Holy Smokes! British American Tobacco defeats trade mark challenge in the Commonwealth Caribbean

Author: Eddy D. Ventose (Faculty of Law, Cave Hill Campus, University of the West Indies, Barbados)

Philip Morris Products S.A. v British American Tobacco (Brands) Limited, Civil Appeal No. 1 of 2009, In the Matter of the Trade Marks Act, Cap 257 Laws of Belize, Revised Edition 2000

Journal of Intellectual Property Law & Practice (2010), doi: 10.1093/jiplp/jpq185, First published online 16 December 2010

Philip Morris (PM) lost its challenge in the Supreme Court of Belize to the application for registration by British American Tobacco (BAT) in Belize of its cigarette label EMBASSY as a trade mark under the Trade Marks Act, Cap 257, Laws of Belize (BTMA).

Legal context

The first question for the Supreme Court of Belize was whether the MARLBORO trade mark owned by PM was similar to BAT's EMBASSY trade mark, which was being registered for goods identical or similar to those in respect of which MARLBORO was protected, and there existed a likelihood of confusion on the part of the public, which included a likelihood of association with the MARLBORO trade mark, contrary to section 37(2)(b) BTMA (section 5(2) of the UK Trade Marks Act, 1994 (TMA)/Article 4(1)(b) of the Trade Mark Directive 1998. The second question was whether the MARLBORO trademark was a mark with a reputation which, by section 61 BTMA, was protected under Article 6 bis of the Paris Convention for the Protection of Industrial Property. A third question considered was whether MARLBORO was protected under section 37(3) BTMA, which provides that a trade mark which is (a) identical or similar to an earlier trade mark and (b) is to be registered for goods and services which are not similar to those for which the earlier mark is protected, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Belize and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see section 5(3) TMA and Article 4(4)(a) Directive).

Facts and analysis

BAT applied to the Belize Intellectual Property Office (BIPO) for registration of its cigarette label EMBASSY as a trade mark. This was opposed by PM, who argued that the EMBASSY trade mark was substantially identical to or deceptively similar to its registered trade mark and the goods in respect of which the BAT application was made were identical or similar to those for which its MARLBORO mark was protected. PM also argued that its mark had acquired a reputation in Belize and that the use of the EMBASSY trade mark was confusingly similar because a similar design to its MARLBORO mark appeared at the bottom of the BAT mark. BAT claimed that its trade mark was not identical with or similar to PM's mark and as such was not likely to deceive or cause confusion in Belize.

Notwithstanding its concession that the MARLBORO mark might have acquired a reputation in Belize, BAT argued that both marks have co-existed peacefully in many markets around the world. The Registrar rejected the opposition on the basis that, while the goods were identical, the marks were not similar and there was thus no likelihood of confusion. PM appealed to the Supreme Court on the basis that, having accepted that PM's mark was a well-known mark under the Paris Convention, the Registrar should have considered the legal implications of that added protection which arose by reason of section 37(3) BTMA and section 61(2) BTMA (which incorporated Paris Convention protection for marks with a reputation).

The decision

Chief Justice Conteh accepted that, given the finding of the Registrar that the goods of the parties, such as cigarettes and cigars, were identical, there might be no need for the Registrar to refer to section 37(3) BTMA which dealt with identical or similar marks on dissimilar goods and services. He pointed out that ‘this was a limited view by the Registrar, given the admitted reputation of Philip Morris's trade mark. He ought to have considered sub-section (3) of the Act’. I am uncertain why this was necessary: a finding that goods are identical precludes examination of section 37(3) BTMA, which refers to dissimilar goods only. Conteh CJ continued that the Registrar should have taken into account the distinctive character of the MARLBORO trade mark and its admitted reputation when determining whether the similarity or identity between PM's goods (cigarettes etc) in respect of its earlier trade mark and those goods covered by BAT's (cigarettes) was sufficient to give rise to a likelihood of confusion. This is startling since the Registrar referred to Case C-251/95 Sabel BV v Puma AG for the view that in assessing the similarity of trade marks, the average consumer usually regarded a trade mark as a whole and does not conduct a detailed analysis of it; in conducting an assessment of the visual, aural and conceptual similarities of the trade marks, reference must be made to the overall impressions created by the trade marks while taking note of their distinctive and dominant components. Admittedly, the Registrar did not make mention of the reputation of the MARLBORO trade mark, but this does not undermine his firm conclusion on the facts that the goods in question were identical.

