No-Name Package Causes Confusion In The Dark

The Federal Court of Appeal in Canada recently held that a no-name cigarette package depicting registered design trade-marks, but no word mark, was confusingly similar to the word mark MARLBORO which was registered for use in association with cigarettes. The case involved unique facts, including that Canada is a "dark market" for cigarettes, meaning that tobacco products cannot be displayed in retail stores. The Court noted that this "appears to be the first time that a cigarette product has been sold in Canada (and, quite possibly, in the world) without any brand name appearing on the package".

Background

The parties, Marlboro Canada Limited and Imperial Tobacco Canada Limited ("Imperial Tobacco") and Philip Morris Products S.A. and Rothmans, Benson & Hedges Inc. ("Philip Morris") have a long history of trade-mark litigation.