On September 19, 2008, the Federal Court of Appeal ("FCA") allowed the appeal by Shell Canada Limited ("Shell") of a decision of the Federal Court, which had upheld a decision of the Registrar of Trade-marks refusing Shell's opposition of P.T. Sari Incofood Corporation's ("P.T. Sari") application for registration of the trade-mark JAVACAFE.
Before the Registrar and in the Federal Court, Shell unsuccessfully opposed P.T. Sari's trade-mark application on the basis that the trade-mark was not distinctive of P.T. Sari, and was not registrable in view of Section 12(1)(b) of the Trade-marks Act as being clearly descriptive or deceptively misdescriptive of some of the wares in the application. While P.T. Sari's application covered a wide variety of wares, Shell's opposition on this basis related only to a variety of coffee-related wares, namely coffee powder, cooked coffee beans, instant coffee, freeze-dried coffee and granular coffee. A trade-mark does not conform to Section 12(1)(b) if, when depicted, written or sounded, as a matter of immediate impression for consumers, it is either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used.
While P.T. Sari's mark is not presented as two separate words – but rather a single coined word – the trial Court found this distinction to be irrelevant when the word is sounded in the French language, and the descriptiveness analysis was conducted as if the mark had been two separate words.
Considering the mark in the French language, the element "Café" is descriptive, as it literally means "coffee"; however, the Registrar noted that there was no evidence as to the meaning of the word JAVA in French. The only French language definition considered by the Registrar was one found by the Registrar and indicating "Java" to be a type of dance (in addition to materials indicating Java to be an Indonesian island). Accordingly, the Registrar found the mark not to be descriptive, and refused the opposition.
In appealing the Registrar's decision to the Federal Court, Shell submitted additional evidence regarding the meaning of the term "Java." This evidence included French-language dictionary definitions of this word indicating "Java" to be an Indonesian island, and various encyclopedia entries indicating that island to be known for its coffee. The Federal Court found that, even if such evidence had been submitted during the opposition proceeding, it would not have materially altered the result and denied the appeal of the Registrar's decision.
The FCA disagreed and held that this additional evidence demonstrated that the word "JAVA" is known to French-speaking Canadians as an Indonesian island that is known for its coffee. As such, the FCA ruled, if presented with such evidence, the Registrar would have found the trade-mark, in French, to be descriptive of the character of P.T. Sari's coffee-related wares.
The FCA came to this conclusion without the benefit of any survey evidence to link that single possible interpretation of the term "Java" with the likely immediate impression of consumers, and any association that would be made by such consumers with related wares. Instead, in allowing Shell's appeal, the FCA found that such evidence was not necessary as no other impression was likely in the context of the wares, and the use of "Java" with "Café." P.T. Sari unsuccessfully argued that a particular definition or encyclopaedic description of a term does not mean a consumer would come to such an interpretation as a matter of first impression.
The FCA held the mark to be descriptive of the character, quality or place of origin of the coffee-related wares and, by extension, not to be distinctive of P.T. Sari's coffee products, and directed that the Registrar accept Shell's opposition in respect of the aforementioned coffee-related wares and thereby deny registration of the trade-mark for those wares.