This past summer, the Federal Court considered whether Imperial Tobacco could register as a trademark “the colour orange” on its packaging, under the Trade-marks Act. Imperial Tobacco’s application was contested by JTI MacDonald on the grounds that, inter alia, the colour claimed was not sufficiently specific and that the design claimed was not distinctive. The Imperial Tobacco case is just one of many recent instances in which companies have sought to protect a colour within an unclear legislative framework with regard to protecting colour as a distinctive mark. The Court dismissed JTI’s appeal and sided with Imperial Tobacco, concluding significantly:
- A colour alone may be trademarked under Canadian law, and is not a distinguishing guise. The Federal Court relied on Simpson Strong-Tie Co. v. Peak Innovations inc., 2009 FC 1200, in which the colours green and greyish-green were trademarked with regard to fastener brackets for attaching deck boards.
- It is not necessary to specify a particular hue or shade of colour in a trademark application – the applicant need only indicate the general colour claimed.
- The colour orange is not so common in the tobacco industry that Imperial Tobacco may not trademark it.
The Imperial Tobacco decision is just one of many recent judgments dealing with trademarking colours. Last year, the New York case of Christian Louboutin v. Yves Saint Laurent was reported by media from CNN to Vogue.
Christian Louboutin had good reason to protect its trademark in the red soles on his shoes. The footwear costs anywhere from $800 to $4000 and is best known for its red sole. So when Yves Saint Laurent began selling monochromatic red shoes (that is, the shoes were entirely red, not just on the soles) a couple of years ago, Louboutin wasted no time instituting proceedings to protect its mark.
The United States Court of Appeals for the Second Circuit rendered judgment last year, overturning the district court’s finding that the red soles could not be trademarked. The Court held that the lacquered red soles had acquired limited secondary meaning as a distinctive symbol which identifies the Louboutin brand. The Court reviewed Louboutin’s advertising expenditures, media coverage and sales success to reach the conclusion that the branding had acquired secondary meaning.
However, the good news for Louboutin was overshadowed in the present case, by the court’s conclusion that the monochromatic Yves Saint Laurent shoe did not infringe the Louboutin trademark: the upper colour of Louboutin’s shoes always contrasted with the red soles, whereas Yves Saint Laurent marketed shoes which were entirely red. The Court held that Louboutin had failed to demonstrate that their trademark extended to monochromatic red shoes.
The decisions above are relevant to every industry today, now that colour is central to advertising. Many other companies have sought to protect their colour branding, oftentimes successfully. For example, other trademarked colours include Owen Corning’s pink (panther) colour for fiberglass insulation (See In Re Owens-Corning Fiberglass Corp., 774 F. 2d 1116 (Fed. Cir. 1985)). Heinz has a trademark in the turquoise colour used on its cans of baked beans. The Australian government’s website even has a page which deals specifically with trademarking colours, and remarks that Cadbury was successful in trademarking a shade of purple (Pantone 2685C), when used on the packaging for boxed chocolate. In contrast, after a nine year court battle, Cadbury was unsuccessful just last month in making the same claim at the United Kingdom Court of Appeal. The Court of Appeal concluded that the verbal description of the colour in the registration lacked in “specificity, clarity and precision”. Read the judgment here.
The question of colour trade-marks is still relatively new in Canada, but will likely gain more prominence in the next few years, as more companies seek to protect distinctive colours which form part of marketing efforts. While courts may still be somewhat reluctant to grant colour trade-marks, perhaps upcoming amendments to the law will change this view. The Canadian Intellectual Property Office proposed amendments to the Trade-mark Regulations last year which seek to simplify applications for colour-based marks. Click here to see what is being proposed.