Don't flip your lid - FLIP-TOP not distinctive of tobacco products

In Philip Morris Products SA v Imperial Tobacco Canada Limited (2014 FC 1237), the Federal Court of Canada has upheld a decision of the Trademarks Opposition Board rejecting an application by Philip Morris to register FLIP-TOP for tobacco products.

The decision shows that an opposition can succeed because a proposed trademark is descriptive in relation to the associated goods, even if the mark is not “clearly descriptive”.

The FLIP-TOP application was filed in September 2008 based solely on proposed use. It was opposed on grounds of clear descriptiveness and non-distinctiveness. The opponent alleged that FLIP-TOP would not be perceived as a trademark because the term is widely used to describe a type of packaging for tobacco products. The Opposition Board found the mark not distinctive, declined to rule on the clear descriptiveness ground, and rejected the application. Philip Morris appealed. 

Justice Bédard dismissed the appeal. There was evidence that “flip-top package” and “flip-top box” are used in Canadian regulatory provisions for tobacco products, and that flip-top boxes are referred to in Canadian patent applications, including from Philip Morris. There was no evidence of any use, or intended manner of use, of the mark by Philip Morris. The court agreed with the Opposition Board that the relevant consumer would perceive the term ‘flip-top’ as referring to a type of product packaging, rather than as an indicator of source. 

The FLIP-TOP proposed mark was not found to be so descriptive of the goods covered by the application as to be “clearly descriptive” (under Section 12(1)(b) of the Trademarks Act). However, it was descriptive enough of related packaging to render it not distinctive. Evidence of acquired distinctiveness through use would be required to show that the word functions as a trademark. 

Also of note, Justice Bédard held that, because the Opposition Board did not rule on the “clear descriptiveness” ground, and because Imperial Tobacco did not cross-appeal, that ground could not be considered on appeal. This suggests that future respondents on such appeals (ie, respondents who are successful opponents before the Opposition Board) should consider a cross-appeal on grounds of opposition not decided by the board. Doing so should ensure that those additional undecided grounds of opposition remain viable in case the court overturns the board’s decision on the initially successful grounds. 

Tamara Winegust, Bereskin & Parr LLP, Toronto

Mark Robbins and Brigitte Chan of Bereskin & Parr LLP appeared as counsel for the respondent in this case