Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc., 2010 FC 231

• Judge: Boivin, J.
• Court: Federal Court (Canada)
• Case Date: January 12, 2010
• Jurisdiction: Canada (Federal)
• Citations: 2010 FC 231;(2010), 364 F.T.R. 288 (FC)

Procter & Gamble v. Colgate-Palmolive (2010), 364 F.T.R. 288 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. MR.013

Procter & Gamble Inc. (applicant/opponent) v. Colgate-Palmolive Canada Inc. (respondent/applicant)

(T-375-07; 2010 FC 231)

Indexed As: Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc.

Federal Court

Boivin, J.

February 26, 2010.

Summary:

Procter & Gamble Inc. opposed the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares. The Trademarks Opposition Board rejected Procter & Gamble's opposition. Procter & Gamble appealed from the Board's decision.

The Federal Court dismissed the appeal.

Trademarks, Names and Designs - Topic 264

Trademarks - What trademarks registrable - Prohibition - Ornamental utility - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - One of Procter & Gamble's grounds of opposition alleged that the trademark was ornamental and decorative only - The Federal Court held that the Board's decision on this ground of opposition should stand - Procter & Gamble did not provide evidence that the Design was only applied to the wares for the purpose of ornament or decoration - Procter & Gamble failed to demonstrate that the use of colour was only ornamental, as it was arrived at following a technical process and it also had a function - See paragraphs 49 to 54.

Trademarks, Names and Designs - Topic 264.1

Trademarks - What trademarks registrable - Prohibition - Functional trademarks - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - One of Procter & Gamble's grounds of opposition was that the Design was not registrable because it was primarily functional - According to Procter & Gamble, any patent obtained for the alleged trademark had to be considered, as this constituted evidence that the patentee considered the alleged trademark as having a primarily functional use - The Federal Court held that the Design was not primarily functional - Although different functions could be assigned to particular colour stripes, it was not necessary to have stripes on toothpaste in order to perform the different functions assigned to the stripes - The patents, the manufacturing process, the flavours and the colouring agents did not conclusively indicate a primary function of the striped toothpaste - The stripes in the Design could perform a function, but there was no evidence of a particular function to be performed by Colgate's Design - This ground of opposition could not stand - See paragraphs 55 to 60.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - One of Procter & Gamble's grounds of opposition related to the alleged non-distinctiveness of the trademark and whether the mark could serve as a single source of the wares - Procter & Gamble submitted that the Design mark was not capable of distinguishing the toothpaste wares of Colgate from the toothpaste wares of others - The Federal Court held that the Board's decision on this ground of opposition was reasonable and should stand - Insufficient evidence was provided to demonstrate that other parties had used the same coloured stripe pattern as Colgate - There was no basis to find the Design was not capable of distinguishing Colgate's toothpaste from the striped toothpaste of others - Procter & Gamble provided insufficient evidence to prove that consumers associated specific stripe patterns with a particular company - There was no evidence establishing that the Design could not indicate a single source at the material date as there was only one application for protection of this particular configuration of toothpaste - See paragraphs 66 to 73.

Trademarks, Names and Designs - Topic 707

Trademarks - Registration - General - Conditions precedent - Requirement of use - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - Procter & Gamble argued that the Design could not be used as a trademark as defined by the Trade-marks Act as the Design was applied to the wares itself and the toothpaste was contained in a sealed box, with a foil seal over the mouth of an opaque tube - There was therefore no apparent association of the mark at the time of transfer of the wares to the customer and there could be no "use" within the meaning of the Trade-marks Act - The Federal Court held that the Board's decision rejecting this ground of opposition should stand - There was no evidence showing it would be impossible to use the Design in accordance with s. 4(1) of the Act, but there was evidence that toothpaste could be advertised in a manner to allow consumers to see the actual wares (the toothpaste) - Although this did not seem to be the usual market practice at this time, it remained possible - Therefore, it would be possible to use the Design - See paragraphs 61 to 65.

Trademarks, Names and Designs - Topic 714

Trademarks - Registration - General - Opposition - Evidentiary burden on opponent - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design) - Procter & Gamble appealed from the Board's decision - The Federal Court stated that "The trademark applicant, Colgate, bears the onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial burden on the opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist" - See paragraph 25.

