Whatever the advantages of not submitting certain evidence, such as expediency, complexity, or risk of ambiguity, the Federal Court of Appeal decision, Shell Canada Limited v. P.T. Sari Incofood Corporation demonstrates the significant risk of this course of action.

Shell Canada opposed the registration of JAVACAFE in relation to coffee products, arguing that it was not distinctive, but rather descriptive of the geographical source of the coffee products. Submitting various evidence regarding the definitions of the component words, the parties curiously omitted any evidence regarding the meaning of the word java in French. Noting this omission, the Registrar looked up the word in a 1968 edition of Larouse, discovered that it meant a type of dance, and concluded that Shell’s evidence fell short of its contention that a Canadian Francophone would associate JAVACAFE with coffee from the island of Java.

On appeal to the Federal Court Trial Division, Shell filed additional evidence demonstrating that to an average Canadian Francophone the term java meant an island known for its coffee. Mackay D.J. applied Molson Breweries v. John Labatt Ltd. and found that the standard of review was reasonableness simpliciter because none of Shell’s new evidence would have materially affected the Registrar’s finding of fact or the exercise of her discretion. In the absence of this evidence, Mackay D.J. found that the Registrar’s decision was reasonable.

The Federal Court of Appeal disagreed and overturned the Trial Court’s and the Registrar’s decision. Noël J.A. found that Shell’s new evidence reflected the understanding of the word java prevalent at the time the application was filed, and, most importantly, went directly to the key issue considered by the Registrar: whether the term, when considered by Canadian Francophones, was associated with a specific geographical location. Taking this evidence into account, Noël J.A. found that it is also clear that [the Registrar] would have answered this question in the affirmative because, when regard is had to this other meaning, the combination of the word JAVA with CAFÉ lends itself to no other conclusion.

Notably, while the trademark was a single word, JAVACAFE, Noël J.A. effectively took judicial notice of the fact that in French the trade-mark could not be sounded otherwise than as two distinct words JAVA and CAFÉ. Thus, Noël J.A. found that the trademark was not registrable under 12(1)(b) as clearly descriptive and thus not distinctive of P.T. Sari’s coffee products.

It seems that there are lessons to be learned here for both sides of the dispute. From Shell’s perspective, submitting the evidence at the outset would likely have prevented the need to incur the legal costs of taking the case through two appeals. At the same time, for P.T. Sari Incofood, submission of evidence on the meaning of the word java in French, for example, as a euphemism for coffee, may have strengthened its own case, and reduced the likelihood that Shell would have appealed the Registrar’s decision, or that the decision would have ultimately been reviewed on the standard of correctness.

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