The principal function of a trademark is to enable consumers to distinguish one’s goods or services from those of a competitor in the marketplace.
In addition to looking at engaging logos and fanciful words, marketers are only bound by their imaginations in seeking out distinguishing devices. Trademarks can also comprise colours and shapes (i.e., the appearance or “get up” of a product as the trademark itself), and even sounds in some jurisdictions. Canadian courts, however, have found the distinctive character of colours and shapes to be quite weak. Brand owners should be mindful of this inherent limitation when determining a product’s branding strategy. As the following Trademarks Opposition Board (the Board) decision demonstrates,1 proving that a product’s appearance is distinctive is not an easy burden to satisfy.
The Board’s Decision
In 2006, Boehringer Ingelheim (the Applicant) filed two trademark applications to register a design depicting the appearance of an asthma inhaler device, including a claim to the colours gray and green as applied to the surface of the device. Five years later, these applications were opposed by the Canadian Generics Pharmaceutical Association (the Opponent). Among other grounds of opposition, the Opponent submitted that the two designs that were applied for were not “distinctive” within the meaning of the Trade-marks Act and should therefore be refused.
The Board agreed, finding that the applications were not distinctive for the reasons detailed below:
Uniqueness does not imply distinctiveness
The Board acknowledged that while the colour and shape combination of the design in the subject applications was unique, uniqueness does not imply distinctiveness. It is not enough for a trademark to be simply distinguishable in appearance from other trademarks; it must be able to facilitate a connection between the goods and the actual vendor in the mind of a consumer. The Board found that the appearance of the inhaler described in the applications was indicative of nothing more than the appearance of the item itself.
In instances where purchasing decisions are made or heavily influenced by professionals, the commercial distinctiveness of a mark based on colour or a shape will be more difficult to establish.
Channels of trade matter
In instances where purchasing decisions are made or heavily influenced by professionals, the commercial distinctiveness of a mark based on colour or a shape will be more difficult to establish. Where health care providers are making “purchasing” decisions (rather than the actual patients), the Board found that the brand name and its associated reputation for safety and efficacy were the key determinants to the prescription decision, rather than the colour and shape of the product (which the consumer typically viewed only after picking up the prescription).
A trademark based on shape or design must be capable of being recognized on its own
Following on from the second point, there must be evidence to show that a trademark, based on a design, is clearly capable of being recognized on its own. In this case, the Board found that at the time of sale, the inhalers were packaged in boxes, which only featured the name of the manufacturer and a trademark HandiHaler®. While the Applicant was able to produce ample evidence of product sales, it was dismissed by the Board on the basis that the Applicant was incapable of establishing that such sales resulted in the design being associated with the goods at the time of their transfer—or, in legal terms, incapable of acquiring distinctiveness among consumers.
In arriving at its conclusion, the Board referenced an Australian trademark decision where the colour purple associated with Cadbury products was never used in isolation, but always with the “Cadbury” script.2 The Board held that any assessment on the distinctiveness of the Cadbury product labelling could only be made on the particular combination of the purple colour and “Cadbury” script. Hence, no trademark to the colour alone was allowed. The case before the Board was one step further removed, as the appearance of the inhaler was not associated with the trademark at the time of transfer.
The Board’s findings should also be considered alongside instances where the courts have affirmed a non-traditional trademark’s distinctive character. In particular, two such decisions are JTI Macdonald TM Corp. v. Imperial Tobacco Products Ltd.3 and Rothmans, Benson & Hedges, Inc. v. Imperial Tobacco Products Limited,4 where the Canadian Federal Court affirmed the applicant’s use of colour as a distinctive element of a cigarette package trademark design application. Why did Imperial Tobacco succeed? The Court found that it was able to produce extensive sales data for its products, as well as evidence of (i) an extensive marketing campaign which prominently focused on the colour orange, and (ii) use of the orange package design that was clearly visible to the consumer at the time of purchase.
Brand owners that are considering using colours or shapes as trademarks should be aware of the difficulty and unique evidentiary hurdles they will face in establishing distinctiveness as compared to traditional trademarks such as, words or visual designs. Uniqueness on its own does not confer distinctiveness in a trademark. Rather, a mark’s distinctiveness stems from its ability to create an association in the mind of a consumer between a particular good or service and the brand owner. Brand owners of colour or shape marks will need to clearly prove this association by extensive and detailed evidence.
1 Canadian Generic Pharmaceutical Association v Boehringer Ingelheim Pharma GmbH & Co. KG, 2017 TMOB 47.
2 Cadbury Schweppes Ltd. v. Darrell Lea Chocolate Shops,  FCA 470 (Fed. Ct. Australia) at paras. 64-65.
3 JTI Macdonald TM Corp. v. Imperial Tobacco Products Ltd., 2013 FC 608.
4 Rothmans, Benson & Hedges, Inc. v. Imperial Tobacco Products Limited, 2014 FC 300, aff’d 2015 FCA 111.
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