Descriptive 'multifilter' cigarette mark goes up in smoke

In British American Tobacco Company Ltd v Philip Morris Products Inc (Registration 108676), the deputy registrar of trademarks has upheld the plaintiff's request that the defendant disclaim the term 'multifilter' in its application for registration of MULTIFILTER, 100'S PHILIP MORRIS. The deputy registrar held that the term was descriptive and that the defendant had failed to prove secondary meaning.

Philip Morris Products filed an application to register the mark MULTIFILTER, 100'S PHILIP MORRIS (in stylized form) for cigarettes. British American Tobacco Company opposed registration, stating that the term 'multifilter' is descriptive and therefore could not be registered. The deputy registrar of trademarks agreed and allowed registration of the mark but required that Philip Morris disclaim the word 'multifilter'. The deputy registrar also awarded costs to British American Tobacco in the sum of IS18,000 (about $4,000).

In his decision, the deputy registrar made some important observations and findings with respect to the criteria for descriptiveness. These included the following:

• The normal meaning of the word 'multifilter' in connection with cigarettes is a cigarette filter, comprising a number of filters or a single filter with a number of layers.
  
  
• In order to demonstrate that a certain term is descriptive, the term does not need to relate to the entire product; it is sufficient if it relates to one of the main components thereof.
  
  
• Evidence that competitors use the term at issue to describe their products may support a claim that the term is descriptive. This was the situation in the case at hand.
  
  
• Where a descriptive term appears in conjunction with a distinctive mark, the criteria for determining whether a mark is descriptive may be less stringent, as the other components of the mark may render the entire mark distinctive.

The deputy registrar found that the term 'multifilter' as used in the case at hand was descriptive and would not be eligible for registration, unless Philip Morris could show that it had acquired secondary meaning. However, the deputy registrar held that Philip Morris had failed in this task and set out the following points, among others, regarding secondary meaning:

• The criteria for determining whether a mark has acquired secondary meaning are the duration and nature of use, and the extent of advertising.
  
  
• The more descriptive the character of a mark, the more evidence is required in order to show secondary meaning. In the case at hand, it was not clear whether evidence of sales of 40 billion cigarettes was sufficient, in terms of worldwide sales of cigarettes, to demonstrate secondary meaning. Furthermore, evidence of the extent of sales alone was not enough to show secondary meaning. Philip Morris had failed to provide comparative figures, survey evidence and data concerning the nature of the magazines in which its advertising appeared, and their level of circulation.
  
  
• The fact that Philip Morris had sold MULTIFILTER, 100'S PHILIP MORRIS marked cigarettes for 10 years but only in duty free shops in Israel did not lead to the conclusion that Israeli consumers were familiar with these cigarettes.

David Gilat, Reinhold Cohn & Partners, Tel Aviv