Federal Court Rejects Opposition to Trademark Registration

OUTCOME: Allowed

Date: 20260505 Docket: T-28-24 Citation: 2026 FC 594 Ottawa, Ontario, May 5, 2026 PRESENT: The [NAME_1] [NAME_1] [NAME_1]: [COMPANY_3]. Applicant and [NAME_4] Respondent

JUDGMENT AND

REASONS I. Introduction [ 1 ] This is an appeal by the Applicant, [COMPANY_3]., under section 56 of the Trademarks Act , RSC 1985, c T-13, challenging the decision of the Trademarks Opposition Board dated October 25, 2023. In its decision, the Board refused to register the trademark MASTER CHOCOLAT [[NAME_2] [NAME_5]] on the basis that it would be confusing with two registered trademarks of the Respondent, [NAME_4]: TMA 377,673 and TMA 837,071. These registered marks were referred to by the parties as the [NAME_6]. [ 2 ] Before the Board, [NAME_4] also raised other grounds of opposition, involving addition trademarks owned by [NAME_4], which were not successful (non-entitlement under paragraphs 16(3)(a) and (b) and non-distinctiveness under section 2). [ 3 ] Following the Board’s decision, [NAME_4]’s [NAME_6] were expunged. After an initial hearing in this matter, this Court determined that the expungement of the [NAME_6] constituted new material evidence that triggered a de novo review. As the [NAME_6] were the only marks underpinning the Board’s rejection of [NAME_2]’s application, the Court set aside the Board’s decision. [ADDRESS] bifurcated the proceeding, with the remaining issues to be determined following the filing of additional evidence and submissions by the parties [2025 FC 940]. [ 4 ] Following the Court’s initial decision, [NAME_4] abandoned many of the remaining grounds of opposition and narrowed the asserted marks. [NAME_4] now only asserts two grounds of opposition: Ground 1 - [NAME_2] is not entitled to registration of the [NAME_2] [NAME_5] because it would be confusing with [NAME_4]’s MAÎTRE [NAME_5] (Application No. 1,773,030), pursuant to paragraph 16(3)(a) of the Act . Ground 2 - the [NAME_2] [NAME_5] is not distinctive within the meaning of section 2 of the Act because it does not actually distinguish between the goods and services of [NAME_4] in view of the extensive use, promotion, advertising and making known in Canada of [NAME_4]’s MAÎTRE [NAME_5]. [ 5 ] The parties agree that [NAME_4] bears a preliminary burden of proof in relation to each ground of opposition. The burdens are as follows: Ground 1 - [NAME_4] must establish that the MAÎTRE [NAME_5] was used or made known prior to October 9, 2015, and was not abandoned at the date of advertisement of [NAME_2]’s application. Ground 2 - [NAME_4] must establish that the MAÎTRE [NAME_5] was known in Canada to some extent at least, i.e., that its reputation in Canada was “substantial, significant or sufficient,” or else that it was well known in a specific area of Canada so as to negate the distinctiveness of the [NAME_2] [NAME_5]. [ 6 ] In relation to Ground 1, the Board found that no determination was necessary on the question of whether [NAME_4] had met its initial burden of proof because a collection of marks referred to as the MASTER CHOCOLATIER Marks (which included [NAME_4]’s MAÎTRE [NAME_5]) were not confusing with the [NAME_2] [NAME_5]. In relation to Ground 2, the Board found that [NAME_4] had not met its initial burden of proof. [ 7 ] The first issue before me is whether I should refuse to entertain [NAME_4]’s Ground 2 opposition because [NAME_4] made no written submissions in support of this ground. I find that, in the absence of written submissions, it was not open to [NAME_4] to advance this ground in oral argument.

Accordingly, [NAME_4]’s Ground 2 opposition will not be entertained and is therefore rejected. That said, I will nonetheless go on to consider the merits of this ground of opposition. [ 8 ] The second issue before me is the applicable standard of review in relation to the issue of whether [NAME_4] has met its initial burdens of proof. As the Board made no determination in relation to Ground 1, that issue must, by default, be determined on a de novo basis. In relation to Ground 2, I find that the applicable standard of review is the appellate standard, as the new evidence filed by [NAME_4] could not have had a material effect on the Board’s determination that [NAME_4] had not met its initial burden of proof. However, [NAME_4] has not identified an error by the Board in making that determination. With no asserted error, there is no basis upon which to review the Board’s determination. This is yet another reason to reject [NAME_4]’s Ground 2 opposition. Notwithstanding, I will nonetheless consider this ground of opposition from a de novo perspective. [ 9 ] The third issue before the Court is whether [NAME_4] has met its initial burden of proof in relation to its Ground 1 opposition. For the reasons that follow, I find that [NAME_4] has failed to do so because [NAME_4] has not demonstrated use of the MAÎTRE [NAME_5] per se prior to the filing date of [NAME_2]’s application (or at all). [ 10 ] The fourth issue before the Court is whether [NAME_4] has met its initial burden of proof in relation its Ground 2 opposition. For the reasons that follow, I find that [NAME_4] has failed to do so because [NAME_4] has provided no clear evidence establishing that the MAÎTRE [NAME_5] was known in Canada at least to some extent at the material time. [ 11 ] As these initial burdens of proof have not been met, I need not go on to the consider the remaining issues — namely, (i) whether the [NAME_2] [NAME_5] would be confusing with [NAME_4]’s MAÎTRE [NAME_5] pursuant to paragraph 16(3)(a) of the Act ; and (ii) whether the [NAME_2] [NAME_5] is not distinctive within the meaning of section 2 of the Act . [ 12 ] Given my findings, both of [NAME_4]’s remaining grounds of opposition are rejected. The Registrar is directed to register the [NAME_2] [NAME_5] in accordance with [NAME_2]’s application (Application No. 1,749,988).

