Bodum USA, Inc. v. Meyer Housewares Canada Inc.

Bodum USA, Inc. v. Meyer Housewares Canada Inc.
Court (s) Database
Federal Court Decisions
Date
2012-12-10
Neutral citation
2012 FC 1450
File numbers
T-1240-09
Decision Content
Date: 20121210
Docket: T-1240-09
Citation: 2012 FC 1450
Ottawa, Ontario, December 10, 2012
PRESENT: The Honourable Mr. Justice Mosley
BETWEEN:
BODUM USA, INC.
AND
PI DESIGN AG
Plaintiffs
and
MEYER HOUSEWARES CANADA INC.
Defendant
REASONS FOR JUDGMENT AND JUDGMENT
OVERVIEW:
[1] Bodum is well-known in Canada for its line of non-electric coffee makers. But are the words “French Press” which appear on its packaging and promotional materials a distinctive trade-mark, as it claims, or a generic term like “toaster” or “pepper grinder”?
[2] The type of non-electric coffee maker in question in this action typically consists of a narrow cylindrical beaker, made of glass or plastic, equipped with a lid and a plunger with an attached fine wire or nylon mesh filter that fits tightly in the cylinder. Hot water is mixed with coffee grains in the beaker. When pushed through the water, the plunger and filter separate the grounds from the beverage. The design was invented and patented in Europe and later gained a significant following among coffee-lovers in Canada.
[3] The plaintiffs, and their associated companies, collectively referred to as “Bodum” in these reasons, manufacture and distribute housewares. Pi Design AG, a corporation based in Switzerland, is the registered owner of the impugned mark. Bodum USA, Inc, formerly Bodum, Inc, a corporation registered in the State of Delaware with offices in New York City, has the exclusive license to use the mark in Canada. The principal business of Bodum USA, Inc, is the importation, sale and distribution of kitchenware products.
[4] Bodum’s application to register “FRENCH PRESS” as a trade-mark was accepted in 1997 by the Canadian Intellectual Property Office (Registration No TMA475,721).
[5] The defendant, Meyer Housewares Canada Inc., is a Canadian corporation with offices in Saint-Laurent, Quebec. It is part of a US based group of companies (hereafter collectively “Meyer” or the defendant) engaged in the importation, sale and distribution of kitchenware products. At material times, either the US companies or the Canadian subsidiary sold non-electric coffee makers to Canadian distributors and retailers. Packaging and product inserts for these coffee makers bore the term “French Press”.
[6] Twelve years after the registration in Canada, and without prior notice or other enforcement efforts, the plaintiffs brought this action against the defendant for trade-mark infringement, passing off and depreciation of goodwill contrary to the Trade-marks Act (RSC 1985, c T-13).
[7] The action was commenced by a Statement of Claim dated December 4, 2009 which asserted that the defendant used the trade-mark FRENCH PRESS without authorization in association with its Prestige line of coffee presses. The plaintiffs sought declaratory relief, an injunction to restrain further breaches, damages and/or an accounting of profits together with costs and interest.
[8] The plaintiffs filed an Amended Statement of Claim on January 11, 2010 and, with leave of the Court, filed a Further Amended Statement of Claim on May 7, 2012, a month prior to trial, to add the defendant’s distribution of its "BonJour" line of products as an allegedly infringing use of their trade-mark. The ground asserted in support of this late amendment was that the plaintiffs had only lately become aware of the additional allegedly infringing use through the discoveries in these proceedings.
[9] In its several Statements of Defence the defendant denied that the plaintiffs had acquired any significant reputation or goodwill in Canada in association with the mark or used it as a trade-mark. It contends that the term was used by the plaintiffs as a description of the type of wares being offered for sale. The defendant acknowledged selling non-electric coffee makers in Canada in association with the name Prestige and that the term “French Press” appeared on its packaging. It denied using the term as a trade-mark or trade name and asserted legitimate use as an accurate description of the product. It denied directly selling the BonJour line in Canada but acknowledged selling coffee makers with “French press” used on the packaging to independent third parties who imported them into Canada. By counterclaim, the defendant sought a declaration of invalidity of the mark and expungement of its registration.
