Canadian Lawyer InHouse

11 CANADIANLAWYERMAG.COM/INHOUSE JANUARY 2016 By David Heller and Joanna Pitkin Intellectual Property C olour is evocative, emotive, stimulating, and it is valuable. Its value can be protected through trademark registration around the world, whether as part of a design mark or part of a product's trade dress. The ultimate protection is conferred through the registration of a colour per se. Colour per se is not spatially delimited or restricted to fixed contours; rather, it provides exclusive rights to a particular colour applied to products irrespective of size or shape. Colour per se is not currently registerable in Canada. Rather, colour as applied to the surface of a consumer product is capable of being registered; the particular size or shape of the object to which the colour will be applied must be delineated. Section 28 of the Trademark Regulations details the requirement of an applicant to describe the colour and/or submit a colour- specific lined drawing. The description and drawing must be sufficiently clear so as to allow the registrar to determine whether the colour distinguishes the mark or not. In Rothmans Benson & Hedges Inc. v. Imperial Tobacco Products Limited, the Federal Court of Appeal confirmed the availability of trademark protection for colour marks so long as the application fairly depicts the mark claimed (e.g., the colour as applied to the visible surface of an object — orange applied to cigarette packages). In the European Union, trademarks consist of any "signs" capable of being represented graphically pro - vided they are also capable of distinguishing the goods or services of one undertaking from those of another. Colour per se is registrable. Although it is not neces- sary to specify the size or shape of the object to which the colour will be applied, applicants must carefully de- scribe how the colour will be applied so as to satisfy the graphical representation requirement. Cadbury recent- ly lost a 10-year legal battle in the United Kingdom for protection of the colour purple in part due to a lack of specificity in merely declaring it "the predominant colour." Applicants must also show that the public has considerable knowledge of the mark and, unless inher - ently distinctive, significant evidence of acquired dis- tinctiveness throughout substantially the entire EU is David Heller, partner, and Joanna Pitkin, associate, are lawyers with Ridout & Maybee LLP. Fifty shades of colour Revisions to Trademarks Act will align Canada with European and American counterparts by allowing registration of colour per se. required. Examples of acceptable evidence include sta- tistics of market share, sales figures, and surveys. Colour per se is also registerable in the United States provided it has acquired secondary meaning in the mar- ket. The threshold to establish acquired distinctiveness in the U.S. is quite high and merely demonstrating a long period of use is insufficient; the applicant must show the colour is capable of indicating source in the minds of the relevant consumers. This can be achieved through market share, sales figures, advertising expen - ditures, media coverage, and consumer studies/sur- veys. Applications must also include a drawing showing the mark in colour along with a colour claim and a de- scription of where it appears on the goods or on objects related to the services. Proposed revisions to the Trademarks Act will align Canada with its European and American counterparts by allowing for registration of colour per se. Section 2 of the Trademarks Act will be amended from "mark" to "sign," the latter including colour. As in the U.S. and Europe, proof of acquired distinctiveness will likely be required, for example, via affidavit or survey evidence. The protection of colour per se must be weighed against the general interest in not unduly limiting the availability of colours for competitors. When the Trademarks Act is eventually revised, it is likely that the registrar and courts will analyze the acceptability of colour per se in terms of their functional and ornamental capacity as well as their impact on trade and other economic factors. Colours are powerful and can be extremely valuable in distinguishing products and services. Trademark owners should consider the importance of particular colours to their brand and take protective measures where appropriate. For brand owners who use (or intend to use) distinctive colours, it may be advantageous to apply for colour trademarks in Canada before the amendments to the Trademarks Act come into force, as these amendments will require an applicant to amass evidence of acquired distinctiveness. However, in our experience, even when such evidence is required, colour registrations provide exceptional brand protection. IH

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