Canadian Intellectual Property Office
Citation: 2023 TMOB 139
Date of Decision: 2023-08-07
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: 2330-2029 Quebec Inc.
Registered Owner: Medtronic Bio-Medicus, Inc.
Registration: TMA427,193 for BIO-MEDICUS
Introduction
[1] This is a decision involving a summary expungement proceeding under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) with respect to registration No. TMA427,193 for the trademark BIO-MEDICUS (the Mark), owned by Medtronic Bio-Medicus, Inc. (the Owner).
[2] For the reasons that follow, I conclude that the registration ought to be amended.
The Record
[3] At the request of 2330-2029 Quebec Inc. (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on April 14, 2022. The notice required the Owner to show whether the Mark had been used in Canada in association with each of the goods specified in the registration at any time within the three-year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is April 14, 2019, to April 14, 2022.
[4] The Mark is registered for use in association with the following goods:
Blood circulatory devices for use in cardiovascular surgery namely, blood pumps, consoles, cannulae and accessories therefor.
[5] The relevant definition of use in the present case is set out in section 4 of the Act as follows:
4(1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
[6] It is well accepted that the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)]. However, sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trademark in association with each of the goods specified in the registration during the relevant period.
[7] In response to the Registrar’s notice, the Owner furnished the affidavit of David Priem, the Senior Principal Legal Counsel, IP department for the Owner, sworn on November 17, 2022. Only the Owner submitted written representations; no oral hearing was held.
Evidence and Analysis
[8] Mr. Priem explains that the Owner distributes its goods in Canada through its Canadian division, Medtronic Canada ULC, and that the Mark is displayed on the goods themselves and on their packaging and labeling. As Exhibit A, he attaches a photograph of the Mark displayed on the label for a box; he explains that this shows the manner in which the Mark was displayed on the Owner’s goods and their packaging during the relevant period.
[9] As Exhibit B, Mr. Priem attaches sample invoices dated during the relevant period showing the sale of various products by the Owner’s Canadian distributor to various hospitals in Canada. The invoices show sales of products identified as “CANNULA [...] BIO-MEDICUS” and “CATHETER [...] BIO-MED”. As Exhibit E, he attaches a spreadsheet showing sales of the Owner’s goods in Canada for the fiscal years 2019, 2020, 2021, and 2022, showing sales of “CANNULA [...] BIO-MEDICUS”, “CATHETER [...] BIO-MED”, as well as “KIT [...] BIO-MEDICUS INSERTION”. In addition, as Exhibits C and D, respectively, he attaches catalogs and website screenshots from the Owner’s Canadian website, which he states are representative of how the Owner’s goods were promoted, advertised, and offered for sale during the relevant period.
[10] I am satisfied that the sales shown in the invoices and sales report spreadsheet amount to sales by the Owner in the normal course of trade in Canada, and that the Mark would have been displayed on the goods’ packaging during the relevant period in the manner shown in Exhibit A. However, I note that Mr. Priem does not correlate the Owner’s specific goods “blood pumps, consoles, cannulae and accessories therefor” with the items shown in the invoices and sales report, and in its written representations, the Owner submits only that the evidence demonstrates use of the Mark “in association with the registered goods” and does not specifically refer to any of the individual registered goods.
[11] In the Exhibit C catalogs, there are a number of products associated with various trademarks, but the Mark appears only in association with cannulae and kits; I note that the catalog instructs customers to “Order your cannulae as single stand-alone units or with a kit included. For cannula singles, an insertion kit should be ordered.” Based on the totality of the evidence, including the product descriptions in the Exhibit C catalog for the BIO-MEDICUS cannulae and kits, I am prepared to infer that the catheters and kits would correlate with the “accessories” goods in the registration. In view of the invoices and sales reports showing sales of cannulae, catheters, and kits in the normal course of trade in Canada during the relevant period, and considering that Mr. Priem has shown how the Mark would have appeared on the packaging of these goods during the relevant period, I am satisfied that the Owner has shown use of the Mark within the meaning of sections 4 and 45 of the Act in association with “Blood circulatory devices for use in cardiovascular surgery namely, [...] cannulae and accessories therefor”.
[12] By contrast, the Owner’s evidence provides no basis on which I could infer that any of the items listed as having been sold in association with the Mark in Canada during the relevant period would correlate with “blood pumps” or “consoles”. In this respect, while two products identified as “Blood Pump” are displayed in the Exhibit D screenshots, they are associated with the trademarks “BPX” and “Affinity”; however, in these screenshots, the Mark only appears in listings for what appear to be cannulae (which have been highlighted in the screenshots by the affiant). In any event, it is not clear whether these “blood pump” goods were sold in Canada during the relevant period in association with the Mark or otherwise. With respect to “consoles”, the Owner’s evidence provides no information as to the nature of these goods, and there is nothing in evidence to suggest that these goods were sold in Canada during the relevant period in association with the Mark or otherwise. In this respect, it is not for the Registrar to speculate as to the nature of the goods or the trade; it is the responsibility of the registered owner to show the connection between the goods registered and those included in the evidence [Fraser Milner Casgrain LLP v Fabric Life Ltd, 2014 TMOB 135 at para 13].
[13] Accordingly, in the absence of evidence showing transfers of “blood pumps” and “consoles” in association with the Mark, I am not satisfied that the Owner has established use of the Mark within the meaning of sections 4 and 45 of the Act in association with these goods. As the Owner has not described any special circumstances which would excuse non-use of the Mark in association with these goods, the registration will be amended accordingly.
Disposition
[14] In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete “blood pumps, consoles”.
[15] The amended registration will be as follows:
Blood circulatory devices for use in cardiovascular surgery namely, cannulae and accessories therefor.
___________________________
G.M. Melchin
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: No hearing held
AGENTS OF RECORD
For the Requesting Party: Robic
For the Registered Owner: Osler, Hoskin & Harcourt LLP