FLIP-TOP not distinctive of Philip Morris, rules Federal Court of Canada

Authors: Emir Crowne and Adrian Werkowski (University of Windsor, Faculty of Law)

Philip Morris Products SA v Imperial Tobacco Canada Ltd, 2014 FC 1237, Federal Court of Canada, 18 December 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv072, first published online: April 18, 2015

The Federal Court of Canada held that the term ‘FLIP-TOP’ was not distinctive of Philip Morris as it described a type of packaging and was not necessarily indicative of source.

Legal context

Section 38 of Canada's Trade-mark Act, R.S.C., 1985, c. T-13 sets out the grounds on which a proposed mark may be opposed. Subsection 38(2)(d) provides that a mark may be opposed where it is ‘not distinctive’.

Facts

Philip Morris applied to register ‘FLIP-TOP’ as a trade mark for tobacco and a variety of tobacco products. This mark had not yet been used and the Trade-marks Opposition Board found that it lacked distinctiveness because it described a type of packaging commonly used for tobacco products.

Philip Morris appealed the decision.

Analysis

A trade mark's lack of distinctiveness is not one of the grounds under which the Registrar may refuse an application (2014 FC 1237 at para 51 (discussing subsection 37(1) of the Act)). It is only after advertisement, and during the opposition stage, that non-distinctiveness may be raised under subsection 38(1)(d).

‘FLIP-TOP’ is a commonly used word in the tobacco industry and ‘is a defined word that refers to a container that has a lid that is easily flipped open’. By definition then, as a proposed mark the term lacked the requisite distinctiveness for the public to necessarily associate it with Philip Morris's products.

Although descriptiveness is related to distinctiveness, the two concepts were explicitly distinguished by the Court. At para 81 Justice B├ędard emphasized that her analysis was confined to that of distinctiveness only:
I do not find it necessary to determine whether the term ‘flip-top’ is descriptive of an intrinsic quality of the wares themselves such as a feature, trait or characteristic. In the present context, the key consideration is not whether the mark describes an aspect of the product that is necessarily ‘intrinsic’, but whether the term is capable of identifying the source of the wares in light of the overall product and market.
Practical significance

Source identification is the main purpose of a trade mark. Proposed marks that are themselves a common term will necessarily lack the requisite distinctiveness for registrability. Allowing such marks to acquire distinctiveness, and a secondary meaning, through concerted marketing efforts and actual use, may have been the wiser course of action in this case, instead of having the mark snuffed out at first instance.

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