Date: 20080919
Docket: A-455-05
Citation: 2008 FCA 279
CORAM: LÉTOURNEAU
J.A.
NOËL
J.A.
TRUDEL
J.A.
BETWEEN:
SHELL CANADA LIMITED
Appellant
and
P.T. SARI INCOFOOD CORPORATION
Respondent
REASONS FOR JUDGMENT
NOËL J.A.
[1]
This is an
appeal by Shell Canada Limited (Shell) from a decision of Mr. Justice Mackay
(the Federal Court Judge) wherein he dismissed Shell’s appeal from a decision
of the Registrar of Trade-marks (the Registrar) refusing Shell’s opposition to the
trade-mark application filed by P.T. Sari Incofood Corporation (P.T. Sari) for
the trade-mark JAVACAFE.
[2]
For the
reasons which follow, I would allow the appeal and direct the Registrar to
accept Shell’s opposition to the registration of this mark with respect to the
specified coffee-related wares set out in the statement of opposition.
BACKGROUND
The facts
[3]
On January
15, 1998, P.T. Sari, a company incorporated under the laws of Indonesia,
applied for registration of the trade-mark JAVACAFE for use in association with
a large number of food and beverage wares ranging from coffee products to
chilli sauces, cake mixes and bubble gum. The application was made on the basis
of P.T. Sari’s registration and use of the trade-mark in Indonesia.
[4]
The
application was advertised for opposition purposes and on May 8, 2000, Shell
filed a statement of opposition, challenging the registration of the trade-mark
in respect only of coffee-related wares, specifically coffee powder, cooked
coffee beans, instant coffee, freeze dried coffee and granular coffee. The
basis for Shell’s opposition is that the trade-mark JAVACAFE is neither
registrable nor distinctive in respect of these wares because the trade-mark is
clearly descriptive or deceptively misdescriptive of such wares and it should
therefore be available for all traders to use in respect of their coffee
products.
[5]
The
evidence before the Registrar consisted of English-language dictionary
definitions for the word “java”, various language definitions (i.e., English,
French and Italian) for the word “café”, and encyclopedia references describing
the island of Java. The Registrar found
it notable that neither party had filed evidence in respect of the meaning of
the word “java” in the French language. As a result, she consulted, on her own
initiative, a 1968 edition of the “Nouveau Petit Larousse” and
discovered that the word “java” is defined as “n. f. Danse populaire à trois
temps, dansée dans les bals musettes”.
[6]
The
Registrar determined 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 dependent upon
finding that 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.
[7]
After
noting that Shell’s strongest ground of opposition was that the immediate
impression of JAVACAFE on a Canadian Francophone would be that the associated
coffee products come from Java (Reasons of the Registrar, para. 7), the
Registrar held that the evidence fell short of supporting this contention. The
Registrar also concluded that there was no evidence that an ordinary Canadian
Anglophone recognizes Java as a place known for its coffee. Further, the
Registrar held that even if the word “java” is understood by an ordinary
Canadian Anglophone as coffee and the word “café” is similarly understood, the
mark as a whole, JAVACAFE, is not clearly descriptive of the wares in issue.
[8]
Shell
appealed the decision of the Registrar to the Federal Court and filed two
further affidavits in support of its position. By decision rendered July 27,
2005, the Federal Court Judge held that the decision of the Registrar could not
be disturbed. This is the decision now under appeal.
The Relevant Statutory Provisions
[9]
Pursuant
to paragraph 12(1)(b) of the Act, a trade-mark is registrable if it is not:
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(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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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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[10]
Pursuant
to paragraph 38(2)(d) of the Act, an application can be successfully opposed if
the trade-mark in issue is not distinctive. Section 2 of the Act defines
“distinctive” as follows:
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“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.
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THE DECISION OF THE FEDERAL COURT
[11]
Relying on
the law as set out in John Labbatt Ltd. et al v. Molson Breweries, A
Partnership, (2000) 5 C.P.R. (4th) 180 (F.C.A.) (John Labatt
Ltd.), the Federal Court Judge determined that the standard applicable to
his review of the decision of the Registrar was reasonableness simpliciter.
