiss chocolate manufacturers, which would likely have brought down the number of answers for Hershey. 

 Another flaw of the surveys was the circumstances in which the questions were put to the participants. The Judge was concerned that the experts were not themselves able to attest that the participants from the online panel were the ones who filled out the surveys, without consulting other persons or devices. That flaw negatively impacted the validity of the evidence.

Nor was the Judge satisfied that the responses adhered to the specifications recommended in the surveys’ preambles. The mark was supposed to be shown for up to 8 seconds before being removed from view, yet the experts were unsure whether participants could simply use the “back button” in their Internet browsers to see the image again, because they had not tried it.

The Brigley affidavit filed by Hershey suffered from the same validity and reliability issues as the Corbin and Bourque survey studies, except for the “back button” and priming issues. Because it suffered from the same design deficiencies, the Brigley affidavit could not provide the necessary assurances regarding the people surveyed and was open to the same criticisms.

The Judge refused to admit the surveys, but if they had been admitted, she would have found they supported Hershey’s case. Even if one were to accept the percentages that PIM argues are correct in the Brigley affidavit (that is 6.1% instead of 10% of the survey participants associated the Word Mark with Hershey), such a percentage in her opinion was “not insignificant” and fell within the lower range of the rate of confusion that Canadian courts have accepted to establish a likelihood of confusion.

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

The appeal raised the following two key issues:

a) Did the Federal Court 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?

The deferential standard of palpable and overriding error applied to both issues. 

a) The SWISS Element 

The Federal Court did not err in its analysis of descriptive certification marks, and in finding that the existence of the SWISS certification mark had no impact on the confusion analysis. The fact that the word SWISS incorporated in the SWISSKISS Marks is a descriptive certification mark does not change the confusion analysis. 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 it was accepted that the incorporation of a geographic location protected by a certification mark into a traditional trademark could somehow heighten its distinctiveness. 

The word SWISS remained largely descriptive, and even if the first syllable or word of a trademark is often the most significant for the purposes of distinguishing between marks, it would not be the focus of consumers when looking at the appellant’s proposed trademarks considering the large number of traders who used the term SWISS in association with chocolate. The KISS element was the most striking part of both the appellant’s marks and the respondent’s marks, and there was a meaningful degree of resemblance between the respective marks as found by the Board and the Federal Court.

b) The Admissibility of the Survey Evidence

The Judge was entitled to question the validity of the survey, on the basis that the questions were skewed to the extent that they subtly oriented the participants towards Swiss chocolate and limited the pool of respondents to frequent purchasers, excluding consumers of chocolate that was not of Swiss origin or who only purchased Swiss chocolate on an infrequent basis. There was no need for her to rely on her own expertise nor that of an expert to understand these flaws in the questions themselves.

An online survey intended to evaluate the imperfect recollection of a trademark by a casual consumer somewhat in a hurry is flawed if there is a simple way for the consumer to return to the marks being evaluated.

There was no need for an expert to provide an opinion as to whether the appellant’s surveys asked the questions in the right circumstances. When the core questions of the surveys, upon which Dr. Corbin and Mr. Bourque rely to assess the level of misattribution as to the source, systematically inform participants that they pertain to “Swiss chocolate”, it is to be expected that participants will not likely think of chocolate manufacturers that are not of Swiss origin.

It is no justification to say, thatit cannot be a priming bias to describe the product as “Swiss chocolate” because it is the good covered by the marks. The appellant has not demonstrated that “Swiss chocolate” is an entirely different product category than chocolates from other countries. 

Consumer surveys have gradually been admitted into evidence as an exception to the hearsay rule. When the parties propose to introduce expert evidence, it is the duty of a trial judge to determine the admissibility of that evidence having regard to the criteria developed in the case law especially the necessity and relevance of that evidence. Relevance, with its attendant requirements of validity and reliability in the context of survey evidence, is a question of appreciation over which the trier of facts must be left with a wide margin of appreciation.

The admissibility of survey evidence in the past has been in the context of in-person surveys. When such surveys are conducted, the interviewer can attest to the survey participant being the participant whom the participant claims to be and can ensure that the person is answering the questions without consulting any other person or device and is free from external influence. It is also easier to verify that the person interviewed falls within the intended demographic for the study. This is not the case when the survey is conducted online. 

It was not appropriate to baldly conclude that all online surveys were inadmissible unless there is a “person in the loop” or “video recoding of the participant filling out the survey”. In this regard the court referred to an article by Dr Corbin. She said to increase Internet survey reliability and validity: three strategies should be implemented 

1) choosing a panel company that will strive to deliver accurate information about panel participants and that employs sampling procedures that will increase representativeness of the population to be tested; 

2) including questions to check for faking, inattention and cheating; and 

3) engaging in post-survey validation to provide assurance of legitimate respondent identities.

The judge accepted that both Dr. Corbin and Mr. Bourque were properly qualified experts in survey market research and analytics, and the surveys were run in accordance with industry standards and subject to randomized verification after completion. While none of these safeguards can provide complete assurance that the responses were given by the participants themselves and that they were free of external influence and information these flaws were not so critical as to be a fundamental issue going to the admissibility, as opposed to the weight, of these surveys. As imperfect as they may be, Internet surveys, just like other types of surveys, may sometimes provide valid evidence to inform the confusion analysis when properly designed and implemented. 

It was not appropriate at this early stage, to unequivocally rule out the admissibility of such evidence irrespective of the particular facts of each case and of each survey. 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. The 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 Corbin affidavit and the Bourque affidavit without any further analysis of the circumstances in which the surveys were conducted. However, the error was not determinative and did not amount to an overriding error.

Surveys where respondents are asked to name the source of a product, commonly referred to as “named-source test”, are not designed to show an absence of confusion, but merely to measure the level of confusion. This is why some experts, among which Dr. Corbin in one of her articles have advised defendants in trademark opposition proceedings to stay away from such surveys because they cannot prove that there is no likelihood of confusion. 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 irrelevant to the question ultimately to be decided by the Board or the Federal Court in this case.

Comment.

With the benefit of hindsight, it seems odd that no evidence was filed to show the word “Swiss” was meaningful to consumers of chocolate. Certainly, sellers of chocolate thought this was so. In addition, nothing in the Trademarks Act suggests that a descriptive certification mark cannot acquire distinctiveness.

The battle over the admissibility of online surveys has been left to another day but with some helpful advice concerning what is required. Properly designed and implemented online surveys can assist courts because they better reflect realworld consumer behaviour than judicial intuition alone.

To safeguard your brand and ensure your rights are fully protected reach out to us for a detailed review of your trademark use and potential remedies. 

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John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

 jmckeown@LN.Law

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