JTI-Macdonald TM Corp. v. Imperial Tobacco Products Limited, 2013 FC 608

Imperial had applied for two marks, both consisting of the colour orange applied to the visible surface of the packaging, used in association with tobacco products. JTI-Macondald unsuccessfully opposed and appealed to the Federal Court, but the original decision was found to be reasonable. JTI argued that one application was actually a distinguishing guise because the colour formed part of the packaging. The Court held that a mark consisting of one or more colours applied to the whole of a visible surface of a three-dimensional object or ware is not a distinguishing guise, unless it forms part of a mode of wrapping or packaging wares. In this case the colour is the mark, and not an element of the mark.

For the second application, JTI argued that the drawing in the application did not accurately represent the use of the proposed mark. However, it was found that the drawing was sufficiently clear and followed s.28 of the Trade-mark Regulations.