In John Labbatt Ltd. this Court said (at p. 196):
… 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.
In this case, the Federal Court Judge reached the conclusion
that he did because, in his view, none of the additional evidence filed on the
appeal would have materially affected the decision of the Registrar. The Federal
Court Judge came to this conclusion in part because the additional evidence “in
the main” post-dated the date of the application for the trade-mark i.e.,
January 15, 1998, and was therefore irrelevant (Reasons, para. 17). In so
holding, the Federal Court Judge rejected Shell’s submission that the material date
for determining descriptiveness pursuant to paragraph 12(1)(b) of the Act is
the date of the Registrar’s decision rather than the application date.
[12]
Beyond
this he found, with respect to descriptiveness, that none of the additional
evidence filed before him was of any value in addressing the Registrar’s
concerns about the deficiency of the evidence before her and, as such, the
Registrar’s decision was not unreasonable in relation to paragraph 12(1)(b). There
was, accordingly, no basis for the Court to intervene.
[13]
Shell’s
subsidiary argument that the mark is not distinctive because it is clearly
descriptive of the character, quality or place of origin of the wares with
which its association is opposed was also rejected. The Federal Court Judge agreed
with the Registrar that her conclusion as to descriptiveness was also
dispositive of the issue of distinctiveness.
[14]
The
Federal Court Judge went on to dismiss the appeal with costs in favour of P.T.
Sari.
ISSUES RAISED ON APPEAL
[15]
The
parties have identified a multitude of issues which they say arise from the
decision of the Federal Court Judge. In my view, the appeal can be disposed of
by addressing the following three:
- Did
the Federal Court Judge apply the proper standard to his review of the decision
of the Registrar?
- Did
the Federal Court Judge err in failing to find that JAVACAFE in the French
language is clearly descriptive or deceptively misdescriptive of P.T. Sari’s
wares pursuant to paragraph 12(1)(b) of the Act?
- Did
the Federal Court Judge err in finding that JAVACAFE is distinctive pursuant to
section 2 of the Act?
[16]
Before
setting out the position of the parties on these issues, I note that there was
a significant debate as to the material date for assessing the registrability
of a trade-mark pursuant to paragraph 12(1)(b) of the Act. It is not necessary
to address this issue since, as will be seen, reliance needs only be placed on
evidence which predates the filing of the application for registration in order
to dispose of the appeal.
[17]
With respect
to the standard of review, Shell contends that the new evidence which it filed before
the Federal Court directly addressed the gap in the evidence, identified by the
Registrar, namely the absence of evidence of what the term “java” means to the
average French-speaking Canadian, and therefore had probative significance and
would have materially affected the Registrar’s decision. As such, the Federal
Court Judge ought to have reviewed this decision on a standard of correctness
rather than reasonableness.
[18]
Applying
this standard, Shell submits that the evidence, properly assessed, demonstrates
that the word “java” is known to French-speaking Canadians as an island in the
country of Indonesia known for its coffee. More
specifically, Shell submits that French-language dictionary and encyclopedia
entries as well as excerpts from a book on coffee, all of which were submitted as
additional evidence on appeal, demonstrate that French-speaking people
understand that “java” is an important island in Indonesia, known as a source for coffee.
[19]
Shell further
submits that although the trade-mark in issue is not JAVA CAFE - two separate
words – but JAVACAFE – a single coined word – this distinction is lost when the
trade-mark is sounded in the French language. For the purposes of considering
descriptiveness pursuant to paragraph 12(1)(b), the trade-mark is effectively
two words, namely “JAVA” and “CAFE”. Where constituent components of a coined
term are easily recognizable, it is appropriate to consider the separate
components for the purposes of analyzing descriptiveness (Mr. P’s Mastertune
Ignition Services Ltd. v. Tune Masters (1984), 82 C.P.R. (2d) 128
(F.C.T.D.); Proctor & Gamble Inc. v. Groupe Lavo Inc. (1992),
43 C.P.R. (3d) 543 (T.M.O.B.)). Shell submits that the Federal Court Judge
erred in law when he held that additional evidence was required to show that
the mark is sounded as two separate words.
