Executive Summary: Key Legal and Evidentiary Issues

• GRC Food Services Ltd. sought to register the trademark MASTER CHOCOLAT, which was initially refused by the Trademarks Opposition Board due to confusion with Lindt's CHOCOLATE MASTERS Marks under paragraph 12(1)(d) of the Trademarks Act.

• Expungement of Lindt's CHOCOLATE MASTERS Marks after the Board's decision was found to constitute new material evidence, triggering a de novo review and the setting aside of the Board's original decision.

• Whether Lindt demonstrated use of the MAÎTRE CHOCOLATIER mark per se became the central evidentiary issue, as the mark always appeared in conjunction with other Lindt branding elements such as the LINDT & Design mark.

• Lindt failed to meet its preliminary burden of proof on its non-entitlement ground under paragraph 16(3)(a) because it could not establish standalone use of the MAÎTRE CHOCOLATIER mark prior to GRC's filing date.

• No clear evidence was presented to establish that the MAÎTRE CHOCOLATIER mark was known in Canada to a sufficient extent, leading to the rejection of Lindt's non-distinctiveness ground under section 2 of the Act.

• The Court directed the Registrar to register GRC's MASTER CHOCOLAT mark and awarded GRC its costs across both phases of the proceeding.

The facts of the case
GRC Food Services Ltd. applied on October 9, 2015, to register the trademark MASTER CHOCOLAT under Application No. 1,749,988 for the following goods: tins of metal; gift boxes and gift packaging; chocolate recipes and cookbooks; chocolates, chocolate confectionary, candy, ice cream, cookies, cakes, and related items namely, chocolate sauces and chocolate-based spreads. The application also covered services relating to the operation of a business dealing in the sale of these goods. The application was advertised for opposition purposes in the Trademarks Journal of May 2, 2018.
Chocoladefabriken Lindt & Sprüngli AG, the Respondent, filed a statement of opposition on July 2, 2019, under section 38 of the Act. Lindt owned several registered trademarks in Canada, including two marks known collectively as the CHOCOLATE MASTERS Marks (TMA377,673 and TMA837,071), registered for chocolate and chocolate products, and two registered trademarks known as the MASTER CHOCOLATIER Marks — LINDT MAÎTRE CHOCOLATIER (TMA993,318) and LINDT MASTER CHOCOLATIER (TMA993,319), both registered for chocolate. Lindt also had two pending trademark applications for MAÎTRE CHOCOLATIER (Application No. 1,773,030) and MASTER CHOCOLATIER (Application No. 1,773,029), which also formed part of the group referred to as the MASTER CHOCOLATIER Marks.
Lindt's grounds of opposition
Lindt raised four grounds of opposition before the Board. First, Lindt argued that GRC's mark was not registrable under paragraph 12(1)(d) of the Act because it would be confusing with both the CHOCOLATE MASTERS Marks and the MASTER CHOCOLATIER Marks. Second, Lindt contended that GRC was not entitled to registration under paragraph 16(3)(a) because, at the filing date of the application, GRC's mark was confusing with Lindt's trademarks which had been previously and extensively used and made known in Canada. Third, Lindt argued non-entitlement under paragraph 16(3)(b) based on its previously filed applications for MASTER CHOCOLATIER and MAÎTRE CHOCOLATIER. Fourth, Lindt claimed that GRC's mark was not distinctive under section 2 of the Act, given the extensive use, promotion, advertising and making known in Canada of Lindt's trademarks.
The Board's decision
In its decision dated October 25, 2023, the Board rejected Lindt's grounds of opposition based on non-entitlement under paragraphs 16(3)(a) and (b) and non-distinctiveness under section 2. However, the Board found in favour of Lindt in respect of the paragraph 12(1)(d) opposition, concluding that there was a likelihood of confusion between GRC's MASTER CHOCOLAT mark and the CHOCOLATE MASTERS Marks. In light of the Board's finding regarding the CHOCOLATE MASTERS Marks, the Board did not consider Lindt's additional opposition under paragraph 12(1)(d) in relation to the MASTER CHOCOLATIER Marks. GRC's application was refused.
The first Federal Court decision (2025 FC 940)
