At some point, some of us have wondered how Colgate manages to keep the stripes in its toothpaste from mixing when squeezed out of the tube. This curiosity sparked a trend on the social media platform TikTok, where users tried to blend the distinct stripes of color within the toothpaste tube by applying pressure to the tube, hoping to mix the colors together, but despite their efforts, they were unsuccessful. In response to the various theories circulating online, Colgate released a video explaining that the secret to keeping the stripes unmixed, even after the toothpaste is subjected to pressure, lies not only in the toothpaste’s thickness, viscosity, and consistent properties but also in the tube’s special design. TikTok Video Toothpaste Stripe Technology Explained
This topic was discussed in the context of a functional trademark case decided in Canada, covering the aspect of trademark functionality that we explored in class. A particular interesting case is Procter & Gamble Inc. v Colgate Palmolive Canada Inc., [2010] F.C.J. No. 261. In this decision, the Federal Court of Toronto determined that the Trademarks Opposition Board (TMOB) did not make an error in rejecting Procter & Gamble’s opposition (“the applicant”) to the registration of Colgate Palmolive’s trademark application No. 760,655 for a STRIPED TOOTHPASTE DESIGN featuring GREEN/WHITE/BLUE STRIPES. Procter & Gamble Inc v Colgate-Palmolive Canada Inc, 2010 FC 231, 2010 CF 231
The respondent, Colgate filed Application No. 760,655 for a STRIPED TOOTHPASTE DESIGN featuring GREEN/WHITE/BLUE STRIPES that it intended to use in association with toothpaste. Colgate did not claim exclusive rights to the representation of the slug of the toothpaste, in class 03, but rather to the specific design elements described in their application, that is the specific arrangement of the three colored stripes on the toothpaste when dispensed. The specific sequence and combination of shade of colors order from top to bottom green, white and blue stripes. Ibid.
The Application No. 760,655 was advertised in the Trademarks Journal for opposition purposes, and the applicant, Procter & Gamble filed a statement of opposition based on six grounds, with the fourth ground arguing that Colgate’s Design was not registrable on the application filing date (August, 02, 1994), pursuant to s. 38(2)(b) of the Trademarks Act. This argument was based on the belief that Colgate’s Design was not distinctive within the meaning of s. 2 of the Trademarks Act. Procter & Gamble considered that Colgate’s Design had functional elements that would unfairly grant Colgate exclusive rights over these functional features of toothpaste, potentially limiting competition and innovation in the toothpaste market. Therefore, Procter & Gamble maintained that the Design was not registrable. Ibid.
The TMOB dismissed all six grounds of opposition, finding them defectively pleaded and without merit. Specifically, the fourth ground of opposition, concerning functionality, was rejected based on the finding that Colgate’s Design was not primarily functional. This decision was made despite evidence from another party using stripes in association with Aquafresh toothpaste, where white stripes indicated fluoride and blue stripes signified fresh breath. The specific Design submitted by Colgate was upheld as non-functional. This conclusion from the TMOB was supported by an unchallenged affidavit asserting that Colgate’s Design was primarily aesthetic. The TMOB held that Procter & Gamble failed to provide evidence that the green, white and blue stripes in Colgate’s Design performed specific functions, unlike in the Aquafresh case, where distinct functions were associated with particular colored stripes. Ibid.
In this context, the Court found that lack of evidence from Procter & Gamble regarding the functionality of the stripes supported the TMOB’s view that Colgate’s Design was arbitrary, thereby reinforcing its eligibility for trademark protection. In other words, the Court asserted that Procter & Gamble did not succeed in proving that the specific function of the stripes in Colgate’s Design was to improve whitening, provide additional fluoride, assist with sensitive teeth, aid in plaque removal, fight cavities, combat bacterial growth, or whether it was intended for one, several, or all of these functions. Ibid.
Consequently, the Court noted that while toothpaste manufacturers may claim that different colored stripes serve specific functions, the segmentation into stripes is not essential for delivering the benefits associated with each color or function. Therefore, the Court determined that the stripes were more as a marketing design choice and a means of influencing consumer perception, rather than being a technical requirement for the functionality of the toothpaste. Ibid.
As a result, the Court determined that consumers did not associate the specific stripe pattern with any particular company. Consequently, the Court concluded that there was no evidence to suggest that Colgate’s Design could not represent a single source of the goods associated with the trademark at the time of filing, since Colgate’s application was the only one seeking protection for this specific toothpaste stripe configuration. Therefore, on February 26, 2010, the Court held that the TMOB’s decision was reasonable and should be upheld, and it dismissed the appeal with costs. Ibid.
Despite the opposition to trademark application No. 760,655 being eventually removed, which allowed for its registration, Colgate chose to abandon the application, possibly due to commercial reasons. This decision involved not paying the necessary registration fee, and failing to submit a declaration of use in Canada for the goods specified in that application by the deadline of October 30, 2010, as required by the Trademarks Act. Application No. 760,655 details
Although Colgate abandoned trademark application No. 760,655, Colgate still exclusively owns the registered STRIPED TOOTHPASTE DESIGN (COLGATE TOTAL FRESH STRIPE) under No. TMA469980, for this specific stripe pattern, according to the Canadian Trademarks Database. This trademark is characterized by a distinctive design that includes an upper stripe in dark aqua and a lower stripe in white, set against a medium aqua shadow on a light aqua background, with the color scheme, comprising white and three shades of aqua, being a critical aspect of its identify. The registration of this trademark is valid and in effect. Registration No. TMA469,980 details
The relevance of this case lies in Procter & Gamble’s inability to prove that the stripes had a specific function, leading the Court to conclude that the stripes in Colgate’s Design were primarily aesthetic; consequently, it was deemed arbitrary, thereby reinforcing its eligibility for trademark protection.
Communications Law