Marlboro Canada v. Philip Morris Products

This is a trademark dispute between two Canadian tobacco industry competitors about the use of the word “Marlboro” and its associated designs.  The dispute arises from peculiar historical circumstances where Philip Morris (PM), the owner of the Marlboro brand and its associated design internationally, is not the owner of the Marlboro name in Canada where instead the name is owned by the competitor Imperial Tobacco Limited (ITL).  PM has marketed cigarettes under its “ROOFTOP” label, often with the name “Matador” with its internationally recognizable Marlboro markings while ITL has marketed cigarettes named “Marlboro” with distinguishable package design.  ITL brought the original suit for trademark infringement after PM decided to package cigarettes with only its international Marlboro markings and no name marking other than the PM crest logo.  Canada has a ban on point of sale display, so someone may ask a store clerk to purchase “Marlboro” cigarettes (ITL) without being able to see the boxes and be given PM’s unnamed but commonly recognized brand of unnamed cigarettes.  ITL argued that the unbranded packs of PM cigarettes were thus infringing on their Marlboro trademark. 

The Federal Court of Appeal decided that PM’s unnamed packs of cigarettes did infringe on ITL’s trademark because they created confusion in the consumer. 

On March 21, 2013, the Supreme Court of Canada denied permission to appeal. 


Marlboro Canada Limited v. Philip Morris Products S.A., 2012 FCA 201

  • Canada
  • Jun 29, 2012
  • Federal Court of Appeal



  • Imperial Tobacco Canada Limited
  • Marlboro Canada Limited


  • Philip Morris Products S.A.
  • Rothmans, Benson & Hedges Inc.

Legislation Cited

Trade-marks Act

Related Documents

Type of Litigation


Tobacco Control Topics

Substantive Issues

Type of Tobacco Product