2018-05-07
A trademark is a type of intellectual property, which also functions as a distinct identity for a brand, a company, or a product. Logos, symbols, and phrases have been routinely used by companies as an intellectual property in the form of a ‘registered trademark’. Now, we are left facing the question of utilizing the distinctiveness of ‘color’ in a trademark when we attempt to broaden the definition of what a ‘trademark’ is. The underlying question remains: can you protect color trademarks in Canada? Let’s find out.
Under the Existing Framework
As of today, in May of 2018, it is not permissible to register a trademark for colour as per the existing Canadian law concerning trademarks, except in specific cases. For instance, it is permissible to use a single colour, as a trademark, for the purpose of product packaging. However, trademark registration for this purpose will only suffice as long as the trademark application convincingly delineates how the same colour will also be applied to the face of the object. This elaboration will need to convey the use of colour pertaining to its shape (2D or 3D), perimeter, and the positioning of the colour.
This distinction has been present ever since the landmark verdict of 1987 in the Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks. The Federal Court of Canada concluded that colour qualifies as a facet of a protectable intellectual property when supported ably by distinct features such as its shape and size.
In the Pipeline
Although amendments to Canada’s Trademarks Act were finalised back in 2014, these changes are only set to come into force in 2019. Among the major changes, the one relevant to our current interest is the expansion of the definition of the term "trademark". The definition of the term is also expected to lend protection to indicia and other coloured indicators, which adequately serve as an indicator of source or identification. The most telling terminology used to highlight the changes to Canada’s Trademark Law remained the definition of what a distinct "sign" is. As per the changes, a sign is: "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign,". Yes, colour is mentioned as an aspect of a "sign" that can be protected as per the changes.
Filing a successful and commercially effective trademark registration requires understanding which particular aspects of your trademark need the most protection. Consider utilizing the knowledge of an experienced trademark agent to protect your trademarks, including color trademarks when the trademark changes come into force. Contact our team to learn more about how to protect a color trademark.
