Some foreign brand owners may be surprised to learn that in Canada, when seeking to protect design (or figurative) marks, it is sometimes better to register marks in black and white in cases where the marks would normally be displayed in colour. Broader protection can typically be secured in Canada by registering design (or figurative) marks in black and white as opposed to including a colour claim. In many other jurisdictions, including Europe, this is not the case.
In Canada, design marks registered in black and white theoretically protect and cover all colours. In this article, when we refer to "black and white" marks we are also referring to marks that could include gray scale, which shows distinctions in the shading to represent contrasting tones.
It is worth noting that registrations claiming colour as a feature of the mark arguably provide narrower protection than registrations in black and white. In general, the more features that appear in a trademark registration, the narrower the scope of protection. Accordingly, when seeking trademark protection in Canada, many brand owners prefer to register their design marks in black and white.
Validity of priority claims
This general principle raises an interesting issue about priority claims. In particular, can a Canadian application filed in black and white validly claim priority from an earlier application filed in colour? This issue has not been explicitly considered by Canadian courts
To validly claim priority, it is not necessary for the mark in the Canadian application to be identical to the mark in the priority application. However, the two marks must be "substantially the same." To date, there has been no definitive case law interpreting the meaning of "substantially the same."
In most cases where the priority application is filed in colour and the Canadian application is filed in black and white, it is likely that the two marks will be considered to be substantially the same. That said, there are certainly rare cases where a particular combination of colours in a priority application could theoretically lead to a different result.
It is worth noting that the validity of priority claims is not assessed during prosecution. The validity of a priority claim would only be assessed if the validity is challenged during an opposition or infringement action. At that point, if the priority claim is found to be invalid, it is unlikely that the application or registration as a whole would be found to be invalid (assuming there are no relevant third-party rights). Rather, in the worst case, the application or registration would likely only be amended to remove the priority claim.
Considerations for filing in black & white vs. colour
In view of the information provided above, brand owners should consider that:
- If a Canadian application for a design mark is filed without a priority claim, it is common to file such applications without a colour claim, to seek broader scope.
- If a Canadian application for a design mark is to claim
priority from an application for a colour design mark, a decision
has to be made:
- Where the colour or the combination of colours in the priority application is/are not distinctive, many applicants choose to file the Canadian application in black and white.
- Where the colour or the combination of colours in the priority application is/are particularly distinctive, applicants are more likely to file the Canadian application in colour.
- Where priority is to be claimed, another option is to file two Canadian applications: one in colour and one in black and white. This strategy ensures that both options are covered and that at least one application and probably both will have a valid priority claim. In addition, this strategy will provide the broadest possible coverage and will eliminate any uncertainty concerning the priority claim.
For further information on trademark colour claims in Canada, please reach out to a member of our Trademark and Brand Protection team.
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 directly.