Federal Court affirms legality of trademarking colour as applied to objects

A June 6 2013 decision of the Federal Court has reinforced the court’s position regarding trademarks comprised of colour applied to the visible surface of objects. JTI Macdonald TM Corp v Imperial Tobacco Products Limited (2013 FC 608) related to two applications filed by Imperial Tobacco Products Limited for the following trademarks:

Both applications claimed the following: "The trademark consists of the colour orange applied to the visible surface of the particular packaging as shown in the attached drawing. The drawing has been lined for colour."

The applications were based on use in association with “manufactured tobacco products, namely cigarettes”.

JTI-Macdonald TM Corp opposed registration of the trademarks on a number of grounds, including allegations that:

• the '127 design was not depicted with sufficient accuracy in accordance with Section 30(h) of the Trademarks Act;
• the '128 design was a distinguishing guise rather than an ordinary trademark; and
• neither design was distinctive of Imperial Tobacco in view of third-party tobacco products sold in arguably orange-coloured packaging.

The Trademarks Opposition Board rejected each of JTI-Macdonald’s grounds of opposition, and JTI-Macdonald appealed the board’s decision to the Federal Court.

The court held that the conclusions of the board were reasonable and thus upheld the board’s decision and dismissed the appeal. In particular, the court held that the following aspects of the board’s decision were reasonable:

1. The '127 design satisfied the requirements of Section 30(h) of the act. In particular, the application was lined for colour in accordance with the Trademarks Regulations and the shape of the object was accurately depicted.
2. The '128 design was not a distinguishing guise. Consistent with earlier Federal Court jurisprudence, the court held that colour as applied to the visible surface of an object can constitute an ordinary trademark rather than a distinguishing guise.
3. Both designs were distinctive of Imperial Tobacco. In view of the evidence, the court held that it was reasonable for the board to conclude that JTI-Macdonald had not met its evidential burden of demonstrating that orange-coloured packages were common to the tobacco trade.

This decision is a useful reminder that colour can be registered as an ordinary trademark under Canadian law so long as the application appropriately depicts the manner in which the colour will be applied to the three-dimensional surface of an object.

Jeremy E Want and Timothy O Stevenson, Smart & Biggar/Fetherstonhaugh, Ottawa

Imperial Tobacco was represented on the matter by Jeremy E Want and Timothy O Stevenson of Smart & Biggar’s Ottawa office