Vulnerabilities Of Descriptive Marks
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.
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