Bodum: Appeal Court Affirms Trademark Distinctiveness Analysis

An earlier blog commented on the Federal Court’s decision in  Bodum USA, Inc. v. Meyer Housewares Canada Inc.  Bodum commenced an action for infringement, passing off and depreciation of goodwill against Meyer, which counterclaimed for a declaration that Bodum’s registration was invalid.  Bodum’s action was dismissed and the registration expunged.

The Court of Appeal has now affirmed this decision, noting that this is “essentially a distinctiveness case” and quoting statements from the trial decision that “‘French press’ is and was at all relevant times a common name for the type of non-electric coffee making device” and “the registration is invalid because the term was and is in ordinary and bona fide commercial use as a generic term”.

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MACDIMSUM: Challenging a Family of Marks

In Cheah v. McDonald’s Corporation, the Federal Court of Canada held that MACDIMSUM is likely to be confusing with the MacDonald’s family of trademarks.  Focusing on the evidence presented, the Court distinguished several earlier cases in which McDonald’s failed to preclude other businesses from using the MC or MAC prefix, including McDonald’s Corporation v. Silcorp Ltd (1989) and McDonald’s Corporation v. Coffee Hut Stores Ltd (1996), where McDonald’s failed to prevent the use of MAC for convenience stores and MCBEAN for a coffee business.  In Cheah, the Applicant, who was self‑represented, did not meet the onus on him to prove the mark was registrable.  It was also important that the application was simply for the word MACDIMSUM and not for that word in any particular type style or in combination with any other word or design.  Since a proposed use application was at issue, the Court stated that it must remain open to the fact that the trademark could potentially be used in any type style, with any combination of words or design, and in any trade environment as may present itself from time to time.

The Applicant failed to present any evidence of actual use and during cross‑examination he acknowledged he had not yet finalized plans regarding use.  McDonald’s’ evidence focused on its family of marks and included affidavits regarding McDonald’s “four score” trademarks, use and advertising in Canada, as well as an expert survey. 

In dismissing the appeal, the Court stated that the evidence presented regarding use or intended use is critical to a decision such as this.  While the respondent McDonald’s Corporation presented considerable evidence to oppose the registration of the word MACDIMSUM, the Applicant presented little probative evidence throughout the proceedings.  The Court also accepted the survey that McDonald’s presented, which involved showing certain members of the public a card bearing the word MACDIMSUM, and others a card bearing the word MAZDIMSUM.  Based on the results, the expert concluded that a statistically significant portion of consumers would identify the McDonald’s as the source of the MACDIMSUM food products.

The Court also found that the Applicant’s evidence of the use of MC and MAC in other jurisdictions was largely hearsay and did not establish dilution in Canada.  Finally, the Court found no merit in the Applicant’s assertion that he was being bullied, noting that the McDonald’s counsel was proper and courteous.  Instead, a hint of the Applicant’s true intention was to be found in a letter in which he suggested the possibility of “a global MACDIMSUM partnership”.

A Clearly Descriptive Engineering Trademark

In the recent case of Continental Teves AG & Co v. Canadian Council of Professional Engineers, the Federal Court of Canada dismissed an appeal of the Trade-mark Opposition Board’s refusal to register a mark.  The original application was brought by Continental Teves, a foreign corporation, to register the words ENGINEERING EXCELLENCE IS OUR HERITAGE for use as a trade-mark in Canada in association with wares, namely brake pads and rotors for land vehicles.  The Canadian Council of Professional Engineers (the “Council”), a national organization of the 12 provincial and territorial associations that license and regulate Canadian engineers, opposed the application.  It is the Council’s policy to oppose trademarks which consist of or include the term “engineering” in order to both protect the integrity of the titles of Canadian engineering professionals and to protect the public.

At issue on the appeal was whether the Hearing Officer erred in finding that the mark:

1. Was not clearly descriptive of the character or quality of the wares, based on section 12(1)(b) of the Trade-Marks Act;

2. Was deceptively misdescriptive of the character or quality of the wares, based on section 12(1)(b) of the Act; and

3. Was not distinctive of the wares based on the section 2 definition of “distinctive”.

Regarding the section 12(1)(b) prohibition on registering “clearly descriptive” and “deceptively misdescriptive” marks, the Court came to the same result, that the mark was not registrable, although for opposite reasons.  A mark is not registrable if it is either “clearly descriptive” or “deceptively misdescriptive”.  Whereas the Hearing Officer found the mark to be not clearly descriptive yet deceptively misdescriptive of the persons employed in the production of the wares, the Court found the converse – that the mark was “clearly descriptive” yet not “deceptively misdescriptive”.

Informing this reversal was the additional affidavit evidence from one of Continental Teves’ vice presidents, stating that the company employs a substantial number of engineers in the production of the wares in question and had done so for decades.  However, the Court also noted that nothing in the evidence established whether Canadian engineers were involved although it appeared that none were.  This additional evidence was enough to change the mark’s characterisation from “not clearly descriptive” to “clearly descriptive”  since it established that engineers were involved and the mark was therefore a clear description of the manner in which the wares are designed and produced.  Nothing in the evidence established whether the engineers involved were Canadian, but this did not matter since there was no evidence indicating or suggesting that the average consumer, on encountering the mark, would believe the wares were designed or produced by Canadian engineers.  Thus, the mark was not deceptively misdescriptive according to the Court.  The decision appears to be at odds with the earlier decision in Canadian Council of Professional Engineers v. Kelly Properties LLC, but in that case the Applicant was seeking to use KELLY ENGINEERING RESOURCES in association with employment services, which implied that Canadian engineers were involved since the services were being offered in Canada and only a licensed Canadian engineer could offer such services.

The Court came to the same result as the Hearing Officer on the finding of a lack of distinctiveness, noting that distinctiveness is “the very essence of a trademark” since it allows a consumer to identify the source of goods.  Continental Teves failed to meet its onus to prove the mark was distinctive of the wares in the face of the Council’s evidence showing the use of the phrase “engineering excellence” in Canada and abroad in multiple contexts.

Finally, the Court noted the Council was “zealous” in protecting the exclusivity of the words “engineer” and “engineering”, although this was not an endorsement or disapproval of the approach but only an observation regarding the policy.