[10] On the joint request of the parties, the Court ordered that the matter proceed to trial solely on the merits of the claim and counterclaim. If necessary, the quantum of the damages or profits claimed by the plaintiffs would be subsequently determined by way of further trial or reference.
[11] On the evidence heard at trial, it is clear that Bodum popularized this type of coffee maker and dominates the market for such appliances in Canada. However, other manufacturers, distributors and retailers have and continue to market similar coffee makers employing the term “French Press” and it has long been used as a generic term in the coffee industry across North America to reference both the type of maker and the preferred grind of the coffee used in such devices. For that reason, Bodum’s efforts to register the term as a trade- mark in the United States were unsuccessful.
[12] For the reasons set out below, I find that the trade-mark registration is not valid and order that it be expunged from the Trade-Marks Register. The plaintiffs’ action against the defendant is dismissed in all respects and the defendant’s counterclaim succeeds.
THE LEGISLATIVE and JURISPRUDENTIAL FRAMEWORK:
[13] The relevant provisions of the Trade-marks Act, RSC 1985, c T-13 are set out in the attached annex. These include the definitions of “distinctive” and “use” in s 2; the provisions relating to when a mark is deemed to be used in ss 4(1); the prohibitions in ss 7, 10 and 11; when a trade-mark is registrable (s12(1)), when a registration is invalid (s 18(1)); rights conferred by registration (s 19); infringement (s 20(1); depreciation of goodwill (s 22); and licensing (s 50(1).
[14] The definition of “distinctiveness” in s 2 of the Act requires that three conditions be met:
(1) that a mark and a product (or ware) be associated;
(2) that the "owner" uses this association between the mark and his product and is manufacturing and selling his product; and,
(3) that this association enables the owner of the mark to distinguish his product from that of others.
[15] The question of distinctiveness is a question of fact with the test being whether a clear message has been given to the public that the wares with which the trademark is associated and used are the wares of the trade-mark owner and not those of another party: Philip Morris Inc v Imperial Tobacco Ltd [1985] FCJ No 1231 (TD) (QL) at paras 75-78, aff'd [1987] FCJ No 848 (CA). A word may be commonly used in a descriptive sense yet still remain distinctive when used in certain circumstances: Aladdin Industries Inc v Canadian Thermos Products Ltd, [1969] 2 Ex CR 80 (QL) [Thermos] at para 80; appeal dismissed for delay [1974] SCR 845. Proof of distinctiveness does not require evidence of exclusive use: John Labatt Ltd et al v Molson Breweries [2000] 5 CPR (4th) 180, [2000] FCJ No 159 (QL) at para 72.
[16] As set out in ITV Technologies, Inc v WIC Television Ltd, 2003 FC 1056 at para 67, aff’d 2005 FCA 96, in order to be “clearly descriptive", and therefore not registrable under s. 12(1)(b) of the Act:
“…in order for a mark to be clearly descriptive, pursuant to paragraph 12(1)(b), it must be more than merely suggestive of the character or quality of the wares or services in association with which it is used or proposed to be used. The descriptive character must go to the material composition of the goods or services or refer to an obvious intrinsic quality of the goods or services which are the subject of the trade mark, such as a feature, trait or characteristic belonging to the product in itself (Provenzano v. Registrar of Trade-marks (1977), 37 C.P.R. (2d) 189).
[17] With respect to confusion, the test to be applied is that of the first impression of a “…casual consumer somewhat in a hurry who . . . does not pause to give the matter any detailed consideration or scrutiny…”: Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 [Masterpiece] at para 40, citing Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20.
[18] The material date for assessing the validity of a registration is the date of registration; in this case May 5, 1997: Airos Systems Ltd v Windsurfing International Inc (1983), 75 CPR (2d) 74 (TMOB) at paras 28-29 [Windsurfing]. A trade-mark that is not registrable by reason of s 12(1)(b) is registrable if it has been used in Canada so as to have become distinctive as of the date of filing the application (s 12(2). Here the application was filed on June 28, 1995.
[19] The material date for assessing the validity of a registration under s 18(1)(b) [distinctiveness] of the Act is the date upon which proceedings bringing the validity of the registration into question are commenced: Thermos above, at para 12. In this case, that is the date of the filing of the defendant’s Statement of Defence and Counterclaim, February 10, 2010.
