Monday, August 4, 2014
Philip Morris loses to trademark pirate in Philippines
A cigarette dispute in the Philippines has reached the Court of Appeals. JACKPOT was registered by N.V. Sumatra Tobacco, an Indonesian cigarette company quite well known for registering other tobacco brands around the region. In 2010 Phillip Morris purchased Fortune Brands, which makes JACKPOT cigarettes. The application to register the mark in the Philippines at the IPO was refused for conflict with Sumatra Tobacco’s mark. Philip Morris appealed to the Bureau of Trademarks and IPO Director General, then to the courts after repeated refusals.
“Once the trademark gets registered, its validity is prima facie (on its face) presumed as well as the registrant’s ownership thereof. In this case, petitioner failed to overcome this presumption,” Associate Justice Amy C. Lazaro-Javier said. The Court of Appeals said the IPO Director General had correctly applied the “dominancy” test in evaluating similarity – the legal standard based on which dominant features a consumer sees when two similar products are compared side by side. The packs, they said looked similar the word Jackpot is the same, predominantly featured on both labels. “While it is true that subject mark (PM’s) has a more elaborate design than the cited mark, this difference or variation is insignificant”.
There is more to this than meets the eye. There is no mention of bad faith, which is usually pleaded in cases against Sumatra Tobacco, given how many trademark cancellation cases they have been involved in all over SE Asia (e.g. Malaysia, Indonesia, Thailand). Phillip Morris presumably may have to stop sales of Jackpot cigarettes in the Philippines, or perhaps buy the brand from STTC.