The Descriptive Coffee Mark and the Crowded Class 30 Register

The objection. Section 12(1)(b) bars a mark that is 'clearly descriptive' of the character or quality of the wares or services. The test is the immediate impression of the ordinary purchaser of those wares, in the language of the trade, not the impression of someone who has studied the mark or researched it afterwards. 'COLD BREW' is a recognised trade term naming a preparation method, so applied to ready-to-drink coffee it describes character. But the objection runs against the mark as a whole, and a composite mark is not clearly descriptive merely because one component is; PACIFIC MIST supplies an arbitrary element and is arguably the dominant idea. The primary argument is that the mark as a whole does not immediately convey the character of the wares and is at most suggestive.

The fallback. Expect the examiner to maintain the objection. Disclaiming COLD BREW under s. 35 (the Registrar may require a disclaimer of matter that is not independently registrable) costs little commercially and removes the sting, leaving the composite registrable. Reserve s. 12(2) for the case where the examiner insists the whole mark is descriptive, and only then spend money on evidence.

The pre-filing use. Section 12(2) rescues a mark caught only by s. 12(1)(a), (b) or (c) if the applicant establishes that the mark had become distinctive in Canada at the filing date, 3 March 2025 - not at the date of the decision. The 2021-2025 sales, the $140,000 advertising spend, packaging, invoices, retail listings and any survey evidence therefore have to be assembled and organised to show distinctiveness before that date. Separately, the application's proposed-use basis is inaccurate: amend it to 'use since [date]' with written instructions confirmed, since that date governs entitlement under s. 16.

No, not directly. Section 12(1)(d) is a register-based objection: the question is whether the applied-for mark is confusing with the cited registration, applying s. 6(5) - degree of resemblance, nature of the wares, nature of the trade, inherent distinctiveness and acquired distinctiveness. The Registrar is not deciding who used first in the marketplace, and prior use in Canada is not a defence to a subsisting registration.

Applying the factors. Resemblance is high: three of four words, and the same idea, are shared, with only MIST versus COAST differing. The wares overlap directly (coffee against coffee-based beverages), and the likely channels of trade - grocery and food service - overlap. The registered mark is not inherently strong (both COAST and MIST are suggestive), and the client's British Columbia sales give it some acquired distinctiveness, but on a national scale the record is thin. On the merits this is a difficult citation to argue away.

Routes. (1) Narrow the wares and trade to create separation, for example 'coffee-based beverages sold through the applicant's own cafés and online store' - the statement itself must show different channels. (2) Obtain a consent agreement from the registrant; the Registrar will consider it but is not bound, and it is more persuasive when combined with a restriction. (3) Attack the registration: a s. 45 request to the Registrar, or Federal Court proceedings, if the registrant cannot show use of PACIFIC COAST COLD BREW for coffee during the three years before the notice. Only this route actually removes the citation, and it can run in parallel with the prosecution response. (4) Amending the basis to 'use since 2021' fixes the s. 16 entitlement date but does nothing against the registration.

The classification problem. Since 17 June 2019, wares and services must be grouped by Nice class, numbered, and described with specificity; fees are charged per class. 'Cold brew coffee drinks' is a coffee-based beverage and belongs in class 30. Class 32 covers non-alcoholic beverages that are not coffee-, tea- or cocoa-based - waters, soft drinks, juices. As drafted, the two statements overlap and the class 32 wording is vague, which invites both a classification objection and a requirement to clarify. The fix is to attach a revised statement: class 30, 'coffee-based beverages; ready-to-drink coffee beverages'; and either delete the class 32 entry or replace it with a precise non-coffee item the client actually sells. Deletion is free and saves a class fee on registration and at every renewal.

The deadline. The six-month response period runs from 2 June 2025, so the response is due 2 December 2025. Request an extension, with the fee, before it expires if the evidence or consent negotiations need more time; do not plan to rely on reinstatement after abandonment, which is possible on application with a fee but adds cost and delay without curing the substantive objections. Answer all three objections in one response, since a partial response simply generates a further report.

Cost consequences. Fewer classes means lower filing and registration fees and cheaper renewals; a s. 12(2) evidentiary package is the single most expensive item, so it should be spent only if the disclaimer strategy fails. Also confirm the scope now: broadening the wares after filing is not permitted, so the statement must be right at this stage.