Executive Summary: Key Legal and Evidentiary Issues

• Appeal concerned refusal to register the trademark MASTER CHOCOLAT due to alleged confusion with Lindt's existing marks.

• Central issue shifted after two Lindt trademarks were expunged, raising the question of whether this constituted new material evidence.

• The Court found the expungement was significant enough to trigger a de novo review.

• The Trademarks Opposition Board’s original decision was set aside due to reliance on now-expunged trademarks.

• Proceedings were bifurcated to assess remaining grounds of opposition involving other Lindt trademarks.

• Costs for the first phase were awarded to the Applicant based on the mid-point of Column III of Tariff B.

Facts and outcome of the case

Background of the dispute
GRC Food Services Ltd. applied to register the trademark MASTER CHOCOLAT in 2015, intending to use it in association with chocolates, confections, packaging, and retail services. The application was opposed by Chocoladefabriken Lindt & Sprüngli AG, who claimed the mark would cause confusion with several of its own registered and pending trademarks. These included marks known as the “CHOCOLATE MASTERS” and “MASTER CHOCOLATIER” marks. The opposition was primarily grounded in section 12(1)(d) of the Trademarks Act, which deals with confusion with existing registered marks, along with arguments based on prior use and lack of distinctiveness.

The Board’s decision and appeal
The Trademarks Opposition Board, in an October 2023 decision, rejected most of Lindt's arguments except for the one based on confusion with the “CHOCOLATE MASTERS” marks. As a result, it refused GRC’s trademark application. GRC then appealed to the Federal Court under section 56 of the Act, arguing that the Board erred in finding an overlap in the channels of trade and that new evidence had emerged. Crucially, the two Lindt marks forming the basis of the confusion finding were expunged in October 2024—after the Board’s decision but before the appeal hearing.

Court's findings on new evidence
The Court accepted an affidavit confirming the expungement of the two trademarks as new and material evidence. It ruled that this evidence would have materially impacted the Board’s decision and justified a de novo review. The Court emphasized that it must consider the accurate state of the trademark register at the time of its own decision, not just at the time of the Board’s.

Impact on opposition grounds and bifurcation
Because the Board had never addressed the remaining opposition arguments concerning Lindt’s “MASTER CHOCOLATIER” marks, the Court set aside the Board's decision and bifurcated the proceeding. The remaining issues to be determined in the next phase include: whether GRC’s mark would still be confusing with the “MASTER CHOCOLATIER” marks, whether GRC had entitlement based on prior use or filings by Lindt, and whether the mark lacked distinctiveness under section 2.

Outcome and costs
The Court ruled in favor of GRC Food Services Ltd. for this first phase, granting leave to admit the new evidence and setting aside the Board’s decision. It awarded GRC its costs for this phase, calculated using the mid-point of Column III of Tariff B of the Federal Courts Rules. The Court remains seized of the matter and will oversee the resolution of the remaining opposition grounds in a subsequent phase of the litigation.