New evidence of use considered by court in RENAMIN Case

In Baxter International Inc v PT Kalbe Farma TBK (Case 2007 FC 439), the Federal Court of Canada has considered and accepted new evidence of use of a mark in an appeal against an expungement decision of the registrar of trademarks.

Baxter International Inc registered the trademark RENAMIN on February 19 1993 in association with nutritional, enteral and parenteral amino acid solutions for human use. On November 5 2004, upon request from the respondent, PT Kalbe Farma TBK, the registrar sent a notice to Baxter requiring evidence that its trademark RENAMIN was used in Canada within the previous three years. Pursuant to the requirements of the law, failure to provide such evidence leads to the expungement of the trademark from the register.

Baxter alleged that it had not received the registrar's notice. However, the registrar's notice was sent to the correct address of Baxter and to Baxter's representative of service.

A right to appeal a decision of the registrar is found in Section 56 of the Trademarks Act. Subsection 56(5) provides that evidence in addition to that adduced before the registrar may be adduced on an appeal and the court may exercise any discretion vested in the registrar.

The court in this case, based on a prior decision of the Federal Court of Appeal that rejected an argument that "the words 'in addition to' in Subsection 56(5) indicated that a trademark owner could only file evidence before the Federal Court if there was evidence before the registrar to which further evidence could be added", found that it could accept Baxter's new evidence of use.

Pursuant to that same prior decision, the court also found that it should accept the new evidence because that would otherwise amount to an interpretation of Section 56 the practical effect of which would be to deprive Baxter of a meaningful right of appeal.

The new evidence filed on appeal comprised an affidavit from the manager of marketing operations of Baxter's Canadian operating subsidiary, which contained statements that Baxter had used the trademark RENAMIN in Canada continuously since 1997, along with two exhibits: a sample of product packaging and invoices for the relevant period where the trademark RENAMIN appeared listed as a product name.

Having accepted that it could assess this evidence, the court found that it established that the mark RENAMIN had been used in Canada within the relevant period. Accordingly, it ordered that the registrar's decision to expunge the trademark be set aside.

Marcel Naud, Léger Robic Richard LLP, Montreal