Mr. Justice Mosley performed a distinctiveness analysis and found that FRENCH PRESS is a generic trademark. The Federal Court of Canada expunged trademark registration TMA 475,721 for FRENCH PRESS covering Non-electric coffee makers.

Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2012 FC 1450; Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2013 FCA 240 (appeal dismissed)

THE LEGISLATIVE and JURISPRUDENTIAL FRAMEWORK:

[13]           The relevant provisions of the Trade-marks Act, RSC 1985, c T-13 are set out in the attached annex. These include the definitions of “distinctive” and “use” in s 2; the provisions relating to when a mark is deemed to be used in ss 4(1); the prohibitions in ss 7, 10 and 11; when a trade-mark is registrable (s12(1)), when a registration is invalid (s 18(1)); rights conferred by registration (s 19); infringement (s 20(1); depreciation of goodwill (s 22); and licensing (s 50(1).

[14]           The definition of “distinctiveness” in s 2 of the Act requires that three conditions be met:

(1) that a mark and a product (or ware) be associated;

(2) that the “owner” uses this association between the mark and his product and is manufacturing and selling his product; and,

(3) that this association enables the owner of the mark to distinguish his product from that of others.

[15]           The question of distinctiveness is a question of fact with the test being whether a clear message has been given to the public that the wares with which the trademark is associated and used are the wares of the trade-mark owner and not those of another party: Philip Morris Inc v Imperial Tobacco Ltd [1985] FCJ No 1231 (TD) (QL) at paras 75-78, aff’d [1987] FCJ No 848 (CA).  A word may be commonly used in a descriptive sense yet still remain distinctive when used in certain circumstances: Aladdin Industries Inc v Canadian Thermos Products Ltd, [1969] 2 Ex CR 80 (QL) [Thermos] at para 80; appeal dismissed for delay1972 CanLII 187 (SCC), [1974] SCR 845. Proof of distinctiveness does not require evidence of exclusive use: John Labatt Ltd et al v Molson Breweries 2000 CanLII 17105 (FCA), [2000] 5 CPR (4th) 180, [2000] FCJ No 159 (QL) at para 72.

….

[18]           The material date for assessing the validity of a registration is the date of registration; in this case May 5, 1997: Airos Systems Ltd v Windsurfing International Inc (1983), 75 CPR (2d) 74 (TMOB) at paras 28-29 [Windsurfing].  A trade-mark that is not registrable by reason of s 12(1)(b) is registrable if it has been used in Canada so as to have become distinctive as of the date of filing the application (s 12(2).  Here the application was filed on June 28, 1995.

[19]           The material date for assessing the validity of a registration under s 18(1)(b) [distinctiveness] of the Act is the date upon which proceedings bringing the validity of the registration into question are commenced: Thermos above, at para 12.  In this case, that is the date of the filing of the defendant’s Statement of Defence and Counterclaim, February 10, 2010.

[20]           A presumption of validity applies to the registration with the burden of proving the contrary resting on the opposing party based on the right to exclusive use set out in s 19 of the Act: General Motors of Canada v Décarie Motors Inc, 2000 CanLII 16083 (FCA), [2001] 1 FC 665, 9 CPR (4th) 368 (CA) at para 31. But the presumption is “weakly worded”. It means simply that an application for expungement will succeed only if an examination of all of the evidence establishes that the trade-mark was not registrable at the relevant time: Cheaptickets and Travel Inc v Emall.ca Inc et al, 2008 FCA 50 (CanLII) at para. 12.

 

….

[143]      Given the integration of the American and Canadian markets, I considered a 1999 decision of the U.S. Trademark Trial and Appeal Board to be instructive: In re PI-Design AG, US TTAB 1999, online; http://des.uspto.gov/Foia/ReterivePdf?flNm=74580176-07-29-1999&system=TTABIS. In that decision, the Board denied an appeal from an examiner who refused registration of the plaintiffs’ “French Press” mark under s 2(e)(1) of the Trademark Act, 15 USC 1052 (e)(1) on the ground that it was merely descriptive. Applying the US test for “genericness”, the Appeal Board found that the purchasing public would understand “French Press” as referring to the relevant category or class of goods. Alternatively, the Board refused to approve registration under 2(f) of the Act for insufficient evidence of acquired distinctiveness. No appeal was taken from this decision to the U.S. District Court or to the Court of Appeal for the Federal Circuit and the application for registration of the mark was abandoned.

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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