2011 TMOB 257 (December 21, 2011)
Overview
The Trademarks Opposition Board refused an application to register a trademark described as the colours yellow and black applied to a fence panel in association with fence rental services and fence delivery, assembly and disassembly services. This decision is noteworthy given that the Trademarks Opposition Board found that the colour mark was inherently weak, and therefore noted that it was incumbent for the applicant to demonstrate that the mark is recognized by consumers as a trademark and not as ornamental or functional elements of the product.
Abstract
The Trademarks Opposition Board (the "Opposition Board") held that the colours yellow and black applied to a fence panel (the "mark") in association with fence rental services and fence delivery, assembly and disassembly services was not registrable as it was not distinctive. In rendering its decision, the Opposition Board determined that the yellow and black alternating strip did not change the overall appearance of a yellow fence panel.
Further, given the inherent weakness of the mark, the applicant was required to show that consumers recognized the mark as a trademark. The Opposition Board also indicated that an allegation that a mark is not a trademark because it is functional should be plead under section 2 or section 30 of the Trademarks Act ("Act") and not section 38(2)(b).
Case summary
Facts. On December 7, 2006, India Steel & Fence Rental Ltd. (the "applicant") filed Application Serial No. 1,327,323 to register a trademark described as the colours yellow and black applied to a fence panel, based on use since at least as early as October 16, 2006, in association with "fence rental services and fence delivery, assembly and disassembly services" (the "services"). The trademark was depicted and described as follows:
The trademark consists of the colour yellow as applied to the whole of the visible surface of the fence panel shown in the attached drawing, but for the horizontal strip situated approximately equidistant from the top and bottom of the fence panel, to which horizontal strip the colours yellow and black are applied in alternating segments.
The applicant subsequently revised the application claiming use since at least as early as May 2005.
The mark was opposed by Yellow Fence Rentals Inc. (the "opponent"), and the Statement of Opposition raised five grounds of opposition, including the following:
- the mark is not registrable in view of section 38(2)(b) of the Act because the colour yellow as applied to the whole of the visible surface of a fence panel is primarily functional;
- the applicant is not the person entitled to registration of the mark pursuant to section 16(1)(a) of the Act because the mark was confusing with the opponent's trademark comprising the colour yellow as applied to the whole of the visible surface of a fence panel that had been used in Canada prior to any use by the applicant; and
- the mark is not distinctive, since it does not distinguish the services from others, including the services of the opponent.
The opponent filed an affidavit of Steven Martini, the Director and Secretary of the opponent, which provided that the opponent was incorporated on August 18, 2006, and asserted that the opponent "is, and always has been since its incorporation, in the business of renting… yellow steel wire mesh fence panels…" Further, the affidavit indicated that the colour yellow as applied to fence panels serves the function of making the fence panels highly visible.
The applicant did not file any evidence.
Analysis. While the majority of the Opposition Board's decision focussed on the distinctiveness ground of opposition, the Opposition Board also considered the other grounds of opposition.
In this regard, the Opposition Board dismissed the opponent's section 38(2)(b) ground of opposition noting that section 38(2)(b) of the Act prohibits the registration of trademarks that contravene section 12 of the Act, which does not encompass a pleading that a mark is not a trademark because it is functional. The Opposition Board noted that such an allegation should have been pleaded under section 2 or section 30 of the Act.
With regard to the ground of opposition based on section 16(1)(a), the Opposition Board dismissed this ground because the opponent did not provide any evidence of use that predated the applicant's revised claimed date of first use.
With respect to the distinctiveness ground, the Board noted that it was unclear whether this ground of opposition was based on the use, by the opponent and others, of marks or trademarks comprising the colour yellow on fence panels. Because the pleadings were not challenged by the applicant, the Board held that the Federal Court of Appeal decision in Novopharm Ltd. v. AstraZeneca AB, 2002 FCA 387, directs the Opposition Board to consider the evidence in conjunction with the pleadings when assessing the case the applicant has to meet. Therefore, the Board determined that the distinctiveness ground of opposition would be based on the use of the colour yellow on fence panels whether or not the use was as a "trademark."
The Opposition Board noted that the opponent's evidence supported the opponent's submission that yellow fencing is functional and stated: "in the absence of evidence from the Applicant showing that the Mark has acquired distinctiveness, I do not find that a yellow and black alternating strip on a yellow fence panel is sufficient to differentiate the services of the Applicant from those of the Opponent." In reaching its conclusion, the Board determined that the yellow and black alternating strip did not change the overall appearance of a yellow fence panel to a great degree. As well, the applicant should have provided evidence that consumers recognized the mark as a trademark and not just as an ornamental and/or functional element of the product, given the inherent weakness of the mark.
In light of the above findings, the Opposition Board held that the mark was not distinctive.
Conclusion
This case highlights possible difficulties for protecting colour as an element of a trademark because such elements may be seen as functional. In such cases, the applicant may need to rely on evidence to establish acquired distinctiveness. Furthermore, an allegation that a mark is not a trademark because it is functional should be plead under section 2 or section 30 of the Act and not section 38(2)(b).
Bryan F. McLean, Vancouver
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