Philip Morris Products S.A. v. Malboro Canada Limited

Philip Morris Products S.A. v. Malboro Canada Limited

Plaintiffs’ use of the ROOFTOP design on no-name packages did not infringe defendants’ MARLBORO registration because plaintiffs did not use the MARLBORO word mark, the ROOFTOP registrations are valid and their use did not cause source confusion under s.20 (confusion requires a tangible notice of association and assessment under s.6(5)); defendants failed to show substantial similarity or causal copying for copyright, and counterclaims were dismissed.

Citation
2010 FC 1099
Parties
Plaintiff (defendant by Counterclaim): Philip Morris Products S.A.; Plaintiff (defendant by Counterclaim): Rothmans, Benson & Hedges Inc.; Defendant (plaintiff by Counterclaim): Marlboro Canada Limited; Defendant (plaintiff by Counterclaim): Imperial Tobacco Canada Limited
Court
Federal Court
Jurisdiction
Canada
Judgment Date
8 November 2010
Procedural Posture
Intellectual Property Trade Marks and Copyright / Judgment (federal Court Trial)
Outcome
Declaration granted: plaintiffs' use of ROOFTOP design does not infringe TMDA55,988; defendants' counterclaims dismissed; ROOFTOP registrations valid; no copyright infringement; no breach of 1952 agreement.
Legal Topics
Trade Mark Validity, Trade Mark Infringement (ss.19, 20, 22), Estoppel/acquiescence, Confusion Assessment (s.6(5)), Copyright Substantial Similarity, Limitation Period
Source Language
English
Trade Marks Law Copyright Law Contract Law Trade Mark Validity Trade Mark Infringement (ss.19,20,22) Estoppel/acquiescence Confusion Assessment (s.6(5)) Copyright Substantial Similarity +1 more

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Parties

Philip Morris Products S.A.

Plaintiff (defendant by Counterclaim)

Rothmans, Benson & Hedges Inc.

Plaintiff (defendant by Counterclaim)

Marlboro Canada Limited

Defendant (plaintiff by Counterclaim)

Imperial Tobacco Canada Limited

Defendant (plaintiff by Counterclaim)

Procedural Posture

Intellectual Property Trade Marks and Copyright / Judgment (federal Court Trial)

Legal Issues

  1. 1 Whether defendants are estopped or have acquiesced to plaintiffs' use of ROOFTOP design marks
  2. 2 Whether ROOFTOP design trade-mark registrations are a complete defence and valid
  3. 3 Whether sections 19, 20 or 22 of the Trade-marks Act were contravened by plaintiffs' no-name Rooftop packaging

Ratio Decidendi

Plaintiffs’ use of the ROOFTOP design on no-name packages did not infringe defendants’ MARLBORO registration because plaintiffs did not use the MARLBORO word mark, the ROOFTOP registrations are valid and their use did not cause source confusion under s.20 (confusion requires a tangible notice of association and assessment under s.6(5)); defendants failed to show substantial similarity or causal copying for copyright, and counterclaims were dismissed.

Court Disposition

Declaration granted: plaintiffs' use of ROOFTOP design does not infringe TMDA55,988; defendants' counterclaims dismissed; ROOFTOP registrations valid; no copyright infringement; no breach of 1952 agreement.

Orders

  • Declaration: plaintiffs’ use of ROOFTOP design trade-marks in association with cigarettes does not infringe defendants’ rights in MARLBORO (TMDA55,988).
  • Dismissal of defendants’ counterclaim seeking declaration that sale/distribution/advertising of plaintiffs’ no-name Rooftop cigarettes infringes MARLBORO and dismissal of counterclaim to invalidate plaintiffs’ registrations TMA252,082; TMA252,083; TMA254,670; TMA274,442; TMA465,532; TMA670,898.