[20] A presumption of validity applies to the registration with the burden of proving the contrary resting on the opposing party based on the right to exclusive use set out in s 19 of the Act: General Motors of Canada v Décarie Motors Inc, [2001] 1 FC 665, 9 CPR (4th) 368 (CA) at para 31. But the presumption is “weakly worded”. It means simply that an application for expungement will succeed only if an examination of all of the evidence establishes that the trade-mark was not registrable at the relevant time: Cheaptickets and Travel Inc v Emall.ca Inc et al, 2008 FCA 50 at para. 12.
[21] For assessing the likelihood of confusion under ss 19 and 20 of the Act, the date is normally the date of the trial subject to the discretion of the trial judge to fix another date such as where infringement began and ceased at some time prior to trial: Alticor Inc v Nutravite Pharmaceuticals Inc, 2005 FCA 269 at paras 12, 16.
[22] As this case involved expert opinion evidence tendered by the defendant, it was necessary to observe the four requirements for the admissibility of such evidence set out by the Supreme Court of Canada in R v Mohan [1994] 2 SCR 9 at para 17: (a) relevance; (b) necessity in assisting the trier of fact; (c) the absence of any exclusionary rule; and (d) a properly qualified expert. In considering the opinion evidence, I have also instructed myself in accordance with the caution expressed by Rothstein J. in Masterpiece, above, at paras 75-101. I have recognized the danger of distraction by such evidence and have formed my own opinion on the evidence: R v Abbey, [1982] 2 SCR 24 per Dickson J at page 42; Fraser River Pile and Dredge Ltd v Empire Tug Boats Ltd. 37 CPC (3d) 119, 95 FTR 43 at paras 12, 17.
ISSUES:
[23] The primary issue raised in this case is whether the registration of the trade-mark, “French Press”, is valid. The parties agree that this is essentially a distinctiveness case. The task for the Court to determine is whether “French Press” is distinctive of Bodum or whether it had become generic as at February 2010 when the counterclaim was filed.
[24] If I found it to be a valid trade-mark, I was also asked to consider whether the defendant's use of the term “French Press” on its packaging and promotional materials is infringing, confusing or has caused any damage to Bodum. Finally, assuming validity, was the defendant’s use allowed under a license granted its predecessor in title and had the plaintiffs acquiesced to its use such that they are estopped from obtaining the equitable relief sought.
THE EVIDENCE:
[25] In addition to the transcripts of discoveries and admissions read in to the trial record, the Court received the evidence of six witnesses called by the plaintiffs and eight by the defendant. Over eight days of trial, thirty five exhibits were introduced by the plaintiffs and 121 by the defendant.
[26] The plaintiffs’ witnesses are all presently, or were formerly, associated in some way with the plaintiffs’ enterprise as employees, sales representatives or wholesale and retail customers. For the most part, I found their evidence credible but deserving of less weight when it was contradicted by the defendant’s evidence, the documentary record and the physical exhibits.
[27] The defendant’s witnesses included two of its competitors and several independent experts. There was no issue in these proceedings as to the independence and objectivity of the experts. The qualifications of two of them to give relevant and admissible opinion evidence were called into question and the plaintiffs urged that I give little weight to the opinions of the others. I will discuss my findings on the admissibility of that evidence below.
[28] Evidence of the results of searches conducted in intellectual property databases maintained by the Canadian Intellectual Property office and the United States Patent and Trademark Office were submitted by affidavit. While the relevance of that evidence was contested by the plaintiffs, the truth of the facts contained in the attached schedules was admitted.
[29] To explain the controversy between the parties and my findings I think it is helpful to provide a summary of the testimony heard at trial.
Plaintiffs’ witnesses;
[30] The first witness for the plaintiffs was Koen de Winter, an industrial designer and later Professor of design in Montreal. Mr. de Winter was in the housewares business for many years and had an early association in Europe with Jørgen Bodum, son of the founder of the firm. Mr. de Winter moved to Canada to work for Bodum’s exclusive distributor in this country, Danesco. He left Danesco in 1997. Bodum USA took direct responsibility for distribution in Canada in 2005.
