Introduction

Colours can function as source indicators and many acquire distinctiveness over time. For example, when thinking of green in association with farm tractors, the John Deere company may come to mind. Similarly, orange linked with home renovation goods and services may conjure up an image of a local Home Depot store. When considering these examples, it is easy to see how a brand can benefit from the protection of its distinctive colours in the form of a trademark registration.

A number of changes will soon be made to Canadian trademark law, including an expanded definition of 'trademark', which will make it possible to protect a colour per se as a trademark (as opposed to a colour applied to a product with a particular shape). Rights holders seeking to protect colours as trademarks in Canada may therefore benefit from the new regime. However, as the new law comes with a catch, a number of important lessons can be learned from the experience of famous mark owners in other jurisdictions.

Lady in red (soled shoes)

One of the world's best-known colour trademarks is Christian Louboutin's red sole. However, Louboutin's unique red sole trademark rights could soon be in jeopardy. In early 2018 the European Court of Justice advocate general argued that the distinctive coloured sole of the designer's luxe shoes does not merit trademark protection.

While Louboutin may be denied protection for its iconic colour mark in Europe, the case raises the question of what kind of protection exists for colour trademarks in Canada.

Protection of colour trademarks

Under current Canadian law, a trademark registration for a colour per se is impermissible. However, similar to under EU law, a colour can receive some protection under Canadian law when claimed as a feature of a two-dimensional (2D) or three-dimensional (3D) trademark.

Specifically, a single colour applied to the surface of an object, such as product packaging, can be registered as a trademark if the trademark application appropriately depicts the manner in which the colour will be applied to the surface of the object (ie, the colour's 2D or 3D shape, perimeter or position). This policy stems from Smith, Kline & French Canada Ltd v Registrar of Trade Marks (1987), in which the Federal Court found that colour, in conjunction with other defining features (eg, shape and size), can qualify as protectable intellectual property.

A December 6 2000 Trademarks Office practice notice concerning trademark applications for 3D objects covers situations in which one or more colours are applied to the whole of the visible surface of or in a particular position on a 3D object, with or without reading matter. The practice notice provides the following as an example of an acceptable description: "the trademark consists of the colour purple applied to the whole of the visible surface of the particular tablet shown in the drawing".

Since the practice notice's publication, applications which include this statement, but also show the object in a dotted outline to indicate that the object does not form part of the trademark, have been accepted, including an application for Louboutin's famous red sole (Figure 1). This is protected under Canadian Registration TMA810,294, which includes the description "the trade-mark consists of the red color (Pantone * 181663TP) applied to the entire outer surface of the sole of the shoe as shown in the drawing (*Pantone is a registered trade-mark)".

Figure 1

New Trademark Act offers greater protection – but there's a catch

Canada's new Trademarks Act was finalised in 2014, but has yet to come into force (it is expected to do so in early 2019). Among the significant amendments to Canadian trademark law provided for by the new act is the expanded definition of a 'trademark', which will include colour per se marks. The new definition covers anything that functions as a source indicator, including any "sign or combination of signs" that designates origin. A 'sign' includes:

"a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign."

Colour per se marks, rather than merely colour marks applied to an object, will therefore be registrable under the new regime. However, the expanded scope of protection offered to colour marks in Canada comes with a catch.

First, under the new act, distinctiveness will be added as an examination ground. Under this new ground, Canadian examiners can raise an objection on the basis that a proposed mark is "not inherently distinctive". Where such an objection is raised, applicants will have to furnish the Trademarks Office with evidence establishing that their proposed trademark is distinctive of their goods or services as of the application's filing date. Notably, the new act indicates that such evidence will be required where the trademark consists exclusively of a single colour or a combination of colours without delineated contours.

Thus, whereas under the existing Trademarks Act applications for colour trademarks applied to a particular object require no proof of acquired distinctiveness, an application for registration of a colour per se mark under the new act will not be registrable unless the applicant can establish acquired distinctiveness at the time of filing (typically by way of an affidavit or survey evidence). Further, if an applicant cannot establish that the proposed trademark has acquired distinctiveness throughout Canada, a registration may be geographically limited to be effective only in the areas of Canada where acquired distinctiveness has been established in the evidence. For example, where the evidence demonstrates that a proposed colour per se mark has acquired distinctiveness only in Quebec, Ontario and Manitoba, a registration may be granted only in respect of those provinces, meaning that the applicant would not maintain any registered trademark rights for the proposed colour per se mark outside these provinces.

Second, under the new act, a trademark will not be registrable if its features are primarily utilitarian in relation to the applicant's goods or services. For example, in the United States, a Federal Circuit court held that that the colour black serves a functional purpose when used on outboard boat motors, as it provides the significant competitive advantage of being compatible with a variety of boat colours and makes the motors look smaller.

A new world of colour?

The modernisation of Canadian trademark law presents an opportunity for owners of famous marks, such as Louboutin, to obtain broader protection for their colour trademark rights in Canada. However, overcoming objections based on functionality or establishing distinctiveness may present significant new hurdles to the registration of such marks, leaving the Canadian landscape surrounding colour per se marks anything but black and white.

For further information on this topic please contact Andrea Kroetch or Sebastian Beck-Watt at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (ackroetch@smart-biggar.ca or sbeck-watt@smart-biggar.ca).The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

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