Vulnerabilities of Descriptive Marks

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A trade-mark must be distinctive - if it is not, it is at risk of being unregistrable, and if for some reason it is registered, it is vulnerable to attack by a competitor.

In Bodum USA, Inc. v. Meyer Housewares Canada Inc. 2013 FCA 240 (appeal from 2012 FC 1450), Bodum USA, Inc. sued Meyer Housewares Canada Inc. in the Federal Court for infringement of the registered trade-mark “FRENCH PRESS” (TMA 475,721) as well as for passing off, and depreciation of goodwill. Bodum lost at the trial level, appealed that decision, and the court made short work of Bodum’s appeal. The appeal was dismissed because the trade-mark “FRENCH PRESS” for non-electric coffee makers is descriptive - it is a generic term applied to all such coffee makers, and the registration probably never should have issued in the first place. By seeking to enforce its descriptive mark against a competitor, Bodum rolled the dice and risked losing any enforceable rights to the mark. In this case, Bodum lost and the court concluded: “The registration is invalid because the term was and is in ordinary and bona fide commercial use as a generic term.” Ouch.

The lessons for business:

  • Consult a trade-mark agent to obtain advice on registrability and protectability of your trade-mark, to avoid the problems faced by Bodum’s mark;
  • While this case is not precedent-setting, it does confirm Canadian law on trade-mark distinctiveness.
  • Note that this litigation is part of a broader IP battle between these competitors. Maybe not as sexy as the smartphone wars between Apple and Samsung, but you might call this a coffee clash: the two companies have faced off in intellectual property litigation in Canada and the US.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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