[20]
P.T. Sari,
for its part, contends that the Federal Court Judge applied the appropriate
standard to his review of the Registrar’s decision and properly concluded that
the decision was reasonable. In particular, none of the additional evidence
provided by Shell on appeal “would have materially effected the Registrar’s
decision”. In this respect, P.T. Sari essentially adopts the reasons of the
Federal Court Judge.
[21]
With
specific reference to the evidence filed by Shell in regards to what the word
“java” would mean to French-speaking Canadians, P.T. Sari submits that the
evidence does not meet the standard of proof required by this Court in Candrug
Health Solutions Inc. v. Thorkelson, 2008 FCA 100, 64 C.P.R. (4th) 431.
More specifically, P.T. Sari submits that there is no evidence that the
references and definitions which Shell has adduced were generally accepted on
first impression by French-speaking persons and that the fact that a dictionary
defines a word in a specific way or that an encyclopedia describes a place as
having a particular attribute, does not mean that the ordinary French-speaking
person has that knowledge or will, as a matter of first impression, make any
association arising from that knowledge.
ANALYSIS AND DECISION
[22]
With
respect to the first issue i.e., the standard of review, the question which the
Federal Court Judge had to address is whether the new evidence adduced before
him would have materially affected the Registrar’s findings of fact or the
exercise of her discretion (John Labatt Ltd., supra). If so, the
task of the Federal Court Judge was to reassess the decision of the Registrar
on the basis of the whole of the evidence and draw his own conclusion (Canadian Tire Corp. v. Accessoires d'autos
Nordiques Inc., 2007 FCA 367, 62 C.P.R. (4th)
436 (at para. 30)):
As this Court held in Maison Cousin (1980) Inc. v.
Cousins Submarines Inc., 2006 FCA 409, [2006] F.C.J. No. 1968, where new
evidence, which is material to the final decision is filed, the Federal Court
is not limited to finding an error in the decision under review. The Court is
entitled to draw its own conclusions on the basis of the record before it,
which includes the evidence before the Registrar as well as the new evidence.
In that context, the Court is obviously called to make the correct decision,
but it is not reviewing the decision of the Registrar on the standard of
correctness.
[23]
On
appeal, this Court is entitled to review for
correctness any question of law decided by the Federal Court Judge including
whether he applied the proper legal test in identifying the standard of review applicable
to the Registrar’s decision. If it appears from his
reasons that the Federal Court Judge applied the wrong standard, this Court
must consider the evidence that was before the Registrar as well as the new
evidence and come to the correct conclusion.
[24]
The
additional evidence tendered on appeal included dictionary and encyclopedia
entries appended to the affidavit of Tawfic Nessim Abu-Zahra, all of which show
that “java” beyond being defined as a dance in the French language is also commonly
understood to be an Island in Indonesia that is known for its production of
coffee (Appeal Book, Vo. II, Le Grand Dictionnaire Terminologique
p. 332; Petit Larousse p. 337; Dictionnaire Hachette p. 341; Grand
Larousse Universel pp. 404, 405, 406; Encyclopédie Bordas p. 410;
and Dictionnaire Encyclopédique Axis
p. 414). Excerpts
from a book in the French language dealing with the history of the coffee trade
also make the same association (Appeal Book, Vol. III, pp. 641 to 643).
[25]
The
Federal Court Judge lumped this evidence together with other definitions in the
English language and rejected it as immaterial (Reasons, para. 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.
[My
emphasis]
[26]
A
review of the additional evidence tendered before the Federal Court shows that
all of the definitions, entries and excerpts in the French language pertaining
to the word “java” were published in 1998 or well before. It follows that none
of this evidence could be excluded on the basis that it reflects an
understanding of the word “java” that was not prevalent at the time when the
application for registration was filed.
[27]
As
to the Federal Court Judge’s conclusion that this evidence provides “no new
information”, it is useful to recall how the Registrar identified the issue
before her as to the meaning of the word “java” to a French-speaking Canadian (Reasons
of the Registrar, para. 20):
… I do not
believe that there is any controversy regarding the fact that “café” means
“coffee” in French, or that the average French-speaking Canadian would
immediately assign that meaning to such word when it appeared in this
trade-mark in association with the coffee products that these proceedings are
directed to. Therefore, the question is what the component JAVA might mean to
the average French-speaking Canadian. Moreover, the preliminary issue is
whether the opponent has submitted sufficient evidence to meet its initial
evidential burden in this regard.