[31] Mr. de Winter testified that Bodum did not invent the plunger type of coffee maker – it was patented in Italy in the 1930s and later manufactured in France by Établissement Martin for the Melior company. Melior’s products were imported and sold in Canada under that name and the “Chambord” brand. When the European patent expired, Bodum began to manufacture similar coffee makers in Europe. It later acquired Melior and its brands, including Chambord.
[32] To Mr. de Winter’s recollection there were only two types of what he called “plunger coffee makers” on the market in Canada until the mid-1980s; Bodum’s and Melior’s. The market then began to change but only slowly. Initially, there were a few small scale importers of brands from other manufacturers, mainly from Italy. It was known in French as a cafetière à piston and the word cafetière was adopted in the United Kingdom to describe this type of coffee maker.
[33] Mr. de Winter identified Danesco promotional materials directed at retailers and consumers from the late 1980s through the 1990s that he had retained in his personal possession. Initially, in the 1980s, Danesco advertised “the Bodum-Bistro method” and “Bodum plunger-made coffee”. In a pamphlet he wrote in 1987 for display to the public, de Winter describes the method as “plunger” and the product generically as a “plunger coffee maker”. He also used the term “French coffee press”.
[34] In the mid-90’s, Mr. de Winter testified, Bodum was expanding its lines of housewares and he encouraged the company to find a way to distinguish their categories to avoid consumer resistance to a broad range of products under one brand name. He discussed this at trade shows in Europe with Jørgen Bodum and Carsten Jorgensen, Bodum’s chief designer. The Bodum executives decided to use the term “French Press” in association with their coffee makers to distinguish them from their other products such as a line of plastic pepper mills. Bodum began using the term on its packaging and promotional materials which Danesco distributed in Canada in 1995.
[35] According to Mr. de Winter, the benefits of “French Press” as a brand name were that it was:
“…a name that’s close to what it does and close to its origins… It’s not very far from something that could sound like a generic name. In this case we had seen and we had used, ourselves, French coffee press as a word and as a description…And so to squeeze out the coffee was, in my eyes, a very small creative step, but something that as a brand would sound acceptable… And the fact that one refers to the action, which is to press and the other not to another action or what it looks like but to the origin, is not such an obvious combination, to say “French press”, refers first to the origin of the manufacturer, Établissement Martin, and the second word refers to the action you have to make to -- or that’s most characteristic for the coffee maker.”
(Transcript, Vol 1, pp 100-101).
[36] When it was first proposed by Bodum, Mr. de Winter says he expressed concern about the use of an English term in the Quebec market shortly after the 1995 referendum. He also questioned whether it sounded “too generic”. He was persuaded by Jorgensen that while the term sounded generic, it would be similar to “British Airways” or “Air Canada” which were distinguishable as brands related to origin and function.
[37] On cross-examination Mr. de Winter acknowledged correspondence between the President of Danesco, Knud Petersen, and Jørgen Bodum in March and September 1994 in which the term “French Press” was used in a generic manner; the first in reference to brochures picked up at the Frankfurt trade show and the second referring to an article in the Consumer Reports magazine in which the term was used in that sense. No mention was made of Bodum in the article. Mr. Petersen also forwarded an article to Mr. Bodum in September of 1997 from the San Francisco Chronicle in 1997 in which the term was used generically to distinguish the product from other types of coffee makers.
[38] When Mr. de Winter left the business in 1997, Bodum had 85-90% of the Canadian sales for such non-electric coffee makers. There were additional products on the market offered by distributors such as Trudeau and Fox Run. At some point prior to 1997, he was aware that Fox Run was selling the BonJour line of coffee makers. Mr. de Winter kept one of their packages in his office. Jørgen Bodum told him when they met at European trade shows that “they had to do something” about the BonJour competition. According to Mr. de Winter, Bodum corporate management clearly knew about the BonJour sales at that time.
[39] Mr. de Winter agreed that the name Bodum appeared predominantly in all of the Danesco advertisements of the coffee makers, followed by the model name, and Bodum was the brand name chiefly associated with the coffee makers. It is still the preferred term used in Quebec, he says, for this type of coffee maker. The term “French Press” appeared in much smaller letters, beginning in 1995, to his recollection. The term was never used without the Bodum name. In the only written agreement between Bodum and Danesco, executed in December 1990 to license sales of Bodum products by Danesco in Canada, reference is made solely to the trade-mark “Bodum”. Nor does “French Press” appear in the list of products appended to the agreement.
