Canada’s Federal Court has recently handed Bodum USA, Inc. (Bodum) another loss in its ongoing fight to enforce its trademark and other intellectual property rights in this country. In the most recent decision, the Court has found that the Canadian Registration for the trademark FRENCH PRESS is invalid and unenforceable. This Registration is owned by Pi Design AG (Pi), a related entity to Bodum and the licensor of the mark to Bodum in Canada and covers wares described as non-electric coffee makers.
As a result, Bodum’s infringement claims against Meyer Housewares Canada Inc. (Meyer) over its use of the FRENCH PRESS mark have been dismissed. Even worse for Bodum, the Registration for FRENCH PRESS has been ordered expunged on the grounds that it should never have been issued in the first place and even if it was properly registered, that Registration is now invalid on the basis that the mark is descriptive and not distinctive of Bodum as the sole source of the goods that this mark is registered in association with.
When assessing the evidence presented by the parties, the Court found that the term “French Press” was already in widespread use in North America as a generic term describing a popular type of coffee making device in 1995, which Pi was aware of when it sought to register the mark in Canada and thereby claim exclusive rights to the mark. The Registration for this mark issued in 1997.
The Court also found that the use of the term “French press” by Meyer was use in a descriptive sense, to identify the product as a particular type of coffee maker that Meyer was selling, rather than use of that term as a trade-mark. In addition, the Court noted that Bodum had not, until this particular dispute with Meyer, exercised the rights that it claimed to have in the FRENCH PRESS mark against various other parties who have used the mark in Canada at various times since the early 1990’s. Also going against Bodum was the fact that it had not put forward evidence of any actual confusion in the marketplace between consumers of Bodum’s FRENCH PRESS coffee makers and the French press coffee makers sold by Meyer.
This decision of the Federal Court follows closely on another loss that Bodum suffered in that Court, when it not only failed to enforce its Industrial Design Registration for a double walled glass design, but saw that Registration expunged for invalidity as well.