[28]
After
noting that she was provided with no evidence on this point and given that the
only definition which she considered showed that “java” was defined in the
French language as a popular dance, the Registrar rejected Shell’s submission
that an ordinary French-speaking Canadian would know that there is an island
called Java or that the island of Java produces coffee. She said in this regard
(Reasons of the Registrar, para. 24):
Based
on the evidence before me, I cannot conclude on a balance of probabilities that
the ordinary French-speaking Canadian knows either that there is an island
called Java or that the island of Java
produces coffee. Without such knowledge, there is no reason to believe that the
immediate impression of JAVACAFE on a Canadian Francophone would be that the
associated coffee comes from Java. The opponent having not met its initial
evidential burden in this regard, the paragraph 12(1)(b) is dismissed in so far
as it relates to the French language.
[29]
Against
this background, it cannot be said that the new evidence pertaining to the word
“java” in the French language provides no new information or is otherwise
immaterial. It seems clear that had the Registrar been apprised of the fact
that the word “java” in the French language is also understood to be an island
known for its production of coffee, she would have asked herself (as she did
with respect to the meaning of which she was apprised) whether, given this meaning,
the mark JAVACAFE is to an average French-speaking Canadian descriptive of a
place that produces coffee as a matter of first impression. It is also clear
that she would have answered this question in the affirmative because, when
regard is had to this other meaning, the combination of the word JAVA with CAFE
lends itself to no other conclusion.
[30]
I do not
believe that additional evidence (in the form of a survey or other such
evidence) is required in order to come to this conclusion. While, the word
“java”, when used in isolation, can evoke more than one meaning in the French
language such that a survey might be required in order to identify the meaning
that comes to mind to the average French-speaking Canadian as a matter of first
impression, no such issue arises when the word JAVA is used together with CAFE
as in the proposed mark JAVACAFE.
[31]
In this
respect, paragraph 12(1)(b) of the Act provides that a trade-mark is not
registrable if it is descriptive “whether … written or sounded”. I agree
with Shell’s submission that although the trade-mark in issue is not two separate
words, “java” and “café”, but is instead a single coined word JAVACAFE, this
distinction is lost when the trade-mark is sounded in the French language. As
such, for the purposes of considering descriptiveness pursuant to paragraph
12(1)(b), the trade-mark is effectively two words, namely “JAVA” and “CAFE”. Again
no survey is required to establish this point as the proposed mark in the
French language cannot be sounded otherwise.
[32]
I also
conclude, based on the same reasoning that the mark is not distinctive.
Distinctiveness in relation to a trade-mark means a trade-mark that actually
distinguishes the wares in association with which it is used by its owner. In
my view, the trade-mark JAVACAFE is not distinctive of P.T. Sari’s coffee
products from the coffee products of others given that it is clearly
descriptive of the character, quality or place of origin of the wares with
which its association is opposed (Compare Kirkbi AG v. Ritvik Holdings Inc.,
2005 SCC 65 (at para. 39)).
[33]
Given that
the trade-mark JAVACAFE is clearly descriptive of P.T. Sari’s coffee products
in the French language, it is not necessary to consider whether the trade-mark
is clearly descriptive in the English language.
[34]
For these
reasons, I would allow the appeal, set aside the decision of the Federal Court Judge
and giving the decision which he ought to have been given, I would allow
Shell’s opposition and direct that the Registrar refuse the trade-mark
application Serial No. 866,545 filed by P.T. Sari for the registration of the
mark JAVACAFE with respect to “coffee powder, cooked coffee beans, instant
coffee, freeze dried coffee and granular coffee” on the ground that the mark
applied for in respect of these wares is clearly descriptive and not
distinctive. Shell should have its costs both here and below.
“Marc
Noël”
“I
agree.
Gilles Létourneau J.A.”
“I
agree.
Johanne
Trudel J.A.”
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