Landmark trademark appeal in Belize
The dispute concerned the registration of British American Tobacco (BAT)’s Embassy mark, which had been filed for registration with the Belize Intellectual Property Office (BIPO). BAT’s Embassy mark consists of a vertical ribbon extending from top to bottom and interrupted only by the positioning of the dominant word element ‘Embassy’.
Philip Morris’s earlier Marlboro mark consists of a five-sided roof design with the word element ‘Marlboro’ positioned below the five-sided roof design.
The decision of Chief Justice Conteh confirms that Section 37(3) of the Trade Marks Act and Article 6 bis of the Paris Convention for the Protection of Industrial Property, which is incorporated into Belize law by virtue of section 60 of the Trade Marks Act, afford additional protection to well-known marks only where the mark is identical with, or similar to, the earlier well-known mark and so likely to confuse the average consumer.
When the matter was before BIPO, Philip Morris objected to the registration of the Embassy mark in Nice class 34 on the grounds, inter alia, that the Embassy mark is confusingly similar to Philip Morris’s earlier rooftop trademark and that the goods applied for are identical with, or similar to, those of Philip Morris’s earlier trademark.
BIPO accepted that the goods in respect of which registration was sought are identical. However, on comparing the marks, BIPO concluded that the two designs are visually and conceptually dissimilar and that the visual differences are reinforced by the trademarks’ differences in colour.
Therefore, BIPO determined that the average consumer would not be confused by the trademarks and would not be likely to associate BAT’s trademark with the earlier Philip Morris trademark. Philip Morris appealed against the decision to the Belize Supreme Court.
Counsel for Philip Morris argued on appeal that it was BIPO’s responsibility to consider the implications of BAT’s concession that Philip Morris’s trademark is well known and that the targeted consumers and trade channels are identical with, and substantially similar to, those of BAT. In failing to do so, BIPO failed to consider the ‘added protection’ to which Philip Morris’s earlier trademark is entitled.
The added protection afforded to well-known marks is encapsulated by Section 37(3) of the Trademarks Act, which provides that: “A trademark which is (i) identical with, or similar to, an earlier trademark; and (ii) to be registered for goods or services which are not similar to those for which the earlier trademark is protected, shall not be registered if, or to the extent that, the earlier trademark has a reputation in Belize and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.”
Chief Justice Conteh considered that Section 37(3) is aimed at preventing anti-dilution of the earlier mark. It enables a proprietor of an earlier mark, with a reputation in Belize, to object to the registration of a mark that is identical with, or similar to, its mark for goods and services that are not similar to those that are covered by its earlier mark.
By Article 6 bis of the Paris Convention, Belize, as a contracting state, undertakes that an interested party may request the refusal or cancellation of the registration of a mark that constitutes a “reproduction, imitation, or translation liable to create confusion” with an earlier mark that is well-known in that country in respect of identical or similar goods.
Article 6 bis, which is incorporated into the laws of Belize, therefore confers a similar protection for well-known marks. However, unlike Section 37(3), the protection is afforded only where the goods are identical or similar.
Chief Justice Conteh considered that the manifest intent and design of the scheme, whether under section 37(3) of the Trademark Act, or Article 6 bis of the Paris Convention, is to avoid the likelihood of confusion on the part of the public or to prevent the use of a later mark that would result in an unfair advantage, or be detrimental to the distinctive character or repute of an earlier mark.
After reviewing the extensive affidavit evidence that was filed by BAT and Philip Morris, and after closely examining the respective marks, Chief Justice Conteh found them neither identical nor similar. He added that due to the distinctive nature of the marks, there is no likelihood of confusion between the marks that would affect the sale of similar goods.
He also said that BAT’s mark would not take unfair advantage of, or be detrimental to, the distinctive character or repute of Philip Morris’s trademark.
Interestingly, Chief Justice Conteh accepted BAT’s argument that there is no likelihood of confusion as the average consumer asks for his or her preferred brand of cigarettes by name. The average consumer would not therefore be confused by any similarity between the logos on the cigarette packages.
Chief Justice Conteh noted the aural and phonetic difference between the word element on two marks ‘Embassy’ and ‘Marlboro’ and concluded that they could co-exist in Belize. In those circumstances, the appeal by Philip Morris was dismissed.
In October 2010, Philip Morris filed its appeal with the Court of Appeal in Belize. The appeal is expected to be heard later this year. The decision by Chief Justice Conteh is the first judicial decision on a trademark dispute in Belize and creates a binding precedent for future disputes that come before BIPO.
The decision is of particular importance to BAT since the dominant feature of several of its cigarette brands is the inverted ribbon, and Philip Morris has objected to the registration of those trademarks in several other jurisdictions on similarity grounds.
The decision of Chief Justice Conteh is therefore persuasive authority in other jurisdictions that there is no similarity and no likelihood of confusion between BAT’s inverted ribbon and Philip Morris’s five-sided roof trademarks.
