A Sweet Case - Completed

Last July in a blog post A Sweet Case we dealt with a decision of the Federal Court which has now been resolved. GRC Food Services Ltd. v. Chocoladefabriken Lindt & Sprüngli AG 2026 FC 594.

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 this type of product.

The Opposition

Chocoladefabriken Lindt & Sprüngli Ag (Lindt) opposed the application on several grounds including that 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 MAÎTRE CHOCOLATIER trademark for which an application for registration had been filed by Lindt before filing of the application in Canada.

The Decision of Trademarks Opposition Board

The Trademarks Opposition Board found in favour of the Opponent regarding some of the grounds and refused the registration. On appeal to the Federal Court the appeal was allowed. However, because additional evidence had been filed the Court agreed to deal with the remaining ground of opposition. 

Use of the MAÎTRE CHOCOLATIER mark

To satisfy its initial burden of proof, Lindt had to establish that the MAÎTRE CHOCOLATIER mark was used or made known prior to October 9, 2015, and was not abandoned at the date of advertisement of the Application, May 2, 2018. 

There was no evidence before the court of use of its MAÎTRE CHOCOLATIER mark on its own. Rather, the evidence was limited to Lindt’s use of the MAÎTRE CHOCOLATIER mark in conjunction with other marks owned by Lindt. The following shipping label was representative

The Judge observed that nothing prevents an owner from using more than one trademark at the same time in association with a good or service.

The Judge applied the well-known test established by the case law. The use of a trademark in combination with additional material constitutes use of the mark per se as a trademark if the public, as a matter of first impression, would perceive the mark per se as being used as a trademark. This is a question of fact dependent on such factors as whether the mark stands out from the additional material, such as by the use of different lettering or sizing or whether the additional material would be perceived as purely descriptive matter or as a separate trademark or trade name, such that the mark remains recognizable.

The Board found that it was not clear whether the public would perceive the MAÎTRE CHOCOLATIER mark as being used per se.

There was no evidence that the MAÎTRE CHOCOLATIER mark would be perceived by the public as a sub-brand nor was a trademark notice used to help indicate that separate marks were being used.

The Judge concluded that the differences in appearance of the words did not, without more, lead him to conclude that Lindt had established that the public, as a matter of first impression, would perceive MAÎTRE CHOCOLATIER per se  as being used as a trademark Based on the limited evidence before him, he said that the immediate impression of the words MAÎTRE CHOCOLATIER was that they were descriptive of Lindt’s mastery or perfected skills as a chocolatier.

Lindt failed to demonstrate use of the MAÎTRE CHOCOLATIER mark per se prior to the filing date of GRC’s application (or at all) and the opposition was dismissed.

Comment 

Correct trademark use is a of fundamental importance to ensure trademarks can be maintained. Someone on behalf of the trademark owner needs to be responsible for auditing and monitoring brand expression and use and ensuring it is consistent with the brand strategy and legal requirements. Standardized presentations or templates are important and should be used by all relevant individuals to help control use.

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If you have questions, please contact me at  jmckeown@LN.Law

John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

 jmckeown@LN.Law

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This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law

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