Colour is a crucial component of many brands. Most often the first thing a consumer will notice about a logo or product package is its colour. Think of red for Coca-Cola®, brown for UPS® or blue for IBM®. Given its importance in branding, it is no surprise that colour has been the subject of trade-mark claims.
Section 30(h) of the Trade-marks Act (the “Act”) requires that an application for the registration of a trade-mark other than word mark include “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed”. Section 27(1) of the Trade-marks Regulations (the “Regulations”) provides that such drawing must be in black and white.
It is often the case that an applicant chooses not to include a colour claim in an application for trade-mark registration. This is because if the applicant does not claim a particular colour, registration will protect the applicant’s right to use the trade-mark in any colour. Where an applicant claims a colour as part of the trade-mark, s. 28 of the Regulations requires the applicant to either describe the colour in words or, where the description of the colour is not clear, file a drawing lined for colour in accordance with a prescribed colour chart. The colour chart in s. 28(2) provides various line patterns corresponding to the following colours: red/pink, brown, black, gray/silver, violet/purple, blue, green, yellow/gold and orange. On December 22, 2010, the Canadian Intellectual Property Office (CIPO) issued a Practice Notice (the “2010 Practice Notice”) explaining that where an applicant claims a colour not found under s. 28(2) of the Regulations, the Registrar may require the applicant to include a clear description of the colour. The applicant may wish to reference a colour system for each colour(s) claimed.
If a three-dimensional mark does not fall within the definition of a distinguishing guise, then it may be registrable as an ordinary trade-mark. Section 2 of the Act defines a “distinguishing guise” as “a shaping of wares or their containers, or a mode of wrapping or packaging wares the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”.
In its Practice Notice released on December 6, 2000 (the “2000 Practice Notice”) titled “Three-dimensional Marks”, CIPO explained that trade-marks “that contain colour as an element are considered to be distinguishing guises if the colour forms part of a mode of wrapping or packaging wares the appearance of which is used for the purpose of distinguishing or so as to distinguish one person’s wares or services from those of others”. However, CIPO went on to provide a number of exceptions to the general rule:
- “a trade-mark consisting only of one or more colours applied to the whole of the visible surface of a particular three-dimensional object”;
- “a trade-mark consisting only of one or more colours applied in a particular position or positions on a particular three-dimensional object”; and
- “a trade-mark consisting only of one or more colours in combination with reading matter and/or two-dimensional design elements, the elements of the mark being applied in a particular position or positions on a particular three-dimensional object”.
A June 6, 2013 Federal Court decision, JTI-Macdonald TM Corp v Imperial Tobacco Products Limited,clarified the 2000 Practice Notice with respect to trade-marks comprised of colour applied to packaging.
JTI-Macdonald TM Corp v Imperial Tobacco Products Limited
Imperial Tobacco Products Limited (“Imperial”) filed two trade-mark applications consisting of “the colour orange applied to the visible surface of the particular packaging as shown in the attached drawing”. The drawings were lined for colour in accordance with s. 28(2) of the Regulations. Imperial’s applications showed the trade-marks (i.e. the colour orange applied to packaging) as having been used in association with “manufactured tobacco products, namely cigarettes” since April 10, 2006.
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JTI-Macdonald TM Corp. (“JTI”) opposed Imperial’s applications on a number of grounds, including:
- the ‘128 Design is a distinguishing guise rather than a trade-mark;
- the ‘127 Design did not specify the particular shade of orange or accurately represent the trade-marks as required under s. 30(h) of the Act and s. 28 of the Regulations; and
- the ‘127 Design and the ‘128 Design are not sufficiently distinctive.
In two separate decisions, the Trade-marks Opposition Board (the “Board”) rejected all grounds of opposition. JTI appealed the Board’s decisions to the Federal Court as a single application, contrary to the requirement in the Federal Courts Rules that an application be in respect of a single appeal unless the Court orders otherwise. However, the Court allowed both appeals to be heard at once, on the basis of the close relationship between them and the lack of objection by Imperial.
The Court ultimately upheld that the Board’s decisions to reject JTI’s oppositions were reasonable. In so doing, the Court found the following findings of the Board to be reasonable:
- that a trade-mark consisting only of one or more colours applied to the whole of the visible surface of a particular three-dimensional object constitutes an ordinary trade-mark rather than a distinguishing guise;
- that specification of a particular hue or shade of a colour in a trade-mark application is unnecessary and the applicant needs only indicate the general colour claimed (e.g. “blue”) rather than a specific shade (e.g. “dark-blue”); and
- that JTI had failed to meet its evidentiary burden of proving that orange packaging was common in the tobacco industry as of the material date.
With respect to the ‘128 Design, the Court found it reasonable to interpret Imperial’s claims to “the colour orange as applied to the visible surface of particular packaging” as claiming “the colour orange in association with the relevant wares”. The Court found it reasonable for the Board to view Imperial’s reference to the “packaging” as defining the scope of the application of the trade-mark rather than being a part of the trade-mark itself. Citing the 2000 Practice Notice, the Court distinguished between “colour claimed alone”, which “is a trade-mark”, and “colour claimed with other three-dimensional elements”, which “may be a distinguishing guise”. The Court held that “the colour orange is not ‘an element’ that ‘forms part’ of the mark for which Imperial applied – the colour is the mark.”
The Federal Court’s decision in JTI-Macdonald confirms the validity of a trade-mark consisting only of one or more colours applied to the whole of the visible surface of a particular three-dimensional object. When applied in such a manner, the colour is considered to be an ordinary trade-mark rather than a distinguishing guise. TheJTI-Macdonald decision seems to be in line with previous Federal Court jurisprudence.
Therefore, it is open to a brand-owner to register a trade-mark consisting only of one or more colours applied to the whole of the visible surface of a particular three-dimensional object. However, the colour cannot form part of the wrapping or packaging of wares used to distinguish the wares, or otherwise the mark may be considered a distinguishing guise. JTI-Macdonald suggests that claims to one or more colours alone, when applied to packaging alone, qualify as trade-marks rather than distinguishing guises.
Additionally, the brand-owner must comply with, among other things, the requirements of s. 30(h) of the Act and s. 28 of the Regulations. The brand-owner should also pay attention to the 2000 Practice Notice and the 2010 Practice Notice. It is not necessary for a brand-owner to specify of a particular hue or shade of a colour in a trade-mark application. The brand-owner can specify only the general colour claimed using either a clear written description or the line scheme provided in s. 28(2) of the Regulations. Where the brand-owner seeks a colour not provided for in s. 28(2), the Registrar may require the applicant to include a clear description of the colour. The brand owner may wish to reference a colour system for each colour claimed.
CIPO has recently proposed amendments to the Regulations which would simplify applications for colour-based trade-marks. These amendments would require an applicant to include a colour drawing of the trade-mark and indicate the name of the colour(s) claimed. The applicant would be permitted to refer to an internationally-recognized colour system. These amendments are not yet in force.