JTI Macdonald TM Corp. v. Imperial Tobacco Products Limited, a recent decision of the Federal Court, includes interesting findings regarding the introduction of additional evidence on appeals, colour constituting a trademark rather than a distinguishing guise and the evidence necessary to establish non-distinctiveness.

Imperial Tobacco applied to register “the colour orange applied to the visible surface of the packaging as shown in the attached drawing”, namely a drawing of a cigarette package.  JTI-Macdonald opposed the application and, being unsuccessful before the Opposition Board, appealed to the Federal Court.  The Federal Court agreed with the Board and rejected the various grounds of opposition.

The Court applied a standard of reasonableness, rather than correctness, when considering the appeal, given that the issues were mixed fact and law and within the expertise of the Board.  On an appeal from the Opposition Board a party is entitled to introduce new evidence and if that evidence would have “materially affected” the Board’s findings, the standard of review is one of correctness.  However, in this case, the Court concluded that the additional evidence that JTI-Macdonald sought to introduce merely provided additional examples of products rejected by the Board in its analysis of distinctiveness and therefore would not have affected the Board’s decision. 

The Court also considered the issue whether the applied for colour formed part of a mode of wrapping or packaging so as to constitute a distinguishing guise.  The Court noted that what was applied for was the colour orange applied to the packaging.  The colour was claimed separately and was not just an element of the packaging. Thus, the Board reasonably concluded that the colour was not part of the wrapping or packaging and could be claimed alone as a trademark.

With regards to the evidence necessary to establish distinctiveness, the Court noted that the relevant date for establishing a lack of distinctiveness is the date of the filing of the opposition.  Some of JTI-Macdonald’s evidence was from the period prior to the date when the opposition was filed and was therefore not probative.  As well, a number of the products relied on by JTI-Macdonald to establish non-distinctiveness either lacked sales data or had very low sales figures and did not assist.

In the end none of the grounds of opposition were accepted by the Board or the Court and the trademark was allowed to proceed to allowance.