A recent decision of the Trade-marks Opposition Board deals with the issue of whether a trade mark consisting of a design made up of coloured stripes displayed when toothpaste is squeezed out of the tube could constitute a valid trade mark.
Colgate-Palmolive Canada Inc. filed an application to register a toothpaste design consisting of green, white and blue stripes applied to toothpaste. Colour was claimed as a feature of the mark. A competitor opposed the application on a number of grounds.
Ornamentation or Decoration
The Hearing Officer agreed that a mark that is applied to wares for the purpose of ornament or decoration only is not registrable as a trade mark. However, such a ground of opposition requires the opponent to show that the applicant is using the design for ornament or decoration purposes only. In this case, there was no evidence that this was the case and the applicant filed evidence to show that the coloured stripes of the design mark were arbitrary and not indicative of function.
It was argued that the design was not registrable because it was primarily functional. The applicant’s evidence showed that the stripes did not perform any individual functions nor were the stripes intended to perform different functions. As a result, this ground of opposition failed.
It was argued that the design could not be used to distinguish the applicant’s toothpaste from the toothpaste of others because at the time of transfer of the toothpaste to customers, the design was not associated with the applicant’s toothpaste. The opponent filed evidence to show that toothpaste is sold in opaque sealed containers that consumers do not open when they are shopping for it. However, the applicant’s evidence contained examples of packaging that allow consumers to see the toothpaste through the container.
The Hearing Officer also concluded that the applicant’s trade mark was distinctive because it consisted of a particular coloured striped pattern rather than being limited to simply striped toothpaste.
Non-traditional trade marks normally have been difficult to obtain in Canada, but the trade mark in this case appears to have satisfied the requirements of the Act. The colours of the individual stripes were particularly important.