Appeal board protects well-known PRINCE mark

The Patents and Trademarks Board of Appeal has overturned a decision of the Patent and Trademark Office to find that the cigarette trademark PRINCE is so well known that it can prevent registration of the same mark for foodstuffs. The case has been referred to the Maritime and Commercial Court.

General Biscuit Belgie applied for registration of the word mark PRINCE for a large number of foodstuffs, including chocolate biscuits. House of Prince opposed registration based on its cigarette trademark PRINCE, submitting that PRINCE is so well known that it should enjoy extended protection.

In practice, the fact that a trademark is well known can prevent registration or use of a more recent mark for other goods if “the use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark”. The decision as to whether this condition of the Trademarks Act has been fulfilled must always be applied concretely.

By rejecting the registration of an identical trademark, irrespective of the considerable diversity of the goods (cigarettes versus foodstuffs), the appeal board granted the well-known trademark PRINCE broad protection. The decision is significant for the scope of protection of well-known marks.

The ban on tobacco advertisements means that the proprietor of a cigarette trademark cannot use that mark for other goods or services. Thus, an interesting paradox arises between the wide protection enjoyed by the well-known cigarette trademark and the limited use allowed of that trademark.