International report - MARLBORO LIGHTS mark not liable to mislead public 29 Feb 12
Wilkinson & Grist - Hong Kong
In a recent decision the Trademark Registry of Hong Kong upheld registration of the MARLBORO LIGHTS trademark in respect of cigarettes in Class 34.
Ground of revocation
An application was filed by an individual applicant to revoke registration of the MARLBORO LIGHTS mark on the following ground:
“that in consequence of the use made of it by the owner or with its consent, in relation to the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.”
To rely on this ground, the applicant must establish the following as of the date when the intended revocation of the trademark is to take effect (“the material date”):
- The use of the mark by the registered owner or with its consent in relation to cigarettes is liable to mislead the public.
- The liability to mislead is the consequence of such use of the mark.
The applicant argued that:
- The word “lights” in the subject mark was likely to create an erroneous impression or wrongly suggest that Marlboro Lights were less harmful than Marlboro Red or other Marlboro cigarettes not containing the descriptor “lights”.
- There was evidence that although light cigarettes are no less harmful, the perception among smokers is that Marlboro Lights cigarettes are less harmful.
Registered owner’s arguments
The registered owner argued that:
- The mark had been used in Hong Kong from 1963 to 2007 in relation to cigarettes and the term “lights” had always been associated with or referred to the lower yield of tar in cigarettes.
- One of the conditions for the registration of the subject mark was that the mark be used in relation only to cigarettes yielding not more than 10 milligrams of tar per cigarette.
- No distinction, in terms of health warnings to be applied to all cigarettes packs of all types of cigarette sold in Hong Kong since 1982, had ever been drawn between tobacco products producing lower tar yields and others.
The registrar considered it necessary to distinguish the erroneous belief about the harmful effect of low tar cigarettes and the deceptive message alleged to be conveyed by the mark – that is, that cigarettes sold under the subject mark were less harmful.
The applicant must show only a sufficiently serious risk that consumers would be misled, and the assessment should also be carried out from the perspective of the average consumer, who is deemed to be reasonably well informed, observant and circumspect. However, the registrar was unable to reach the conclusion that the subject mark was misleading to the public as to the quality of the cigarettes sold at the material date based on the limited evidence submitted by the applicant.
The public health authorities were responsible for the erroneous belief that low tar cigarettes are less harmful to health. Thus, even assuming that the use of the subject mark was liable to mislead the public, the applicant had also failed to establish that the alleged deceptiveness of the mark was the consequence of the use made by it by the registered owner.
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