Just as words and designs can serve to communicate a distinctive message to consumers about products and services, colour can also affect purchasers in powerful ways. Certain colours have an inherent or well-established meaning, such as black for mourning, white for purity and red for risqué. Colours can also gain recognition after a long period of use, such as the yellow shell used in association with the sale of gasoline and the particular shade of green used by John Deere on its farm equipment.
Given the potential impact and importance of colour in establishing brand recognition, it is not surprising that owners have long sought to protect this aspect of their trademarks. However, in the interest of preserving the availability of colour for use by all and in order to avoid what is sometimes called an "exhaustion of colours," a somewhat restricted regime for the protection of colour has developed in Canada.
An application for registration of a trademark in Canada can include a claim to a particular colour or colours. A colour claim is a limitation on a registered mark, which otherwise confers on the owner the exclusive right to use the mark in any colour. Thus, a colour claim may serve to narrow the protection for a mark and it is usually desirable to include such a claim only when a particular colour is considered to be an important feature of the mark.
Section 28 of the Regulations to the Trademarks Act provides that where the applicant claims colour as a feature of the mark, the colour must be described. This has been interpreted as requiring a detailed description of the particular colours that are claimed and their positioning on the mark. The description can be quite simple, as shown below:
Application Serial No. 1,504,669 (Sanisteel)
Colour claim:
Colour is claimed as a feature of the trademark. The word sanisteel and the outer rim and lower portion of the circle design are blue. The teardrop design is green.
However, descriptions can be quite detailed, as can be seen from the following example:
Registration No. 771,019 (Elf)
Colour claim:
The color(s) red, green, gold, blue and white is/are claimed as a feature of the mark. The mark consists of an elf dressed in red and white and sitting on a blue shelf with two gold pegs that appear on the underneath part of the blue shelf on the right and left side. A miniature Christmas tree appears to the left of the elf and a large book with a smaller book leaning on it and a Christmas ornament appear to the right of the elf. The tree is green with a red base, red and gold circular ornaments and a gold star at the top decorate the tree. The larger book is gold with red stripes and green squares and the smaller book is red with green stripes and a green square. The ornament to the right of the elf is gold with two red stripes.
Another means of showing the positioning of colour is the use of prescribed lining, which is set out in the Regulations.
In order to permit very specific colours to be claimed, the Canadian Trademarks Office will accept references to colour systems such as PANTONE. In that case the applicant must include both a description of the colour, such as "turquoise" and the system reference, such as "PANTONE 15-5519," along with the statement that "PANTONE is a registered trademark."
The issue of whether colour per se should be registrable as a trademark has been commented upon only rarely in Canadian jurisprudence. At present, while there has been no determinative statement by the courts, the practice of the Canadian Trademarks Office is to require that colour be limited to the particular depiction of the design mark shown in the drawing that accompanies the application. A December 6, 2000, Practice Notice relating to three-dimensional objects covers situations where one or more colours are applied to the whole of the visible surface or in a particular position on a three-dimensional object, with or without reading matter. "The trademark consists of the colour purple applied to the whole of the visible surface of the particular tablet shown in the drawing" is provided as an example of an acceptable description.
Since the publication of this Practice Notice, applications including this statement, but at the same time showing the mark in a dotted outline to indicate that the object does not form part of the trademark, have been accepted, thus leading to the seemingly contradictory result that the colour is limited to the particular object, but the object is not claimed to define the boundaries of the mark. The following example illustrates this curious situation:
Application Serial No. 1,461,789 (Toothpaste)
Colour claim:
The trademark consists of the colour purple as applied to the whole of the visible surface of the particular polyurethane spray foam shown in dotted outline in the attached drawing. The polyurethane spray foam shown in dotted outline does not form part of the trademark.
As for the protection of unregistered rights to colour, goodwill and a protectable reputation must be shown. In Canada, colour can satisfy the requirement for distinctiveness in combination with features such as shape, size or patterning. However, the question of whether colour alone can function as a protectable unregistered mark at common law is less clear. Moreover, it has been found that colour cannot be protected under the common law tort of passing off when the colour in issue has a functional use or characteristic.
With the limitations on the availability for the protection of colour discussed above, the current Canadian regime differs from numerous other jurisdictions. A broadening of the scope of protection or clarification of the scope of protection will likely occur only when the courts are required to address the issue directly as a result of an action centering of the question of colour.
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