[40] Ms. Marie Cacciato, a public relations executive at JB Cumberland PR in New York, testified that she began handling the Bodum media relations account for the Canadian market in 2005. She tries to ensure that the term “French Press” is used as a trade-mark in promotional materials prepared for Canadian publications. It is capitalized and presented with the registration symbol. She acknowledged that editorial decisions result in the term being used in a generic sense. On cross-examination Ms. Cacciato was taken to several articles in Canadian publications in which the term French press was used as a reference to the type of coffee maker or method of making brewed coffee and not as a brand name or trade-mark.
[41] Fontaine Wong, the owner of Ming Wo Cookware, a Vancouver-based chain of housewares stores testified from her knowledge of retail sales. She described sales of Bodum coffee makers over 20-25 years, initially through Danesco. Her stores have carried similar products from other distributors including the Cuisinox, BonJour, Trudeau, Thermos, Le Creuset and Oxo brands. In their print advertisements, which she personally prepares, she tended to use “coffee press” for the description of such products but has also used, interchangeably, “French press”. She stopped using “coffee press” in 2011 to describe Bodum’s plunger-type makers when asked to do so by a Bodum representative. A few days prior to testifying she changed the description of a “Cuisinox French press” on her web site again when spoken to.
[42] Ms. Wong’s stores sold the BonJour French press for two years. The term French press, she acknowledged, was used by “a lot of companies” to identify and promote their products “…so people can understand what it is.” BonJour, Oxo and Le Creuset used French press on their packaging to her recollection, as did Melior when they were available in Canada, 30-40 years ago.
[43] The Ming Wo website has a search function for “French press”. To Ms. Wong that means a plunger-type style of coffee maker, probably a Bodum product because of its dominance of the market. Grinders featured on the site include a setting for making “French press” coffee. She agreed that the message communicated was that French press is one method of brewing coffee and not the product of one manufacturer. She agreed that the terms “coffee press” and “French press” describe the same functional product and could be interchanged for each other. In her stores, they use the term “French press” to describe the type of coffee maker to their customers. Their use of the term is not limited to the Bodum products but she says her customers who know brands use Bodum and French press interchangeably. Those new to the process would call it a “coffee press”.
[44] The defendant purchased an Oxo Good Grips French Press TM in one of Ms. Wong’s stores prior to trial. The package bore the words “French press”, as did the price sticker applied by the store and the cash register receipt.
[45] The plaintiffs characterized Ms. Wong as an independent witness. While I believe that she gave her evidence honestly and to the best of her recollection, I do not consider her to be completely independent of the plaintiffs. She has had a long commercial relationship with Bodum and relies, in part at least, in her business on the sales of their products in her stores. Her testimony, when it favoured the plaintiffs, was undermined by the documentary evidence of her business practices. I was left with the sense that Ms. Wong did not know, respect or use French Press as an exclusive trade-mark of Bodum or communicate that message to her consumers.
[46] Gary Nichols is the co-owner of Details Sales Agency, the western Canada sales representative for Bodum since 2005. He has been in wholesale housewares for 30 years. Bodum and its coffee line now constitute about 95% of his business. He attends trade shows in the US and generally keeps abreast of the market. Bodum dominates the market in the “French press category” of coffee maker and is synonymous with the term. BonJour is their principal competitor. Others would be house brands imported by chain stores. He had discussed the competition from BonJour with the Bodum sales manager Jeff Malkasian. Mr. Nichols was aware of the use of the term “French press” by BonJour and other brands such as Le Creuset and Oxo and aware that his customers like Ming Wo sell French presses from various manufacturers and describe them as French presses. Mr. Nichols acknowledged that Amazon.ca and other on-line vendors sell Bodum and other French presses and that Danesco sells a coffee mug “with French press”. He doesn’t correct his customers when they refer to other products as French presses.
[47] Thomas Perez, Chief Executive Officer and President of Bodum USA Inc., explained the plaintiffs’ corporate structure and their marketing efforts in Canada. Sales are mainly through major retail chains. They don’t sell to discount chains. Mr. Perez acknowledged that “French press” was a common name for the plunger or coffee press in North America but contended that the use of the term on the BonJour packaging was a source of confusion for customers.
