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You can’t be blue anymore: Blame colour monopolies

Author(s): May Cheng, Maryna Polataiko

April 22, 2020

The power of colour in marketing and brand recognition cannot be overstated. In a recent study on colours and branding, 68 per cent of respondents agreed that colour is helpful in identifying brands when shopping. Another survey reported that 62 per cent of people shown 30-second advertisements developed brand associations based on colour.

The flaming red sole of a Louboutin stiletto, the bold orange of an Hermès gift box (“an iconic object in its own right”) and the cotton candy pink of Owens-Corning’s fiberglass insulation, all function as cognitive shortcuts for the source and cachet of their respective products.
Take a moment to summon the first thought that the name Tiffany brings to mind. It’s surely not Trump’s lesser known daughter, but rather the luxury jewelry retailer, popularized in the ’50s by Truman Capote’s 1958 novella and the 1961 comedy starring Audrey Hepburn, Breakfast at Tiffany’s. Which brand elements come to mind? No doubt the most immediate image is of Tiffany Blue — “international icon of elegance and sophistication.”

The eponymous colour is so crucial to the brand that it was standardized by Pantone to ensure its consistency across Tiffany’s signature ribbon-tied packaging, Blue Box Café, robin’s egg blue leather, stationery and matching time pieces. It thus comes as no surprise that the company has registered trademarks in the United States and elsewhere claiming colour as a feature of its products, including their iconic gift boxes and jewelry pouches.

Few companies enjoy Tiffany’s instantaneous brand recognition. Even fewer command it with a single colour. Nevertheless, newer companies have attempted to take a page from the jewelry giant’s playbook by claiming monopoly rights in colour. For example, in May 2019, millennial beauty startup Glossier filed for trademarks in its distinctive pink-lined boxes and pink bubble-wrap zip bags. Following the United States Patent and Trademarks Office’s (USPTO) initial refusal, Glossier argued that its pink packaging has acquired distinctiveness, “when consumers see the Pink Box, they immediately recognize it as emanating from Glossier.” It remains to be seen whether the USPTO agrees.

Recent commentators like The Fashion Law have chronicled the value of colour and the rise in non-traditional marks more generally: “… in an inherently digital age, one in which Instagram often serves as the main platform for product discovery and the home of large-scale advertising efforts for many brands, this focus on additional, highly visual trademark elements makes a lot of sense.” Elizabeth Segran at Fast Company observes that, with the trend towards more minimal branding comes the corresponding decline in the dominance of logos.

Until recently, colour could only be recognized as a feature of a mark in Canada, but the June 17, 2019, amendments to the Canadian Trademarks Act expanded the definition of “trademark” to include colour on its own, along with a variety of non-traditional marks, such as, three-dimensional shapes, holograms, moving images, tastes and textures. The modernization of the Trademarks Act brought Canada into conformity with international norms as reflected in the Singapore Treaty, which recognized non-traditional marks such as colour.

Prior to the legislative change, colour was held to only be registrable as applied to a particular shape. In one of the first decisions on point, the Federal Court in Smith Kline & French Canada Ltd. v. Registrar of Trademarks [1987] 2 F.C. 628, granted an appeal from the registrar’s decision refusing to allow the registration of the colour green as applied to a Tagamet tablet. The Federal Court found that the specific shade of green as applied to the surface of the tablet of a particular shape was registrable, as this was not an application for the colour in isolation, and could act as a disguishing feature of the tablet.

The Smith Kline decision recognized the ability to register a colour in association with a pill back in 1987, which was later affirmed by the Federal Court of Appeal in Astrazeneca AB v. Novopharm Ltd. [2003] F.C.J. No. 166. Yet, in a strange twist, the most popular and widely recognized “little blue pill,” also known as Viagra, was found by the Trademarks Opposition Board (TMOB) not sufficiently distinctive to be capable of being registered in Novopharm Ltd. v. Pfizer Products Inc. [2009] TMOB 180.

While the TMOB acknowledged that a blue diamond-shaped tablet was registrable, it held that the evidence of Pfizer fell short of establishing acquired distinctiveness in its blue colour mark, as applied to the pills known as Viagra, as of the relevant date. The challenge by Novopharm paid off, since this meant that the generic version of Viagra could be the same colour as the original without infringing a colour mark.

There is no doubt that allowing registration of a colour, without reference to a particular shape or object, removes a hurdle that can provide brand owners with greater flexibility in building their empires. Monopoly over a colour, within a particular class of goods or services, gives marketers latitude to expand brand identity across various platforms and mediums. Colour registration also offers freedom from the burden of registering each facet of a brand in a piecemeal fashion. Protection can seamlessly expand to all packaging, an Instagram aesthetic, or the interior design of brick-and-mortar stores.

Companies in Canada are already seeking to avail themselves of colour registrations. TD Bank, for example, recently filed applications for its iconic green colour palette as TD Green and TD Green Digital. MasterCard applied for its signature combination of red and yellow, Banque Nationale du Canada applied for red, and Interac applied for ochre. Companies like Owens-Corning, which have separate registrations in Canada for pink as applied to polyurethane foam sealant, polystyrene attic rafter vents and rebar could benefit from a single standalone colour registration which could apply to a variety of wares in a single registration.

Of course, to benefit from such wide protection, an applicant must demonstrate that the colour itself is distinctive as at the filing date of the application, as an identifier of a single source among its target consumers.

This hurdle may be difficult to overcome for less-established brands or those with lower brand consistency. Nevertheless, the expansion of trademarks to include non-traditional marks brings Canada’s trademark regime more in step with modern marketing practices and its current trend of using colour instead of logos as source signifiers. Time to dream up some new hues to launch an empire.

This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.

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