Rothmans, Benson & Hedges, Inc. v. Imperial Tobacco Products Limited, 2015 FCA 111 (Gauthier J.A.)
May 1, 2015
Kelly Gill and James Buchan for Rothmans, Benson & Hedges
Steven Garland and Timothy Stevenson for Imperial Tobacco Products
The Respondent, Imperial Tobacco, had applied for and was granted a trademark registration of an “Orange Package Design” in association with cigarettes. Rothmans, Benson & Hedges opposed this registration on several grounds, including non-compliance with section 30(b) and (h) of the Trade-marks Act. The Appellant’s argument was based on the fact that when the drawings for the mark were submitted, orange was only used as an aesthetic background. The Appellant argued that, had the Federal Court and the Trademark Opposition Board correctly applied the Nightingale decision, it would have found that consumers did not perceive the colour as indicating the source of the wares. Therefore the Appellant contended that the mark was not used and thus not registrable under the Act.
The Federal Court of Appeal disagreed and upheld both decisions from below. It found that the Federal Court clearly turned its mind to the issue of whether the public perceived the marks as trademarks. This finding demonstrated use per se and thus the mark was deemed registrable.
By: Tracey Doyle, Borden Ladner Gervais LLP