Color as a brand

Color as a brand

In June 2019, the Trademark Act was significantly amended to expand the ability of brand owners to protect additional elements of their marks. Specifically, the definition of "mark" has been expanded to include "color representation," and Section 32(1)(c) of the Act now allows registration of "solely a color representation or combination of colors without delineated boundaries," provided evidence of acquired uniqueness is provided. Although an application consisting solely of color has not yet been accepted for filing, applicants have already begun filing applications to register marks consisting solely of color without delineated boundaries, especially where color is a core component of a brand's identity. For example, the following color mark applications have been filed since the amendment:

application for color mark 1
application for color mark 2

Owing to ongoing delays in processing applications, the Canadian Intellectual Property Office ("CIPO") is only now beginning to respond to these and other early applications for color marks without delineated boundaries. As these marks move through the review process, intellectual property legal advisors and trademark applicants will have a better understanding of how to avoid opposition and successfully register a color mark.

There are two key sections of the Trademark Act to keep in mind when filing an application for a color mark. Paragraph 30(2)(c) of the Trademark Act requires the application to contain a description or an image, or both, that clearly identifies the trademark.

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Such a description might be "the trademark consists solely of color X with no delineated boundaries," accompanied by a visual depiction of the mark. More significantly, in the context of an application for a mark consisting solely of color without delineated boundaries, Sections 32(1)(c) and 32(2) of the Trademark Act require the applicant to provide CIPO with evidence demonstrating the uniqueness of the trademark at the time of filing the application. Moreover, section 32(2) allows the Registrar to limit the geographic area of registration to a specific territorial zone in Canada in which the trademark is shown to be unique. Applicants should therefore be prepared to submit written evidence proving that the mark is unique as of the date of filing.

While more color marks are registered and examination practices are not more precisely defined, it remains unclear exactly what evidence will be sufficient to prove the uniqueness of a mark. We anticipate that it will be necessary to demonstrate that the mark is used as a trademark, is understood by the public in Canada as a trademark, is not generally accepted in commerce, relates to only one source, and has been extensively used and advertised in Canada. It should be borne in mind that evidence of uniqueness should be disseminated as widely as possible to ensure the widest possible geographical coverage in the registration received.