[48] Mr. Perez was unable to provide any examples of actual confusion in the Canadian market but described a 2011 incident in a US shop where the manager referred to BonJour’s French presses as Bodum products. When asked on discovery if he was aware of any incidents of confusion he had been unable to recall any. That answer was not updated prior to trial.
[49] Bodum is now selling on-line through Amazon.ca and its own website and Facebook page. They don’t use the trade-mark “French Press” on Facebook and Mr. Perez wasn’t certain about the others. He agreed that it was not used in examples of advertising produced jointly with major retailers in Canada or in their more recent television advertising. Nor is “French Press ®” promoted in their displays in major Canadian retailers. It appears in letters on the packaging much smaller than the Bodum name and the model name. Mr. Perez described their promotional costs in Canada but could not say what proportion, if any, might relate to marketing “French Press”. Bodum has taken action against other Canadian firms for copying their trade dress, i.e., product design and appearance, but not for using “French press”. He is aware that competitors’ products using French press as a descriptor are on the market in Canada. The packaging of a Bodum product for sale by Starbucks uses “French press” in the generic sense contrary to their guidelines. Bodum has marketed an electric coffee maker in which it uses “French press taste” in a descriptive and not a trade-mark sense.
[50] Bodum has no records relating to the creation of the term “French press” according to Mr. Perez. He believes that the term was created by Jørgen Bodum when he acquired Melior and that it was first used in Canada when Bodum applied for its trade-mark in May of 1995. Mr. Perez identified Canadian Industrial Design registrations obtained by Bodum in which the device is described as a “French Press”. Mr. Perez acknowledged that the use of the term in those registrations was as an ordinary commercial description for the type of device. He was taken to Canadian patent applications by Bodum which state that “so called ‘French press’ coffee making devices are known” in the prior art and “[b]everage makers of this type are generally referred to as plunger filter beverage makers or as French press beverage makers.” Bodum product catalogues circulated in Canada in 2009 and 2010 do not use “French Press” as a trade-mark but as a generic description of the process. Bodum uses “The Original French Press” in reference to its Chambord model to distinguish it from the products of other manufacturers. The Chambord was the Melior product which Bodum later acquired.
[51] Mr. Perez identified a 1997 licence agreement that was entered into between Bodum Inc. and Culinary Parts Unlimited (“Culinary”) in settlement of trade dress litigation over the BonJour line. The agreement permitted Culinary to sell the BonJour French press throughout North America, including Canada, with certain specified restrictions. Pursuant to the agreement, packaging and product specifications for the BonJour product were precisely defined. Attached to the agreement as an exhibit is a reproduction of the BonJour packaging which states “The French Press coffee maker.” An attached list of the BonJour products to which the license applied refers to several other products described as “French press”. Meyer subsequently acquired the rights to the agreement from the successor in title to Culinary, BonJour International.
[52] Mr. Perez asserted that Bodum did not consent to the use of the trade-mark “FRENCH PRESS” in Canada through this agreement. He acknowledged, however, that there was nothing in the agreement or the attached list of detailed specifications that restricted such use.
[53] Mr. Perez identified proceedings before an American Court in 2009 in which Jørgen Bodum gave answers to the plaintiff’s interrogatories that referenced a third party “French press coffee maker” offered for sale in New York State as early as 1965. In a declaration in the same proceedings entered as an exhibit, Mr. Bodum used “French press coffee makers” as a description of the general class of products. At trial in that case, Mr. Bodum described how he had taken over his father’s business after the latter’s untimely death in 1967. He testified that he had “found a lot of French press coffee makers in his [father’s] office…most of them was a French brand called Radio.” Mr. Perez agreed that Mr. Bodum used “French press” in a generic sense in that and other answers in that proceeding and acknowledged that both he and the company have done the same in other contexts. He agreed that many Canadians also use the term generically to describe the entire class of products.
