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12 April 2021
Some foreign brand owners may be surprised to learn that in Canada, when seeking to protect design (or figurative) marks, it is sometimes better to register marks in black and white in cases where the marks would normally be displayed in colour. Broader protection can typically be secured in Canada by registering design (or figurative) marks in black and white as opposed to including a colour claim. In many other jurisdictions, including Europe, this is not the case.
In Canada, design marks registered in black and white theoretically protect and cover all colours. In this article, 'black and white' marks also refer to marks that could include grey scale, which shows distinctions in the shading to represent contrasting tones.
Registrations claiming colour as a feature of the mark arguably provide narrower protection than registrations in black and white. In general, the more features that appear in a trademark registration, the narrower the scope of protection. Accordingly, when seeking trademark protection in Canada, many brand owners prefer to register their design marks in black and white.
This general principle raises an interesting issue about priority claims. In particular, can a Canadian application filed in black and white validly claim priority from an earlier application filed in colour? This issue has not been explicitly considered by the Canadian courts.
To validly claim priority, the mark in the Canadian application need not be identical to the mark in the priority application. However, the two marks must be "substantially the same". To date, there has been no definitive case law interpreting the meaning of "substantially the same".
In most cases where the priority application is filed in colour and the Canadian application is filed in black and white, it is likely that the two marks will be considered to be substantially the same. However, there are rare cases where a particular combination of colours in a priority application could theoretically lead to a different result.
The validity of priority claims is not assessed during prosecution. The validity of a priority claim would be assessed only if the validity is challenged during an opposition or infringement action. At that point, if the priority claim is found to be invalid, it is unlikely that the application or registration as a whole would be found to be invalid (assuming that there are no relevant third-party rights). Rather, in the worst case, the application or registration would likely be amended only to remove the priority claim.
In view of the information provided above, brand owners should consider that:
For further information on this topic please contact Philip Lapin or Nora Labbancz at Smart & Biggar by telephone (+1 613 232 2486) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
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