II. Analysis A. Issue No. 1 - Should I refuse to entertain [NAME_4]’s Ground 2 opposition because [NAME_4] made no written submissions in support of this ground of opposition? [ 13 ] In its written representations, [NAME_4] made no submissions in support of its section 2 ground of opposition. Rather, [NAME_4] merely stated, after detailing its non-entitlement submissions under paragraph 16(3)(a), that the same analysis also supports refusal under paragraph 38(2)(d)/section 2 for confusion-based non-distinctiveness. At the hearing, I raised [NAME_4]’s failure to provide written submissions and asked the parties whether, in the circumstances, [NAME_4] should be entitled to continue to assert this ground and make oral submissions at the hearing. Notwithstanding the absence of written submissions, I allowed [NAME_4] to provisionally make oral submissions in the event that I determined that the section 2 opposition could be advanced. [ 14 ] [NAME_2] opposed the Court’s consideration of the section 2 opposition. [NAME_2] argued that the absence of written submissions put [NAME_2] at a disadvantage, as it was unable to make responsive submissions on this ground of opposition. [NAME_4] requested that the Court entertain its oral submissions, without further elaboration as to why. [ 15 ] I agree with [NAME_2] that the section 2 opposition is not properly before this Court. Only arguments included in a party’s memorandum can be advanced in oral argument [ [NAME_7] v Canada , 2023 FCA 96 at para 41; [NAME_7] v Canada (Minister of Citizenship and Immigration) , [2000] FCJ No 902 (QL) at para 4; [NAME_7] v Canada , 2020 FCA 57 at para 6]. [ 16 ] Having chosen to not make any substantive section 2 submissions in its written representations, it is not open to [NAME_4] to raise such arguments for the first time at the hearing. To permit [NAME_4] to articulate its section 2 opposition arguments for the first time at the hearing would be unfair to [NAME_2] because it would have no meaningful opportunity to consider the arguments and respond thereto. [ 17 ] This determination is a sufficient basis upon which to reject this ground of opposition. However, I will nonetheless go on to consider the merits of this opposition as it relates solely to the preliminary issue of whether [NAME_4] has met its initial burden of proof. B. Issue No. 2 - What is the applicable standard of review for the initial burden of proof decisions? [ 18 ] As a general rule, a statutory appeal from an administrative tribunal is reviewed on the usual appellate standards: correctness for questions of law, and palpable and overriding error for questions of fact and mixed fact and law [ Canada (Minister of Citizenship and Immigration) v Vavilov , 2019 SCC 65 at paras 36–37; [NAME_8] v [NAME_9] , 2002 SCC 33 at paras 7–8, 10, 36–37; [COMPANY_10] v [COMPANY_12] , 2025 FC 1688 at paras 25–26; [NAME_13] Company of Canada, Ltd v [NAME_14] , 2020 FCA 76 at paragraphs 22–23]. [ 19 ] However, in a section 56 appeal under the Act , when additional evidence is filed that would have materially affected the Board’s findings of fact or exercise of discretion, the Court “may exercise any discretion vested in the Registrar” and the appeal acts as a de novo review [ [NAME_13] , supra at paras 20–21; [COMPANY_15] v [NAME_16] SE , 2021 FC 974 at para 32]. [ 20 ] As such, a determination of the applicable standard of review generally turns on a consideration of any new evidence placed before the Court on appeal. As this appeal was commenced in 2024, I need not consider whether the parties should be granted leave to file any new evidence. [ 21 ] That said, this case raises a unique preliminary “twist.” When the parties appeared before this Court in March 2025 to argue the first portion of this application, the parties agreed that the Ground 1 and 2 oppositions would be determined by the Court on a de novo basis and the Court endorsed this approach. However, in its subsequent submissions, [NAME_2] took the position that the agreement reached between the parties was not consistent with the applicable legal principles and that the Court must make a determination of the standard of review, based on the new evidence. [ 22 ] [NAME_4] responded that it was not open to [NAME_2] to resile from its agreement. [NAME_4] argued that it would be prejudiced if the Court did not proceed on a de novo basis because [NAME_4] had not included, in its submissions, arguments related to errors made by the Board in its determination of the Ground 1 and 2 oppositions. [NAME_4] asserted that even if wrong in law, the agreement of the parties was binding. That said, [NAME_4] argued that there was, in any event, new evidence before the Court that would engage a de novo review of all remaining issues. [ 23 ] In order to avoid any potential prejudice to [NAME_4], I directed the parties to provide post-hearing submissions addressing the Board’s decision based on the appellate standard of review (in the event that I found that the appellate standard of review applied to the remaining issues). I have now received and considered those submissions. [ 24 ] Contrary to [NAME_4]’s assertion, I do not accept that it is open to parties to “contract out” of the applicable standard of review and no authorities were provided to the Court in support of [NAME_4]’s assertion. The standard of review must be determined by me, not the parties, after considering the applicable legal principles and the evidence before me. It was wrong of me to endorse the agreement of the parties to determine these issues de novo without first considering whether, on the evidence before now before me (which had not yet been filed), the de novo standard actually applied. As such, I must undertake that analysis before determining the applicable standard of review. (1) Legal Principles Applicable to the Assessment of New Evidence [ 25 ] To be material, the new evidence must be sufficiently substantial and significant, and of probative value [ [NAME_13] , supra at para 21]. Evidence may be material where it enhances the overall cogency of the record in a way that may have influenced the Board’s conclusions on a finding of fact or exercise of discretion or where it fills gaps or remedies a deficiency identified by the Board [ Promotion in Motion, Inc v [NAME_17] & [NAME_18] , 2024 FC 556 at para 57; Mövenpick Holding AG v Exxon Mobil Corporation , 2011 FC 1397 at para 54, aff’d 2013 FCA 6]. [ 26 ] Evidence will not be material where it merely supplements or confirms the findings of the Board or is repetitive of evidence already on the record [ [NAME_19] v [COMPANY_20] , 2019 FCA 63 at para 24; Tokai of [COMPANY_21] v [COMPANY_22], LLC , 2021 FC 782 at para 23]. [ 27 ] The materiality test is not whether the new evidence would have changed the Board's mind or, ultimately, the result or outcome but rather, whether it would have had a material effect on the decision. The question to ask is could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of discretion of the Board. The materiality test is a preliminary test to determine if, on appeal, the Court will have to reassess the evidence on a given issue, but does not involve such a reassessment up front to determine if it would ultimately change the result or outcome [ Seara , supra at paras 23, 25] [ 28 ] Importantly, even when new evidence is found to be material, this does not necessarily displace the Board’s findings in respect of every issue but rather only those issues for which the evidence is provided and admitted [ Tokai , supra at para 23, citing Seara , supra at para 22]. [ 29 ] Where no new evidence is adduced, or if it is determined that the new evidence is not material or sufficiently substantial and significant, the appellate standards of review remain applicable. (2) The Evidence before the Board [ 30 ] In order to understand the potential materiality of the “new” evidence, one must consider the existing evidence that was before the Board. [ 31 ] In support of its opposition, [NAME_4] had filed the affidavit of [NAME_23], Vice President of [NAME_4]’s Canadian subsidiary. In her evidence, [NAME_23] referred to four marks collectively as the “MASTER CHOCOLATIER Marks” : (i) the registered [NAME_4] MAÎTRE [NAME_5]; (ii) the registered [NAME_4] [NAME_5]; (iii) the unregistered MAÎTRE [NAME_5]; and (iv) the unregistered [NAME_5]. [ 32 ] In her affidavit, [NAME_23] did not address any other registered or unregistered trademarks used by [NAME_4] in Canada, any [NAME_4] sub-brands or [NAME_4]’s use of multiple trademarks on a given product. [ 33 ] [NAME_23] stated that [NAME_4] has extensively used, advertised and promoted the collective MASTER CHOCOLATIER Marks in Canada in association with various chocolate confectionary products since at least 1999. She stated that [NAME_4] has prominently displayed these marks on the packaging of the products, as well as in retail chocolate shops, since at least 1999. [ 34 ] Attached as Exhibit “C” to [NAME_23]’s affidavit were approximately 25 examples of product packaging that she asserted bore the collective MASTER CHOCOLATIER Marks, covering various [NAME_4] product lines including the gold bunny, Lindor, Excellence and Swiss Classic. Each of the examples shows MAÎTRE CHOCOLATIER used in conjunction with “SUISSE,” “DEPUIS 1845” and “[NAME_4] & SPRÜNGLI.” [ 35 ] Attached as Exhibit “D” to [NAME_23]’s affidavit were photographs of various [NAME_4] chocolate shops in Canada that she asserted prominently display the MASTER CHOCOLATIER Marks and are representative