Federal Court of Appeal Rules in Hershey’s Favour in Trademark Dispute with PIM’s SWISSKISS

Why It Matters

The decision reinforces Canada’s stringent standards for trademark distinctiveness and consumer confusion, limiting the protective value of generic geographic descriptors for confectionery brands. It signals to marketers that robust evidence is essential when challenging established trademarks.

Key Takeaways

• Appeal confirms Hershey’s KISS element causes confusion
• SWISS deemed descriptive, not distinctive for trademark protection
• Survey evidence excluded for methodological flaws
• PIM ordered to pay Hershey’s costs
• Ruling underscores rigorous Canadian trademark scrutiny

Pulse Analysis

The Hershey versus PIM trademark dispute highlights how Canadian courts apply the likelihood‑of‑confusion test, weighing each element of competing marks against consumer perception. In this case, the appellate court focused on the striking "KISS" component, finding it sufficiently similar to Hershey’s iconic branding to mislead shoppers. By rejecting the lower court’s reliance on flawed online surveys, the judges underscored the importance of methodological rigor when presenting consumer evidence, a lesson that extends beyond confectionery to any sector seeking to defend or challenge a mark.

Geographic descriptors such as "SWISS" often serve as certification marks, indicating product origin rather than source. Canadian jurisprudence treats these terms as inherently descriptive, granting them limited distinctiveness unless paired with strong secondary meaning. The court’s analysis confirmed that even widespread industry use of "SWISS" for chocolate does not automatically confer trademark protection, reinforcing the need for brands to develop unique, non‑descriptive elements if they wish to secure exclusive rights. Companies relying on regional identifiers must therefore supplement them with distinctive logos, colors, or stylized wording to survive a confusion analysis.

For the broader confectionery market, the ruling sends a clear signal: established brands with strong consumer recognition can successfully fend off newer entrants that attempt to piggyback on similar imagery or phrasing. Legal teams should anticipate rigorous scrutiny of survey methodologies and be prepared to demonstrate genuine distinctiveness beyond generic descriptors. As trademark portfolios grow increasingly complex, proactive brand architecture—combining distinctive design with clear certification marks—will be essential to avoid costly litigation and protect market share.