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Newsletter Article

Colours and Trade-Marks

Published: 03/09/2010

By John McKeown

A recent decision of the Federal Court confirms that colour applied to the visible surface of an object can function as a trade-mark in Canada.

The Facts
The applicant applied for a mark consisting of the colour green as applied to the whole of the visible surface of a fastener bracket for attaching deck boards. The drawing which accompanied the application is reproduced below.

The application was advertised and opposed by a competitor of the applicant. Numerous grounds of opposition were presented, including an allegation that the applied-for marks were purely functional, utilitarian or clearly descriptive of a quality or characteristic of a colour coating and that the alleged colour marks were insufficiently described in the application.

After a hearing before the Trade-marks Opposition Board, the above-noted ground of opposition was rejected and the application was allowed. The opponent appealed this decision to the Federal Court.

Functionality
In the Federal Court, it was observed that colour applied to the whole of the visible surface of an object can function as a trade-mark where it is claimed as a "feature" of the mark. However, there is a line to be drawn between a colour that is a valid, distinctive trade-mark and one that is primarily functional. A trade-mark that is primarily functional will not be registrable as a trade-mark. For example, if the green coating was added for the primary purpose of reducing the possibility of corrosion it would not be registrable.

The appellant did not present any evidence in the appeal or otherwise that a green coating offered more protection than a blue or a pink coating. The Judge was not persuaded that the appellant had shown that the applied-for trade-mark was purely functional, utilitarian or clearly descriptive of the quality or characteristic of a colour coating. As a result, the Board’s decision was affirmed concerning this ground.

Were the Alleged Marks Sufficiently Described in the Application?
Numerous cases have dealt with this issue and the requirements of the Act can be technical in nature. The appellant argued that the applied-for trade-mark was not sufficiently defined as to shape and dimension.

The Judge found that there was no requirement in the Act that the dimensions of objects be set out in the drawings or elsewhere. As a result, the argument relating to dimension failed.

Comment
Colour can form an important aspect of a trade-mark and help to make it distinctive. However, a colour by itself is not distinctive and there must be some additional independent feature in order to obtain a registration.