Conteh CJ claimed that section 37(3) BTMA was aimed at preventing dilution of marks with a reputation even where the goods and services to which the earlier mark and the proposed mark for registration were not similar: it enabled an owner of a trade mark in Belize to raise as a relative ground for refusing the registration of another trade mark that was identical or similar to its trade mark for goods and services that are dissimilar, but only where its registered trade mark had acquired a reputation. Citing the decision of the Court of Justice of the European Union in Case C-292/00 Zino Davidoff v Gofkid, Conteh CJ claimed that the ‘additional’ protection afforded by section 37(3) was against dilution of an earlier trade mark even where the goods and services for which the earlier trade mark and the later trade mark were identical (and, presumably, similar too). Thus, to avail of this ‘additional’ (anti-dilution) protection, the proposed trade mark had to be identical with or similar to the earlier trade mark which had a reputation in Belize.

Conteh CJ also claimed that Article 6 bis of the Paris Convention protected well known trade marks from later trade marks which constituted a reproduction, imitation or translation likely to create confusion with that earlier well known trade mark. In doing so he rejected BAT's contention that the protection afforded by Article 6 bis of the Paris Convention applied only to marks that had not yet been registered under the BTMA but which enjoyed significant reputation outside Belize. That approach was too limited and failed to appreciate the breadth of protection that Article 6 bis of the Paris Convention afforded. He claimed that the owner of a mark with a reputation can gain protection under sections 37(1) and (2) BTMA and even under subsection (3) if its conditions were satisfied: the ‘additional’ protection would also extend to that which obtained under Article 6 bis. Conteh CJ accepted that the rationale for this protective regime under these sections was to protect against confusion in the minds of consumers in relation to goods and services covered by an earlier mark such as to lead them to think that those goods and services were the same as those to which the later mark related or that they had a common design.

Would the use of the EMBASSY trade mark constitute a reduction, an imitation or a translation likely to create confusion with MARLBORO, the well-known trade mark? Conteh CJ accepted the Registrar's finding that the respective goods were identical and, having examined the affidavits submitted by the parties and comparing the two trade marks, held that the two trade marks were neither identical nor similar: the inverted tail-end of the ribbon in the EMBASSY mark, even if it were to be placed to the very top of its mark, would not ‘bear the slightest resemblance, identity or similarity with a roof that is inverted’. This inverted roof was an important feature of the MARLBORO trade mark. A finding that the marks were similar or identical was important because that finding was ‘no doubt central to the protective regime of trade mark law’ under sections 37(2), 37(3) BTMA and under Article 6 bis of the Paris Convention. The Registrar, applying Sabel v Puma correctly, thus reached the correct on similarity.

Conteh CJ held that the dominant and distinctive component of the MARLBORO mark was the roof device, whereas that of the EMBASSY mark was its horizontal ribbon. Not only was there no likelihood of confusion but the use of the EMBASSY trade mark in Belize would not take unfair advantage of or be detrimental to the distinctive character (the roof device) or repute of the MARLBORO trade mark. Further, given the nature of the goods, the average consumer did not engage in any detailed analysis of their marks at the point of purchase but requested the products by name. Since there was surely a phonetic and aural world of difference between the two marks, they could co-exist in Belize. The judge was fortified in his conclusion because decisions in Australia, Korea and Colombia have reached the same conclusion in similar disputes between the parties.

Practical significance

Conteh CJ's analysis of section 37(2)(b) BTMA is sound, focusing on the global assessment of the likelihood of confusion. According to the ECJ in Sabel BV v Puma AG, a global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. That assessment was still necessary as the court then considered section 37(3) BTMA, even if it applied only to dissimilar goods and services.

Conteh CJ assumed that the jurisprudence of the ECJ applied in Belize, although the BTMA was not expressly based on the TM Directive. However, since the BTMA and the TMA are the same in most respects, they have a similar (or perhaps identical) origin. It is an open question now whether the legislative changes made to the TMA as a result of decisions of the ECJ should also be made in Commonwealth Caribbean countries that have modelled their trade mark legislation on the TMA.

The court also considered the applicability of Article 6 bis of the Paris Convention, which did not first require that both trade marks be identical or similar. However, there was still a requirement that the later mark constitute a reproduction, an imitation or translation likely to create confusion in the minds of the public, so the court was not relieved of the obligation to compare the two trade marks.

1 comment:

  1. A sheepish thank-you to the anonymous correspondent who picked up an error in the title of this post!