Even the stripes of toothpaste may qualify for trademark protection

January, 2008

Last year, the Trade-marks Opposition Board made a ruling that was met with much discussion in trademark circles.  The Board dismissed an opposition filed against a trademark application for various colored stripes in toothpaste.  Aside from the many grounds of opposition raised, the Board generously considered the trademark, which forms an inextricable physical part of its product.

The Opposition Proceeding

On August 2, 1994, Colgate-Palmolive Canada Inc. (the “Applicant”) filed a trademark application for a design called “Striped Toothpaste Design – Green/White/Blue Stripes” made up of green, white, and blue stripes for use in association with toothpaste.  The top stripe is green, the bottom stripe is blue, and the remainder is white (the “Design”).  The stripes form a physical part of the toothpaste.  The Applicant claimed color as a feature of the trademark.  The application was based upon proposed use and assigned application No. 760,655.

On April 3, 1996, Procter & Gamble Inc. (the “Opponent”) filed a statement of opposition against the application.  Among other items and in other words[i], the Opponent alleged that: (i) the Applicant was not entitled to register the Design; (ii) the Design was not a trademark because it was for the purpose of ornament or decoration only; (iii) the Design was primarily functional; (iv) the Design was not a trademark because it was not used in accordance with section 4 of the Trademarks Act[ii]; and (v) the Design was not distinctive.  I will address some of these allegations below.

Design was only ornament or decoration

The Board acknowledged that a mark applied to a product for the sole purpose of ornament or decoration may not be registered as a trademark.  The Board dismissed this ground of opposition on the basis that there was no evidence the Applicant would be using the Design for ornament or decoration purposes, let alone solely for such purposes.  The court distinguished the present case from other cases which either had evidence that the mark was solely for decoration or ornament purposes or had expert evidence that the mark made the product more attractive.

Design was primarily functional

The Board ruled that the Design was not primarily functional.  Uncontroverted evidence was placed before the Board that the stripes making up the Design did not perform individual functions and were not intended to perform different functions.  Further, although there was evidence that AQUAFRESH™ brand toothpaste identifies different toothpaste stripes as having different functions, such evidence had no consequence with respect to whether the stripes in the Design have any function.

Design was not used in accordance with section 4 of the Act

The Board dismissed the ground of opposition that the trademark was not “used” for the purposes of section 4 of the Act as well.  The reason is that, as the application was filed on the basis of proposed use, the Board was satisfied that it was possible to use the Design as a trademark in accordance with section 4 of the Act.  The Board placed particular weight on the fact that it would be possible to create packaging in which the consumer could see the toothpaste in its tube before the toothpaste’s package was opened.

Commentary

The decision of the Board is significant for the following reasons.

The Board in rejecting the opposition essentially ruled that a trademark forming an inseparable part of a product, which trademark, when consumers used the product in the normal course, would be completely destroyed, could qualify for trademark registration under the Act.

We often think of trademarks as appearing on the product itself and/or the packaging of a product; we do not usually think of trademarks as being destroyed through the normal use of the product.  However, the Board ruled that a trademark would be considered “used” under section 4 of the Act, if it were possible for the consumer to see the trademark applied to the product itself, in this case toothpaste, at the time of the transfer of the product.  It is immaterial that the trademark is later destroyed through the normal use of the product.

This ruling means, subject to any appeal, that businesses, trade-mark agents, and trade-mark lawyers can be more creative in what they view as potential and protectable trademarks.  It will be very important to work with clients, so that it may be determined which items, i.e. the packaging, any part of the product, a logo, etc., the client wishes to protect as trademarks.

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Ryan K. Smith is a lawyer and trade-mark agent at Feltmate Delibato Heagle LLP. He specializes in corporate and commercial law with expertise in intellectual property matters including trade-marks, copyrights, privacy, information technology, and confidential information.  You can reach Ryan at rsmith@fdhlawyers.com and (905) 287-2215.

 


[i] The Board dismissed many of the grounds of opposition because the Opponent pleaded them improperly.  Nevertheless, the Board considered all the grounds of opposition raised, in the case that the Board was wrong to dismiss the grounds of opposition on the basis of incorrect pleadings.

[ii] R.S.C. 1985, c. T-13.