14 August 2019TrademarksSarah Morgan

UKIPO e-cig decision sees BAT partially lose crucial TM

Japan Tobacco International (JTI) has emerged partly victorious in its bid to get the UK Intellectual Property Office (IPO) to reject the registration of a British American Tobacco (BAT) trademark.

The IPO on Friday, August 9, allowed part of JTI’s opposition to the applied-for mark ‘Pods’, refusing British American Tobacco coverage for “cigarettes; tobacco; cigars; cigarillos”.

However, the office did allow the trademark, which covers class 34, to proceed to registration for the remaining goods, including lighters and cigarette filters.

London-headquartered BAT sought to register ‘Pods’ in December 2017 but JTI has opposed the trademark, claiming that the applied-for mark was descriptive.

First, JTI alleged that “pods” is directly descriptive of tobacco seed pods. In response, the IPO agreed that while “pods” is directly descriptive, seed pods are not covered by the specification and rejected the argument.

JTI also contended that “pods” describes either a container for/used with the goods, or their method of use.

Heather Harrison, on behalf of the IPO, said that the commonly understood meaning of ‘pod’, combined with its use in relation to capsules for electronic cigarettes, and the rapid advances in technology in this sector over the last several years, meant that ‘Pods’ is a sign which may serve in trade to designate a characteristic of cigarettes and tobacco.

She added: “I consider that the same applies to cigars and cigarillos. Although there is no evidence that liquid or tobacco pods are currently used with electronic cigars or cigarillos, I see no reason why e-cigars or e-cigarillos would not be available with similar technology.”

According to the IPO, the fact that the contested mark is ‘Pods’ not ‘pod’ does not make a material difference to the decision and the difference is liable to go unnoticed by consumers.

The office added that there was no evidence of ‘Pods’ (or “pod”) being used in relation to the remaining goods and the term doesn't seem apt to describe either the goods or any characteristic of them.

“I acknowledge that it is possible for a cigarette to include a flavoured capsule in the filter tip but the only evidence of ‘pod’ being used to refer to such a device is one article from 2011: the more recent evidence refers to ‘capsule’ or ‘crushball’. I therefore think it unlikely that, were such items available for purchase (including to be used in conjunction with goods such as filter paper and cigarette tubes), they would be referred to as ‘pods’,” said Harrison.

JTI also claimed that “pods” had become customary in the trade for the goods, but this was shot down by the IPO.

The office said that if “pods” was actually customary in the trade, it should have been relatively straightforward for the opponent to show it.

“There is, however, only limited evidence which clearly concerns the UK and I am not prepared on the basis of the evidence before me to infer that the US use is representative of the position in the UK,” it added, before finding the evidence was insufficient to establish JTI’s argument.

The IPO ordered the parties to bear their own costs.

JTI’s head of trademarks, Ronald Van Tuijl, said: “We are very happy with the outcome, confirming that this trademark should not have been accepted in the first place, but given that this case may be subject to appeal, we cannot comment any further at this time.”

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