GRC appealed the Board's decision under section 56 of the Act. A significant development occurred after the Board's decision: on October 8, 2024, Lindt's CHOCOLATE MASTERS Marks (TMA377,673 and TMA837,071) were expunged pursuant to section 45 of the Act. GRC sought leave to file an Expungement Affidavit documenting this change in the state of the Trademarks Register.
The central legal question in the first appeal was whether the expungement of the marks that underpinned the Board's confusion finding constituted new material evidence capable of triggering a de novo review. Justice Aylen undertook an analysis of the competing jurisprudence. Lindt relied on cases such as Nefco, where the Court had found that the expungement evidence was irrelevant because the relevant date for assessing confusion was the date of the Registrar's decision, and because the Registrar had already been alive to the lack of use of the opponent's mark. GRC relied on cases such as Park Avenue, Everlast and H-D Michigan, where courts had found expungement evidence to be material and significant to the confusion assessment under paragraph 12(1)(d).
Justice Aylen found that it would be contrary to the interests of justice to undertake a review of the Board's decision and not consider whether the opponent's mark remains in good standing at the time of the Court's decision, as a proposed mark cannot be confusing with a registered mark that has been expunged. The Court noted that the good standing of an opponent's mark is a threshold issue under paragraph 12(1)(d), and that this approach was in keeping with the Federal Court of Appeal's commentary in Park Avenue, that the decision of the Court should "be taken on an accurate state of the record." The Court further noted that, if it were not empowered to take the expungement into consideration, the consequences would be illogical.
The Court granted leave to file the Expungement Affidavit, found it constituted new material evidence, and set aside the Board's decision. However, the Court did not grant GRC's application outright because Lindt had asserted both the CHOCOLATE MASTERS Marks and the MASTER CHOCOLATIER Marks as underpinning its opposition under paragraph 12(1)(d), and the Board had never addressed the MASTER CHOCOLATIER Marks. The proceeding was bifurcated to allow both parties to file additional evidence and submissions on the remaining grounds of opposition, including the paragraph 12(1)(d) opposition based on the MASTER CHOCOLATIER Marks, non-entitlement under paragraphs 16(3)(a) and (b), and non-distinctiveness under section 2. GRC was awarded its costs of the first phase of the proceeding, calculated pursuant to the mid-point of Column III of Tariff B of the Federal Courts Rules.
The second Federal Court decision (2026 FC 594)
Following the Court's initial decision, Lindt abandoned many of the remaining grounds of opposition and narrowed the asserted marks. Lindt ultimately asserted only two grounds: (1) non-entitlement under paragraph 16(3)(a), arguing that GRC was not entitled to registration because GRC's mark would be confusing with Lindt's MAÎTRE CHOCOLATIER mark (Application No. 1,773,030); and (2) non-distinctiveness under section 2, arguing that GRC's mark did not actually distinguish between the goods and services of Lindt in view of the extensive use, promotion, advertising and making known in Canada of Lindt's MAÎTRE CHOCOLATIER mark.
On the threshold question of whether to entertain Lindt's section 2 opposition, the Court noted that Lindt had made no written submissions in support of this ground. Justice Aylen held that only arguments included in a party's memorandum can be advanced in oral argument, and that permitting Lindt to articulate its section 2 opposition arguments for the first time at the hearing would be unfair to GRC because it would have no meaningful opportunity to consider the arguments and respond. The Court rejected this ground on that basis but nonetheless proceeded to consider its merits.