[54] On May 2, 2102, Mr. Perez swore an affidavit in support of the plaintiffs’ motion to further amend the claim in this proceeding so as to include Meyer’s BonJour line as infringing the trade-mark. At paragraph 3 he deposed:
Neither I nor the plaintiffs were aware that BonJour incorporated the defendant or any of the Meyer group of companies were selling a product in Canada under the trade name BonJour with the trade-mark French Press on the packaging, prior to receiving the defendant's document production in this action. Before receiving the defendant's document production, to the best of my knowledge the plaintiffs were only aware of products bearing the trade-mark French Press that were sold under the Prestige line in Canada.
[55] Mr. Perez testified that he did not consult Mr. Bodum, with whom he said he speaks on a daily basis, or Mr. Nichols, before making this averment. He relied on his own knowledge of the Canadian market and possibly that of one of his sales managers.
[56] Mr. de Winter’s evidence was that Jørgen Bodum and Carsten Jorgensen were concerned about the sales of the BonJour line in Canada prior to his departure from Danesco in 1997. Gary Nichols was aware of the BonJour sales in Canada from his dealings with independent retailers like Ming Wo in the preceding seven years and had discussed them with Jeff Malkasian. The agreement with Culinary in 1997 licensed BonJour sales throughout North America with similar trade dress.
[57] Mr. Perez was unable to provide an explanation as to how he could deny corporate knowledge of the BonJour sales in Canada in his May 2012 affidavit. On this and other aspects of his testimony, I considered Mr. Perez’ evidence to be self-serving and deserving of little weight. I infer that he was personally aware of the 1997 agreement as he had referred to it in a US deposition. At best, he did not take appropriate steps to re-acquaint himself with the facts prior to making his affidavit. This had the effect, in my view, of misleading the Court when it considered the motion to further amend the Statement of Claim. I do not attribute this in any way to counsel for the plaintiffs. Mr. Perez was responsible, under the direction of Mr. Bodum, for initiating this litigation and should have informed himself of the pertinent facts.
[58] Jeffrey Malkasian, Vice President, Bodum USA, was responsible for sales throughout Canada between 2007 and 2011. In that capacity he worked with representatives such as Gary Nichols and visited retailers in Canada. He would use “Bodum French Press” to encourage retailers to go with their brand. When offered side by side in the stores they outsell the competition. He saw a lot of direct import brands which in his view were essentially copies of their models. But in comparing them, his focus was on the product rather than what was used on the packaging to describe the product. He would report to Bodum when he found what he thought were copies of the design of their products. He was aware that BonJour was being sold on the Canadian market and it was frequently discussed in sales meetings. They would look for any retailer “that carries any French press that isn’t ours” with a view to having them sell the Bodum products.
[59] Mr. Malkasian agreed that “French press” is used to describe a brewing method. Bodum didn’t develop it but popularized it. Using “The Original French Press” in their marketing efforts is an implicit recognition that there are other French presses trading off their brand recognition. He uses the term himself generically to describe a category of their business.
[60] Mr. Malkasian recalled seeing ads in trade magazines featuring a BonJour press distributed in Canada by Fox Run. He knew that BonJour was on the Canadian market in 2007 and agreed he must have discussed this with Mr. Perez at that time. He has difficulty separating discussions about market developments in the two countries. He agreed that the most prominent feature of the Bodum packaging, apart from the image of the product itself, is the name Bodum followed by the model name and in very small letters, “French Press ®”.
Defendant’s witnesses;
[61] Jay Goldberg is a Chartered Accountant and Vice President of Accent Fairchild Group, a distributor and manufacturer of housewares and hardware. Accent Fairchild provides finance and operations services to Meyer in Canada. Mr. Goldberg described Meyer’s corporate structure and sales of housewares in Canada. Mr. Goldberg identified lists of sales records of products shipped by Meyer to Canada between 2006 and 2010 with or without “French press” on the packaging. He identified exhibits relating to the sales of Meyer’s Prestige brand through Canadian Tire Corporation, a President’s Choice brand sold through Loblaws and the BonJour line imported and distributed by another firm, Sevy Imports. Sevy is a smaller company that focuses on smaller retailers. The rights to the BonJour line were assigned to the defendant by Culinary and BonJour International. The name BonJour is a registered trade-mark in Canada in association with a long list of wares. Sevy has the exclusive rights to the BonJour line in Canada.
