Warm wishes – and thanks

On behalf of the Canadian Trademark Blog team, please accept our warmest wishes for a happy and prosperous new year.   We plan to do our best to continue providing timely trademark-related information and insight, through 2013 and beyond.

Special thanks to you, our visitors, for your continued readership – and for making us one of the top 10 intellectual property and technology-related blogs in the country.  We know many of you have been with us since our start over six years ago, and we certainly value your support and interest.

Happy new year.

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Bodum Gets French Pressed by Federal Court In Trademark Dispute

Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country.  In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable.  This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.

As a result,  Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed.  Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.

When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark.  The Registration for this mark issued in 1997.

The Court also found that the use of the term “French press” by Meyer was use in a descriptive sense, to identify the product as a particular type of coffee maker that Meyer was selling, rather than use of that term as a trade-mark.  In addition, the Court noted that Bodum had not, until this particular dispute with Meyer, exercised the rights that it claimed to have in the FRENCH PRESS mark against various other parties who have used the mark in Canada at various times since the early 1990′s.  Also going against Bodum was the fact that it had not put forward evidence of any actual confusion in the marketplace between consumers of Bodum’s FRENCH PRESS coffee makers and the French press coffee makers sold by Meyer.

This decision of the Federal Court follows closely on another loss that Bodum suffered in that Court, when it not only failed to enforce its Industrial Design Registration for a double walled glass design, but saw that Registration expunged for invalidity as well.

Engineering a Successful Trademark Opposition: Canada’s Federal Court finds that KELLY ENGINEERING RESOURCES mark is deceptively misdescriptive

A recent Federal Court decision in Canadian Council of Professional Engineers v. Kelly Properties, LLCreversed a prior Trademarks Opposition Board (TMOB) decision by holding that Kelly Properties’ KELLY ENGINEERING RESOURCES trademark application was not registrable. In the prior TMOB proceedings, the opposing party, Canadian Council of Engineers, was unsuccessful in its opposition to the KELLY ENGINEERING RESOURCES application. On appeal, the Federal Court had to consider three main issues.

Firstly, the Court had to consider the appropriate standard of review for an opposition appeal when new evidence was adduced. The Court affirmed that where new evidence has been filed, as was the case here, if such evidence would materially affect the TMOB’s findings, the Federal Court must come to its own conclusion as to the correctness of the decision after considering the evidence before it.

Secondly, the Court considered whether the TMOB had erred in its assessment of the date of first use of the KELLY ENGINEERING RESOURCES trademark. While the TMOB had been satisfied that Kelly Properties had used this trademark in Canada since April 1999, the Federal Court’s review of the material evidence indicated that this claim was not justifiable and that this should have been a valid ground for opposition. However, and importantly, Kelly Properties’ application was not based solely on the claim of prior use in Canada; the application was also filed on the basis of prior use and registration in the United States. The Federal Court affirmed a previous TMOB decision in Aetna Life Insurance Co of Canada v. SNJ Associates Inc. where it was held that the failure of a prior use basis in a trademark application does not defeat the application in its entirety if there is a separate claim on the basis of use and registration in a foreign country. Accordingly, while Kelly Properties’ application was compromised by its inaccurate Canadian first use date, ultimately its claim based on prior use and registration in the United States prevented the Canadian Council of Engineers from successfully opposing the application on this ground . This aspect of the decision reaffirms the importance of claiming more than one basis for registration when applying to register a trademark in Canada, if the facts allow for such additional claims to be made.

Thirdly, the Federal Court considered whether the KELLY ENGINEERING RESOURCES trademark was clearly descriptive or deceptively misdescriptive. The TMOB had found that the trademark was neither clearly descriptive nor deceptively misdescriptive. In considering the new evidence presented by the Canadian Council of Engineers, the Court ultimately came to the conclusion that the trademark was deceptively misdescriptive of the character and quality of the claimed services, despite the fact that the services included in the application did not include “engineering” services. In concluding that the trademark was not registrable, the Court noted that acceptance of this trademark would run the risk of opening up the door to abuse, thereby placing the public interest at risk due to the association between “engineering” and the regulation of the engineering profession in Canada. This battle may continue as Kelly Properties has until December 21, 2012 to appeal this decision.