Colours can function as indicators of source, and many colours acquire distinctiveness over time. When thinking of the colour green in association with farm tractors, the John Deere company may come to mind. Or seeing the colour orange linked with home renovation goods and services may readily 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 protection for its distinctive colour(s) in the form of a trademark registration.
Trademark laws in Canada will soon be changing, and among these will be an expanded definition of “trademark”, which will now include the possibility of protecting colour per se as a trademark (as opposed to colour applied to a product having a particular shape). Rights owners seeking to protect colours as trademarks in Canada may therefore benefit from the new regime.
There are some catches to the new Canadian trademark laws, however, and important lessons to 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 (at least in the fashion world!) is Christian Louboutin’s famous red sole. However, Louboutin’s unique red sole trademark rights might soon be in jeopardy. In early 2018, the Advocate General of the Court of Justice of the European Union argued that the distinctive coloured sole of the designer’s luxe shoes does not merit trademark protection. In Christian Louboutin SAS v Van Haren Schoenen BV, Advocate General Maciej Szpunar stated that Louboutin's red sole mark qualifies as a shape mark, or “a mark consisting of the shape of the goods and seeking protection for a color in relation to that shape”, and shapes are usually not protected under the EU’s trademark law. This was because in Mr. Szpunar’s opinion, the colour red on its own could not function as a trademark and identify Louboutin as the source of the shoes when used separately from the shape of a sole.
Though the Court of Justice of the European Union has yet to come to a definitive decision (which may or may not adopt the same position as the Advocate General), the position of the Advocate General presents a serious risk to Louboutin’s rights – hardly the outcome Mr. Louboutin would be hoping for after nearly a decade of litigation over the use of the red Pantone 18-1663 TPX – colour on shoes in various jurisdictions.
While Louboutin may be denied protection for the iconic colour mark in Europe, the case raises the question of what kind of protection exists – or does not exist – for colour trademarks in Canada.
The Protection of Colour Trademarks in Canada
Under current Canadian law, a trademark registration for colour per se is not permissible. However, similar to the laws in Europe colour can receive some protection under Canadian law when claimed as a feature of a two-dimensional or three-dimensional trademark.
Specifically, a single colour applied to the surface of an object, such as, for example, product packaging, is capable of being registered as a trademark so long as the trademark application appropriately depicts the manner in which the colour will be applied to the surface of an object (ie: the 2D or 3D shape/perimeter/position of the colour). This policy stems from Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (1987) in which the Federal Court of Canada found that colour, in conjunction with other defining features such as shape and size, could qualify as protectable intellectual property.
A December 6, 2000, Practice Notice from the Trademarks Office relating to trademark applications for three-dimensional objects covers situations where one or more colours are applied to the whole of the visible surface or in a particular position on a three-dimensional object, with or without reading matter. “The trademark consists of the colour purple applied to the whole of the visible surface of the particular tablet shown in the drawing” is provided as an example of an acceptable description.
Since the publication of this Practice Notice, applications including this statement, but at the same time showing 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, which is protected under Canadian registration No. TMA810,294 and which includes the following 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).”
New Canadian Trademark Laws Offer Greater Protection– but with a Catch
Canada’s new Trademarks Act was finalized in 2014 but is not yet in force (it is currently expected to come into force in early 2019). Among the significant updates to Canadian trademark law under the new Act will be the expanded definition of “trademark”, which will include, among other protectable indicia, colour per se marks. The new definition of a “trademark” covers anything that functions as an indicator of source and includes 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 marks per se, 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 of examination, Canadian Examiners can raise an objection on the basis that the proposed mark is “not inherently distinctive” and, where an objection is raised, Applicants will be required to furnish the Trademarks Office with evidence establishing that the proposed trademark is distinctive of the Applicant’s goods/services as of the filing date of the application. Notably, the new Act indicates that such evidence will be required where the trademark consists exclusively of a single colour or combination of colours without delineated contours.
Thus, whereas under the current Trade-marks Act, applications for colour trademarks applied to a particular object do not require proof of acquired distinctiveness, an application for registration of a colour per se under the new Act will not be registrable unless the applicant can establish acquired distinctiveness at the time of filing (typically, by way of affidavit and/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 parts 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 within the Provinces of Quebec, Ontario and Manitoba, then a registration may only be granted in respect of those provinces, meaning that the Applicant would not maintain any registered trademark rights for the proposed colour per se outside of these three 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 color black serves a functional purpose when used on outboard boat motors, since the color black provides the significant competitive advantages of being compatible with a variety of boat colors and making the motors look smaller.
A New World of Colour in Canada?
In summary, the modernization of Canadian trademark law presents an opportunity for owners of famous marks, like Louboutin, to obtain broader protection for their colour trademark rights in Canada. However, overcoming objections based upon functionality or establishing distinctiveness may present significant new hurdles to the registration of such marks, leaving the landscape around colour per se under Canadian law not so black and white.