Ottawa, Ontario, this 27th day of July, 2005
PRESENT: THE HONOURABLE MR. JUSTICE MacKAY
BETWEEN:
and
P.T. SARI INCOFOOD CORPORATION
REASONS FOR ORDER AND ORDER
MacKAY D.J.:
[1] The applicant, Shell Canada Limited ("Shell"), appeals from a decision on behalf of the Registrar of Trade-Marks, dated September 15, 2003 which refused Shell's opposition to the respondent's application, serial no. 866,545, to register the trade-mark JAVACAFE for use in Canada. That application was made on the basis of P.T. Sari Incofood Corporation's registration and use of the mark in its own country, Indonesia, and its proposed use in Canada in association with a wide variety of designated food products.
[2] The only wares in issue raised by the applicant's opposition are "coffee powder, cooked coffee beans, instant coffee, freeze dried coffee, granular coffee", all of which were among the variety of designated wares claimed in association with the respondent's trade-mark application.
[3] That application for registration, filed January 15, 1998, was advertised for opposition purposes on March 8, 2000. Two months later the applicant's statement of opposition was filed, requesting refusal of the proposed registration on grounds that the trade-mark JAVACAFE is not registrable and is not distinctive in respect of the wares in issue.
[4] The Registrar concluded that the opposition grounds, registrability pursuant to paragraph 12(1)(b) of the Trade-Marks Act, R.S.C. 1985, c. T-13 as amended, (the "Act"), and non-distinctiveness, were both dependant upon finding the trade-mark JAVACAFE is clearly descriptive in English or in French of the character or quality of the wares in issue or of their place of origin.
[5] The hearing officer determined that the evidence before her did not support a conclusion that the immediate impression of JAVACAFE on a Canadian Francophone would be that the associated coffee products come from java. Further there was no evidence that the ordinary Canadian Anglophone recognizes JAVA as a place known for its coffee, and even if such a person as a prospective purchaser, on first impression seeing the mark in the context in which it is used, would find the mark descriptive of the wares. Moreover, even if the word "java" is understood as coffee and the word "café" is similarly understood, the mark as a whole, JAVACAFE, is not clearly descriptive of the wares in issue.
[6] On November 18, 2003 Shell filed this application appealing the decision of the Registrar in accord with section 56 of the Act. Both parties then filed two further affidavits, for the applicant in support of its appeal and for the respondent in support of its position that the application be dismissed. None of the affiants was cross-examined.
The Issues
[7] This appeal raised three issues.
1. The first concerns the appropriate standard of review applicable to Shell's appeal.
2. The second, is whether the Registrar erred in finding the trade-mark JAVACAFE is not barred from registration by paragraph 12(1)(b) of the Act.
3. The third issue, raised by the applicant, is whether the Registrar erred in failing to find that JAVACAFE is not distinctive pursuant to paragraph 38(2)(d) and section 2 of the Act.
These issues I deal with in turn.
The Standard of Review
[8] It is well settled that:
¼ decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision. (John Labbatt Ltd. et al v. Molson Breweries, a Partnership (2000), 5 C.P.R. (4th) 180 at 196 (F.C.A.).
[9] If additional evidence is filed in the Court, after the Registrar's decision, in accord with subsection 56(5) of the Act, as was done in this case, but it is found that the additional evidence would not have materially affected the Registrar's decision, the applicable standard of review is reasonableness simpliciter (Toys R Us (Canada) Ltd. et al v. Manjel Inc. (2003), 24 C.P.R. (4th) 470 (F.C.) at para. 30, per Tremblay-Lamer J.; Sunbeam Products, Inc. v. Mister Coffee & Services Inc. 2001 FCT, para. 14, per Kelen J.).
The Descriptiveness of the Trade-mark in Issue
[10] Paragraph 12(1)(b) of the Act provides:
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not
(b) whether depicted, written or sounded, 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 or of the conditions of or the persons employed in their production or of their place of origin;
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12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants :
b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services;
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[11] The relevant date for assessing the registrability of a trade-mark pursuant to paragraph 12(1)(b) is the filing date of the application (Fiesta Barbecues Ltd. v. General Housewares Corp., (2003) 28 C.P.R. (4th) 60 (F.C.) at para. 26 per Russell J.; Lightning Fastener Co. v. Canadian Goodrich Co., [1931] Ex. C.R. 90; affd. [1932] S.C.R. 189, as applied Association of Professional Engineers of Ontario v. Registrar of Trade-Marks (1959), 31 C.P.R. 79 (Ex. Ct.) at 88).
[12] My review of the additional evidence filed in this Court leads to the following assessments. The affidavit of Ms. Gay J. Owens, filed on behalf of the applicant Shell, is sworn December 18, 2003. It provides results of her survey of active trade-mark registrations and applications from a computer search of the Registrar's records, with the names of 33 trade-marks which include the word JAVA. Only two of those marks include that word joined with another or others, as in the case of the mark here in question, JAVACAFE, and only two others include the word "CAFE" among other words in the design depicted with a trade-mark including as a separate word "JAVA". None of the marks listed can be said to do more than indicate some other registered trade-mark includes the letters JAVA, usually as a complete word. That evidence would have been of no significance for the Registrar's decision for it is evidence of the record at a date almost five years after the relevant date, i.e., the application date in January 1998.