of the displays in [NAME_4]’s 57 shops in Canada. In each photo, the words MAÎTRE CHOCOLATIER appear below the word [NAME_4] and a design, and beside the words SUISSE and DEPUIS 1845. [ 36 ] [NAME_23] stated that almost all of the chocolate confectionary products sold by [NAME_4] in Canada display the collective MASTER CHOCOLATIER Marks on their packing and that between 2006 and 2018, [NAME_4] had just over $421 million in sales through its dedicated chocolate shops. She further stated that, between 2010 and 2018, [NAME_4] had over $1.8 million in sales through wholesale distribution points, such as gas stations, convenience stores, grocery stores, mass retailers (like Walmart and Loblaws) and club stores (like [NAME_24]). [ 37 ] [NAME_23] asserted that [NAME_4] has extensively used, advertised and promoted [NAME_4]’s chocolate confectionary products bearing the MAÎTRE [NAME_5], spending over $30 million on advertising and promotion since 2010. This included advertising and promotion at high-profile events, such as Stars on Ice, the Rogers Cup and the Toronto International Film Festival, which collectively generated over 80 million impressions of the MAÎTRE [NAME_5]. The photographs included as Exhibit “I” show MAÎTRE CHOCOLATIER used beside [NAME_4] or, in other photos, below the word [NAME_4] accompanied by a design and beside the words SUISSE and DEPUIS 1845. (3) The New Evidence [ 38 ] The only new evidence relevant to the remaining issues is the affidavit of [NAME_25], the Interim Head of Marking of [NAME_4]’s Canadian subsidiary. [NAME_23]’s evidence, [NAME_25]’s evidence is directed only to the MAÎTRE [NAME_5]. [ 39 ] [NAME_25] stated that, since at least 2010, the MAÎTRE [NAME_5] has appeared prominently on foil wrappers covering at least four varieties of [NAME_4] chocolate bars sold in Canada: Excellence, Swiss Classic, Les Grandes and Creation [MC Chocolate Bars]. She states that the MAÎTRE [NAME_5] appears as part of a “lockup” with their “house brand,” the registered [NAME_26] [NAME_5] (TMA 422,548), on foil wrappers as follows [[NAME_26]]: [ 40 ] The foil wrappers contain multiple images of the [NAME_26], an example of which is as follows: [ 41 ] [NAME_25] stated that the [NAME_26] has, since 2010, also appeared prominently on the top layer of protective cushioning in packages of tray-packed boxed chocolates sold in Canada. [ 42 ] [NAME_25] stated that, since at least 2010, the MAÎTRE [NAME_5] has also appeared on shipping labels affixed to boxes of chocolate products shipped to [NAME_4], who then distributes the boxes (bearing the same labels) to retailers across Canada. The labels appear as follows: [ 43 ] [NAME_25] stated that the [NAME_26] and tray-packed boxed chocolates have been sold in Canada since at least 2010, through: (a) dedicated [NAME_4] chocolate shops; and (b) wholesale distribution points such as gas stations, convenience stores, grocery stores, mass retailers (like Walmart and Loblaws) and club stores (like [NAME_24]). Total combined sales of these products exceeded $275 million CAD between 2010-2014, $300 million CAD between 2015-2018 and $625 million CAD between 2019-2024. [ 44 ] [NAME_25] stated that the [NAME_26] also appeared on exterior signage of [NAME_4] shops in Canada, since at least 2009, where [NAME_4] sells the MC Chocolate Bars, tray-packed boxed chocolates and other chocolate items. Annual sales data was provided for two retail locations, with sales in the range of $400,000 to $1.8 million CAD per year, per location, since 2009. [ 45 ] [NAME_25] stated that the MAÎTRE [NAME_5] has also appeared prominently on tents used for experiential marketing events and the distribution of free samples at various events in 2011, 2013 and 2015, including the Rogers Cup. In the photos included in her affidavit, MAÎTRE CHOCOLATIER appears beside [NAME_4] or beside the [NAME_26] [NAME_5]. (4) The [NAME_25] is Not Material to the Initial Burden of Proof Issues [ 46 ] [NAME_4] asserts that the [NAME_25] would have materially impacted the Board’s determination in relation to both grounds of opposition. [NAME_4] points to four paragraphs of the Board’s decision, which it asserts the new evidence is intended to address: Paragraph 69 - the Board agreed with [NAME_2] that, on the evidence before it: (a) the words MAÎTRE CHOCOLATIER are always accompanied by the words “SUISSE DEPUIS 1845” or “DEPUIS 1845” ; and (b) the term “[NAME_4]” and “[NAME_4] & Sprüngli” are the dominant words in the logos. Paragraph 71 - [NAME_4] notes that the Board never made a determination as to whether [NAME_4] had met its initial evidentiary burden to demonstrate use of the collective MASTER CHOCOLATIER Marks in relation to Ground 1. Paragraph 75 - the Board noted that the way the collective MASTER