Thanks to the ingenious advertising and marketing strategies of Phillip Morris Products SA (“Phillip Morris”), the “MALBORO” brand is not only well-known in most countries (to smokers and non-smokers alike) around the world, it also ranked at number 8 out of 100 on Forbes’ list of valuable brands this year.
Phillip Morris however, claims that it is not so much the word “MALBORO” or the glorified brave cowboys and heroes of the early advertising years that influence cigarette buyers in Singapore to buy their cigarettes, instead, it is their unique packaging that consists of a “roof device” and the colour combination of its packaging that draws customers to purchase their cigarettes.
On this basis they filed an opposition to the registration of the trademark “COUNTRY” for tobacco, cigarettes, matches and smoker’s articles by PT Perusahaan Dagang Dan Industri Tresno (“Perusahaan Dagang”) before the Intellectual Property Office of Singapore (“IPOS”) on 14 November 2006.
Phillip Morris’s trademarks have been used in Singapore since January 1981. On the other hand, Perusahaan Dagang has yet to use its trademarks in Singapore.
The crux of Phillip Morris’s argument in the opposition lies in how the roof device in their mark is a prominent and distinctive element and that Perusahaan Dagang’s device is visually similar to their roof device. It was contended that although there are other elements such as “MALBORO”, “MALBORO LIGHTS” and “MALBORO MEDIUM” and a coat and arms device in each of Philip Morris’s registered marks, they are not sufficient to distinguish the two marks due to the prominence of the roof device.
In addition, Phillip Morris also submitted that there are similar colour combinations between the marks in dispute, such as;
1. Both marks have a red portion (consisting of a 5 sided roof design) and a white
portion.
2. The word ‘Marlboro MEDIUM’ in the Opposition Mark and the word Country in the
Application mark are in black.
3. The Opponent’s coat of arms and the Applicant’s shield device adopt the colours red
and gold.
4. The words in the coat of arms in the Opponent’s Mark and the
words ‘INTERNATIONAL’ and ‘20 A KING SIZE FILTER’ are represented in white.
MARLBORO’s roof device COUNTRY’s roof device
IPOS, in considering the arguments above, and in comparing the two marks, held that Phillip Morris’s opposition, which hinges at large on the fundamental similarity of the roof device and colour, was weak on all grounds.
This is because firstly, the roof device on Perusahaan Dagang’s mark is on the side as opposed to the top and unlike Philip Morris’s device, the device in Perusahaan Dagang’s mark is unsymmetrical. The roof device mark also cannot be used to determine overall similarity between the two marks as at most, the roof device only consists of 50% of the marks respectively. Other components on each mark have to be considered. In this case, the word elements on both marks take up the other 50% of the marks. It is clear that the two words are different. In the application mark, the main word is “COUNTRY” whereas Philip Morris’s main words are “MALBORO”, “MALBORO LIGHTS”, and “MALBORO MEDIUM” respectively.
The arguments by Philip Morris that there is a possibility that the shop assistant will place the packets of Perusahaan Dagang’s cigarettes sideways, that the word “COUNTRY” is a normal, non-distinctive word and that the application by Perusahaan Dagang was made in bad faith were also dismissed by IPOS.
As both marks are composite marks, the words “talk” and this is especially when (as is the case with both marks) the roof device is not a well understood object. Therefore it was held that the dominant feature on Philip Morris’s marks is the word “MALBORO” and not the roof device. Comparing both marks in their entirety, it is clear that they are visually dissimilar. Therefore, there is no likelihood of confusion.
The above argument is also strengthened by the method in which customers purchase cigarettes in Singapore. Due to statutory restrictions, a customer cannot pick a pack of cigarettes off the shelf but must approach a counter staff for assistance. A customer will have to tell the shop assistance the brand of cigarettes they intend to purchase. This shows that it is the word “MALBORO” which is pertinent.
This case is note-worthy because it gives a clear judgment on distinguishing composite marks and the importance of words in such marks. Although it is clear that Philip Morris has goodwill in relation to the “MALBORO” mark in the relevant sector of the Singaporean public, namely the smoking community, there is no misrepresentation on Perusahaan Dagang’s part.
On a whole, Phillip Morris’s popularity as a cigarette brand due to its long-term presence and wide exposure in Singapore backfired for the brand to a certain extent, as customers would recognise Philip Morris’s goods as those which encompass the word “MALBORO”, and were less cognisant of the roof device, colour, or symbols on the packaging.
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