[62] Charles Harari works for the Trudeau Corporation in Boucherville, Quebec as Vice President of product development. Mr. Harari has been in the housewares business since the mid-1960s and joined Trudeau in 1994. The plaintiffs sued Trudeau in 2007-2008 claiming infringement in relation to one of Bodum’s registered industrial designs. That action went to trial a few weeks prior to this action and Mr. Harari testified against Bodum in that matter as well. While the plaintiffs brought that fact out, they did not challenge Mr. Harari’s credibility in this proceeding. I did not find any reason to doubt that Mr. Harari testified honestly according to his recollection of facts and events or to give his evidence lesser weight.
[63] Mr. Harari says he refers to the type of product at issue in these proceedings as a “French press” and as a “cafetière”. They are sold by Trudeau under several brand names to major chain stores and independent retailers. Trudeau uses “coffee press” to distinguish them from a similar product they sell for brewing tea. They also use “filter press coffee maker”. He identified the Stella line imported by Adamo Imports that also uses “coffee press” and “tea press”. The Tri-leaf product sold through Canadian Tire since at least 2010 is referred to as a “coffee press” on their website but the site describes the process as “the French press method”. Paderno Kitcheware sells “coffee presses” through their catalogue and at their retail stores.
[64] The Trudeau website shows the different ways of preparing coffee and refers to the use of a “French press” for steeping coffee. They have sold them since 1995 or 1996 and compete with both Bodum and Meyer. He had first seen the Frieling product described as a French press at the Frankfurt Trade show in 1994-95 and, upon his return to Canada, in small specialized shops. La Cafetière has sold French presses in Canada since the late 1980’s. Similar products, manufactured in Taiwan and China, were directly imported by larger retailers, such as Stokes, and sold as French presses. Danesco sells a coffee mug “with French press”.
[65] Mr. Harari first saw the term “French press” used by the D.H. Lisser Company as early as the mid-1960’s to describe the Melior French press which it then distributed in Canada. He finds it difficult to understand how Bodum can claim to have exclusive rights to use the term as it describes the method of making that type of coffee. BonJour products were first distributed by Fox Run in Canada beginning around 1995-96. Fox Run displayed their wares at the Canadian Gift and Tablewares Association (CGTA) shows in Toronto. Sevy later became the BonJour distributor in Canada between 2005 and 2008.
[66] Harry Davies, a licensed private investigator, testified as a fact witness. His assignment was to research the use of the words “French press” in Canada in association with Internet sites and retail stores which sell French press devices; sales of related coffee products such as coffee beans and ground coffee and Internet sites that use the words "French press" to describe the method of brewing coffee. His research excluded Bonjour, Prestige and Bodum products.
[67] To conduct this research, Mr. Davies visited a number of stores in Toronto, Mississauga, Etobicoke and Brampton, Ontario in March 2012 and made purchases of items that were described as French press devices and associated items such as coffee and grinders. He chose stores that he believed would be found across Canada. These included the Bay, Sears, Zellers, Walmart, Home Outfitters and grocery stores including Loblaws, Sobey’s, Metro and Whole Foods. He conducted searches on the Internet and purchased products on-line which he selected. In May, he carried out a follow up visit to a Bay store to photograph grinders on display and conducted additional Internet research and placed on-line purchase orders.
[68] Mr. Davies identified a series of web page printouts stemming from his on-line research and physical exhibits purchased at the stores including coffee makers and packaged coffee grains. He described his observations of other products seen but not purchased. Other products introduced as exhibits through Mr. Davies were purchased on-line through Amazon.ca, a Canada Post shopping site, shopbot.ca and other Canadian based websites. The products purchased through those sites were shipped by Canadian based distributors. In addition, Mr. Davies ordered products from US based firms that indicated on their web sites that they would ship to Canada. Some of the products ordered had not been received as of the date of Mr. Davies’ testimony and he identified web page print-outs from those sites.
[69] The coffee makers purchased by Mr. Davies from retail stores or on-line sites were described on their packaging or product inserts as “French press” makers. Similarly the bagged coffee he bought referred to a “French press” grind on the packaging as did the settings on the grinders purchased or observed. None of these items referred to a “coffee press”, “plunger-style” or “press pot” grind or setting for ground coffee.
[70] On cross-examination Mr. Davies agreed that he didn’t know when certain of the US based sites began shipping to Canada. He acknowledged that at certain stores he visited ther