New Canadian Trade-marks Office Practice Notices Regarding Colour Claims and Amendments Prior to Examination

The Canadian Trade-marks Office (TMO) recently issued two practice notices, effective December 22, 2010. The first practice notice concerns colour claims. The second practice notice addresses amendment to trade-mark applications request prior to examination.

Colour Claims Practice Notice

Trade-mark Regulations Rule 28(1) requires colour descriptions for any colour claims made in a Canadian trade-mark application. Rule 28 specifies how parts of a trade-mark may be shaded with lines to describe specific colours, namely red or pink, brown, black, gray or silver, violet or purple, blue, green, yellow or gold, and orange. However, such shading does not allow applicants to claim precise colour shades (e.g. PANTONE® 15-5519 for turquoise).

Under the new Practice Notice, where an application claims a colour mot found in Rule 28, the TMO may require the applicant to include a precise colour description.

The applicant can reference a colour system (e.g. PANTONE) for each colour claimed. If the name of the colour system is a registered trade-mark, the colour system name must be typed in capital letters and must include a statement that the name of the colour system is a registered trade-mark. For example:

The colour turquoise is (PANTONE 15-5519)* is claimed as a feature of the mark. *PANTONE is a registered trade-mark.

Referencing a colour system alone (i.e. PANTONE) is unacceptable. The applicant must include both a description of the colour claimed and reference the colour system and colour system number. While the TMO does not endorse or recommend a particular colour system, the Practice Notices states that any colour system used for trade-mark application colour claims should be easy to identify and reproduce by the general public.

If the applicant does not reference a colour system, the applicant must provide a clear description of the colour(s) claimed. E.g. claiming the colour “magenta” would be acceptable, but claims for “greyish green” or “purplish blue” would be rejected by the TMO, as neither the TMO nor third parties would be able to accurately assess the colours being claimed.

Amendments to Trade-mark Applications Requested Prior to Examination

The TMO will no longer assess application amendment requests received prior to examination, except for any expedited requests and/or any request affecting the applicant’s entitlement date. Such requests will be forwarded to an examiner for review. All other requests will be assessed by the examiner in order, according the application’s filing date.

Examples of amendments that will no longer be assessed prior to examination include:

  • Clerical errors.
  • The addition or amendment of a claim.
  • An addition or amendment to the statement of wares or services.
  • The amendment of the trade-mark description.
  • A change in the trade-mark.
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