With the popularization of coffee shop chains and counters, the average Canadian coffee consumer is more sophisticated than ever. Walk in to any corner coffee shop and chances are you can select from a range of options from just plain JAVA to MOCHA JAVA or beyond. Even software company Sun Microsystems, Inc. has adopted a cup of coffee as the logo for its JAVA software.
The popularity of coffee is not without foundation. According to the Specialty Coffee Association of Indonesia, it is on the island of Java that Dutch colonists first started cultivating coffee bean plants as early as the late 17th century. Indonesia is now the world’s fourth largest coffee producing country according to The Economist.
Would it be fair for one Indonesian exporter to obtain a monopoly, to the exclusion of Javanese producers and exporters of coffee, over a term that is recognized in the Canadian marketplace as being the place of origin of the fine brew so many of us enjoy? The Canadian Trademarks Act addresses this issue by prohibiting the registration of any mark that includes a clear description of the place of origin of the wares in association with which the mark is used or proposed to be used. In other words, one producer located in a geographical area cannot obtain a monopoly, to the exclusion of other such producers, over the name of the place where the wares were produced. Nevertheless, such was attempted by P.T. Sari Incofood Corp. (“P.T. Sari”) — which, interestingly enough, is not based on the Indonesian island of Java but on Sumatra, another nearby island.
While P.T. Sari had never used the trademark JAVACAFÉ in Canada, it sought to obtain a trademark registration for this mark in association with coffee (among other wares) based on the trademark registration it had obtained in Indonesia. An opposition was filed against this application by Shell Canada Ltd. (“Shell”), a subsidiary of the famous Dutch petroleum company, which sells coffee under the brand JAVACAFÉ and often donates the proceeds derived therefrom to various charitable causes. A registration of the mark JAVACAFÉ by P.T. Sari would have rendered Shell’s use of this trademark illegal in Canada.
This case is of particular interest due to the various turns it has taken throughout the appellate process, culminating in P.T. Sari being refused its registration by the Canadian Federal Court of Appeal and also being refused leave to appeal to the Supreme Court of Canada in February 2009.
In the application’s initial stages, the Registrar found that there was no evidence that an average English-speaking Canadian consumer would recognize the island of Java as a place known for its coffee. Furthermore, while recognizing that the words JAVA and CAFÉ would both be understood by the average English-speaking Canadian consumer to mean “coffee,” the Registrar held that the same conclusion did not apply to the combined word JAVACAFÉ. On the French side, the Registrar took it upon himself to peruse the Larousse dictionary and discovered that the word “java” can mean a dance, no doubt familiar to the Paris demi-monde of the 1930s. As a result, the word JAVACAFÉ was held to not be clearly descriptive of the place of origin of P.T. Sari’s coffee and was therefore considered distinctive. Its registration was allowed.
On appeal to the Federal Court, Shell produced new evidence of the meaning to the average French-speaking Canadian consumer of the word “java” as also indicating, beyond the dance uncovered by the Registrar, the island known for its coffee (primarily through dictionary and encyclopedia entries and other written sources). This evidence was dismissed by the Federal Court, which considered these dictionary and encyclopedia entries immaterial and subsequent to the 1998 filing date of P.T. Sari’s application. As a result, the Federal Court refused to disturb the Registrar’s finding and allowed the registration. In so doing, the Federal Court also held that, given that the mark JAVACAFÉ was not descriptive, it could serve to distinguish P.T. Sari’s coffees from those of others in the Canadian marketplace.
The case was then brought by Shell before the Court of Appeal, which agreed to consider Shell’s supplementary evidence of the meaning to the average French-speaking Canadian consumer of the word “java.” The Court of Appeal found this evidence to be material and also correctly noted that it pre-dated P.T. Sari’s application and concluded that it therefore should have been considered by the Federal Court. On the issue of the analysis of the word JAVACAFÉ as a whole or in its two components (JAVA and CAFÉ) and that of the java-as-a-dance meaning, the Court of Appeal held that, given that the term JAVA is susceptible to meaning a coffee-producing island, the average French-speaking Canadian would perceive the combined words JAVA and CAFÉ as indicative of a place that produces coffee as a matter of first impression. Furthermore, whether the words JAVACAFÉ appear in one word or two, the prohibition on registration of descriptive marks set out in the Trademarks Act applies to marks, whether written or sounded. Nothing sounds more like JAVACAFÉ than JAVA CAFÉ, at least in French. Having concluded that the mark is descriptive, the Court of Appeal determined that the mark could not serve to distinguish P.T. Sari’s coffees from those of others in the Canadian marketplace. Having found that the mark was descriptive in French and therefore not distinctive, the Court of Appeal held that there was no need to consider the English side of the equation. Indeed, the prohibition set out in the Trademarks Act prevents the registration of trademarks that are clearly descriptive in French or English.
Leave to appeal of the Court of Appeal’s decision was refused by the Supreme Court.
Shell was represented in this matter by Kohji Suzuki, Steve Garland and Timothy Stevenson of Smart & Biggar’s Ottawa office, and by François Guay of our Montreal office before the Federal Court of Appeal.
The Trademarks Act contains a number of prohibitions on the registration of — and, by consequence, the monopoly over — terms that describe wares or services in relation to which they are used or proposed to be used. Among these prohibitions is the one connecting wares or services to their places of origin. This is not to say that Canada does not afford protection to such terms. While Canada does not have the European system of geographic indications, the Trademarks Act provides for a special regime for so-called “certification marks.” Such marks can be registered by a person who, while not engaged in the production or commercialization of the wares, licenses others who meet the standards that it sets to use the certification mark. Consider the following certification marks registered with the Canadian Trademarks Office: COLOMBIAN (for coffee), owned by the Republic of Colombia, JAMAICA BLUE MOUNTAIN (for coffee), owned by Coffee Marks Ltd. of Kingston, Jamaica, or CEYLON & LION DESIGN (for tea), owned by the Sri Lanka Tea Board. In the case of JAVACAFÉ, the granting of a trademark registration to P.T. Sari Incofood Corp. would likely have prevented the eventual registration as a certification mark of JAVA by the Government of Indonesia or the Specialty Coffee Association of Indonesia.