Regarding the standard of review, the Court addressed a unique issue. The parties had previously agreed that all remaining issues would be reviewed de novo, and the Court had endorsed that approach. However, GRC subsequently took the position that the agreement was not consistent with applicable legal principles and that the Court must make a determination of the standard of review based on the new evidence. Justice Aylen agreed with GRC, holding that it is not open to parties to "contract out" of the applicable standard of review and that the standard must be determined by the Court after considering the applicable legal principles and the evidence. For Ground 1, because the Board had made no determination on whether Lindt met its initial burden of proof, the issue was decided de novo. For Ground 2, the appellate standard applied because the new evidence filed by Lindt could not have had a material effect on the Board's determination that Lindt had not met its initial burden of proof. However, Lindt had not identified an error by the Board in making that determination, providing yet another basis to reject Ground 2.
The per se use issue
The central evidentiary question in the second decision was whether Lindt had demonstrated use of the MAÎTRE CHOCOLATIER mark per se. In the affidavit of Kairen Wu filed before the Board, approximately 25 examples of product packaging were provided, and each showed MAÎTRE CHOCOLATIER used in conjunction with "SUISSE," "DEPUIS 1845" and "LINDT & SPRÜNGLI." The Board had found that it was not clear the extent to which consumers would recognize the MASTER CHOCOLATIER Marks per se, and that the evidence did not demonstrate extensive use of these marks per se.
In the new evidence of Mona Alishah filed on appeal, Lindt attempted to address the evidentiary gap identified by the Board. Ms. Alishah stated that the MAÎTRE CHOCOLATIER mark appeared as part of a "lockup" with the registered LINDT & Design mark (TMA 422,548) on foil wrappers of at least four varieties of Lindt chocolate bars and on the top layer of protective cushioning in tray-packed boxed chocolates. The mark also appeared on exterior signage of Lindt shops below the LINDT & Design mark, on shipping labels beside the LINDT & Design mark, and on tents used for experiential marketing events beside LINDT or beside the LINDT & Design mark.
The Court found that, while the Alishah Affidavit provided evidence of use not in conjunction with "SUISSE DEPUIS 1845" or "DEPUIS 1845," it continued to show the MAÎTRE CHOCOLATIER mark only in combination with other marks. Despite MAÎTRE CHOCOLATIER appearing in a different font and size from the LINDT & Design mark, the Court held that the differences in appearance of the words did not, without more, establish that the public, as a matter of first impression, would perceive MAÎTRE CHOCOLATIER per se as being used as a trademark. Notably, Lindt's own witnesses, Ms. Wu and Ms. Alishah, did not refer to MAÎTRE CHOCOLATIER as a sub-brand, and there was no evidence before the Court regarding the public's perception of MAÎTRE CHOCOLATIER. The concept of it being a sub-brand was raised for the first time by counsel at the hearing. Based on the limited evidence before the Court, Justice Aylen found that the immediate impression of the words MAÎTRE CHOCOLATIER is that they are descriptive of Lindt's mastery or perfected skills as a chocolatier.
Having found no use of the MAÎTRE CHOCOLATIER mark per se, the Court also concluded that the mark could not be shown to be known in Canada to a sufficient extent for purposes of the non-distinctiveness ground. While there was evidence of extensive sales of products that bear the words MAÎTRE CHOCOLATIER together with the predominant LINDT & Design mark, the Court was not prepared to infer from this sales evidence alone that the MAÎTRE CHOCOLATIER mark was known in Canada.
The ruling and outcome
Both of Lindt's remaining grounds of opposition were rejected, and the Registrar was directed to register the GRC Mark in accordance with Application No. 1,749,988. GRC Food Services Ltd. was the successful party across both decisions. In the first phase, Lindt was ordered to pay GRC its costs calculated pursuant to the mid-point of Column III of Tariff B of the Federal Courts Rules, though the exact dollar amount was not specified in the decision. In the second phase, the parties agreed that the successful party should be awarded costs incurred from May 26, 2025, onward, fixed in the all-inclusive amount of $5,000, and Lindt was accordingly ordered to pay GRC that sum, inclusive of taxes and disbursements. The precise total monetary amount awarded across both phases cannot be determined from the decisions, as the Tariff B amount from the first phase was not quantified.