Trademark owners must be proactive in defending their marks

Canada

FRENCH PRESS was registered in 1997 for use with non-electric coffee makers in the name of Pi-Design AG and was used in Canada by Bodum USA Inc (collectively Bodum). In 2009 Bodum commenced an action against Meyer Housewares Canada Inc alleging, among other things, infringement of the FRENCH PRESS registration. 

At trial, the key issue addressed by the Federal Court was whether FRENCH PRESS was distinctive of Bodum - in other words, whether a clear message was given to the public that the goods with which the mark was associated and used were the goods of the trademark owner and no other. The court, after a thorough analysis, concluded that the mark was not and had never been distinctive of Bodum. The decision of the court was recently upheld by the Federal Court of Appeal in Bodum USA Inc v Meyer Housewares Canada Inc (2013 FCA 240).

The decision provides guidance to trademark owners as to what will be taken into account in assessing distinctiveness of a trademark and serves as a reminder that, especially when dealing with an inherently weak mark, a trademark owner must be proactive in defending the distinctiveness of its mark.

In Canadian jurisprudence, three conditions must be established to uphold the distinctiveness of a trademark:

  1. The mark and the goods must be associated;
  2. The owner must this association in manufacturing and selling its goods; and,
  3. The association must enable the owner to distinguish its goods from those of others.

The court was satisfied that Bodum met the first two criteria, but that it failed on the third criteria. In particular, the court keyed in on the following:

  1. There was no evidence that FRENCH PRESS was ever used as a self-standing mark. The court noted that packaging displayed BODUM in large letters over an image of the product followed by the model name and then, in much smaller print, FRENCH PRESS. This manner of use was held to compromise Bodum’s position presumably on the basis that the consumer would not consider FRENCH PRESS to be functioning as a source identifier - that is, Bodum was not using the association between the mark and the wares to distinguish its goods from those of others.
  2. The term 'French press' was already generic in Canada and elsewhere, identifying a type of device and method of brewing coffee before Bodum adopted it.
  3. The term 'French press' was used in an ordinary commercial sense in patent applications and industrial design applications including in applications filed by Bodum.

In response, Bodum made an analogy to marks such as KLEENEX and THERMOS - situations where trademark owners had to contend with the risks of a created word becoming generic. The court rejected the analogy and, instead, equated the situation to the battle over SHREDDED WHEAT - a situation where someone tried to appropriate a word from the common language for its exclusive use. The court also noted that, unlike the THERMOS situation, Bodum had taken no steps to enforce its rights from the date of registration until it commenced the action against Meyer without any prior notice.

Key to the decision was that Bodum contributed to it situation by circulating material containing generic use of FRENCH PRESS, particularly in the United States. The court took judicial notice of the flow of information across the Canada-US border and concluded:

"That is not to say that Canadian trademarks must succumb to the force majeure of the American market but recognises the practical reality of trans-border communications. Magazines and books published in the US are commonly available in this country. We watch an extraordinary amount of television produced in the US and accessible in Canada either free-to-air (by antenna) or through cable and satellite services. The Internet is a medium without frontiers. We routinely shop at American retailers through their online web pages and order goods for shipment across the border. The plaintiffs take advantage of the cross-border market reality. Bodum no longer rely on a Canadian-based distributor but manage their Canadian sales operations from the US. They no longer attend the Canadian housewares trade shows and rely, for the most part, on US-based staff who visit Canada from time to time. The same packaging and advertising is used in distributing and promoting their products in both countries. It does not sit well for Bodum to now claim that the court should find that a wall separates Canada and the US when it comes to the influence of cross-border information and sales."

Finally, the court relied on a decision of the US Patent and Trademark Office denying registration of FRENCH PRESS on the basis that it was merely descriptive. No appeal was filed from the decision. The court was satisfied that it could take the US decision into account, although it did not add much weight to the evidence.

Applying common sense, the court held that the mark was not distinctive and ordered the registration to be expunged.

The Federal Court of Appeal, without providing any detailed analysis of the lower court’s decision, simply held that there was no error in law or in fact warranting intervention.

The decision provides several cautionary notes to trademark owners in Canada. In particular, trademark owners need to be proactive in defending their marks, especially where the mark is inherently weak - the failure to take any steps to defend the mark prior to commencing the action weighed against Bodum.  Further, while a court may be reluctant to consider spillover of third-party material from the United States in assessing distinctiveness on the basis that a trademark owner cannot control the flow of such information, it will consider the cross-border flow of information originating from the trademark owner - a trademark owner that takes advantage of the cross-border reality for commercial purposes cannot then contend that a wall separates the two countries when it comes to the flow of information.

Robert A MacDonald, Gowling Lafleur Henderson LLP, Ottawa

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