Court of Appeals: likelihood of confusion between MELBOUR for cigarettes and well-known MARLBORO mark


The Court of Appeals has considered the issue of bad faith in Espert SA v Philip Morris Products SA (Case 4598/2008).

Philip Morris, the owner of the MARLBORO trademark, opposed Espert’s applications for the marks MELBOUR and MELBOUR FILTER CIGARETTES FULL FLAVOR 19. 

Espert filed suit against Philip Morris, seeking to have a court of law declare that the oppositions filed by Philip Morris were ill-grounded. The trademarks in conflict are depicted below:

The Court of Appeals affirmed the first instance decision, which was very clear as to the well-known status of MARLBORO and the obvious similarity between the trademarks in conflict, stating:   

“... the MARLBORO trademark constitutes a classic case of obvious notoriety, which extends beyond cigarette smokers, for its name, as well as its particular packaging trade dress, has exceeded the realm of tobacco shops many years ago, and has extended to magazines, shop signs, road signs, multimedia advertisement, etc. The packaging trade dress is overwhelmingly predominant in comparison to other brands intending to emulate it.

Assimilation and evocation, in conjunction with the passing of time, have made it possible to relate the product with the trade dress and this gives it an added value of distinction which must be emphasised...

...In this case, the trademark the registration of which is sought by the plaintiff has so many similarities with the defendant’s trademark that, even if in practice there is no purpose or intent, the truth is that it evokes the defendant’s trademark and is liable of causing a confusion that is difficult to ignore, especially as we are dealing with trademarks that cover identical products, offered for sale in the same stores and shops.

With respect to the likelihood of confusion between the trademarks, the judge stated: 

“…And although the worldwide notoriety enjoyed by MARLBORO - which I’ve pointed out in the precedent paragraph - seems to prevent a likelihood of confusion with the application for MELBOUR, it was unreasonable to choose a trademark with no meaning, which contains graphics and colour combinations that are almost identical to those of the opponent’s trademark, for the purposes of protecting a domestic industry cigarette.”

Jorge Otamendi, G Breuer, Buenos Aires

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