Which Toothpaste is Responsible for this Beautiful Smile?
Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc., 2010 FC 231 (Boivin, J.)

February 26, 2010

Keri A.F. Johnston, Michelle L. Wassenaar and Andrea Long for the Applicant, Procter & Gamble Inc. (“Procter”)
Mark K. Evans and Thow Hing for the Respondent, Colgate-Palmolive Canada Inc. (“Colgate”)

Colgate filed a trade-mark registration for a striped toothpaste design (green, white and blue stripes), based on proposed use in Canada in association with toothpaste.

The Trade-marks Opposition Board rejected Procter’s opposition, hence Procter’s appeal to the Federal Court. In a detailed decision, on a standard of reasonableness, the Court dismissed the appeal with costs, rejecting all Procter’s grounds of opposition.

First Ground of Opposition – Colgate is not entitled to register the Design in Canada because Colgate could not have been satisfied it was entitled to register the Design, as it knew or ought to have known that toothpaste incorporating a stripe design has been offered for sale in Canada since at least 1984. - Procter failed to meet the initial burden of establishing the facts it relied upon for this ground.

Second Ground of Opposition –Colgate did not intend to use the Design - Procter failed to meet the initial burden of establishing the facts it relied upon for this ground. For an application filed under the category of proposed use in Canada, there is no requirement for actual use until the Declaration of Use is filed.

Third, Fourth and Fifth Grounds of Opposition – grounds rejected as being defective - A pleading dealing with registrability under Section 12 of the Trade-Marks Act (“Act”) does not cover a pleading that a mark is not a trade-mark. An opposition alleging the Design is not a trade-mark should be pled under Section 30 of the Act. Failure to ensure that a ground of opposition is properly pleaded may result in rejection of that ground.

Sixth Ground of Opposition – Distinguishing - Procter did not provide sufficient evidence to prove that consumers associate specific stripe patterns with a particular company.

By: Marvin Harik