T-567-84
Smith Kline & French Canada Ltd. (Appellant)
v.
Registrar of Trade Marks (Respondent)
INDEXED AS: SMITH KLINE & FRENCH CANADA LTD. V.
CANADA (REGISTRAR OF TRADE MARKS)
Trial Division, Strayer J.—Ottawa, March 4 and
12, 1987.
Trade marks — Registration — Colour — Appeal from
Registrar's decision refusing registration of colour green
applied to surface of "Tagamet" tablet on ground colour,
alone, cannot function as trade mark, as mark then description
of wares and thus not registrable under Act s. 12(1)(b)
Appeal allowed — Cases cited by Fox in Canadian Law of
Trade Marks and Unfair Competition, relied on by Registrar,
not supporting proposition "colour will not, by itself, make a
trade mark distinctive" — As general principle, manufacturers
and traders ought to have greatest freedom possible in choos
ing trade marks, provided distinctiveness and non-infringe
ment requirements met — Act not excluding colour as trade
mark — Trade mark applied for not residing in colour alone;
particular colour of green applied to particular size and shape
of tablet — Distinctiveness not in issue — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 12(1)(b), 36(1) — Trade Marks
Regulations, C.R.C., c. 1559, s. 32(3).
CASES JUDICIALLY CONSIDERED
CONSIDERED:
Parke, Davis & Co. Ltd. v. Empire Laboratories Ltd.,
[1964] Ex.C.R. 399, confirmed at [1964] S.C.R. 351.
REFERRED TO:
Smith, Kline and French Laboratories Ltd. v. Sterling-
Winthrop Group Ltd., [1976] R.P.C. 511 (H.L.).
COUNSEL:
R. G. McClenahan, Q.C. and Robert A. Mac-
Donald for appellant.
D. H. Aylen and R. Kelly for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
STRAYER J.: This is an appeal under section 56
of the Trade Marks Act [R.S.C. 1970, c. T-10]
from a decision of the Registrar of Trade Marks
refusing an application for the registration of a
trade mark pursuant to subsection 36(1) of that
Act. This appeal was heard together with the
appeal in T-565-84 [[1987] 2 F.C. 628] concern
ing a distinguishing guise relating to the same
product.
The appellant filed application number 485,519
on April 14, 1982. The trade mark applied for,
after several amendments to the application, was
described as
... the colour green applied to the whole of the visible surface
of the tablet, as shown in the specimen tablet affixed to the
form of the application, the precise shade of green being shown
in the attached colour patch.
It was common ground that the tablet in question
is "Tagamet", the appellant's brand name for a
product used in the treatment of gastric and
duodenal ulcers and other gastro-intestinal disor
ders. It will be noted, however, that the contents of
the tablet are not referred to in the description of
the trade mark for which application was made.
On January 24, 1984 the Registrar refused the
application. The operative part of his decision is as
follows:
It is my opinion that colour, alone, cannot function as a trade
mark. The quotation from the late Mr. Fox's treatise on trade
mark law in Canada hereinbefore indicated is supportive of my
position in this matter. I consider the trade mark applied for to
be a depiction of the wares in association with which it is used
and thus not registrable having regard to Section 12(1)(b) of
the Trade Marks Act. Consequently, this application is refused
under the authority of Section 36(1)(b) of the same Act.
I understand the Registrar's decision to mean
that because he concluded that colour alone cannot
function as a trade mark he then had to disregard
the use of the colour, and on that basis concluded
that the trade mark applied for depicted the char-
acter or quality of the wares in question, thus
making it non-registrable by virtue of paragraph
12(1)(b) of the Trade Marks Act. The argument
before me proceeded on this basis without much
emphasis on the "depiction" question. Counsel for
the appellant contended that this application was
not for registration of the colour alone as a trade
mark, but rather the colour as applied to a tablet
of this size and shape. Counsel for the respondent
argued that it was an application for a trade mark
based on colour alone and that this is impermiss
ible. Counsel for the appellant also argued, on the
"depiction" issue, that paragraph 12(1) (b) only
precludes the registration of trade marks which
would describe the character or quality of this
genus of products: it has no application to the
trade mark sought here which can only depict this
particular pill made by the appellant.
I have examined the authorities cited by both
parties. I agree with the appellant that the quota
tion from Fox, The Canadian Law of Trade
Marks and Unfair Competition (3rd ed., 1972), at
page 231, relied on by the Registrar, where he says
that "colour will not, by itself make a trade mark
distinctive", is not necessarily determinative. The
two cases cited by the learned author do not
squarely support the proposition which he states.
The other authorities cited by the appellant, save
for one which I will refer to below, are either
distinguishable on the facts or come from jurisdic-
tions other than Canada and I can find no clear
guidance in them.
It appears to me that as a general principle
manufacturers and traders ought to have the
greatest freedom possible in choosing trade marks,
provided that they are distinctive in identifying the
product with the supplier and do not infringe on
the trade marks of others. The Trade Marks Act
nowhere excludes colour as a trade mark and
subsection 32(3) of the Trade Marks Regulations
[C.R.C., c. 1559] contemplates colour being
claimed as a "feature" of a trade mark. While
distinctiveness, an issue which is not before me
here, will always be an important hurdle for an
applicant to overcome in obtaining registration of
a trade mark which relies heavily on colour, I
would find it difficult to hold that such a trade
mark could never be registrable.
I must, however, have due regard to what was
said by Noël J., albeit in obiter dicta, in Parke,
Davis & Co. Ltd. v. Empire Laboratories Ltd.,
[1964] Ex.CR. 399, at page 414 (decision con
firmed on a different point, [1964] S.C.R. 351):
Should the plaintiff's trade marks reside in colour alone, I
believe there is no doubt that they could not be the proper
subject of a trade mark.
However I have concluded that the application in
question here is not for a trade mark which would
"reside in colour alone". As quoted above, the
trade mark whose registration as sought is a par
ticular colour of green applied to a particular size
and shape of tablet. I would not preclude registra
tion simply on the basis that the colour is applied
to the whole of the exterior of the tablet and not to
some part of it alone. See Smith, Kline and French
Laboratories Ltd. v. Sterling-Winthrop Group
Ltd., [1976] R.P.C. 511 (H.L.), at pages 534-535.
I will therefore allow the appeal and set aside
the decision of the Registrar .of January 24, 1984.
As noted, this decision is not directed to the ques
tion of distinctiveness, a question which may have
to be considered in opposition proceedings.
As is the practice, no costs will be awarded
against the Registrar.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.