The Canadian Federal Court rejected Proctor & Gamble’s (P&G) opposition to Colgate-Palmolive Canada’s (Colgate) trademark registration of a striped toothpaste design.

The design at issue was the coloured stripes of the toothpaste itself, not the packaging, consisting of a green stripe on top, a white stripe in the middle, and a blue stripe on the bottom.

All of P&G’s grounds for opposition were rejected by the Trademark Opposition Board.  On appeal, the Federal Court upheld the Board’s finding that the grounds were raised improperly under the Trade-marks Act.

The grounds for opposition in which P&G alleged that the toothpaste design was not a trade-mark at all included:

1.    The design was purely for ornamental purposes.

2.     Because Colgate held patents that dealt with how to maintain chemical equilibrium in a toothpaste container and to keep the striped appearance when the toothpaste was dispensed, the design was unregistrable for being primarily functional in nature.

3.    The design was not visible to consumers at the time the toothpaste was transferred because it was enclosed in packaging.  Therefore, the design could not be “used” as defined in the Trade-marks Act.

4.    The design lacked distinctiveness because it used the three most common colours in the toothpaste industry.

However, the Court found, respectively, that:

1.    P&G had not satisfied its evidential burden because it offered no expert testimony to rebut Colgate’s affidavit, which stated that the toothpaste striping served no purpose and was chosen arbitrarily.

2.    patents, manufacturing process, flavours and colouring agents did not necessarily demonstrate a primary function of the striped toothpaste, and there was no evidence that the stripes in Colgate’s toothpaste performed a function.

3.    based on Colgate’s evidence of several ways in which toothpaste can be sold that allows the purchaser to see the toothpaste in the tube, it is not impossible to “use” the design in accordance with the Trade-marks Act.

4.    there was no evidence of another party using the same stripe design for toothpaste. Therefore, there was no evidence that the stripe design could not distinguish Colgate’s toothpaste.