Tobacco trademarks clash before Administrative Committee for Trademarks

In a high-profile opposition proceeding before the Administrative Committee for Trademarks (ACFT) of the Trademark Bureau, British American Tobacco (Brands) Inc (BAT) challenged two Greek trademark applications owned by Philip Morris Products SA on the basis of a common trapezium device element included in prior Community trademarks for the Kent brand.

BAT claimed that there would be a likelihood of confusion and dilution of its well-known trademarks if PM's trademark applications were accepted, given that the dominant and distinctive element of Philip Morris's marks was a trapezium device element that was almost identical to the trapezium device element contained in BAT’s trademarks. BAT also submitted a market survey in support of its allegations - a rare occurrence before the ACFT.

The ACFT dismissed both oppositions on all grounds. In regard to likelihood of confusion the ACFT, accepting Philip Morris’s arguments and referring to earlier administrative court case law, held that for consumers of tobacco products the word elements of the marks were the most relevant issue. The ACFT stated that: “consumers buy tobacco products mostly based on the word elements of their packs, given that the relation between cigarettes and smokers is completely personal and difficult to alter.” The ACFT also evaluated BAT’s market survey, holding that the results demonstrated that the large majority of consumers did not in fact find a significant degree of similarity between the marks under comparison; nor did they associate them together.

The ACFT also rejected BAT’s claims of well-known trademark infringement, albeit in the absence of detailed reasoning. This was unfortunate as BAT had based its well-known trademark infringement claim on the allegation that the trapezium device essentially "overshadowed" the other elements of both marks (including the KENT mark) and was key to BAT’s trademark reputation: Philip Morris counterargued that parts and/or elements of a trademark could not autonomously gain the status of a famous mark, especially common shapes such as a trapezium device.

The ACFT’s ruling highlights the singularity of the relationship between tobacco products and their consumers, and appears to have set high standards for trademark reputation and infringement thereof in the relevant class.

Ballas Pelecanos & Associates LPC acted for the defendant in these proceedings.