Intellectual Property law continues to develop progressively as the Belize Intellectual Property Office has issued its latest opposition ruling in the matter of British American Tobacco (Brands) Limited v. Philip Morris Products S.A.(Application No. 5754.08).
This matter dealt with an opposition lodged by British American Tobacco against a trademark application filed by Philip Morris on the issue of distinctiveness, and lack thereof. British American Tobacco argued that the Philip Morris mark in question contravened the Trade Marks Act, Chapter 257 of the Laws of Belize, Revised Edition 2000, in particular section 35(1)(b) which states:
“The following shall not be registered… trademarks which are devoid of any distinctive character…Provided that, a trade mark shall not be refused registration by virtue of [section 35(1)(b)] if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”
The Deputy Registrar of Belipo, upon hearing the submissions of counsel on behalf of both parties found that the Philip Morris mark was neither distinctive as it was incapable of distinguishing the goods to which it had applied, nor had it acquired distinctive use within the meaning of the Trade Marks Act.
BAT has not only conducted a successful opposition against Philip Morris, it has also achieved victory in defending an opposition brought against it by Philip Morris in the prior matter of Philip Morris Products S.A. v British American Tobacco (Brands) Limited (Application No.5082.07). A victory which was confirmed in the landmark judgment of Civil Appeal 1 of 2009, the very first trade mark opposition that was appealed to conclusion at the Belize Supreme Court with one of the last judgments issued by Belize’s former eminent Chief Justice Dr. Abdulai Conteh.
Morgan Belize, through Legal Counsel Rishi Alain Mungal, was pleased to represent its client, British American Tobacco at the opposition proceedings and assist with this successful decision.
A full text of British American Tobacco (Brands) Limited v. Philip Morris Products S.A.(Application No. 5754.08) is available here BAT-Opposition-April14-2011.