Colour can be a potent marketing tool and indicator of source. From a legal perspective, the issue of colour trade-marks has been considered recently by courts in the United States and United Kingdom, including the widely reported decision of the U.S. Court of Appeals for the Second Circuit relating to the red soles of Louboutin shoes, and the U.K. Court of Appeal decision relating to the colour purple for the packaging of Cadbury chocolate products.

A March 28, 2014 decision of the Canadian Federal Court, Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, 2014 FC 300, has reinforced the principle that, in Canada, a single colour as applied to the surface of a consumer product is capable of being registered as a trade-mark. 

This decision relates to two applications filed by Imperial Tobacco Products Limited (“Imperial Tobacco”) for the colour orange applied to cigarette packages in 2-dimensional and 3-dimensional forms. The applications were previously upheld as registrable by the Federal Court in respect of an earlier opposition brought by JTI Macdonald TM Corp. (“JTI Macdonald”), reported in our June 13, 2013 IP Update.

In addition to being opposed by JTI Macdonald, these same two applications were also opposed in a separate proceeding by Rothmans, Bensons & Hedges, Inc. (“RBH”). 

The grounds of opposition asserted by RBH included technical attacks that the designs were not accurate depictions of the marks in accordance with the requirements of the Trade-marks Act (“Act”), that the designs were not actually used by Imperial Tobacco as trade-marks, and that the designs were not distinctive of Imperial Tobacco in view of third-party tobacco products sold in allegedly orange-coloured packaging. The Trade-marks Opposition Board rejected each of RBH’s grounds of opposition, and RBH appealed the Opposition Board’s decision to the Federal Court.

The appeal by RBH was heard by a different Federal Court Judge than the appeal by JTI Macdonald. Nevertheless, as in the JTI Macdonald proceeding, the Court found that the Opposition Board’s decision was reasonable and dismissed RBH’s appeal. In particular, the Court held that the following aspects of the Opposition Board’s decision were reasonable:

  • The designs were properly depicted in the applications. In particular, even though other word and design trade-marks appeared on the packages in the marketplace, the applications nevertheless accurately depicted the trade-marks claimed, namely, the colour orange as applied to the visible surface of the packaging, as it is well established that multiple trade-marks can be used together on the same package or product.
  • The designs had been used as trade-marks. In particular, Imperial Tobacco submitted sufficient evidence that it had specifically adopted the colour orange to act as a trade-mark and had used it as such, with the Court concluding that the colour was clearly visible on the packages at the time of transfer to the customer.
  • The designs were distinctive of Imperial Tobacco. In view of the evidence, the Court held that it was reasonable for the Board to conclude that RBH had not met its evidential burden of demonstrating that orange-coloured packages were common to the tobacco trade. 

Additionally, RBH sought to rely in part on the recent decision of the U.K. Court of Appeal, which refused an application by Cadbury for the colour purple applied to packaging for chocolate products. The Canadian Federal Court distinguished that case as having turned on requirements in the relevant U.K. trade-mark legislation that are not present in the Canadian Act.

Newly tabled amendments to the Act reported in our March 31, 2014 IP Update will, if implemented, render colour per se registrable in Canada without the need to delineate the contours of the object to which the colour is applied in cases where distinctiveness can be established. However, this decision reflects the current state of the law regarding colour trade-marks in this country and reinforces the principle that colour can be registered as a trade-mark in Canada so long as the application appropriately depicts the manner in which the colour will be applied to the surface of an object.