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
Measures to regulate the marketing on tobacco packages. This includes both bans on false, misleading, deceptive packaging, as well as required health warnings on packaging.
(See FCTC Art. 11)
A violation of the right to carry on trade, business, or profession of a person’s choice. This right may also be called the right to free enterprise or economic freedom. The industry may argue that a business should be able to conduct its business without government regulation, including whether or not to be smoke free.
A violation of the right to expression, free speech or similar right to express oneself without limitation or censorship. The industry may claim that a regulation infringes on their right to communicate with customers and the public. Similarly, they may claim that mandated warnings infringe on their freedom to communicate as they desire.
A violation of the public’s right to information. The tobacco industry may claim that advertising, promotion or sponsorship, or packaging regulations limit the industry’s ability to communicate information to their customers and therefore infringes on the customer’s right to receive information, and to distinguish one product from another. Alternatively, public health advocates may claim that tobacco industry misinformation violates their right to accurate information or that government must be transparent in its dealings with the tobacco industry.
A violation of property rights, sometimes in the form of an expropriation or a taking by the government. The tobacco industry may argue that regulations amount to a taking of property rights because they prevent the use of intellectual property such as trademarks.
Regulations may infringe on intellectual property rights, which may be protected by international treaties. The industry may argue that bans on "deceptive" packaging that eliminate the use of colors, numbers or trademarks threaten intellectual property rights.
Type of Tobacco Product
None
Limitations regarding the use of quotes The quotes provided here reflect statements from a specific decision. Accordingly, the International Legal Consortium (ILC) cannot guarantee that an appellate court has not reversed a lower court decision which may influence the applicability or influence of a given quote. All quotes have been selected based on the subjective evaluations undertaken by the ILC meaning that quotes provided here may not accurately or comprehensively represent a given court’s opinion or conclusion, as such quotes may have originally appeared alongside other negative opinions or accompanying facts. Further, some quotes are derived from unofficial English translations, which may alter their original meaning. We emphasize the need to review the original decision and related decisions before authoritatively relying on quotes. Using quotes provided here should not be construed as legal advice and is not intended to be a substitute for legal counsel on any subject matter in any jurisdiction. Please see the full limitations at https://www.tobaccocontrollaws.org/about.
"The result is that, as the trial judge found, a number of consumers refer to the PM’s no-name product as Marlboro. This means that, in a dark market where the trade-marks are not in view, consumers will use the same name to refer to two different products offered by two different manufacturers. This must necessarily result in confusion as to source since consumers expect that products of the same kind, which they can refer to by the same name and buy through the same channels, will come from the same source. It matters little whether this situation is characterized as confusion or reverse confusion, the result is the same."
Limitations regarding the use of quotes The quotes provided here reflect statements from a specific decision. Accordingly, the International Legal Consortium (ILC) cannot guarantee that an appellate court has not reversed a lower court decision which may influence the applicability or influence of a given quote. All quotes have been selected based on the subjective evaluations undertaken by the ILC meaning that quotes provided here may not accurately or comprehensively represent a given court’s opinion or conclusion, as such quotes may have originally appeared alongside other negative opinions or accompanying facts. Further, some quotes are derived from unofficial English translations, which may alter their original meaning. We emphasize the need to review the original decision and related decisions before authoritatively relying on quotes. Using quotes provided here should not be construed as legal advice and is not intended to be a substitute for legal counsel on any subject matter in any jurisdiction. Please see the full limitations at https://www.tobaccocontrollaws.org/about.
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.