Ruling notes counsel’s lack of understanding of what trademark use must show in relevant period
In an appeal challenging trademark expungement, the Federal Court dismissed an application to adduce new evidence and noted that the applicant’s counsel did not seem to comprehend what use of a registered trademark should show within the pertinent timeframe.
In Power Herbs Wellness Trading Corporation v. Svenskt Kosttillskott AB, 2025 FC 1348, the applicant owned a trademark registration for the mark Healthvell & Design.
The listed goods included dietary supplements, diabetic fruit juice beverages, and herbal supplements for treating certain conditions, while the listed services included the distribution of advertising supplements attached to regular editions for others.
On May 9, 2023, in response to the respondent’s request, the Trademarks Opposition Board issued the applicant a notice under s. 45 of the Trademarks Act, 1985. The notice required the applicant to demonstrate:
- the trademark’s use in Canada in association with the goods and services stated in the registration at any time from May 9, 2020, to May 9, 2023 (the three years immediately before the notice date), or
- the date of the mark’s last use and the reason for its non-use since that date
On May 28, 2024, the trademarks registrar made a decision expunging the mark from the register upon determining that the applicant failed to show the mark’s use in connection with the listed goods and services or offer evidence of special circumstances excusing the mark’s non-use.
On appeal, the applicant wanted to provide new evidence under s. 56 of the Trademarks Act, consisting of a second affidavit and the following attached exhibits:
- a letter and invoices from a manufacturer
- Amazon webpage printouts showing the products for sale
- labels for the trademarked goods
- Health Canada webpages confirming the approval and association of Healthvell with the registered goods
The applicant alleged that the new evidence established its manufacture of Healthvell products since July 2018 and registration relating to herbal supplements for treating infectious diseases like urinary tract infections, herbal supplements for general well-being, and herbal pills for treating diabetes.
The applicant argued that the new evidence was sufficiently substantial, significant, and probative, such that the court should review the decision based on the correctness standard.
New evidence rejected
The Federal Court dismissed the application to adduce new evidence.
The court ruled that the applicant failed to prove that the registrar made a palpable and overriding error in determining that the applicant did not offer evidence of use under ss. 2 and 4 of the Trademarks Act to adequately meet the low evidentiary threshold for a s. 45 proceeding.
The court said unsupported assertions of use were not enough.
The court noted that the applicant’s counsel repeatedly asked the applicant for advice and asserted potential trademark use for urinary tract infections or sugar control during a diet.
The court held that the new evidence displayed the same flaws the registrar identified and failed to establish the alleged use of the trademark for urinary tract infections, sugar control in a diet within the relevant timeframe, or any other uses associated with the registered goods.
The court said the only new evidence displaying the trademark – the printed Amazon webpages and the labels – failed to demonstrate that the mark appeared on products sold in Canada within the pertinent period.
