Landmark trademark appeal in Belize


Ashanti Arthurs Martin

In July 2010, the former Chief Justice of Belize Dr Abdulai Conteh delivered the first judicial determination in relation to a dispute between cigarette moguls Philip Morris SA and British American Tobacco.

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.

Philip Morris, British American tobacco, trademark dispute, Belize, confusion