JAVACAFE held to be clearly descriptive of coffee products

In Shell Canada Limited v PT Sari Incofood Corporation (2008 FCA 279, September 19 2008), the Federal Court of Appeal has considered whether the coined word JAVACAFE was clearly descriptive of coffee-related goods.
PT Sari Incofood Corporation, a company incorporated in Indonesia,

applied for the registration of the trademark JAVACAFE for use in association with food and beverage products, including coffee products. The application was based on Sari’s registration and use of the trademark JAVACAFE in Indonesia.
Shell Canada Limited opposed the registration in respect of the coffee-related goods on the grounds that the trademark JAVACAFE was neither registrable nor distinctive, as it was clearly descriptive or deceptively misdescriptive of such goods.
The evidence before the registrar included:
  • English-language dictionary definitions of the word 'java';
  • definitions of the word 'café' in various languages; and
  • encyclopaedia references describing the island of Java. 
There was no evidence in respect of the meaning of the word 'java' in the French language. However, the registrar located a definition of 'java' which showed that the word was defined in the French language as a popular dance. Accordingly, the registrar held that the evidence did not support a conclusion that either an ordinary French or English-speaking Canadian would recognize Java as a place known for its coffee. Therefore, the trademark JAVACAFE was held not to be clearly descriptive of the goods at issue.
Shell appealed the decision and filed further evidence before the Federal Court. The additional evidence included excerpts from English and French language dictionaries and encyclopaedias concerning the words 'java' and 'café'. The court held that the additional evidence would not have materially affected the registrar’s decision, in part because most of the evidence was subsequent to the filing date of the application (January 15 1998). The court considered the applicable standard of review to be reasonableness simpliciter and dismissed the appeal.
Shell appealed to the Federal Court of Appeal. It contended that the new evidence filed addressed the original absence of evidence regarding the meaning of the term 'java' to the average French-speaking Canadian. Shell argued that this evidence would have materially affected the registrar’s decision and that the standard was one of correctness.
The court found that the new evidence demonstrated that the word 'java' is commonly understood to be an island in Indonesia which is known for its production of coffee. Further, the court noted that all the evidence pertaining to the word 'java' was published in 1998 or before. Therefore, it should not have been excluded on the basis that it reflected an understanding of the word 'java' which was not prevalent at the time the original trademark application was filed.
Therefore, the court could not conclude that the new evidence was immaterial. Moreover, it was of the view that if the registrar had been apprised that the word 'java' in the French language is also understood to be an island known for its production of coffee, she would have asked herself whether the trademark JAVACAFE was descriptive of a place that produces coffee as a matter of first impression to an average French-speaking Canadian. The court was satisfied that the registrar would have answered the question in the affirmative as the combination of 'java' and 'café' lent itself to no other conclusion.
Accordingly, the court held that the trademark was clearly descriptive of the coffee products and was not distinctive.
The court thus allowed the appeal, upheld Shell's opposition and directed that the registrar refuse the application for the registration of the mark JAVACAFE.
Samantha J Gervais, Osler Hoskin & Harcourt LLP, Ottawa

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