Evidence of spillover effects from US usage may be relevant in assessing distinctiveness

In a recent trademark infringement decision of the Federal Court, Bodum USA Inc v Meyer Housewares Canada Inc (2012 FC 1450), the Federal Court has invalidated and expunged Pi Design’s FRENCH PRESS registration for being non-distinctive, clearly descriptive, and a commonly used name for the goods.

The plaintiff Pi Design owned a registered trademark for FRENCH PRESS for goods described as “non-electric coffee makers”. Bodum, the co-plaintiff, was the exclusive licensee of the mark in Canada, and sold non-electric, plunger-type coffee makers. The defendant, Meyer Housewares Canada, also sold plunger-type coffee makers in which the packaging and product inserts bore the term 'French press'.

In 2009 the plaintiffs filed an action against Meyer alleging infringement of the registered trademark FRENCH PRESS. By counterclaim, Meyer sought a declaration of invalidity of the trademark and expungement of the registration on the basis of non-distinctiveness of the trademark.

The primary issue considered by the court was whether or not FRENCH PRESS was distinctive of Bodum, or whether it had become generic as of the time of the counterclaim.

The evidence heard at trial showed that Bodum popularised the plunger-type coffee maker and led the market for such appliances in Canada. However, the evidence showed that the term 'French press' was a generic commercial term before Bodum chose to employ it as a mark in Canada. The evidence also notably showed use of 'French press' in three Canadian Bodum patent applications and two Canadian industrial design registrations, as well as continued use of 'French Press' in a generic manner after registration of the trademark in Bodum’s own publicity materials.  

Based on the evidence, which included substantial evidence of generic use of the term 'French press' both before and after its registration as a trademark, the court found FRENCH PRESS to not be distinctive, and invalidated the registration for the trademark. In coming to this conclusion, the judge stated:

“… in assessing distinctiveness, the court must apply its own common sense to the evidence... Here, in my view, the evidence is compelling that the term 'French press' was already in widespread use in North America when Bodum sought to appropriate it for its exclusive use and it wasn’t registrable at the date of registration.”

He added that “[t]his matter is analogous to cases in which the trademark claimant is trying to appropriate a word from the common language for its exclusive use”.

The court cited the earlier Thermos decision for the proposition that the trademark owner’s enforcement efforts may be a factor to be considered in assessing distinctiveness. In this regard, “Bodum did nothing to enforce its trademark in Canada from the date of its adoption until it initiated this action in 2009 without prior notice” and “[d]uring those years, the use of the term as a generic expression increased significantly. Bodum itself contributed to this trend by circulating positive editorial materials in which there are generic references to French presses.”

The trademark was also invalidated on the ground of descriptiveness in that the word 'French' described the place of manufacture of the original products that were imported into North America in the 1970s and 80s, and the word 'press' described the method by which the beverage is separated from the coffee grains. Taken together, the two words were found to be clearly descriptive of the type of product itself. The trademark was also found to be invalid on the basis that 'French Press' was one of the commonly used names to describe this type of coffee-maker in Canada at the time the application was filed. 

An interesting aspect of this decision is the court’s acknowledgement of the practical reality of influence from the United States due to the availability of US media and online retail in Canada. The court found that evidence of spillover effects from American usage of the term may be relevant in determining distinctiveness. It also took into account a 1999 decision of the US Trademark Trial and Appeal Board which also refused to register the FRENCH PRESS mark on the basis that it was merely descriptive and lacked distinctiveness. It noted that “[w]ith regard to the use of foreign jurisprudence, it is permissible for the court to find some assistance in authoritative decisions provided that it proceeds very carefully in doing so” and that “there was nothing in the [US Trademark Trial and Appeal] Board’s decision that turned on a vagary of US law in contrast to Canadian trademark law.”

The plaintiffs have appealed the decision to the Federal Court of Appeal. The notice of appeal was filed on January 16 2013.

Jerry Chen and Scott MacKendrick, Bereskin & Parr LLP, Toronto