Summary – The Federal Court of Canada has held that the position of the Trade-Marks Opposition Board that claims for colour alone applied to packaging qualify as two-dimensional marks rather than distinguishing guises was reasonable. The Court also confirmed that there is no requirement to specify a specific shade of colour being claimed. In this case, simply describing the colour applied to the packaging as “orange” was sufficient.
Analysis – This appeal from the Board’s decisions concerned two trade-mark applications filed by Imperial claiming “the colour orange applied to the visible surface of the particular packaging” for “manufactured tobacco products, namely cigarettes”. JTI contended, inter alia:
- the applications were for distinguishing guises rather than trade-marks, and were therefore incorrectly approved by the Registrar as they did not comply with s. 30(h) of the Trade-Marks Act as the drawings were not accurate representations; and
- the lack of designation of a particular “shade” of the colour claimed was a violation of Rule 28 of the Trade-marks Regulations requiring that “the colour shall be described” where an applicant claims colour as a feature of the mark.
JTI brought a single application appealing the two decisions of the Board, despite the fact that Federal Court Rule 302 limits applications to the Court to a single order unless the Court allows otherwise. However, Snider J permitted the two decisions to be dealt with in one application, in light of the close relationship between the decisions and a lack of objection by the Respondents.
The Court upheld the Board’s conclusion that, where an applicant does not claim a colour as a part of packaging, but rather claims the colour itself as a mark, the mark is a trade-mark and not a distinguishing guise. The decision is both a judicial endorsement and a clarification of a Practice Notice issued by the Trade-marks Office after the decision in Smith Kline & French Canada Ltd v Canada (Registrar of Trade Marks),  2 FC 628. The notice stated that a colour applied to a three-dimensional object is not a distinguishable guise and is registrable as a trade-mark “unless [it forms] part of a mode of wrapping or packaging wares”.
The Court also held that JTI’s position that the applications failed to describe a specific shade or hue of orange was inconsistent with the Regulations. The “colour lining” illustrations contained in ss. 28(2) of the Regulations allow for differing shades to be represented by the same lined drawing, but give an applicant no option to denote a particular shade of any colour. Therefore drawings of a mark submitted under s. 30(h) of the Act do not need to specify a particular hue or shade of colour.
Practice Point - The Court’s position in respect of the claiming of colour, specifically the ability to broadly claim many different shades of a colour using the lined drawings provided in the Regulations, appears to be at odds with its position taken in respect of JTI’s evidence in support of its lack of distinctiveness allegation. The appeal of this ground of opposition was rejected by the Court as irrelevant, since the evidence submitted by JTI consisted primarily of tobacco products associated with the colour peach rather than orange. This discrepancy makes one wonder: why is evidence of use of similar but different shades of a claimed colour irrelevant if an application is considered to cover all shades and hues of a claimed colour?