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - Procter & Gamble's first ground of opposition related to s. 30 of the Trade-marks Act - Procter & Gamble submitted that Colgate could not have been satisfied it was entitled to register the Design as a trademark as it knew or ought to have known that toothpaste incorporating a stripe design had been offered for sale and sold in Canada by others since 1984 - The Federal Court held that the Board's decision on this ground of opposition should stand - Even if Colgate could have been aware of other toothpastes incorporating a stripe design sold by others since 1984, that did not mean it would not be entitled to register the Design - The evidence on file demonstrated that Colgate might have been satisfied they could register the toothpaste configuration they were seeking to trademark - This was not an exceptional case where a s. 30(i) ground should succeed - There was no evidence of bad faith on the part of Colgate - See paragraphs 28 to 33.

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design), based on proposed use in Canada with respect to toothpaste wares - Procter & Gamble appealed from the Board's decision - Procter & Gamble's second ground of opposition, which related to s. 38(2)(a) and s. 30 of the Trade-marks Act, alleged that Colgate did not intend to use the Design trademark - Procter & Gamble submitted that Colgate did not produce evidence to demonstrate they intended to use the Design on toothpaste wares in Canada, even though the application was filed more than 15 years earlier - Procter & Gamble submitted that the fact that Colgate voluntarily abandoned 33 trademark applications for toothpaste designs in Canada should be considered - The Federal Court held that the Board's decision on this ground of opposition should stand - The intent to use the Design must have been present when the trademark application was filed in 1994 - It was understandable that Colgate had not yet used the Design, as these opposition proceedings were underway - There was no evidence Colgate did not intend to use the Design trademark in Canada for wares covered in the application - The trademark application was filed under the category of proposed use in Canada - There was no requirement for actual use of the Design until the Declaration of Use was filed - The 33 abandoned trademark applications concerned unrelated trademarks - They had no material effect on the Board's decision - See paragraphs 34 to 41.

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design) - Procter & Gamble appealed from the Board's decision - The Board had dismissed Procter & Gamble's third, fourth and fifth grounds of opposition on the basis that the pleading was defective - Procter & Gamble submitted that where it was clear a ground was being relied upon, even if not properly pled, the Board should consider the ground - Although the issues in the third, fourth and fifth grounds of opposition (ornamentation, functionality and the mark not being able to function as a trademark) were not specifically pled under s. 30 of the Act, reasons were provided in the Statement of Opposition as to why each of these grounds were viable - Moreover, Procter & Gamble argued that these grounds were sufficiently pled by both parties that the Board was able to consider them on their merits and as such, each of these grounds of opposition should be considered by the court - The Federal Court held that the Board's decision to reject these grounds of opposition because they were not properly pled could not be overlooked and it was reasonable for the Board to conclude the way it did on this issue - However, despite that finding, the Board proceeded with a brief discussion of the issues raised by these three grounds of opposition - Although it was not necessary to do so to determine the outcome of this case, the court stated that it would nonetheless, as a matter of thoroughness, briefly address these three grounds of opposition - See paragraphs 42 to 48.

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design) - Procter & Gamble appealed from the Board's decision - New evidence was filed by both parties in the appeal - The Federal Court stated that "the standard to be applied in the case at bar for all six grounds of opposition is that of reasonableness. The new evidence submitted in support of the grounds of opposition is not significant enough to the point that it would have materially affected the Board's findings of fact or the exercise of its discretion and it does not justify a correctness standard of review" - See paragraph 24.

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - The Trademarks Opposition Board rejected Procter & Gamble's opposition to the registration of Colgate-Palmolive Canada Inc.'s trademark application for Striped Toothpaste Design - Green/White/Blue Stripes (the Design) - Procter & Gamble appealed from the Board's decision - As a preliminary matter, Colgate noted that Procter & Gamble had raised new allegations which were not contained in its Statement of Opposition - Colgate submitted that it was settled law that there was no jurisdiction to deal with an issue not found in a Statement of Opposition and the court did not have jurisdiction to entertain issues that were not raised before the Board - The Federal Court agreed with Colgate - While a party could raise new evidence on appeal, it could not raise new issues - The court therefore would not discuss these issues - See paragraph 26.

Cases Noticed:

Sapodilla Co. v. Bristol-Myers Co. (1974), 15 C.P.R.(2d) 152 (T.M.O.B.), refd to. [para. 11].

SmithKline Beecham Inc. v. Procter & Gamble Inc. (2002), 28 C.P.R.(4th) 230 (T.M.O.B.), refd to. [para. 13].

Imperial Developments Ltd. v. Imperial Oil Ltd. (1984), 79 C.P.R.(2d) 12; 26 A.C.W.S.(2d) 155 (F.C.T.D.), refd to. [para. 13].

Hughes (W.J.) & Sons "Corn Flower" Ltd. v. Morawiec (1970), 62 C.P.R. 21 (Ex. Ct.), refd to. [para. 14].