[13] The second additional affidavit filed in this application by the applicant is that of Mr. Tawfic Nessim Abu-Zahra. It provides inter alia, excerpts from English and French language dictionaries and encyclopedias concerning the words JAVA and CAFE. Other information, provided from books or pamphlets available in public libraries, concerns the history of the coffee trade, and of Indonesia and its geography, and main products. The date of publication of most of this material is later than the material date of January 15, 1998. The dictionary definitions of "café" and "java" were before the hearing officer, and these provide no new information. There is no evidence that the references provided were applicable at the material date, no evidence that the references and definitions offered were generally accepted on first impression by consumers in Canada as having the descriptive significance suggested by Shell for the character or source of the wares in issue.
[14] Other information provided by Mr. Abu Zahra concerns a variety of packages of coffee products bearing the names "Columbian", "Peru", "Mocha Java", "Costa Rica", "Guatemalan", presumably to show that the products purchased would be associated with coffee products from the country sources apparent from their names. That evidence does not meet the Registrar's concern about the lack of evidence of association as a matter of first impression of the island of Java as a source for coffee in the mind of ordinary purchasers, whether French or English, in Canada. Moreover all that evidence relates to purchases in 2003, long after the relevant date here.
[15] The additional evidence filed in the Court on behalf of the respondent, includes an affidavit, and exhibits, sworn February 4, 2004, by Ms. Karen E. Thompson who appends a certified copy of the Canadian Trade-Marks office file concerning an application by Shell with respect to its proposed trade-mark "JAVA CAFÉ & Design", filed May 28, 1999, after the relevant date for assessing registrability under paragraph 12(1)(b) of the Act.
[16] The second affidavit of additional evidence on behalf of the respondent is that of Ms. Nadia Effendi, sworn February 4, 2004. It attaches, as exhibits, products obtained or purchased at a Shell Canada location which consist of goods described by the words "JAVA CAFÉ". That affidavit also exhibits the results of an on-line search of a dictionary for definitions of the terms, in French: "café de Mexique", "¼ de Rio", and "café", and the negative results of an online search for the meaning of the terms JAVACAFE and "java café", and photocopies of dictionary definitions of the word "mocha". All of this information was obtained long after the relevant date here and there is no evidence of the applicability of that evidence at the relevant date.
[17] In sum, I conclude that none of the additional evidence adduced in this Court in the appeal of the Registrar's decision would have materially affected that decision. Indeed, virtually none of the additional evidence, which in the main post-dated the date of the application for the trade-mark, i.e., January 15, 1998, was of any value in addressing the hearing officer's concerns about the evidence before her, in relation to paragraph 12(1)(b).. Thus, the standard of review here applicable is reasonableness simpliciter.
[18] Apart from assessing the new evidence adduced on this appeal, the applicant raises other issues about descriptiveness of the mark in question. It is urged that this single coined word, when sounded, is in effect the two words JAVA and CAFÉ, and its descriptiveness is to be considered as if it were, as sounded, two words. I am not persuaded this is appropriate. There is no evidence that the mark is sounded as two separate words merely because its syllables could be separated to form two words. Nor is the mark to be assessed as if it were "Café Java" or "Café de Java". Moreover, the meanings of the two suggested separate words do not provide a particular meaning for the one coined word mark that is clearly descriptive of the character or quality of the wares with which it is associated, or of their place of origin.
[19] The applicant's argument that registration of the trade-mark JAVA CAFÉ would be contrary to the intent and purpose of paragraph 12(1)(b) of the Act is not more persuasive than in the case of any other word-mark that is not clearly descriptive of the wares with which it is associated.
[20] The applicant's arguments that the trade-mark is clearly descriptive, in both the French and English languages, in the absence of new relevant evidence, simply invites this Court to reach a conclusion different from that of the hearing officer on the same evidence. That invitation does not establish that the officer's decision is unreasonable in relation to paragraph 12(1)(b). Thus, there is no basis for the Court to intervene.
Distinctiveness
[21] The applicant also opposed registration of the trade-mark in issue on the ground it is not distinctive, a basis for opposition set out by paragraph 38(2)(d) of the Act. Section 2 of the Act defines "distinctive" as follows:
| "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them; |
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« distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi. |
[22] The applicant's argument is that the mark is not distinctive because it is clearly descriptive of the character, quality or place or origin of the wares with which its association is opposed. Distinctiveness is assessed as at the date of opposition, here May 8, 2000. The hearing officer concluded that "this ground of opposition failed because the evidence does not support the conclusion that the mark was clearly descriptive as of any date." That conclusion is not brought into question by any evidence or argument raised in this application.
Conclusion
[23] The application to set aside the decision made on behalf of the Registrar is dismissed. The reasonableness of that decision, as of the two conclusions on which it was based, is not called into question by the evidence or argument adduced on this appeal. There is no basis to vary that decision whereby the applicant's opposition to the trade-mark JAVACAFE was rejected.
ORDER
[24] IT IS ORDERED that for the reasons here set out, the application is dismissed, with costs to the respondent.
"W. Andrew MacKay"
Ottawa, Ontario
July 27, 2005
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2163-03
STYLE OF CAUSE: SHELL CANADA LIMITED
- and -
P.T. SARI INCOFOOD CORPORATION
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: December 8, 2004
REASONS FOR ORDER AND ORDER OF: MacKay D.J.
APPEARANCES:
Steven B. Garland
Kohji Suzuki
Susan Beaubien
SOLICITORS OF RECORD:
Smart & Biggar
Ottawa, Ontario
Borden Ladner Gervais LLP
Ottawa, Ontario