On June 29, the Federal Court of Appeal allowed in part Imperial Tobacco’s lawsuit against Philip Morris, holding that the appearance of Imperial Tobacco’s packaging was in and of itself a trademark. The full decision may be read here.
Since the 1920s, Marlboro Canada and Imperial Tobacco have owned the rights to the trademark MARLBORO in Canada. Meanwhile, Philip Morris has marketed its famous cigarette brand Marlboro in the United States. Due to the popularity of the Philip Morris brand and Canadian awareness of American marketing, the Philip Morris brand became well known in Canada. As a result, Philip Morris created the Canada-only brands Maverik and Matador which were accompanied by Philip Morris’ famous rooftop packaging but did not infringe Imperial tobacco’s trademark rights in MARLBORO.
In 2006, Philip Morris introduced a new marketing tactic by creating cigarette packages that bore no brand name but merely displayed the famous rooftop image. Evidently, Philip Morris was confident that consumers would recognize the brand based on the image alone. As a result, Imperial Tobacco sued Philip Morris for infringement of its trademark, stating that the rooftop packaging conveyed the idea of MARLBORO thus resulting in consumer confusion between the two brands. Imperial Tobacco provided the court with evidence that retailers, when asked for Marlboro cigarettes, would supply the Philip Morris brand. Nevertheless, at trial, Justice de Montigny ruled against Imperial Tobacco’s argument, holding that confusion was not created because the world Marlboro was not used and the rooftop design itself was actually more of a distinguishing feature. Further, there was no inherent meaning in the design, particularly since the focus should be exclusively the Canadian market.
The Federal Court of Appeal overturned Justice de Montigny’s judgment, finding that he had erred in his evaluation of the confusing nature of Philip Morris’ rooftop packaging. Specifically, the Court of Appeal dismissed the finding that there was no inherent meaning in the rooftop image. According to the judgment, consumers faced with an opportunity to “fill in the blanks” were likely to experience confusion and associate the product with the well-known Philip Morris brand.
In deciding that product packaging alone could result in a trademark infringement, the Court of Appeal has set an important precedent. Commentators emphasize that this decision has expanded the possibilities for litigants attempting to prove the confusing use of a trademark and caution against increasingly more creative arguments. The Court of Appeal’s decision regarding the rooftop packaging, however, does seem to be consistent with traditional trademark principles. The driving function of trademark law is to prevent confusion at all levels of consumer interaction. The test is typically whether the ordinary consumer, with imperfect recollection, and without giving the matter detailed scrutiny or close examination, would be confused. The question in many circumstances may thus become one of mental association, as, in the minds of consumers, certain images or words may convey a particular message. This argument is not only clear in this decision, but has been demonstrated through past cases emphasizing the importance of the guise or get-up of a particular product. While, for some critics, the Court of Appeal’s decision may seem somewhat radical, in my opinion, the overall significance of this case does not deviate from the basic principles of trademark law.
Nora Sleeth is a JD candidate at Osgoode Hall Law School.