Canada's Royal Gold Pinetree Mfg. Co. v. Samann (1986), 65 N.R. 385; 9 C.P.R.(3d) 223 (F.C.A.), refd to. [para. 14].

Santana Jeans Ltd. v. Manager Clothing Inc. (1993), 72 F.T.R. 241; 52 C.P.R.(3d) 472 (T.D.), refd to. [para. 14].

Adidas (Canada) Inc. v. Colins Inc. (1978), 38 C.P.R.(2d) 145 (F.C.T.D.), refd to. [para. 15].

Dot Plastics Ltd. v. Gravenhurst Plastic Ltd. (1988), 22 C.P.R.(3d) 228 (T.M.O.B.), refd to. [para. 15].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), refd to. [para. 21].

BoJangles' International LLC et al. v. Bojangles Café Ltd. (2006), 293 F.T.R. 234; 2006 FC 657, refd to. [para. 22].

Wrangler Apparel Corp. v. Timberland Co. (2005), 272 F.T.R. 270; 2005 FC 722, refd to. [para. 22].

Advance Magazine Publishers Inc. v. Farleyco Marketing Inc. (2009), 342 F.T.R. 224; 2009 FC 153, refd to. [para. 22].

Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 184 F.T.R. 55; 7 C.P.R.(4th) 239 (T.D.), refd to. [para. 22].

Telus Corp. et al. v. Orange Personal Communications Services Ltd. (2005), 273 F.T.R. 228; 2005 FC 590, affd. (2006), 346 N.R. 81; 2006 FCA 6, refd to. [para. 23].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), refd to. [para. 25].

Dion Neckwear Ltd. v. Christian Dior, S.A. et al., [2002] 3 F.C. 405; 286 N.R. 336; 2002 FCA 29, refd to. [para. 25].

McDonald's Corp. et al. v. Coffee Hut Stores Ltd. (1994), 76 F.T.R. 281; 55 C.P.R.(3d) 463 (T.D.), affd. (1996), 199 N.R. 106; 68 C.P.R.(3d) 168 (F.C.A.), refd to. [para. 26].

Simpson Strong-Tie Co. v. Peak Innovations Inc. (2009), 357 F.T.R. 159; 2009 FC 1200, refd to. [para. 26].

Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R.(3d) 469 (T.M.O.B.), refd to. [para. 32].

Almecon Industries Ltd. v. Anchortek Ltd. et al. (2001), 215 F.T.R. 100; 2001 FCT 1404, refd to. [para. 36].

Slough Estates Canada Ltd. v. Federal Pioneer Ltd. (1994), 20 O.R.(3d) 429 (Gen. Div.), refd to. [para. 38].

Sierra Club of Canada v. Canada (Minister of Finance) et al. (1998), 159 F.T.R. 24; 84 A.C.W.S.(3d) 48 (T.D. Protho.), refd to. [para. 38].

Redsand Inc. v. Dylex Ltd. et al., [1997] F.T.R. Uned. 444; 74 C.P.R.(3d) 373; 72 A.C.W.S.(3d) 146 (T.D.), refd to. [para. 43].

Seagram (Joseph) & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 (T.M.O.B.), refd to. [para. 43].

Alex v. World Wrestling Federation Entertainment Inc. (2008), 68 C.P.R.(4th) 244 (T.M.O.B.), refd to. [para. 43].

Remington Rand Corp. et al. v. Philips Electronics N.V. (1995), 191 N.R. 204; 64 C.P.R.(3d) 467 (F.C.A.), refd to. [para. 56].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2005] 3 S.C.R. 302; 341 N.R. 234; 2005 SCC 65, refd to. [para. 58].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), refd to. [para. 67].

Metro-Goldwyn-Meyer Inc. v. Stargate-Connections Inc. (2004), 34 C.P.R.(4th) 317; 2004 FC 1185, refd to. [para. 71].

Muffin Houses Inc. v. Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.), refd to. [para. 71].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 74].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 2, sect. 4(1), sect. 12, sect. 30, sect. 38 [para. 20].

Authors and Works Noticed:

Fox, Harold George, The Canadian Law of Trade Marks and Unfair Competition (4th Ed. 2002), p. 6-20.8 [para. 47].

Counsel:

Keri A.F. Johnston, Michelle L. Wassenaar and Andrea Long, for the applicant;

Mark K. Evans and Thow Hing, for the respondent.

Solicitors of Record:

Johnston Wassenaar, LLP, Toronto, Ontario, for the applicant;

Smart & Biggar, Toronto, Ontario, for the respondent.

This application was heard on January 12, 2010, at Toronto, Ontario, before Boivin, J., of the Federal Court, who delivered the following judgment on February 26, 2010.