CHOCOLATIER Marks appear throughout the Wu Affidavit raises questions as to whether the public would perceive these marks as being used per se . Indeed, the Board noted only one instance in the Wu Affidavit (Exhibit I) where the terms “[NAME_4] MAÎTRE CHOCOLATIER” appear on their own. Consequently, the Board found that it is not clear the extent to which consumers would recognize the collective MASTER CHOCOLATIER Marks per se , and the degree with which they are made known in Canada as of the material date. Paragraph 103 - the Board noted that the evidence pertaining to the collective MASTER CHOCOLATIER Marks does not demonstrate extensive use of these marks per se , such that the Board could not conclude that any of the marks were known to a sufficient extent as of the material date. [ 47 ] [NAME_4] asserts that the [NAME_25]: Provides evidence of extensive use of the MAÎTRE [NAME_5], without reference to “SUISSE DEPUIS 1845” or “DEPUIS 1845,” which goes directly to [NAME_4]’s initial evidentiary burden. Addresses the acquired distinctiveness of the MAÎTRE [NAME_5] and whether the public would perceive the MAÎTRE [NAME_5] as being used per se. Specifically, [NAME_4] asserts that the sales evidence in the [NAME_25] was restricted to sales of the MC Chocolate Bars and tray-packed boxed chocolates bearing the [NAME_26] (which Lockup includes the MAÎTRE [NAME_5]), whereas the sales evidence in the Wu Affidavit included other products that did not bear the MAÎTRE [NAME_5]. [ 48 ] [NAME_2] asserts that the evidence contained in the [NAME_25] is no different in kind from the evidence in the Wu Affidavit and merely repeats or supplements the evidence that was before the Board. [NAME_2] notes that the Wu Affidavit showed use of the MAÎTRE [NAME_5] with another [NAME_5] ( “SUISSE DEPUIS 1845” or “DEPUIS 1845” ) and the [NAME_25] similarly shows use of the MAÎTRE [NAME_5] with other marks, albeit different ones. [NAME_2] asserts that sales data of marked products was already provided in the Wu Affidavit and that the sales data included in the [NAME_25] was simply a subset of the data already before the Board. [NAME_2] therefore asserts that the [NAME_25] is not material. [ 49 ] I find that the new evidence is relevant, in that it provides the factual basis for [NAME_4]’s arguments that it has established use of the MAÎTRE [NAME_5] and that the [NAME_5] has acquired distinctiveness. The evidence is also reliable in that it comes from a senior representative of [NAME_4]’s Canadian subsidiary and is supported by photographs. [ 50 ] However, I find that the probative value of the new evidence is low, as, contrary to [NAME_4]’s assertions, it does not prove or establish use of the MAÎTRE [NAME_5] per se or that the MAÎTRE [NAME_5] is known in Canada to some extent at least. [ 51 ] I agree with [NAME_4] that, unlike the Wu Affidavit, the [NAME_25] provides evidence that is specific to the MAÎTRE [NAME_5] (as opposed to the collective MASTER CHOCOLATIER Marks). The [NAME_25] also provides evidence of use of the MAÎTRE [NAME_5] not in conjunction with “SUISSE DEPUIS 1845” or “DEPUIS 1845.” It is clear to me that this was an attempt on [NAME_4]’s part to fill the evidentiary gap identified by the Board. [ 52 ] However, the [NAME_25] does not provide evidence of use of the MAÎTRE [NAME_5] on its own. In each photograph included in her affidavit, the MAÎTRE [NAME_5] appears together with [NAME_4] or the [NAME_26] [NAME_5]. While not the words “SUISSE DEPUIS 1845” nor “DEPUIS 1845,” the new evidence continues to show the MAÎTRE [NAME_5] only in combination with other marks. [ 53 ] [NAME_4] points to the shipping label as use of the MAÎTRE [NAME_5] on its own and not as part of the [NAME_26]. The shipping label shows the [NAME_26] [NAME_5] on the same line as the MAÎTRE [NAME_5], as opposed to the [NAME_26], where the MAÎTRE [NAME_5] appears below the [NAME_26] [NAME_5]. [NAME_4] asserts that there is a sufficiently large space between the [NAME_26] [NAME_5] and the MAÎTRE [NAME_5] such that they do not truly appear “together.” I find that there is no merit to this assertion. The space between them is minimal, such that I cannot accept that the shipping label constitutes use of the MAÎTRE [NAME_5] on its own. [ 54 ] [NAME_4] asserts that the [NAME_25] demonstrates, through the various photos of the [NAME_26], the storefront photos and the promotional photos, use of the MAÎTRE [NAME_5] per se . For the reasons that follow, I am not satisfied that the new evidence accomplishes that goal. [NAME_4] has not established use of MAÎTRE [NAME_5] per se. [ 55 ] [NAME_4] further asserts that the sales evidence in the [NAME_25] demonstrates the acquired distinctiveness of the MAÎTRE [NAME_5]. However, for the reasons that follow, I am not