A Sweet Case

The Background 

Often in response to an opposition the applicant causes a separate proceeding(s) to be brought under section 45 of the Trademarks Act attacking the registration(s) relied on by the opponent. 

Under section 45 the Registrar, unless the Registrar sees good reason to the contrary, must give notice to the registered owner of the trademark requiring the owner to provide within three months an affidavit or statutory declaration showing with respect to each of the goods and services specified in the registration, whether the trademark was in use in Canada during the three-year period immediately preceding the date of the notice and, if not when it was last in use and the reason for the absence of use since that date. 

If the section 45 proceeding(s) is successful, this can affect the opposition as shown in a recent decision of the Federal Court. GRC Food Services Ltd. v. Chocoladefabriken Lindt & Sprüngli AG 2025 FC 940

The Facts

The Applicant filed a trademark application for the MASTER CHOCOLAT mark for use with chocolates, chocolate confectionary and other goods, and the operation of a business dealing in the sale of chocolates, confectionary, candy, ice cream, cookies, cakes, and related items namely, chocolate sauces, chocolate-based spreads, gift boxes, tins, gift packaging, and chocolate recipes and cookbooks.

The Opposition 

The Opponent opposed the application on the grounds that:

1. The Applicant’s Mark was not registrable under paragraph 12(1)(d) of the Act as it was confusing with the Opponent’s two registered CHOCOLATE MASTERS Design Marks and its two registered LINDT MAITRE/MASTER CHOCOLATIERS Marks;

2. Contrary to paragraph 16(3)(a) of the Act, the Applicant was not the person entitled to registration of the Applicant’s Mark because, at the filing date of the Application, the Applicant’s Mark was confusing with the CHOCOLATE MASTERS Design Marks and two additional registrations for LINDT MAÎTRE/MASTER CHOCOLATIER which had been previously and extensively used and made known in Canada by the Respondent prior to the filing of the Application in Canada.

3. Contrary to paragraph 16(3)(b) of the Act, the Applicant was not the person entitled to registration of the Applicant’s Mark because, at its date of filing, the Applicant’s mark was confusing with the Opponent’s MASTER CHOCOLATIER and MAÎTRE CHOCOLATIER trademarks for which applications for registration (Nos. 1,773,029 and 1,773,030) had been filed in Canada by the Opponent before the date of filing of the Application in Canada.

4. The Applicant’s Mark is not distinctive.

   
   

The Trademarks Opposition Board rejected the Opponent’s grounds of opposition based on non-entitlement under paragraphs 16(3)(a) and (b) and non-distinctiveness. However, the Board found in favour of the Opponent regarding the grounds based on paragraph 12(1)(d) and refused the registration on the basis that there was a likelihood of confusion between the Applicant’s Mark and the CHOCOLATE MASTERS Design Marks. The Board did not consider the Opponent’s additional opposition under paragraph 12(1)(d) in relation to the LINDT MAITRE/MASTER CHOCOLATIERS Marks.

The Appeal

The Applicant appealed to the Federal Court. Two weeks before the application was heard, the Applicant sought leave to file fresh evidence consisting of an affidavit providing documentation from the Canadian Intellectual Property Office showing the CHOCOLATE MASTERS Design Marks had been expunged. 

The filing of the affidavit at this late date was contrary to the Federal Court Rules but the court can grant leave. In determining whether leave would be granted the Court considered these three questions: (i) was the evidence sought to be adduced available when the party filed its previous affidavits or could it have been available with the exercise of due diligence? (ii) would the evidence assist the Court, in the sense that it is relevant to an issue to be determined and sufficiently probative that it could affect the result? and (iii) will the evidence cause substantial or serious prejudice to the other party? The court found that the Applicant satisfied these requirements and granted leave.

In addition, under the Act the new evidence must be material, that is, it must be sufficiently substantial and significant, and of probative value to allow the Judge to consider the issue to which it relates on a de novo basis.

The date for considering confusion under paragraph 12(1)(d) of the Act is the date of the Board’s decision. However, where additional evidence is filed that would have materially affected the Board’s findings of fact or exercise of discretion, the Court must decide the issue de novo considering all the evidence before it. In such circumstances, the date for considering confusion under paragraph 12(1)(d) “resets” to the date of the Court’s decision.

The judge said it would be contrary to the interests of justice to undertake a review of the Board’s decision — be it on an appellate standard of review or a de novo review — and not consider whether the opponent’s mark remained 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.  As such the new evidence was material.

The Applicant argued that the expungement of the CHOCOLATE MASTERS Deign Marks was determinative, and the Application to register the Applicant’s Mark should be granted. The Court disagreed. The Respondent relied on both the CHOCOLATE MASTERS Design Marks and the LINDT MAITRE/MASTER CHOCOLATIERS Marks as underpinning its opposition under paragraph 12(1)(d). The Board never addressed the LINDT MAITRE/MASTER CHOCOLATIERS Marks in its decision, as the Respondent succeeded in opposing the Application based on the CHOCOLATE MASTERS Design Marks.

The Court the bifurcated the proceeding and said it would consider all the grounds of opposition on a de novo basis on a timetable to be agreed upon. 

Comment

Before bringing an opposition it is important to determine whether the marks the opponent intends to rely on are supported by use or subject to other potential attacks on their validity. 

If you have questions, please contact me at mckeown@gsnh.com.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.