Peak Innovations Inc. (the “Applicant”) filed 31 applications to register trademarks for various of its products, namely wood to wood and concrete and masonry connectors, most of which are used in deck building. A competitor, Simpson Strong-Tie Company Inc. (the “Opponent”) filed statements of opposition in respect of all 31 applications.

On appeal, the Federal Court recently considered two of the applications agreeing with the Opposition Board and dismissing the appeals. At issue were a mark for the colour green (Application 1,187,491) and a mark for the colour greyish-green (PANTONE 5635C) (Application 1,205,529), both as applied to fastener brackets, claiming use in association with fastener brackets for attaching deck boards.

The Opponent filed additional evidence on its appeal to the Federal Court, but the Court did not agree there was evidence of third parties in the Canadian marketplace using grey or khaki green on items for purposes that included deck building. Thus, there was no confusion.

The Court also refused to consider the Opponent’s arguments concerning non-distinctiveness, since those allegations were raised for the first time on appeal, and “while a party is open to raise new evidence on appeal, it cannot raise new issues”.

The Court also concluded that the mark was not purely or primarily functional. The Opponent, based on certain statements made during the course of cross-examination, argued that green or greyish coating was added to products primarily to reduce corrosion. However, the Court noted that the coating could be produced in many colours and, following the decision of the Federal Court in Smith, Kline & French Canada Ltd. v. Registrar, concluded that “colour applied to the whole of the visible surface of an object can function as a trademark”.