Canada: Expungement Of "FRENCH PRESS" Trade-mark Upheld By Federal Court Of Appeal

Last Updated: November 14 2013
Article by James Green

Most Read Contributor in Canada, October 2018

In Bodum USA, Inc. v Meyer Housewares Canada Inc., 2013 FCA 240, the Federal Court of Appeal recently upheld a decision of the Federal Court to invalidate and expunge the trade-mark "FRENCH PRESS" which had been registered in Canada in association with "non-electric coffee makers".

The Plaintiffs, Bodum USA, Inc. and PI Design AG, were able to successfully register FRENCH PRESS as a trade-mark in Canada in 1997. Twelve years later, and without giving prior notice or taking any other enforcement efforts, the Plaintiffs brought an action in the Federal Court for trade-mark infringement, passing off and depreciation of goodwill against the Defendant, Meyer Housewares Canada Inc., regarding its use of "French press" in association with a line of coffee presses.

The Defendant denied using the term "French press" as a trade-mark and asserted that it had instead made legitimate use of the term as an accurate description of its product. The Defendant counterclaimed for a declaration that the Plaintiffs' "FRENCH PRESS" trade-mark was invalid and sought expungement of the registration.

Following a trial at which the parties together called 14 fact and expert witnesses, the trial judge concluded that the FRENCH PRESS trade-mark was invalid and unenforceable because of widespread, generic use in North America of the term "French press" to describe similar coffee press devices both before and after the Plaintiffs registered the FRENCH PRESS trade-mark. The trial judge additionally found that "French press" was a clearly descriptive term relating to the type of coffee press product itself and that "French press" was a commonly used name in English to describe the type of device at issue. These findings provided additional bases on which to invalidate and expunge the FRENCH PRESS trade-mark.

In making these determinations, the trial judge took judicial notice of the "flow of information" across the United States – Canada border in finding that evidence of "spillover" usage of the term "French press" in American media and advertising contributed to the non-distinctiveness of the trade-mark. In so doing, the trial judge distinguished earlier case law which had held that circulation of U.S. publications in Canada featuring advertising by the owner of a United States trade-mark was insufficient to destroy the distinctiveness of the same trade-mark in Canada owned by another. According to the trial judge, this evidence was relevant here because "[i]t is not a case of potentially lost distinctiveness but rather, one in which the plaintiffs assert the right to close off a term already in use within the North American industry at least a decade earlier".

According to the trial judge, this approach "recognizes the practical reality of trans-border communications", noting that magazines, television, websites and online stores originating from the United States are available to Canadians and that in the circumstances, and in view of the evidence tendered by the Plaintiffs regarding their North American business, it was inappropriate to find that a wall separates Canada and the United States when it comes to the influence of cross-border information and sales in the trade-mark context.

In finding the FRENCH PRESS trade-mark non-distinctive and invalid, the trial judge also noted that the Plaintiffs had failed to take any enforcement actions against any other parties in the marketplace in the twelve years following registration of the trade-mark prior to commencing this action. Despite knowing of such use by the Defendant and others, the Plaintiffs did nothing. In addition, the Plaintiffs' own use of the trade-mark had been inconsistent and at times generic or descriptive of their coffee press products. As a result, the trial judge found that the Plaintiffs were not in a position to fairly complain about the Defendant's descriptive use of the term on its products.

Moreover, the evidence before the trial judge was that the Plaintiffs had themselves never used the FRENCH PRESS trade-mark as anything more than a "secondary" trade-mark on product packaging and promotional literature. In the trial judge's view, wherever it appeared on advertisements and on packaging, its appearance was "insignificant in comparison to the image of the product, the corporate name and the model name." The fact that FRENCH PRESS was never used as a self-standing mark by the Plaintiffs was found to further compromise the Plaintiffs' position.

On appeal, the Federal Court of Appeal agreed with the trial judge that the case was "essentially a distinctiveness case". The Court of Appeal endorsed the trial judge's key findings, observing that he had correctly stated the governing legal principles:

"..."French Press" is and was at all relevant times a common name for the type of non-electric coffee making device at issue in these proceedings, and the method of brewing coffee using such a device. The term was not distinctive when the application for registration was filed, when it was completed or when proceedings bringing the validity of the registration into question were commenced. The registration is invalid because the term was and is in ordinary and bona fide commercial use as a generic term."

While the FRENCH PRESS trade-mark was found to be non-distinctive from the time it was registered meaning that it should never have been approved by the Trade-marks Office in the first place, this case nonetheless illustrates the necessity for trade-mark owners to "police" the marketplace and take appropriate enforcement actions to discourage generic or descriptive use of their trade-mark by third parties. It also highlights the need for trade-mark owners to carefully review their own internal publications, packaging and other trade materials to ensure that the trade-mark is clearly, consistently and prominently identified as a trade-mark and not used descriptively.

Without taking these precautions, even a dominant market position and impressive sales may not be sufficient for a  trade-mark owner to successfully enforce a trade-mark that is the subject of common or generic use.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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