prepared to infer from the sales data alone that the MAÎTRE [NAME_5] was known in Canada at least to some extent at the material date. [ 56 ] In light of the above, I find that the new evidence is not material because it could not have had a bearing on the Board’s determination that [NAME_4] had not met its initial burden of proof in relation to its Ground 2 opposition. I need not make a determination in relation to the Ground 1 opposition, as the Board no determination of that issue. (5) The Resulting Standards of Review [ 57 ] For the initial burden of proof in relation to [NAME_4]’s Ground 1 opposition, the Board made no decision on that issue. While I could send the matter back to the Board to determine, I find that little point would be served in doing so in light of the Board’s other findings. In the absence of a decision from the Board to review, there is no basis upon which to apply an appellate standard. As such, I must decide this issue de novo . [ 58 ] As the new evidence is not material to the issue of whether [NAME_4] met its initial burden of proof in relation to its Ground 2 opposition, the applicable standard of review is the appellate standard. However, [NAME_4] has not asserted any error made by the Board in its determination that [NAME_4] had not met its initial burden of proof. In the absence of an asserted error, there is no basis upon which to review the Board’s determination. This is yet another basis upon which to reject [NAME_4]’s Ground 2 opposition. [ 59 ] However, even if the de novo standard of review applied, I would still dismiss [NAME_4]’s Ground 2 opposition because I find that [NAME_4] has failed to meet its initial evidentiary burden. C. Issue No. 3 - [NAME_4] meet its initial burden of proof on its Ground 1 opposition? [ 60 ] The parties agree that, in order to meet its initial burden of proof, [NAME_4] has to establish that the MAÎTRE [NAME_5] was used or made known prior to October 9, 2015, and was not abandoned at the date of advertisement of the Application (in this case, May 2, 2018) [ [COMPANY_27], operating as [NAME_28] v [COMPANY_27], operating as [NAME_28] , 2017 TMOB 1 (CanLII) at para 14]. [ 61 ] There is no assertion that the MAÎTRE [NAME_5] has been abandoned, nor are there any temporal disputes. [ 62 ] As I have already determined, there is no evidence before me of use of the MAÎTRE [NAME_5] on its own. Rather, the evidence is limited to [NAME_4]’s use of the MAÎTRE [NAME_5] in conjunction with other marks owned by [NAME_4]. [NAME_4] asserts that it has demonstrated use of the MAÎTRE [NAME_5], within the meaning of subsection 4(1) of the Act , because “MAÎTRE CHOCOLATIER” appears on the foil wrapping of the MC Chocolate Bars (as part of the [NAME_26]), the top cushions of tray-packed boxed chocolates (as part of the [NAME_26]), shipping labels (beside the [NAME_26] [NAME_5]), exterior store signage (below the [NAME_26] [NAME_5]) and various advertising and promotional materials (below or beside the [NAME_26] [NAME_5], beside the [NAME_4] [NAME_5] and sometimes below the [NAME_26] [NAME_5] together with the words “SUISSE DEPUIS 1845” ). [ 63 ] It is important to note that nothing precludes an owner from using more than one trademark at the same time in association with a good or service [ [COMPANY_30] v [COMPANY_31] , 6 CPR (3d) 270]. [ 64 ] Here, the dispute turns on whether [NAME_4]’s goods bearing the words “MAÎTRE CHOCOLATIER,” together with other marks, constitute use of the MAÎTRE [NAME_5] per se . [NAME_4] asserts that it does. [NAME_2] asserts that it does not. [ 65 ] The use of a trademark in combination with additional material constitutes use of the [NAME_5] per se as a trademark if the public, as a matter of first impression, would perceive the [NAME_5] per se as being used as a trademark. This is a question of fact dependent on such factors as whether the [NAME_5] 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 [NAME_5] remains recognizable [ [COMPANY_32] v [COMPANY_33] , 2 CPR (3d) 535 at 538; [NAME_35] v [COMPANY_37] , 2024 FC 891 at para 36; Registrar of Trade Marks v [NAME_38] , 4 CPR (3d) 523]. [ 66 ] The issue of use of the MAÎTRE [NAME_5] per se was raised squarely by the Board. The Board found that it was not clear whether the public would perceive the MAÎTRE [NAME_5] (among others) as being used per se . [NAME_4] now asserts that the [NAME_25] directly addresses this issue. Yet, for reasons unknown to me, [NAME_4] chose to make no written submissions on this issue. It was only at the hearing that [NAME_4] addressed this issue for the first time. [ 67 ] [NAME_4] now argues that the average consumer would interpret the [NAME_26] as use of two separate trademarks — (i) the MAÎTRE [NAME_5]; and (ii) the [NAME_26] [NAME_5]. [NAME_4] notes