Proposed Practice Notice: Description of Colour Claims
Publication Date: xxxx-xx-xx
Paragraph 30(h) of the Trade-marks Act provides that unless a trade-mark application is for word(s) not depicted in special form, it must contain a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed. If the applicant claims colour(s) as a feature of the trade-mark, Rule 28 of the Trade-marks Regulations requires that the said colour(s) must also be described.
In Apotex Inc. v. Searle Canada Inc. (2000), 6 C.P.R. (4th) 26 (F.C.T.D.), Rouleau J. set out the rationale behind s. 30(h) and the requirement for precision in a trade-mark application:
The onus is on the applicant for a mark to show its compliance with this requirement of the legislation. The drawing submitted must be a meaningful representation of the applicant's mark in the context of the written description appearing in the application …. The rationale behind these statutory requirements is that a trade-mark registration is a monopoly and must therefore be precise in terms of its scope.
Where the colour claim is for a colour not found in Rule 28 of the Trade-marks Regulations, the applicant is required to include a description of the colour code and reference system for each colour(s) claimed. Should the name of the colour system be the subject of a registered mark, the name of the colour system must be set out in uppercase letters and must include the statement that the name of the colour system is a registered trade-mark. The following is an example of an acceptable description: "the colour turquoise (PANTONE 15-5519)* is claimed as a feature of the mark. *PANTONE is a registered trade-mark".
While the Office does not endorse or recommend any one colour identification system, any colour reference used should be easy to identify and reproduce by the general public.
Note: This practice notice is intended to provide guidance on current Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.