Significant changes to the Trademarks Act were made in June 2019 that expanded the ability of brand owners to protect additional features of their marks. In particular, the definition of a “sign” was expanded to include “a colour” and section 32(1)(c) of the Act now permits registration “exclusively of a single colour or of a combination of colours without delineated contours” provided proof of acquired distinctiveness is demonstrated.
Although an application exclusively comprising a colour has not yet been accepted for advertisement, applicants have now begun to apply for marks consisting exclusively of a colour without delineated contours, especially where colour forms a core component of the brand’s identity.
Given the current delays in examination, the Canadian Intellectual Property Office (“CIPO”) has only now begun to respond to these and other early applications for colour marks without delineated contours. As more and more of these marks progress through the examination process, IP counsel and trademark applicants will begin to have a better sense of how to avoid objections and successfully register a colour mark.
That being said, there are two key sections of the Trademarks Act to keep in mind when applying for a colour mark. Paragraph 30(2)(c) of the Trademarks Act requires that an application must contain a representation or description, or both, that permits the trademark to be clearly defined. Such a description could be “the trademark consists exclusively of the colour X without delineated contours,” accompanied by a visual representation of the mark. More significantly in the context of an application for a mark consisting exclusively of a colour without delineated contours, section 32(1)(c) and 32(2) of the Trademarks Act requires an applicant to provide CIPO with evidence establishing that the trademark was distinctive at the time of filing the application. Moreover, section 32(2) permits the Registrar to limit the geographical scope of the registration to the defined territorial area in Canada in which the trademark is shown to be distinctive.
Applicants should therefore be prepared to file affidavit evidence, showing that the mark is distinctive as of the filing date of the application. Until more colour marks become registered and examination practices are better defined, it remains unclear exactly what evidence will be sufficient to demonstrate that the mark is distinctive. We anticipate that it will be necessary to demonstrate that the mark is used as a trademark, is understood by the public in Canada to be a trademark, is not common to the trade, refers to only one source, and has extensively been used and advertised in Canada. It should be kept in mind that the evidence of distinctiveness should extend as widely as possible to ensure the broadest geographical scope for the resulting registration.