that the MAÎTRE [NAME_5] has different sizing and lettering and appears on a different line from the [NAME_26] [NAME_5]. [NAME_4] argues that a consumer would recognize that MAÎTRE CHOCOLATIER is a “sub-brand” to the [NAME_4] house brand, just like [NAME_4]’s other sub-brands, such as the gold bunny, Excellence and Swiss Classic. [ 68 ] [NAME_2] asserts that [NAME_4] has failed to file any evidence that shows use of the MAÎTRE [NAME_5] per se prior to the filing date of [NAME_2]’s application. The words MAÎTRE CHOCOLATIER never appear on their own. Rather, [NAME_2] asserts that in all examples of asserted use relied upon by [NAME_4], the words MAÎTRE CHOCOLATIER are used as part of [NAME_4]’s registered [NAME_4] MAÎTRE [NAME_5]. [NAME_2] asserts that there is no evidence before the Court that would support a finding that the public, as a matter of first impression, would perceive the MAÎTRE [NAME_5] per se as being used as a trademark. Rather, [NAME_2] asserts that the public would view the examples provided by [NAME_4] as use of the registered [NAME_4] MAÎTRE [NAME_5]. [ 69 ] I am not satisfied that [NAME_4] has demonstrated use of the MAÎTRE [NAME_5] per se . [NAME_4] argues that the consumer would recognize that MAÎTRE CHOCOLATIER is a sub-brand to the [NAME_4] house brand. However, there is no evidence before me regarding the public’s perception of MAÎTRE CHOCOLATIER, let alone evidence that consumers would view it as a sub-brand. The concept of it being a sub-brand was only raised for the first time by counsel at the hearing. [NAME_4]’s own witnesses, [NAME_23] and [NAME_25], do not refer to MAÎTRE CHOCOLATIER as a sub-brand, yet alone as a sub-brand that would be recognized by the public as a matter of first impression. [NAME_23] stated in her affidavit that “[NAME_4] and its chocolate confectionary products are extremely well-known in Canada,” which is a statement that I accept. However, there is no similar evidence from either [NAME_23] or [NAME_25] regarding the MAÎTRE [NAME_5] or “sub-brand.” [ 70 ] [NAME_4] relies on the Board’s decision in [COMPANY_39] v [COMPANY_42] doing business as [NAME_39] , 8 CPR (3d) 512, which it states is analogous to this case. In [NAME_40] , the applicant sought to register the trademark AUDIOSOUND in association with various goods. The opponent filed a statement of opposition on the basis that it would be confusing with their registered trademark AUTOSOUND, which was registered in association with goods of a similar nature. The applicant asserted that the opponent had not established use of its trademark AUTOSOUND but had only shown use of the trademark PANASONIC AUTOSOUND. The Board found as follows: […] Although it is true that the opponent’s trade [NAME_5] invariably appears in conjunction with its trade [NAME_5], the appearance of these two marks on the wares as shown in ex. J to the [NAME_43] affidavit is such that the [NAME_5] is positioned below the [NAME_5] and in a different size and style of lettering. Furthermore, the trade [NAME_5] is identified with a subscripted encircled R. Finally, from a review of the opponent’s evidence and, in particular, ex. J to the [NAME_43] affidavit, it would appear that the average consumer would react to the opponent’s packaging as employing the opponent’s house [NAME_5] in conjunction with the opponent’s product [NAME_5]. Thus, I find that the average consumer would react to the foregoing as use of the opponent’s [NAME_5] alone. […] [ 71 ] [NAME_4] argues that the Board found that use of the sub-brand AUTOSOUND was established even though it was only used with the house [NAME_5], which is similar to the circumstances here. I reject this assertion. In [NAME_40] , the Board had affidavit evidence as to how the public perceived the AUTOSOUND sub-brand, and where the [NAME_5] appeared with the house [NAME_5], AUTOSOUND was identified with a subscripted encircled R. There is no such evidence of public perception in this case. There is also no use of a registered trademark symbol next to MAÎTRE CHOCOLATIER, although this is not surprising given that it is not a registered trademark. Had such a symbol been useable, it certainly would have signaled to the public that MAÎTRE CHOCOLATIER was a separate trademark. [ 72 ] [COMPANY_44] v [COMPANY_45] , 2012 TMOB 63, the Board considered whether the opponent had shown use of its [NAME_5] only or had shown use of both its BLACK LABEL and BLACK LABEL COLLECTION marks. The Board noted that the evidence showed that the [NAME_5] appeared on the headrests, foot sashes and pillowcases in a larger and more dominant font than the word COLLECTION. Further, the ® symbol appeared after the words BLACK LABEL. In that case, the Board was satisfied that the evidence as a whole (which was more than just