A June 6, 2013, decision of the Federal Court has reinforced the Court’s position regarding trade-marks comprised of colour applied to the visible surface of objects. JTI Macdonald TM Corp v Imperial Tobacco Products Limited, 2013 FC 608, relates to two applications filed by Imperial Tobacco Products Limited (“Imperial Tobacco”) for the following trade-marks:

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Both applications claim the following:

The trade-mark consists of the colour orange applied to the visible surface of the particular packaging as shown in the attached drawing. The drawing has been lined for colour.

The applications were based on use in association with “manufactured tobacco products, namely cigarettes.”

JTI-Macdonald TM Corp. (“JTI-Macdonald”) opposed registration of the trade-marks on a number of grounds, including allegations that the ’127 Design was not depicted with sufficient accuracy in accordance with section 30(h) of the Trade-marks Act (“Act”), that the ’128 Design was a distinguishing guise rather than an ordinary trade-mark, and that neither design was distinctive of Imperial Tobacco in view of third-party tobacco products sold in arguably orange-coloured packaging. The Trade-marks Opposition Board (“Board”) rejected each of JTI-Macdonald’s grounds of opposition, and JTI-Macdonald appealed the Board’s decision to the Federal Court.

The Court held that the conclusions of the Board were reasonable and thus upheld the Board’s decision and dismissed the appeal. In particular, the Court held that the following aspects of the Board’s decision were reasonable:

  1. The ’127 Design satisfied the requirements of section 30(h) of the Act. In particular, the application was lined for colour in accordance with the Trade-marks Regulations and the shape of the object was accurately depicted.
  2. The ’128 Design was not a distinguishing guise. Consistent with earlier Federal Court jurisprudence, the Court held that colour as applied to the visible surface of an object can constitute an ordinary trade-mark rather than a distinguishing guise.
  3. Both designs were distinctive of Imperial Tobacco. In view of the evidence, the Court held that it was reasonable for the Board to conclude that JTI-Macdonald had not met its evidential burden of demonstrating that orange-coloured packages were common to the tobacco trade.

This decision is a useful reminder that colour can be registered as an ordinary trade-mark under Canadian law so long as the application appropriately depicts the manner in which the colour will be applied to the three-dimensional surface of an object.