In Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc. the Federal Court agreed with the Opposition Board that none of the six grounds advanced by Procter & Gamble, the opponent, could succeed against Colgate-Palmolive’s application to register its Striped Toothpaste Design – Green/White/Blue Stripes (the “Design”).

Three of the grounds advanced are of interest:

(1) that the Design was not registrable as of the filing date of the application (1994) because the Design was being applied to the wares for the purpose of decoration only and not for the purpose of distinguishing the applicant’s wares;

(2) that the Design was not registrable as of the filing date because the Design was primarily functional and registration would give Colgate-Palmolive a monopoly on functional elements or characteristics (i.e. stripes) of toothpaste; and

(3) that the Design was not registrable as of the filing date because the Design was not a “trademark” as defined in the Trade-marks Act since the Design was applied to toothpaste which was contained in an opaque package.

With regards to each of these grounds, the Court agreed with the Opposition Board that the pleadings were defective since the grounds of opposition did not exist under the Act. More particularly, a pleading dealing with registrability under section 12 of the Trade-marks Act could not cover a pleading that a trademark is not a trademark and the allegation alleging that the Design was not a “trademark” should have been plead under section 30 of the Act.

With regards to (1) above, the Court also agreed that Procter & Gamble did not provide evidence that the trademark was only applied for the purposes of decoration. In Adidas (Canada) Inc. v. Colins Inc., a 1978 Federal Court decision, there had been clear evidence the striping was only decorative and ornamental, but this was not the case at bar.

With regards to (2) above, the Court noted that different functions could be assigned to particular colour stripes (such as improving whiteness, providing flouride), but stripes were not necessary to perform the different functions. There was also no evidence of any particular function to be performed by Colgate-Palmolive’s stripes.

With regards to (3) above, the Court found that there was no evidence that as of the application date Colgate-Palmolive could not use the stripes as a “trademark”. Although it was not the usual market practice, the Court accepted Colgate-Palmolive’s evidence that it was possible to package and advertise toothpaste so consumers could see the actual wares with the stripes applied.

Thus, Procter & Gamble’s biggest hurdle was its defective pleadings. However, the Court was also not convinced the stripes were only decorative, functional or not intended as a “trademark”.