differences in the appearance of words) showed illustrative examples of both of the opponent’s BLACK LABEL and BLACK LABEL COLLECTION marks. [ 73 ] I acknowledge that, in the [NAME_26] or other examples of MAÎTRE CHOCOLATIER appearing together with [NAME_4] or the [NAME_26] [NAME_5], MAÎTRE CHOCOLATIER appears in a different font and size, like in [NAME_40] and in Sealy . However, I find that the differences in appearance of the words does not, without more , lead me to conclude that [NAME_4] has established that the public, as a matter of first impression, would perceive MAÎTRE CHOCOLATIER per se as being used as a trademark [ [NAME_46] v [NAME_47] , 2023 TMOB 094 at para 21]. Based on the limited evidence before me, I find that the immediate impression of the words MAÎTRE CHOCOLATIER is that they are descriptive of [NAME_4]’s mastery or perfected skills as a chocolatier. [ 74 ] Accordingly, I find that [NAME_4] has failed to demonstrate use of the MAÎTRE [NAME_5] per se prior to the filing date of [NAME_2]’s application (or at all). D. Issue 4 - [NAME_4] meet its initial burden of proof in relation to its Ground 2 opposition? [ 75 ] Under paragraph 38(2)(d) of the Act , an application for the registration of a trademark may be opposed on the basis that the [NAME_5] is not distinctive. To succeed on this ground of opposition, [NAME_4] has the initial burden to establish that, as of the date the statement of opposition was filed, its MAÎTRE [NAME_5] was known in Canada to some extent at least, i.e., that its reputation in Canada was “substantial, significant or sufficient,” or else that it was well known in a specific area of Canada so as to negate the distinctiveness of the [NAME_2] [NAME_5] [ [COMPANY_48] v [COMPANY_49] et al , 56 CPR (2d) 44; [NAME_52] v [COMPANY_54] , 2006 FC 657 at para 33]. [ 76 ] In either case, it is not enough for [NAME_4] to simply assert that its trademark was known. There must be clear evidence of the extent to which it was known [ [NAME_51] , supra at para 33; [COMPANY_55] v [COMPANY_55] , 2019 FCA 10]. [ 77 ] I have no written submissions from [NAME_4] on this issue. [NAME_4]’s submissions at the hearing were very limited and made no reference to the applicable jurisprudence. [NAME_4] relies on the significant sales of the products bearing the [NAME_26] as evidence of the extent to which the MAÎTRE [NAME_5] was known in Canada. [ 78 ] However, I have already determined that [NAME_4] has not established use of the MAÎTRE [NAME_5] per se because the public would not perceive the words MAÎTRE CHOCOLATIER as they appear in the [NAME_26], or otherwise on the [NAME_4] products, as being a separate trademark. If there is no use of the MAÎTRE [NAME_5] per se , I fail to see how the [NAME_5] can be known in Canada. While there is certainly evidence of extensive sales of products that bear the words MAÎTRE CHOCOLATIER (together with the predominant [NAME_26] [NAME_5]), I am not prepared to infer from this sales evidence alone that the MAÎTRE [NAME_5] was known in Canada. [ 79 ] Like the Board, I find that there is no clear evidence establishing that the MAÎTRE [NAME_5] was known in Canada at least to some extent at the material time. As such, this is another basis on which to reject this ground of opposition.

III. Conclusion [ 80 ] For the reasons above, [NAME_4]’s remaining grounds of opposition are rejected. The Registrar is directed to register the [NAME_2] [NAME_5] in accordance with [NAME_2]’s application (Application No. 1,749,988).

IV. Costs [ 81 ] The parties have agreed that the successful party should be awarded their costs incurred from May 26, 2025, onward (after my earlier decision in this matter), fixed in the all-inclusive amount of $5,000. As [NAME_2] was successful, it shall be awarded its costs in that amount.

JUDGMENT in T-28-24 THIS COURT’S

JUDGMENT is that : The Respondent’s remaining grounds of opposition are rejected. The Registrar is directed to register the trademark MASTER CHOCOLAT, in accordance with Application No. 1,749,988. The Respondent shall pay to the Applicant its costs of the proceeding from May 26, 2025, to the date of this Judgment, fixed in the amount of $5,000, inclusive of taxes and disbursements. “[NAME_56]” Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-28-24 STYLE OF CAUSE: [COMPANY_3]. v [NAME_4] OF HEARING: VANCOUVER, BRITISH COLUMBIA DATE OF HEARING: FEBRUARY 18, 2026 POST-HEARING SUBMISSIONS MARCH 18, 2026 APRIL 15, 2026

JUDGMENT AND

REASONS: [NAME_57]. DATED: MAY 5, 2026 APPEARANCES: [NAME_58] [NAME_60] For The Applicant [NAME_62] [NAME_64] For The Respondent SOLICITORS OF RECORD : [COMPANY_65] and Solicitors Vancouver, British Columbia For The Applicant [COMPANY_66] and Solicitors Vancouver, British Columbia For The Respondent