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This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

 

Session 4: Evidence

 

Case No. 1

 

Promotion in Motion, Inc v Hershey Chocolate and Confectionery LLC, 2024 FC 556

 

Date of Judgment: April 9, 2024

Issuing Authority: Federal Court

Level of the issuing authority: First Instance, appeal to Federal Court of Appeal pending

Type of procedure: Judicial (Administrative)

Subject matter: Trademarks

Applicant: Promotion in Motion, Inc. [PIM]

Respondent: Hershey Chocolate and Confectionery LLC [Hershey]

 

Keywords: trademarks – expert evidence – survey evidence – materiality - relevance

 

Basic facts: This is an appeal from a decision of the Trademarks Opposition Board [TMOB] in which the Opponent, Hershey, successfully opposed the Applicant, PIM’s, registration of two trademarks, SWISSKISS (word mark) and SWISSKISS & Design (depicted below) for “chocolate of Swiss origin”, on the basis of several registered KISS and KISSES trademarks.

 

 

 

The TMOB found that there was a likelihood of confusion and that PIM’s evidence did not show that the term “kiss” was generic in Canada in association with chocolate, or that the KISSES and KISS trademarks were devoid of protection in Canada in association with chocolate.

 

On appeal, PIM sought to introduce extensive new evidence, including evidence from three experts. Hershey also sought to file two new expert affidavits. Amongst other issues, the Court considered the admissibility of two online surveys that were filed as new evidence by PIM before the Court.

 

At the time of the decision, section 56 of the Canadian Trademarks Act provided that new evidence could be filed on an appeal if it was material to the decision – i.e. it is “sufficiently substantial and significant” and of “probative value” and would have had a material effect on the decision (Clorox Company of Canada, Ltd v Chloretec S.E.C., 2020 FCA 76 [Chlorox] at para 21; Seara Alimentos Ltda v Amira Enterprises Inc, 2019 FCA 63 at paras 23-25). If so, a de novo standard of review of the issues relevant to the material evidence would be applied (Clorox at para 20).

 

In assessing materiality, the Court also applied the criteria for admissibility of expert evidence, namely that the evidence must have relevance, must be necessary to assist the trier of fact, the exclusionary rule must not be triggered, and it must be from a qualified expert (R v Mohan, 1994 CanLII 80 (SCC); Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 75).

 

 

Held: The Court upheld the TMOB’s decision. The Court found that only one of PIM’s new affidavits was material. The online surveys were found to be inadmissible and immaterial. An appeal before the Federal Court of Appeal is pending.

 

Relevant holdings in relation to use of online survey evidence in trademark cases: The Court made the following findings regarding the relevance of the online surveys filed by PIM:

 

 

·         The online surveys were not valid in that the right questions were not asked nor were they put to the participants in the right way and in the right circumstances

 

o   Most of the questions included references to “Swiss chocolate,” which primed the respondents to think of Swiss chocolate brands, rather than other brands.

 

o   The online surveys did not provide assurances that the screened participants were the ones who answered the questions. The Court drew a distinction between online and in-person surveys, where an in-person survey allowed for confirmation of identity and confirmation that participants were answering questions without consulting other devices or information.

 

o   The ability to click “back” and look at the trademarks again conflicted with the legal standard for confusion, which is that of “imperfect recollection of a trademark” and the “casual consumer in a hurry.”

 

·         The online surveys were not reliable:

 

o   Because of their design flaws, it was unclear whether the surveys would produce the same results if repeated as an in-person survey.

 

o   It was unclear whether the surveys accurately reflected the level of confusion among Canadian consumers who consumed Swiss chocolate.

 

The Court found that the evidence was fundamentally flawed in that it did not provide the necessary assurance that the participants were the consumers in question or that the responses were given by the participants themselves. The Court could not conclude that the participants were free from external influence and external information. The Court also found that the exclusionary rule was triggered as the surveys represented a body of hearsay evidence from individuals that were not available for cross-examination.

 

                                                                                      

Relevant legislation: Trademarks Act, RSC, 1985, c T-13, sections 56, 12(1)(d), 16(3), 6(5).

 

 

Case No. 2

 

dTechs EPM Ltd v British Columbia Hydro and Power Authority and Awesense Wireless Inc, 2023 FCA 115

 

Date of Judgment: May 26, 2023, correction June 1, 2023

Issuing Authority: Federal Court of Appeal [FCA]

Level of Issuing Authority: Appellate Court (final determination, leave to appeal to the Supreme Court dismissed)

Type of procedure: Judicial (Civil)

Subject matter: Patents (Inventions)

Appellant: dTechs EPM Ltd. [dTechs]

Respondents: British Columbia Hydro and Power Authority [BC Hydro] and Awesense Wireless Inc [Awesense]

 

Keywords: patent – expert evidence

 

Basic facts: This was an appeal of a decision of the Federal Court that dismissed a claim for patent infringement made by the patent owner, dTechs, as against the defendants BC Hydro and Awesense. The Federal Court found that the claims of the patent were not infringed, and that they were invalid on the grounds of anticipation and obviousness. The issues for determination by the FCA at the appeal related to whether evidence presented by BC Hydro’s expert witness should have been excluded or given no weight because it was not independent expert evidence. dTechs alleged that new evidence (a working agreement and invoices for the expert’s services), which was obtained after trial when evaluating BC Hydro’s costs, indicated that the expert did not author their own report and therefore that the expert was not an independent or unbiased witness.

 

Two questions were raised for determination: 1) whether the new evidence had sufficient probative value to support the position that the expert evidence was inadmissible or should be given no weight; and 2) if so, whether in light of the other evidence adduced at trial, such a finding might have led to granting the infringement action and dismissal of the defence and counterclaim based on invalidity.

 

Held: There was no evidence to establish that the expert’s evidence did not represent his objective and non-partisan opinions. Although the new evidence suggested that the expert did not write the first drafts of his report, the evidence indicated that he read, reviewed and commented on those drafts and that the opinions expressed were his own. The collaboration between BC Hydro’s counsel and the expert did not invalidate the expert’s evidence.

 

However, the FCA found the new evidence might have had some impact on the weight afforded to the evidence of BC Hydro’s expert. The FCA concluded that this would not have affected the result of the infringement action per se because of the undisturbed legal and factual findings of the Federal Court. However, the FCA found that the invalidity findings of one of the dependent claims in issue might have been affected and therefore should be removed from the finding of invalidity in the judgment. The judgment left open the option for the Defendants to seek a redetermination of the invalidity of that dependent claim based on the new evidence.

 

Relevant holdings in relation to expert evidence in patent cases:

 

·         Expert reports in patent cases may be prepared in collaboration with counsel in an effort to present the substantive opinion of the expert in a manner and format that is helpful to the Court, in light of the complexity of the issues raised. Collaboration can include having counsel draft the first version of the report from notes made during consultation with the expert, provided that the substantive and objective opinion of the expert is reflected in the report.

 

·         It is the duty of counsel in patent cases to verify whether the boundaries of permissible involvement were infringed by obtaining, through cross-examination, the information necessary for the Court to assess if the opinion presented by the expert is truly their own objective opinion.

·         Concerns about an expert report should be raised as early as possible, such as before trial or during cross-examination, to ensure the proper administration of justice.

 

·         The FCA also reiterated principles from the Supreme Court of Canada’s decision in White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 that it is only in clear cases where the expert is unwilling or unable to comply with their duty to give fair, objective, and non-partisan opinion evidence that concerns raised by the opposing party will go to admissibility. Anything less than clear unwillingness or inability to do so will go to the weight of the evidence of that expert.

 

 

Relevant legislation: N/A