Canada: Infringing Via The Unspoken: Marlboro Appeal Increases Scope Of Confusion For Trade-Marks Infringement

Last Updated: July 16 2012
Article by Daniel G. C. Glover

Most Read Contributor in Canada, September 2018

In an eagerly anticipated decision, the Federal Court of Appeal has allowed in part Imperial Tobacco's unique infringement lawsuit against Philip Morris in the Marlboro Canada Ltd. v. Philip Morris Products S.A. decision. This lawsuit involved the first cigarette package in the world that bore no brand name, with the plaintiff claiming instead that the visual appearance and idea of the package evoked its registered trade-mark MARLBORO. This theory has now won out on appeal, and may increase the ability of registered trade-mark owners to target competitors evoking the idea of their brands without actually employing the key marks.


The litigants in this case have been engaged in battle for many decades. The plaintiffs, Marlboro Canada Ltd. and Imperial Tobacco Ltd., have rights in the trade-mark MARLBORO in Canada dating to the 1920s. Their brand is not affiliated with the worldwide famous brand marketed by Philip Morris in the United States and many other countries. An image of the brand is shown here:

This has created an anomaly in an international marketplace where the fame of certain marks crosses borders easily. In an earlier battle between the parties, the Federal Court of Appeal held the distinctiveness of a mark registered in Canada could not be affected by the spill-over advertising of a party who does not use the mark in Canada. Thus, the attempt to expunge the lesser-known Canadian brand failed.

This led to a situation whereby Philip Morris was barred from entering the Canadian market with its most valuable brand. It created the Canada-only brands MATADOR and MAVERICK to evoke something of its traditional image, and used these brands with its iconic "Rooftop" packaging:

However, in 2006, Philip Morris took the unprecedented step of launching a product without a brand name. Rather, the wordless "Rooftop" design bore all the weight of communicating the brand image:

This development led the parties to clash again. Imperial Tobacco sued for infringement on the theory that the wordless design infringed its MARLBORO mark because it conveyed the idea of "MARLBORO", and Philip Morris attacked the validity of the MARLBORO mark on the basis that it was no longer distinctive to the Canadian public. It also sued on the basis that Imperial Tobacco's packaging infringed copyrights in Philip Morris's U.S. Marlboro packages.

Decision Below

The decision below was dazzlingly complex and very important. The discussion below captures only a small part of this fascinating case.

In the result, neither Imperial Tobacco nor Philip Morris were successful as plaintiffs. While the evidence before Justice de Montigny was that a large proportion (nearly 4 in 10) of retailers, when asked for "Marlboro", handed Rooftop cigarettes to their customers, or pointed to them, this did not result in a finding of trade-mark infringement against Philip Morris nor non-distinctiveness against Imperial Tobacco. Justice de Montigny cited four main reasons for these conclusions:

  1. The word "Marlboro" was never used on the packaging
  2. Although in a broad sense, the "Rooftop" package conveyed the idea of "Marlboro" to many Canadian consumers, the link between the design and the word was not inherent in the way a penguin icon would convey the word "penguin" to the mind
  3. If foreign spill-over advertising could not rob a Canadian brand of its distinctiveness, likewise it could not aid that Canadian brand in claiming that such spill-over created an infringing linkage in the minds of Canadians. This factor should be disregarded as irrelevant because the focus should be on the Canadian market alone
  4. Justice de Montigny found that the Rooftop design actually aided consumers in finding the correct source of the brand they wanted, thus reducing source confusion rather than accentuating it

Justice de Montigny also dismissed Philip Morris's copyright claim on the basis that there was insufficient similarity between Imperial Tobacco's packaging and Philip Morris's packaging. While there were certain overlapping characteristics, including the colours used and the animals depicted, the packages could not be called a colourable imitations of Phillip Morris's copyright. Additionally, he found on the evidence that there was no showing that the in-house designers at Imperial Tobacco had actually attempted to copy the Philip Morris package or any element of it.

Decision on Appeal

On appeal, the Federal Court of Appeal considered the appeals of both Imperial Tobacco and Philip Morris from the judgment below.

It dealt with Philip Morris's appeal in short order, noting that its attack on the validity of Imperial Tobacco's registration closely resembled the attack made in the 1980s. It considered that doctrines of res judicata, issue estoppel, cause of action estoppel and the rule against collateral attack were intended to guarantee parties finality absent the demonstration of special circumstances warranting the reopening of an issue. It upheld the trial judge's view that this case was not substantially different from the one finally decided by the Federal Court of Appeal in 1987, and noted the trial judge's finding that the legal policy and rationale adopted in the earlier Marlboro case were still relevant today. It also found that the trial judge's findings on copyright infringement were unassailable.

Imperial Tobacco fared much better in the Federal Court of Appeal's eyes. The heart of its case was that Justice de Montigny had erred by taking into account irrelevant factors in concluding that there would be no confusion in idea between the Rooftop design and the word mark MARLBORO. The Federal Court of Appeal accepted this argument, finding that Justice de Montigny had paid too much heed to past distinguishing factors (such as the blend of tobacco used) that did not answer the question of whether the Rooftop design could be used or marketed in a confusing manner in future.

But most importantly, the Federal Court of Appeal rejected Justice de Montigny's finding that only "inherent" ideas could give rise to trade-mark confusion in the meaning of the Trade-marks Act. It reached back to the 1968 decision of the Supreme Court in Rowntree Company Limited v. Paulin Chambers Company Limited, which found that resemblance in ideas were not restricted to a resemblance between the dictionary meanings of different words. Extending this decision, the Federal Court of Appeal found that "other suggestions acquired through marketing or use in a particular way" could lead to an infringement. Here, the omission of the brand name on the Rooftop package led consumers to fill in the blanks. When they did, cues on the package such as "world famous imported blend" evoked the idea of Marlboro. Absent a contrasting brand name like MATADOR or MAVERICK, "Marlboro" naturally filled in the space. Thus, the actual front and sides of the Rooftop package did infringe Imperial Tobacco's rights.

In the last phase of the appeal, the Federal Court of Appeal considered whether the trade-mark registrations of Philip Morris for its Rooftop Designs provided defences to infringement. It found that they did not because the designs did not contain the confusing cues carried in the actual packaging. In their simple design, they did not create confusion in the meaning of the Act. Thus, although the elements in the registrations were similar to the actual label, the extra elements added to the package brought it to the level of infringement.

Potential Implications

Although this case is in many respects anomalous in its facts, the legal issues it deals with have a tremendous impact on Canadian trade-marks law. It opens the door to creative argumentation of counsel on what ideas could give rise to confusion between different trade-marks. It thins out the ability of a registered trade-mark owner to treat a registration as an absolute defence to infringement. With very motivated litigants and powerful issues, it would not be surprising to see this case appealed to the Supreme Court. Given the number of issues raised that have an impact on all aspects of the trade-mark setting, if leave is granted, there will be many interested onlookers in this case.

Case Information

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

Decision Date: June 29 2012

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Canada LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Canada LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions