By Edmund Y. Xie
4 March 2013
An application for registration of a trademark in Canada typically does not include a colour claim. A trademark registration without a colour claim generally confers on the trademark owner the right to use the trademark in any colour or colour combinations. There are some circumstances, however, where it is desirable to include a colour claim. This article reviews the requirements for asserting a colour claim in a Canadian trademark application.
A colour claim is generally considered a limitation on a trademark, as it tends to narrow the scope of protection for the trademark. However, an applicant may wish to claim colour as a distinctive feature of the trademark where the applicant considers the colour of the trademark to be important or where the Canadian trademark application is based on a trademark registered and used abroad and the corresponding foreign registration includes a colour claim.
Currently, the Canadian Intellectual Property Office (CIPO) does not publish a trademark in a regular Canadian trademark application in colour. Therefore, when an applicant claims colour as a feature of the trademark, the colour of the trademark must be described in words.
Rule 28 of the Trade-marks Regulations states that where the applicant claims a colour as a feature of the trademark, the colour must be described, and if the description is not clear, the Registrar may require the applicant to file a drawing lined for colour in accordance with a prescribed colour chart. The colour chart includes the following colours: red, pink, brown, black, gray, silver, violet, purple, blue, green, yellow, gold, and orange.
According to a CIPO practice notice, where the colour claim is for a colour not found in the prescribed colour chart, the applicant may be required to include a clear description of the colour. The applicant may refer to an internationally recognized colour reference system for each colour claimed. For example, the colour turquoise may be described as: “the colour turquoise (PANTONE 15-5519)* is claimed as a feature of the mark. *PANTONE is a registered trade-mark”. In practice, the CIPO does not insist on the use of a colour reference system, and accepts descriptions of colours such as “light red”, “dark red”, etc.
If passed, the currently proposed amendments to the Trade-marks Regulations would repeal the requirement to provide a drawing lined for colour under Rule 28. According to the proposed amendments, if the applicant wishes to claim colour as a distinctive feature of the trademark, the applicant must submit a colour drawing of the trademark and, for each colour, indicate the name of the colour claimed and the principal parts of the trademark which are in that colour. The application may refer to an internationally recognized colour system.
NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as legal advice. You should not rely on, or take or fail to take any action, based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Oyen Wiggs Green & Mutala LLP professionals will be pleased to discuss resolutions to specific legal concerns you may have.
© 2013 Oyen Wiggs Green & Mutala LLP. The preceding article may be copied and distributed in accordance with these <Terms and Conditions.