Colour can be useful in marketing a product. The United States Patent and Trademark Office (USPTO) and the European Union Intellectual Property Office (EUIPO) provide protection for colour in a design. For over 20 years, the Canadian Intellectual Property Office (CIPO), however, took the position that colour could not be a registrable feature of a design. This long-standing position changed when the Office released a new practice notice on January 16, 2017.
In its notice, the Office takes the position that colour may form part of a combination of features that constitute a design. Colour by itself is not considered to fall within the definition of a design.
To register a design that includes colour as a feature, the Office requires that the description state that colour forms part of the design. Drawings (or photographs) must be filed in colour and in paper form. The Office may display a black-and-white version on its database, and annex a black-and-white version to the certificate of registration.
This change benefits IP owners by allowing them to protect colour in a product. For instance, registering colour in addition to shape may help in an overall assessment of infringement where similarities in colour outweigh differences in shape.
The change in position also brings Canada into closer alignment with major trading partners in terms of IP owners protecting their IP globally, including the United States, Europe, and the United Kingdom, and with the Hague system once implemented. In the United States, colour designs are published in black and white, but their application contains a reference that they are available in colour from the USPTO upon request. The European Community Design Regulation explicitly includes colour as a registrable feature. The definition of design in the United Kingdom’s Registered Designs Act 1949 has since been amended to explicitly include colour as a registrable feature. The Hague system permits registration of colour as a feature of a design.
Designs are a useful tool in protecting look and feel of a product. Care should be exercised in determining which aspects of a design are important to protect. For example, it may be desirable to protect shape alone, shape and surface decoration, shape and tonal contrast, or shape and colour. Line drawings in black and white, or in colour, may be used. Shading may help understand the shape of a product, provided it is not misunderstood as tonal contrast. Broken lines, disclaimers, and variations of the design can be used to broaden or more clearly define the scope of protection. A design for the entire product can be registered, and separately a design for a portion or part of the product. With an effective filing strategy, layers of design protection can be obtained.
