Features of Colour! Now part of a Combination of Features Protectable as a Canadian Industrial Design

We are excited to report that the Industrial Design Office now takes the position that colour may form part of a combination of features that constitute a design as defined in section 2 of the Industrial Design Act.  However, colour as the sole design feature is not considered to fall within the definition of a design.

The Canadian Intellectual Property Office (CIPO) also announced changes to five (5) other industrial design office practices.

The six (6) practice changes are related to:

  1. applications for protection of computer-generated animated designs
  2. colour as a registerable feature of an industrial design
  3. time limits to respond to office actions 
  4. the search to assess the originality of an application where there is a priority claim
  5. the issuance of notices of possible refusal
  6. delaying the registration of an application

A fact sheet providing an overview of the changes is also available.

OHIM Changes Practice for Black and White Marks

On June 2, 2014, the European Community Trade-mark Office (known as “OHIM”), changed its practice for trade0marks filed in black and white or gray-scale.  Specifically, while a black and white registration was thought to cover all colour variants of the mark, OHIM’s new policy suggests that this is no longer the case.  Under the new policy a black and white mark is not deemed to be identical to its colour variant.  Moreover, if colour gives the image a special effect, then a separate colour registration is required.  Use of a colour mark will only be deemed to be use of the black and white form (and vice versa) if the change in colour does not affect the distinctive character of the mark.  As a result, our European associates are recommending that in the case of designs, both black and white and colour versions of the mark be filed in the EU.  For further information about your international trade-mark portfolio or trademark strategy, please contact Paula Clancy.

Cadbury May Preserve Purple Wrapper Rights in UK

Submitted by Jessica Vaianisi.

UK-based chocolate company, Cadbury, was successful in preserving its pending application for the colour purple (Pantone 2685c) in association with milk chocolate.  Nestlé had appealed to UK’s High Court, challenging the UK Intellectual Property Office’s 2008 decision to award Cadbury exclusive use of the distinctive purple for its wrappers, arguing that “colours could not be practically trademarked for commercial advantage.”

Noting that Cadbury has used purple for its Dairy Milk bars since 1914, the High Court in London rejected the appeal, stating that “the evidence clearly supports a finding that purple is distinctive of Cadbury for milk chocolate.”

The ruling means that, barring any further appeals, Cadbury’s application may now proceed to registration for the particular shade of purple for use in association with “milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”.

This is not the first time we have seen a controversial colour trademark case; last month in the U.S., fashion designer Christian Louboutin won a trademark case against Yves Saint Laurent over the use of red soles on shoes. The District Court overturned an earlier 2011 decision, which said that a colour could not serve as a trademark in the fashion industry.

While colour trademarks are extremely difficult to obtain, these two rulings demonstrate that obtaining the registration of single colour marks requires a high-level of public recognition, where the colour has become analogous with brand.

To view the  UK High Court decision, click here.