Federal Court Confirms Expungement Of Opponent’s Trademark Registration Triggers De Novo Review

On May 26, 2025, the Federal Court (the Court) released its decision in GRC Food Services Ltd. v Chocoladefabriken Lindt & Sprüngli AG, 2025 FC 940, finding that the expungement of trademarks that were previously used to oppose an applicant’s trademark registration under Section 12(1)(d) of the Trademarks Act (the Act) may trigger a de novo review of the matter.

GRC Food Services Ltd.’s (GRC’s) application to register the trademark MASTER CHOCOLAT (the GRC Mark) was opposed by Chocoladefabriken Lindt & Sprüngli AG (Lindt) on multiple grounds, including that it would be confusing with Lindt’s registered trademarks; and the GRC Mark is not distinctive. The Trademarks Opposition Board (the Board) rejected most grounds of opposition but found in favor of Lindt’s argument under section 12(1)(d) of the Act, refusing to register the GRC Mark on the basis that it would be confusing with Lindt’s registered CHOCOLATE MASTERS trademarks (collectively, the Lindt Marks).

GRC appealed the Board’s decision, arguing that the Board erred in its confusion analysis. However, the Lindt Marks were later expunged from the register in October 2024, which changed the central issue of GRC’s appeal to whether the expungement constituted new material evidence and if so, the resulting consequences for the appeal.

The Court found that the good standing of an opponent’s mark was a threshold issue for their analysis under section 12(1)(d) of the Act because a valid trademark is necessary for its use in an opposition. The Court emphasized that it would be illogical and contrary to the interests of justice if it was not empowered to consider whether the opponent’s mark remains in good standing when reviewing the Board’s decision, “…as a proposed mark cannot be confusing with a registered mark that has been expunged”. Accordingly, the Court determined that the expungement of Lindt’s Mark constituted new material evidence and granted GRC leave to rely on the expungement in the appeal.

The Court also concluded that this new evidence triggered a de novo review, allowing the Court to set aside the Board’s previous decision and consider other grounds of opposition that were previously raised by Lindt.

Summary By: Uday Bahal