BETWEEN:
and
REASONS FOR JUDGMENT
Pinard J.
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), of a decision of the Registrar of Trade-marks, dated March 8, 2006, ordering that Registration No. TMA 408,226 for the trade-mark RENAMIN be expunged from the Register pursuant to subsection 45(4) of the Act.
[2] On October 20, 2005, the respondent, P.T. Kalbe Farma TBK, requested the Registrar of Trade-marks (the “Registrar”) to issue a notice pursuant to section 45 of the Act with respect to the applicant’s registration of the RENAMIN trade-mark.
[3] In a letter dated November 4, 2005, the Registrar notified the applicant of section 45 proceedings for the trade-mark RENAMIN (the “Section 45 Notice”). The applicant was given three months to provide evidence that the trade-mark had been in use in Canada at any time within the last three years.
[4] The applicant alleges that it did not receive the Section 45 Notice.
[5] On March 8, 2006, the Registrar sent a letter to the applicant notifying it that the trade-mark RENAMIN would be expunged because the applicant failed to file the evidence required.
[6] On May 25, 2006, the trade-mark RENAMIN was expunged pursuant to section 45 of the Act.
[7] On November 28, 2006, the applicant filed a notice of application appealing the decision to expunge the trade-mark RENAMIN and filed new evidence.
[8] The respondent is not opposing the application.
New evidence
[9] The applicant submits that pursuant to subsection 56(5) of the Act the Federal Court can consider new evidence that was not before the Registrar.
[10] In Austin Nichols & Co. v. Cinnabon, Inc., [1998] F.C.J. No. 1352 (QL), the Federal Court of Appeal discussed the issue of whether the Court can consider new evidence in an appeal under section 56 where the trade-mark holder is appealing a decision of the Registrar to expunge a trade-mark and failed to file evidence before the Registrar. In that case, the respondent argued that the words “in addition to” in subsection 56(5) indicated that an applicant could only file evidence before the Federal Court if there was evidence before the Registrar to which further evidence could be added. The Court concluded that an applicant is entitled to file evidence on appeal even if no evidence was filed before the Registrar. Therefore, the Court may accept the applicant’s evidence of use.
[11] The applicant refers to the case of Cadumaus Enterprises Ltd. v. Ford Motor Company, [2000] F.C.J. No. 885 (QL), wherein Mr. Justice Campbell allowed an appeal where the trade-mark owner did not file the requisite evidence on time because it did not become aware of the section 45 proceeding until after the trade-mark had already been expunged. The facts were slightly different in Cadumaus in that Campbell J. found that the notice of the section 45 proceeding was not addressed to the appellant’s current place of business. The evidence in this case does not indicate that the Section 45 Notice was sent to the wrong address and, in fact, indicates that the Section 45 Notice was sent to the correct address of the applicant and was also sent to the applicant’s representative of service.
[12] The Federal Court of Appeal in Austin Nichols, supra, held that trade-mark owners who disregard section 45 notices should not be “punished.” The Court stated that
[11] The terms of section 56 do not permit an interpretation whose practical effect would be to deprive anyone in any given case of a meaningful right of appeal. As the failure to file evidence is in itself a ground for expungement by the Registrar in a section 45 proceeding, to deny a registered owner the right to file evidence in appeal is to deny him for all practical purposes any chance to succeed in his appeal.
[13] Therefore, even though the evidence indicates that the Section 45 Notice was sent to the correct address of the applicant’s and to the applicant’s representative of service, the Court should accept the new evidence.
Has the applicant provided acceptable evidence of use, as required by section 45 of the Act?
[14] The applicant must provide evidence of use of the trade-mark in relation to both those wares and services listed in the Registry. The applicant’s trade-mark registration on the Canadian Intellectual Property Office states that the trade-mark RENAMIN is registered in association with just one ware, nutritional, enteral and parenteral amino acid solutions for human use.
[15] Section 45 has been described as “a summary procedure designed to clear the register of trade-marks that have fallen into disuse and that are, at least arguably to some extent, ‘deadwood’”; consequently “evidentiary overkill” is not required by the registered owner to show use of the trade-mark (Tint King of California Inc. v. Canada (Registrar of Trade-marks), 2006 FC 1440 at paragraph 12).
[16] The applicant provides as evidence of use an affidavit from Judie Long, the Manager of Marketing Operations of Baxter Corporation, the Canadian operating subsidiary of Baxter International Inc. She states that the applicant has used the trade-mark RENAMIN in Canada in association with nutritional, enteral and parenteral amino acid solutions for human use continuously since 1997, including the three year period immediately preceding the date of the Section 45 Notice.
[17] She also states that Baxter has used the trade-mark RENAMIN by applying it to labels affixed to RENAMIN products and by applying it to the packaging for the RENAMIN products offered for sale and sold by Baxter in Canada. Exhibit A of her affidavit is a sample of product packaging used by Baxter in Canada. Exhibit B of her affidavit contains invoices indicating the sale of RENAMIN products in Canada. She states that the sales for RENAMIN products in Canada were $354.04 in 2002, $354.04 in 2003 and $26,919.84 in 2005.
[18] The use of a trade-mark on an invoice may or may not be considered use in association with wares described in the invoice. In Tint King of California, supra, the Court held, at paragraph 32, that “the major consideration is whether the trade-mark is being used as a trade-mark in describing the wares contained in the invoices and, as such, whether appropriate notice of such use is being given to the transferee of the wares.”
[19] In the invoices submitted by the applicant, the trademark RENAMIN appears listed as a product name under a column for description of products and as such is used to describe the wares.
[20] The relevant period for the analysis is from November 4, 2002 to November 4, 2005. The invoices are dated within this period.
[21] The affidavit evidence, along with the evidence of sales and the use of the trade-mark on the applicant’s invoices, establishes that the trade-mark RENAMIN has been used, at some time during the three year period immediately preceding the date of the Section 45 Notice, in association with the wares for which it is registered.
[22] This appeal is therefore allowed and the Registrar’s decision to expunge Registration No. TMA 408, 226 for the trade-mark RENAMIN from the Register is set aside.
Ottawa, Ontario
April 30, 2007
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2073-06
STYLE OF CAUSE: BAXTER INTERNATIONAL INC. v. P.T. KALBE FARMA TBK.
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: March 20, 2007
REASONS FOR JUDGMENT: Pinard J.
DATED: April 30, 2007
APPEARANCES:
Abigail Browne FOR THE APPLICANT
SOLICITORS OF RECORD:
Sim, Lowman, Ashton & McKay LLP FOR THE APPLICANT
Barristers and Solicitors
Toronto, Ontario