Tobacco packaging trade-mark goes up in smoke

On December 18, 2014, Justice Bédard of the Federal Court, released her judgment and reasons in Philip Morris Products S.A. v. Imperial Tobacco Canada Ltd. This case was an appeal pursuant to section 56 of the Trade-marks Act, from the Trade-marks Opposition Board’s refusal to register Philip Morris application for the  “FLIP-TOP” trade-mark used in association with tobacco and a variety of tobacco products. Registration of the Mark was opposed by Imperial Tobacco.

The Board found that the mark was not distinctive because it described a type of packaging commonly used for tobacco products, and was not an identifier of the wares themselves. The term flip-top commonly referred to packaging for tobacco products with an attached lid that could be easily flipped open.

On appeal to the Federal Court, Justice Bédard began her analysis by examining the relevant standard of review. Since new material filed on the appeal would not have materially affected the Board’s decision regarding the lack of inherent distinctiveness of the mark, Justice Bédard concluded that the decision was to be reviewed according to the reasonableness standard of review.

Justice Bédard then examined the evidence that was before the Board during the initial hearing. The evidence showed that the term “flip-top” is a defined word that refers to a container that has a lid that is easily flipped open. The evidence also showed that the term “flip-top” was commonly used in the tobacco industry, including in two federal Regulations related to tobacco and referred to package containers for cigarettes or cigars, which have a lid that stays connected to the packs when the lid is open. The evidence in question also included a Canadian patent entitled “flip-top box”, owned by Phillip Morris, that asserted that flip-top or hinge-lid boxes for cigarettes are the most common type of cigarette box, along with soft-pack packs.

Justice Bédard held that this evidence was sufficient to infer how the average consumer of tobacco products would perceive the term “flip-top” in association with tobacco products. Therefore, it was reasonably open to the Board to conclude that the ordinary consumer of tobacco products would perceive the mark as a reference to the package rather than as a source identifier for Philip Morris’ products (making the mark not inherently distinctive).

Justice Bédard further held that the fact that some Philip Morris’ wares may be packaged in other types of packages does not render the Board’s conclusion unreasonable. While the term “flip-top” could acquire distinctiveness over time through use, the fact that the mark is descriptive of something closely related to the wares is sufficient to support a finding that the mark is not inherently distinctive of Philip Morris’ wares.

In light of the foregoing, Justice Bédard held that the Board’s finding that the mark was not distinctive was reasonably open to it. On this basis, Justice Bédard dismissed Philip Morris’ appeal.

A copy of the decision can be found here.