Bodum USA Inc., and its associated companies (“Bodum”) manufacture and distribute housewares. Bodum owns a Canadian trade mark registration for the trade mark FRENCH PRESS in association with non-electric coffee makers. The type of non-electric coffee maker consists of a narrow cylindrical beaker, made of glass or plastic, equipped with a lid and a plunger with an attached fine wire or nylon mesh filter that fits tightly in the cylinder. Hot water is mixed with coffee grains in the beaker. When pushed through the water, the plunger and filter separate the grounds from the beverage.
Bodum popularized this type of coffee maker and dominates the market for them in Canada. However, other manufacturers, distributors and retailers have and continue to market similar coffee makers employing the term “French Press”. In addition, the term has been used as a generic term in the coffee industry across North America to refer to both the type of maker and the preferred grind of the coffee used in such devices. For that reason, Bodum’s efforts to register the term as a trade-mark in the United States were unsuccessful.
Meyer Housewares Canada Inc., (Meyer) is a Canadian corporation with offices in Saint-Laurent, Quebec. It is part of a US based group of companies engaged in the importation, sale and distribution of kitchenware products. The US companies or Meyer sold non-electric coffee makers to Canadian distributors and retailers. Packaging and product inserts for these coffee makers bore the term “French Press”.
Bodum brought an action in the Federal Court alleging infringement of its registered trade mark. Meyer defended the action on the basis that it was not using the words “French Press” as a trade mark but as a legitimate description of its products. In addition Meyer sought to have Bodum’s mark declared invalid.
To be valid, a trade-mark must be distinctive. It must actually distinguish the wares in association with which it is used by its owner from the wares of others. As was recently stated by said by the Supreme Court of Canada “distinctiveness is of the very essence and is the cardinal requirement of a trade mark”.
The three conditions that must be established to show distinctiveness are: (1) the mark and wares must be associated; (2) the mark’s owner must use this association in selling its wares; and (3) the association must enable the mark’s owner to distinguish its wares from those of others. In this case the third factor was the most important.
A large amount of evidence was presented but the court concluded that “French press” is and was at all relevant times a common name for the type of non-electric coffee making device at issue in the action, and the method of brewing coffee using such a device. The court said the term was not distinctive when the application for registration was filed, when it was allowed or when the action bringing the validity of the registration into question were commenced. As a result, the registration was invalid because the term was and is in ordinary and bona fide commercial use as a generic term.
This decision was to the same effect as a previous decision of the U.S.Trademark Trial and Appeal Board, which appeared to have been decided on similar evidence. While the U.S. decision has no legal effect in Canada the judge took it into consideration since similar principles were applied in that case.
As a result Bodum’s action was dismissed and its trade mark registration expunged.
It is an uphill battle to make a generic term distinctive. The problem in this case is that it can be an expensive and time consuming effort to determine when a trade mark is generic. The moral is to make sure that all reasonable steps are taken to maintain the distinctiveness of an important trade mark. Develop and use “use” guidelines and make sure they are followed.