Another battle concerning trademark use in the context of section 45 proceedings has occurred. The respondent spared no effort in attacking the applicant’s registration. Biologische Heilmittel Heel GmbH v. Barrette Legal Inc. 2024 FC 1178
The Facts
The registrant owns a registration for “TRAUMEEL” (the “Mark”), for use association in with pharmaceutical preparations to treat sprains, dislocations, contusions. etc; (the “Goods”).
The respondent caused section 45 proceedings to be begun requiring the registrant to provide evidence showing the Mark was in use in Canada in association with the Goods during the prior three-year period.
The registrant filed evidence which showed that its Goods were made in Germany and distributed by a “worldwide network of regional subsidiaries and local distributors”. The registrant had sold TRAUMEEL products in Canada for over 20 years, first through distributors and then through its Canadian subsidiary.
In 2010, the registrant’s American subsidiary faced two class action lawsuits, resulting in an overhaul of their packaging and advertising. In 2014, the registrant decided to stop direct sales in the U.S. and Canada, fearing further lawsuits.
Still, the registrant’s TRAUMEEL line of products remained readily available to Canadian consumers through European distributors that continued shipping TRAUMEEL products to them. These products are also available to consumers on Amazon Canada and EBay Canada.
Despite withdrawing from direct sales in Canada, the registrant maintained its Health Canada registrations for its products.
The Hearing Officer’s Decision
The Hearing Officer was not satisfied that the evidence clearly showed that any products sold in Canada during the relevant period displayed the Mark or were otherwise associated with it. The registrant’s affiant did not clearly state that packages in evidence represented the packages sent to Canadian consumers during the relevant period. They were not in French and English. In addition, the registrant’did not file enough evidence to show the registered Goods were transferred within Canada during the relevant period. The registration was expunged.
The Appeal
The registrant appealed and filed new evidence supporting its appeal consisting of the affidavits of two Canadian distributors, who had sold the registrant’s Goods to consumers during the relevant period.
The Judge agreed that the new evidence was “material” because it was relevant to whether the registrant had provided proof of use of the Mark in association with the Goods in Canada, during the relevant period. The Judge conducted a de novo analysis of whether the registrant had met the s. 45 test.
Section 45 provides a summary procedure for clearing the Register of Trademarks of registrations for marks that have fallen into disuse. It is not intended to resolve contentious issues between competing commercial interests, which should be resolved through expungement proceedings under section 57 of the Act.
When the Judge reviewed the evidence as a whole, he drew the inference that the Canadian companies referred to in the new evidence bought authentic TRAUMEEL products produced by the registrant. In addition, these purchases were from an authorized distributor listed in the registrant’s initial affidavit.
Based on this the registrant had shown it was the first link in the chain of distribution such that the sales of the TRAUMEEL products in Canada during the relevant period enured to its benefit.
The registrant’s failure to comply with various Canadian laws and regulations regarding language on packaging and other regulatory requirements was beyond the limited scope of a section 45 proceeding.
The Hearing Officer’s decision was set aside, and the registration maintained.
Comment
Section 45 provides a summary procedure for clearing “dead wood” from the Register of Trademarks. It is not intended to resolve contentious issues between competing commercial interests.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general 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.
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