| Citation: |
Philip Morris Products S.A. v. Marlboro Canada Limited, 2010 FC 1099, [2011] 1 F.C.R. D-12 |
T-1784-06 |
Trade-Marks
Infringement
Plaintiffs selling cigarette product, referred to as Rooftop, without brand name on packages—Action seeking declaration that sale of Rooftop cigarettes in Canada not contravening defendants’ rights to MARLBORO registration—Defendants’ counterclaim alleging such infringement—Submitting that plaintiffs inviting consumers to associate products with Marlboro brand by using same package dressing, declining to label packages with brand name, thus implicitly usurping defendants’ rights in MARLBORO mark, infringing Trade-marks Act, R.S.C., 1985, c. T-10, ss. 19, 20, 22—Products associated with marks owned by plaintiffs, defendants similar—However, design trade-marks used by plaintiffs having nothing to do with defendants’ registered word mark—In such a scenario, Court entitled, required to take into account factors extrinsic to marks to determine whether plaintiffs’ use of ROOFTOP design trade-marks confusing with defendants’ MARLBORO trade-mark—Price, targeted clientele, blend of cigarettes part of surrounding circumstances to be considered pursuant to Act, s. 6(5) to determine likelihood of confusion—Court considering factors set out in s. 6(5), documentary, testimonial evidence, concluding no confusion caused, likely to occur, by use of plaintiffs’ ROOFTOP design trade-marks—While some consumers referring to plaintiffs’ no-name product as Marlboro, no confusion as to source of plaintiffs’ product—No evidence that Canadian consumers believing that defendants source of plaintiffs’ no-name product—S. 20 seeking to prevent source confusion, not name confusion—Provision therefore not engaged herein—Plaintiffs not using defendants’ registered word mark—ROOFTOP design trade-marks not leading consumers to believe that plaintiffs’ product associated with defendants’ product—Court finding both plaintiffs’ ROOFTOP design trade-marks, defendants’ MARLBORO word mark valid, no infringement by plaintiffs of ss. 19, 20, 22—In addition, Court finding that defendants’ Marlboro packages not substantially similar to plaintiffs’ packaging, not infringing copyrights—Action allowed, counterclaim dismissed.
Philip Morris Products S.A. v. Marlboro Canada Limited (T-1784-06, 2010 FC 1099, de Montigny J., judgment dated November 8, 2010, 169 pp.)