2 February 2018. Philip Morris is being given a second chance to oppose the registration of a trademark by a rival firm. If it manages to demonstrate the reputation of its own Marlboro packaging for cigarettes, it may succeed in blocking EU registration of the Raquel trademark.

Philip Morris is opposing an application by Raquel to register a black and white logo, based on this trademark registration

Evidence too late

Philip Morris initially failed to halt Raquel’s application to register the logo when the Board of Appeal of the European Trademark Office EUIPO concluded that the two trademarks weren’t sufficiently similar. The BOA also refused to consider the proof of the reputation of Marlboro’s ‘rooftop’ design because the cigarette giant had submitted it too late.

Proof now admissible

But on 1 February 2018, the European General Court ruled that the BOA should have taken account of this proof when comparing the two trademarks. Consequently, the BOA may soon conclude that an infringement has in fact been committed. After all, who could argue that the ‘rooftop’ is a (globally) well known image? Moreover, the protection afforded to a well-known trademark is much wider than that for an ‘normal’ one.

Practical application

The opposition filed by Philip Morris centres on a design in black and white. But in practice, the Raquel design is red, which puts it very close to that of Marlboro. This photo was taken from the Bulgarian website customs.bg, which reports on an intercepted consignment of Raquel cigarettes.

Surprise no. 1: sloppy

Two things strike us about this case: first, that Philip Morris was so sloppy in submitting proof of reputation of its ‘rooftop’ design. Luckily for them, the General Court was accommodating enough to allow it to be taken into account after all.

Surprise no. 2: Marlboro ‘rooftop’ rudimentary?

Secondly, we’re amazed that the EUIPO described the Marlboro rooftop design as ‘a rudimentary geometrical form’ with little or no distinctive capacity. Surely they can’t be serious? This is the world-renowned Marlboro ‘rooftop’ logo we’re talking about!!!!

Bas Kist