A trade-mark must be distinctive - if it is not, it is at risk
of being unregistrable, and if for some reason it is
registered, it is vulnerable to attack by a competitor.
In Bodum USA, Inc. v. Meyer Housewares Canada
Inc. 2013 FCA 240 (appeal from 2012 FC 1450), Bodum USA,
Inc. sued Meyer Housewares Canada Inc. in the Federal Court for
infringement of the registered trade-mark "FRENCH PRESS"
(TMA 475,721) as well as for passing off, and depreciation of
goodwill. Bodum lost at the trial level, appealed that decision,
and the court made short work of Bodum's appeal. The appeal was
dismissed because the trade-mark "FRENCH PRESS" for
non-electric coffee makers is descriptive - it is a generic term
applied to all such coffee makers, and the registration probably
never should have issued in the first place. By seeking to enforce
its descriptive mark against a competitor, Bodum rolled the dice
and risked losing any enforceable rights to the mark. In this case,
Bodum lost and the court concluded: "The registration is
invalid because the term was and is in ordinary and bona
fide commercial use as a generic term." Ouch.
The lessons for business:
Consult a trade-mark agent to obtain advice on registrability
and protectability of your trade-mark, to avoid the problems faced
by Bodum's mark;
While this case is not precedent-setting, it does confirm
Canadian law on trade-mark distinctiveness.
Note that this litigation is part of a broader IP battle
between these competitors. Maybe not as sexy as the smartphone wars
between Apple and Samsung, but you might call this a coffee clash:
the two companies have faced off in intellectual property
litigation in Canada and the US. See this post for additional analysis of the
patent infringement fight over the design of the french press
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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