A recent decision of the Federal Court of Appeal helps clarify the process for appealing from decisions of the Trade-marks Opposition Board, as well as the law concerning trade marks which are clearly descriptive.

The Application  

In January 1998, an Indonesian company applied to register the trade mark JAVACAFE for use in association with a large number of food and beverage items, including coffee products. The application was opposed. The challenge to the registration of the trade mark was limited to the coffee-related wares on the basis that the trade mark was not registrable or distinctive in respect of those wares because it was clearly descriptive in English or French languages.

The Evidence  

The evidence before the Trade-marks Opposition Board consisted of English-language dictionary definitions of the word “JAVA” and the word “CAFE”, but neither party filed evidence concerning the meaning of the word “JAVA” in the French language. When the Hearing Officer carried out a search for a definition, she found that the word “JAVA” was defined as relating to a dance.

The Decision  

After noting that the Opponent’s strongest ground of opposition was the immediate impression of the trade mark on a Canadian francophone, she found the evidence fell short of supporting this contention.

Appeal to the Federal Court  

The Opponent appealed the decision to the Federal Court and filed additional evidence relating to the meaning “JAVA” in the French language. The Federal Court Judge dismissed the appeal, since he said that the additional evidence did not address the Hearing Officer’s concerns about the deficiency of evidence and the Hearing Officer’s decision was not unreasonable.

The Appeal  

The Opponent appealed this decision to the Federal Court of Appeal. The Court made reference to a recent decision (in which our firm acted for the successful respondent) which clarified that where there was new evidence that was material to the final decision, the Federal Court is not limited to finding an error in the decision and can draw its own conclusions based on the record before it. The Federal Court Judge applied the wrong standard because the evidence was material. The evidence clearly showed that the word “JAVA” is commonly understood to be an island in Indonesia that is known for its production of coffee. This evidence was not immaterial, particularly where the word “JAVA” is used together with the word “CAFE”.

The Trade-marks Act states that when considering whether a mark is clearly descriptive, the mark must also be considered as it is sounded. Although the applied for trade mark consisted of the coined word “JAVECAFE”, any distinction this created was lost when the mark was sounded in the French language. As a result, the Court concluded that the trade mark was clearly descriptive. In addition, it could not actually distinguish the wares in association with which it was used by the applicant. Given this conclusion, the Court said it was not necessary to consider whether the trade mark was also clearly descriptive in the English language.

Comment  

The decision shows that an appeal from the Trade-marks Opposition Board may be a viable method of proceeding if additional material evidence can be obtained. It also emphasizes that how the mark is “sounded” can be an important consideration in determining whether a mark is clearly descriptive