Federal Court Denies New Evidence in Trademark Expungement Appeal
In a significant ruling, the Federal Court of Canada has denied an applicant’s request to introduce new evidence in an appeal related to the expungement of a trademark registration. The case, Power Herbs Wellness Trading Corporation v. Svenskt Kosttillskott AB, 2025 FC 1348, highlights the strict standards for submitting evidence in trademark disputes under the Trademarks Act.
The dispute centered on the trademark “Healthvell & Design,” registered by Power Herbs Wellness Trading Corporation. The mark covered various goods, such as dietary supplements and herbal treatments, as well as a service related to advertising distribution. However, on May 9, 2023, the Trademarks Opposition Board issued a notice under Section 45 of the Trademarks Act, requiring the applicant to provide evidence of the mark’s use during the relevant period.
When the applicant failed to demonstrate sufficient use of the trademark, the Registrar of Trademarks expunged the mark on May 28, 2024. The applicant appealed this decision, attempting to introduce new evidence under Section 56 of the Trademarks Act. This included a second affidavit and additional exhibits, but the Federal Court rejected the request.
The Court’s decision emphasized that the applicant’s counsel appeared to misunderstand the evidence required to prove trademark use. It underscored the importance of clearly demonstrating use in accordance with the Trademarks Act, stating that failing to meet these requirements could result in the denial of new evidence.
The ruling aligns with recent amendments to the Trademarks Act, effective April 1, 2025. These changes require parties appealing a Registrar’s decision to obtain court leave before filing new evidence, eliminating the previous automatic right to do so. The amendments aim to ensure that parties present their strongest evidence at the initial Board level, reducing the need for fresh reviews and streamlining trademark proceedings.
This case and the new legislative framework signal a stricter approach to evidence in Canadian trademark law. It reinforces the need for thorough preparation at the opposition stage and underscores the importance of clear, timely, and relevant evidence in maintaining or challenging trademark registrations.
For businesses and legal practitioners, the decision serves as a reminder of the heightened standards for trademark disputes. It emphasizes the importance of understanding and adhering to the requirements of the Trademarks Act to avoid expungement and successfully navigate appeals.
Read more about this case and its implications for trademark law in Canada at Canadian Lawyer Magazine.
Registrar’s Findings and the Court’s Analysis
The Registrar of Trademarks expunged the “Healthvell & Design” mark after determining that the applicant failed to demonstrate use of the trademark in connection with the listed goods and services. Specifically, the Registrar found no evidence of the mark being used in association with dietary supplements, diabetic fruit juice beverages, herbal supplements for treatment purposes, or the distribution of advertising supplements attached to regular editions for others.
Attempt to Introduce New Evidence on Appeal
On appeal, the applicant sought to introduce a second affidavit and additional exhibits under Section 56 of the Trademarks Act. However, the Federal Court carefully examined whether this new evidence met the legal standards for admissibility. The Court ultimately concluded that the proposed evidence did not satisfy the requirements for introduction at the appellate stage.
Court’s Emphasis on Clarity and Compliance
The Federal Court highlighted that the applicant’s counsel appeared to misunderstand the nature of evidence required to prove trademark use. The Court reiterated that trademark use must be clearly and unequivocally demonstrated in accordance with the Trademarks Act. It further noted that failure to address these requirements adequately would result in the denial of new evidence, as seen in this case.
Broader Implications of the Ruling
The decision underscores the importance of presenting a complete and compelling case at the Trademarks Opposition Board stage. With the recent amendments to the Trademarks Act, parties must now seek leave of the Court to file new evidence on appeal, rather than having an automatic right to do so. This change aims to promote efficiency and fairness in trademark proceedings by ensuring that all relevant evidence is presented during the initial stages.
Practical Takeaways for Businesses and Legal Practitioners
For businesses, the ruling reinforces the need to maintain detailed records of trademark use. Companies should ensure that all evidence of use is properly documented and readily available in case of challenges. Legal practitioners, on the other hand, must carefully advise their clients on the evidentiary requirements under the Trademarks Act and the implications of failing to meet these standards.
Impact of the 2025 Amendments
The amendments to the Trademarks Act, effective April 1, 2025, introduce significant procedural changes. These changes include the requirement for parties to obtain court leave before introducing new evidence on appeal, as well as broader powers for the Registrar to manage cases, award costs, and issue confidentiality orders. These reforms reflect a shift toward streamlining trademark disputes and ensuring that parties are prepared to present their best case at the earliest opportunity.
Conclusion
This case and the recent legislative amendments signal a more stringent approach to evidence in Canadian trademark law, particularly regarding the expungement and preservation of registered trademarks.
Conclusion
This case and the recent legislative amendments signal a more stringent approach to evidence in Canadian trademark law, particularly regarding the expungement and preservation of registered trademarks. The ruling underscores the importance of maintaining detailed records of trademark use and the need for legal practitioners to advise clients on evidentiary requirements under the Trademarks Act. As the legal landscape continues to evolve, businesses and practitioners must adapt to ensure compliance with the new standards.
FAQ
What are the consequences of failing to demonstrate trademark use in Canada?
Failing to demonstrate trademark use can lead to the expungement of the mark, as seen in this case, where the Registrar of Trademarks removed the “Healthvell & Design” mark due to insufficient evidence of use in connection with the listed goods and services.
Can new evidence be introduced on appeal under the Trademarks Act?
Under the recent amendments to the Trademarks Act, parties must now seek leave of the Court to file new evidence on appeal. The automatic right to introduce new evidence has been removed, emphasizing the importance of presenting a complete case at the initial stages.
How can businesses ensure compliance with trademark use requirements?
Businesses should maintain detailed and accurate records of trademark use, including evidence of the mark’s use in association with the listed goods and services. Legal counsel should be consulted to ensure compliance with the evidentiary standards under the Trademarks Act.
What are the key changes introduced by the 2025 amendments to the Trademarks Act?
The 2025 amendments include requirements for parties to obtain court leave before introducing new evidence on appeal, as well as expanded powers for the Registrar to manage cases, award costs, and issue confidentiality orders. These changes aim to streamline trademark disputes and promote fairness.
What steps should businesses take to prepare for the new trademark regulations?
Businesses should proactively document trademark use, seek legal advice to ensure compliance with the Trademarks Act, and be prepared to present a complete and compelling case at the earliest stages of any proceedings. This includes understanding the new evidentiary requirements and procedural changes introduced by the amendments.
