Appeal of a Trade-mark Opposition Board Decision Dismissed

FACTS AND BOARD DECISION

This was an appeal of a Trade-mark Opposition Board decision. Peak Innovations Inc. (Peak) applied to register a selection of trade-marks the applications for which were all opposed by Simpson Strong-Tie Company, Inc. (Strong-Tie). Of particular interest to this case were two applications for “fastener brackets for attaching deck boards” based on use in Canada since June 1, 2003 for the colour green (‘491 Application) and greyish-green (PANTONE 5635C) (‘529 Application). The marks were described as consisting of “the colour [green or greyish-green] as applied to the whole of the visible surface of the particular object shown in the drawing. The drawing is lined for the colour [green or greyish-green]”.
Strong-Tie raised eight grounds of opposition, all of which were rejected by the Board, as follows:

1. non-registrability on the basis of confusion with three registered trade-marks (Section 12(1)(d) of the Trade-marks Act) – Rejected: two of the registrations relied upon were expunged and the third was found not to be confusing with the applied for marks;

2. non-entitlement on the basis that, at the claimed date of first use, the marks were confusing with trade-marks used by Strong-Tie and third parties and an application previously filed in Canada (Sections 16(1)(a) and (b)) – Rejected: for a failure to raise a proper ground of opposition;

3. non-conformity with Section 30(i) on the basis that Peak was aware or ought to have been aware of the use of a similar product by Strong-Tie and third parties – Rejected: for a failure to raise a proper ground of opposition;

4. non-distinctiveness – Rejected: for a failure to adduce evidence of use or reputation of the allegedly confusing marks;

5. not the proper subject matter for a trade-mark on the basis that the colour and shaping of the marks was functional and utilitarian (Sections 30(b), (2) and (4)) – Rejected: for a failure to adduce any evidence of the alleged functional or utilitarian nature of the marks;

6. non-registrability on the basis that the marks had, by ordinary and bona fide commercial usage, become recognized in Canada as designating the kind and quality of the applied for wares (Sections 10 and 12(1)(e)) – Rejected: for a failure to adduce any evidence;

7. non-registrability on that basis that, being purely or primarily functional, the marks were clearly descriptive of the character or quality of the applied for wares (Section 12(1)(b)). – Rejected: for a failure to adduce any evidence of the alleged functional or utilitarian nature of the marks; and

8. non-conformity with Section 30(b) on the basis that Peak had not used the marks since the claimed date of first use – Rejected: for a failure to satisfy the evidential burden.

At the hearing before the Board, Strong-Tie attempted to raise an additional ground of opposition, namely, that the object shown in the drawings for the applications did not indicate the size or physical dimensions of the objects, contrary to Section 30(h) of the Act. The Board refused to consider the ground, on the basis that it was not raised in the statements of opposition.

ANALYSIS:

Issue #1: Were the alleged Peak colour marks distinctive of Peak, and used by Peak since the date of first use or before, so as to distinguish the marks to the public from those of others?

Strong-Tie argued that its additional evidence established that third parties in the Canadian marketplace, itself included, had used the colour grey, khaki or green for items used for deck building and that these products could thus cause confusion with Peak’s products.
Justice Snider held that the additional evidence was not sufficient to establish that any other party had used the colour green or greyish green in association with fastener brackets for attaching deck boards. The only party to do this was Peak. As such, the new evidence was not sufficient to have materially affected the Board’s finding of fact or the exercise of its discretion.

On appeal, Strong-Tie attempted to amplify its confusion ground and assert that the applied for marks were inherently non-distinctive. Justice Snider held that, while parties are permitted to raise new evidence on appeal, they cannot raise new issues. Strong-Tie was thus precluded from raising this issue.

Issue #2: Were the alleged Peak colour marks purely functional, utilitarian or clearly descriptive of a quality or characteristic of a colour coating?

On the issue of functionality, Strong-Tie argued, based on evidence from cross-examination, that the green colour of Peak’s products had more to do with rust protection and durability than with distinguishing Peak’s product from others on the market.
Colour applied to the whole of the visible surface of an object can function as a trade-mark when claimed as a “feature” of a mark, provided it is not primarily functional. As such, if the green colour had been added to the products for the primary purpose of reducing the possibility of corrosion, it may not be registrable.

Justice Snider held that Strong-Tie’s evidence did not relate directly to the colour green and did not establish that a green coating would offer any more protection than any other colour. Despite the new evidence, the Board’s decision was thus upheld.

Issue #3: In the alternative to #2, were the Peal colour marks more properly the subject matter of an application for a distinguishing guise?

The only evidence adduced on this point was a leading question on cross-examination where the affiant agreed that “the powder coated khaki green is the coating that sort of wraps it from the elements”. Justice Snider held that the affiant’s agreement with this statement was not an admission that the applied for mark is a distinguishing guise. The Board’s decision was upheld.

Issue #4: Had Peak used the alleged colour marks as trade-marks since the date first alleged in the applications?

Strong-Tie attempted to argue that the invoice adduced by Peak as evidence of use was insufficient because it did not mention the colours green or greyish-green. Other evidence filed by Peak established that the product listed on the invoice had the colour greyish green applied to the entire surface thereof. On this basis, the non-use argument was rejected. Strong-Tie’s evidence that the applied for marks were not found on Peak’s website was also found to be insufficient to prove non-use.

Issue #5: Were the alleged colour marks sufficiently described in the application?

At the hearing Strong-Tie argued that the drawings submitted by Peak were insufficient as they did not include the dimensions of the product (Section 30(h)). The Board refused to hear the argument, as it was not raised in the statements of opposition. However, on appeal, Peak had been given sufficient notice of this issue and Strong-Tie was permitted to make the argument. They were prevented from expanding the ground beyond what was raised at the hearing. Strong-Tie was thus prevented from arguing that the drawing was insufficient for not showing the rear of the products.

Justice Snider considered and rejected the argument that the drawings did not include dimensions and stated that: “Colour alone can constitute a trade-mark”. It will be interesting to see how, going forward, the Board and the Courts will treat this statement.

Issue #6: What was the effect of any third party licence?

On appeal Strong-Tie raised the issue of non-distinctiveness of the applied for marks on the basis that they were actually being used by Peak’s subsidiaries or affiliates. This issue was not raised before the Board and Strong-Tie was precluded from raising it on this basis.

DECISION:

Appeal dismissed.

By: Andrea Flewelling, Gowling Lafleur Henderson LLP