New evidence on appeal demonstrates use of TRAUMEEL mark during relevant period

Background

In Biologische Heilmittel Heel GmbH v. Barrette Legal Inc., the Federal Court granted an appeal pursuant to section 56 of the Trademarks Act and maintained Biologische’s registration of the mark TRAUMEEL.

At the request of the respondent, Barrette, the Registrar of Trademarks had issued a notice under section 45 of the Trademarks Act requiring Biologische to provide evidence demonstrating use of the mark during the prior three-year period, from May 8, 2015 to May 8, 2018.

Based on the evidence before it, a Hearing Officer expunged Biologische’s trademark on the basis that the evidence did not show that the products sold in Canada during the relevant period displayed the mark or were associated with it. Furthermore, the evidence filed was not sufficient to demonstrate that the goods were transferred within Canada during the relevant period.

Biologische appealed the Hearing Officer’s decision to the Federal Court.

New evidence

In the appeal before the Federal Court, Biologische filed new evidence, as permitted under subsection 56(5) of the Trademarks Act. The new evidence was composed of two affidavits: the Bourgault affidavit and the McDonough affidavit.

Mr. Bourgault, the co-owner of a natural health products store in Quebec, attested that he had purchased TRAUMEEL products from 2015 to 2018 from Internationale Apotheke, a vendor in Karlsruhe, Germany. The Bourgault affidavit also included details of sales transactions to customers of TRAUMEEL products from 2017 to 2019.

Ms. McDonough, a store manager at a naturopathic clinic and pharmacy in Ottawa, attested that her clinic and pharmacy imported TRAUMEEL products from Internationale Apotheke in Karlsruhe, Germany, then sold the products to customers in Canada. The McDonough affidavit also included printouts of sales receipts in 2017 and 2018.

The Federal Court found that the new evidence was material because it was relevant to the central issue of the appeal: “whether the Applicant has demonstrated proof of use of the Mark in association with the Goods, in Canada, during the relevant period.” The evidence responded to the Hearing Officer’s concerns and would have impacted the Hearing Officer’s decision if it had been before the decision-maker.

The Federal Court therefore conducted a de novo analysis of the matter.

Use of the mark in association with the goods during the relevant period

The Federal Court then examined whether the evidence showed use of the mark in association with the goods during the relevant period.

Biologische’s evidence did not show that the distributor referred to in the Bourgault and McDonough affidavits, Internationale Apotheke, was an authorized distributor. Barrette argued that the evidence of sales by unrelated third parties cannot enure to Biologische’s benefit. On the other hand, Biologische asked the Court to draw a logical inference that the sales were made through an authorized distributor.

The Federal Court drew the inference that Bourgault’s and McDonough’s companies purchased authentic TRAUMEEL products produced by Biologische and that the purchases were from an authorized distributor. The products sold in Canadian stores prominently displayed the TRAUMEEL mark. Both affiants were familiar with Biologische’s products and had stated that the products they had obtained were authentic TRAUMEEL products. The distributor from which Bourgault’s and McDonough’s companies purchased product (Internationale Apotheke) did not have an identical name to the authorized distributor referred to in Biologische’s evidence (Weinbrenner-Apotheke), but both distributors were located in the same German city.

The Federal Court was satisfied that the evidence demonstrated the use of the TRAUMEEL mark in Canada during the relevant period, noting that “evidentiary overkill” is not required in a section 45 proceeding.

Conclusion

The Federal Court concluded that the evidence demonstrated use of Biologische’s TRAUMEEL mark during the relevant period and quashed the Hearing Officer’s decision expunging Biologische’s registration for the mark.

A copy of the decision can be found here.