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
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
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
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
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
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.
For further information regarding this decision and the
protection of colour trade-marks in Canada, please contact the
authors or another member of
our firm's Trade-marks group.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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