In Procter & Gamble Inc. v. Colgate-Palmolve Canada Inc. (2010 FC 231), the Federal Court of Canada (FC) upheld a decision of the Trade-marks Opposition Board (“the Board”) rejecting the Applicant Procter & Gamble’s appeal under section 56 of the Trade-marks Act (the Act) opposing the registration of the Respondent Colgate-Palmolive’s trade-mark Application for a Striped Toothpaste Design.

The FC addressed the appropriate standard of review and questioned whether the Board had erred in rejecting the Applicant’s opposition to trade-mark Application No. 760,655 on six grounds.

The Applicant unsuccessfully argued that the application should proceed as a trial de novo since both parties filed new evidence on appeal. The FC reasoned that when new evidence is submitted it is necessary to assess its significance and probative value. Therefore, the FC’s review of the Board’s decision was limited, as the deferential standard of reasonableness was found to apply in accordance with Dunsmuir v. New Brunswick (2008 SCC 9).

The Applicant also failed to establish that the Board had erred. There was no evidence that the prior use of stripes, which differed from those claimed in the application, would be sufficient for Colgate to be satisfied that it was not entitled to use its Design. It was further found that a challenge of subsection 30(i) of the Act, which requires the Applicant to believe that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application, should only succeed in exceptional cases where there is evidence of bad faith.

With regards to the second ground of opposition, it was found that the opponent did not file any evidence that met its initial burden to show that at the material date, when Colgate filed its application, they had no intention of using the Design. The FC found that 33 abandoned toothpaste design trade-mark applications had no material effect on the Board’s decision, since those marks were not the subject of the application under judicial review.

The FC dismissed the third ground of opposition, finding that the opponent had not adduced any evidence to demonstrate that the Applicant’s mark was ornamental in nature.

The fourth ground of opposition pertained to the claim that the coloured stripes of the Design were functional in nature, and therefore, the trade-mark could not be registered. This claim was dismissed on the basis that the stripes were not performing individual functions, nor were the stripes intended to perform a variety of functions as they do in other toothpastes.

The fifth ground of opposition claimed the Design was not a mark that was used to distinguish Colgate’s toothpaste from the toothpaste of others, due to the fact that toothpaste was sold in a sealed box and was inside of an opaque tube. This claim was dismissed, as there was no evidence that toothpaste could not be advertised in a manner to allow consumers to see the actual product prior to its purchase.

The final claim related to the alleged non-distinctiveness of the trade-mark, and whether the mark could serve as a single source of the wares. The test was whether a clear message could been given to the public that the wares, with which the trade-mark was associated and used, were the wares of the trade-mark and not those of another party. This opposition was also dismissed because there was no evidence that others had used the same combination of stripes as applied for by Colgate, and there was no basis on which to find the Design was not capable acting as a distinguishing feature.

Overall, the FC found that the Board’s decision was reasonable, as it fell within the range of possible, acceptable outcomes, which were defensible based on the facts and the law at issue.