Copywriter, technical writer, translator (FR>EN, ES>EN, IT>EN), journalist

Trade dress for success

Marlboro decision defeats marketing tactic of look-alike brand

Philip Morris owns the trademark for Marlboro, the top-selling international cigarette brand, in most of the world. But not in Canada.

Thanks to that quirk — the result of a long-ago trademark sale by a Philip Morris predecessor company to what is now Imperial Tobacco — Philip Morris tried a new marketing tactic in 2006. They marketed a brand using the red-and-white (“red roof”) Marlboro packaging trade dress, without a name on the package.

Trade dress refers to visual characteristics of a product or its packaging that serve to identify it for consumers.

“They used the trademark ‘Matador’ before that,” says Brian Gray, senior partner with Norton Rose Fulbright Canada.

Here’s another twist: in Canada, retailers must keep cigarettes behind store counters and conceal the shelves that hold them, which results in a “dark” market. So instead of picking a carton off a shelf, consumers must ask for a brand, which raises the question: how do you ask for a brand that doesn’t display its name on the packaging?

Imperial Tobacco successfully raised that very question in court during Philip Morris Products S.A. v. Marlboro Canada Limited [2012] F.C.J. No. 878. The Supreme Court later denied Philip Morris leave to appeal Imperial’s earlier trademark victory.

Other factors contribute to the unique nature of this case. For instance, the red rooftop design flows over borders. Even when cigarette advertising was prohibited at the Canadian Grand Prix, Ferraris sped around Montréal’s Circuit Gilles-Villeneuve sporting the red rooftop on their rear spoilers. Even without the word, fans knew the brand by the design.

While this decision might seem logical, “whether a trade dress can be confused with the word mark [distinctive text] of another company is without precedent,” says Mark Evans, partner with Smart & Biggar/Fetherstonhaugh. “Typically you look at whether a word mark can be confused with another word mark and whether a trade dress can be confused with another trade dress.”

Whether Canadian courts face such cases in the future seems to depend upon the confluence of an equally unique set of circumstances. “The court was very careful to indicate that the decision was tied to the particular facts in that case,” Evans says.

Although it’s unusual, trademarks can be owned by different entities in different countries. Gray notes that during the Second World War, German trademarks were seized in the United States. “After the war, there was confusion over who had rights to the trademarks,” he says.

To an extent, Evans likened past cases to Marlboro. In Ciba-Geigy Canada Ltd. v. Apotex Inc. [1992] 3 S.C.R. 120, the court found one pharmaceutical company gave its products an appearance similar to those of a competitor.

Evans says it wasn’t a matter of proving that doctors or pharmacists are confused. “It’s sufficient if the patient was confused,” he explains. “If the patient received a pharmaceutical product that had the same overall colour, shape and size as the brand name, and if that appearance serves as an indicator of source, then it would be possible to establish passing off.”

In Kirkbi AG v. Ritvik Holdings Inc. [2005] 3 S.C.R. 302, a manufacturer created toy blocks that fit with Lego blocks. Even though people recognize that pattern of raised studs on a Lego block, the Supreme Court of Canada noted those studs perform a function. “As a matter of public interest, you cannot monopolize a utilitarian feature,” Evans says.

In Canada, legislation is in the works to expand what Mark Davis calls an “antiquated” definition of a trademark. The new definition would include other indicia such as logos, sounds, holograms and so forth. “The MGM lion’s roar was registered as a sound mark in the Canadian intellectual property office,” says the Heenan Blaikie partner.

Davis perceives a constant in Supreme Court decisions. “What the courts look for is whether consumers are going to be confused,” he says. The court doesn’t “care how confusion is being created, but if it is being created (the court will) try to remedy that.”

To protect intellectual property, an ounce of prevention seems to be the best cure. “You can register trade dress as a trademark with the Canadian trademarks office as a so-called ‘distinguishing guise’ so long as it isn’t functional,” Evans notes. “It can also be registered as an industrial design.”

A few more ounces would come in handy. A company’s advertising messages to the public “should emphasize that the appearance of the product is effectively a brand, an indicator of source,” Evans adds. Hypothetically, should somebody decide to start a parcel delivery company and paint its trucks brown, UPS would very likely have an advantage in court.

Trade dress registration isn’t enough to protect a brand. “Monitor the market and take action when a competitor steps over the line,” Davis advises.

Meanwhile, companies need to carefully review their trademark portfolios. “If there’s value there, the time and expense of registration is a relatively cheap insurance policy” against infringement, Davis says.

This article originally published in Lawyers Weekly Magazine. To view a PDF of the print version, click here.

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