Rothmans Benson & Hedges Inc. v. Imperial Tobacco Products Limited

Imperial Tobacco applied for a trademark on the use of the color orange on cigarette packaging. This decision by the Court of Appeal upheld an earlier ruling finding that, in principle, a color can be registered as a trademark. Despite objections by another tobacco company, the court found that the color had in fact been used in product packaging by Imperial and that the trademark application accurately depicted the trademarks despite health warnings that also appear on the package. 

Rothmans, Benson & Hedges, Inc. v. Imperial Tobacco Products Limited, 2015 FCA 111 (2015).

  • Canada
  • May 1, 2015
  • Federal Court of Appeal
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Parties

Plaintiff Rothmans, Benson & Hedges, Inc.

Defendant Imperial Tobacco Products Limited

Legislation Cited

Trademarks Act

Related Documents

Type of Litigation

Tobacco Control Topics

Substantive Issues

Type of Tobacco Product

None

"In discussing subsection 30(b), in my view the Board also dealt with the issue of whether or not the respondent’s actual use of the colour orange on its packaging as of 2006 constitutes use of Marks 127 and 128 per se as trade-marks. Although the Board does not expressly address all the specific points raised by the appellant before us, as these were not argued before it, on a fair reading of her reasons, it is clear that it turned its mind to these issues and addressed them in substance at paras. 42 and 46 of its reasons. It refers to relevant evidence submitted by the respondent and in particular how it had notified the public that the colour orange was used as its trade-mark, and it refers to the impact of other marks and material (particularly, the warnings) used on the packaging. On my reading, it was satisfied that the public would perceive the applied-for marks per se as trade-marks and that the evidence demonstrated use of those trademarks per se by the respondent. In para. 46, the Board also noted that the appellant adduced no evidence to support its allegation that the marks were merely ornamental."