Canada, unlike many of its major trading partners, does not permit registration for colour per se as a trademark. In a leading case in 1987, the applicant filed an application for registration of the colour green applied to a tablet as shown in a drawing accompanying the application. The Registrar of Trademarks held that the trademark was not registrable given that colour alone could not function as a trademark. The Federal Court agreed that colour per se was not registrable, but noted that the application was restricted to a particular shape and therefore allowed the registration. (Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (No. 2.), [1987] 2 F.C. 633 (T.D.))
Prior to 2000, some marks registered on the Canadian Trademarks Database were accompanied by a colour claim noting that the object shown does not form part of the trademark, essentially granting a trademark for colour per se (see Registration number TMA519025 for example).
A Practice Notice issued by the Trademarks Office in December of 2000 put an end to this unintended loophole by requiring a description "indicating that the trademark consists of the particular colour or colours only insofar as they are applied to the particular object shown in the drawing". Applications claiming a colour that is not restricted to a particular size or shape will now therefore be rejected by the Office.
Although colour per se is not registrable in Canada, colour may be claimed as a feature of the mark. Section 28 of the Canadian Trademark Regulations provides that where the applicant claims colour as a feature of the mark, the colour must be described. This normally entails a written description below the drawing of the mark. Alternatively, the drawing can also be lined for specific colours.
Unless restricted to a particular colour, registration confers on the owner the exclusive right to use the mark in any colour. It is therefore desirable to claim colour only when colour is an important feature of the mark.
Colour is arguably protectable under the common law by way of the tort of passing off, but this has not been determined to date. What is evident is that colour will not be protected by common law or registration if the colour is merely ornamental or functional in nature.
In the U.S., Australia, and European Communities, colour per se is registrable and colour monopolies are controlled through an analysis of functionality, restraints in trade, and ornamental and economic aspects of colour.
In Australia and Europe, the Courts have also held that inherent distinctiveness would be difficult to prove, usually requiring evidence of acquired distinctiveness, while the U.S. has excluded outright the possibility of relying only on inherent distinctiveness for colour per se marks. In Canada, distinctiveness will likely always be an important hurdle in obtaining registration of a mark that relies heavily on colour.
Unfortunately, the state of the law today dictates that a registration for colour per se in Canada is not permissible. This question has yet to be considered at an appellate level, and we see no reason in principle why Canadian legal inter-pretation should differ from that of its major trading partners in this area. Colour continues to receive some protection when claimed as a feature of the mark limited to the size or shape of the product.
This article was originally published in the Trademark Reporter, July/Aug 2004, Vol. 94, No. 4