Marlboro lookalike

A widely-recognised trademark typically consists of a famous name and an iconic logo, and it often also has highly recognisable packaging.

 A prime example of this is the Marlboro cigarette brand, the packaging of which is characterized by a white triangle against a polygon of solid colour, and is distinctive among thousands.

Owners of established brands do everything possible to safeguard the distinctive elements that make up their trademark. They do this by registering these elements as trademarks, both individually and collectively, and by vigorously defending them against infringement. Allowing other trademarks to violate your own can lead to the weakening of your trademark due to the loss of its distinctiveness.

This is precisely what Philip Morris, the company behind Marlboro, is trying to prevent by opposing a trademark application filed recently by Mikaello. In its opposition, Philip Morris cited (amongst others) the single black peak in the contested mark and the trademark registration of the upper half of a Marlboro cigarette pack. The company argues that there is a risk of confusion and of free-riding on, or detriment to, a well-known trademark. To establish a risk of confusion, there must be a reasonably high degree of similarity between the trademarks. For freeriding, it is sufficient to establish a connection between the trademarks in question. But because the word 'Mikaello' bears no similarity to Marlboro's trademarks, the question is, to what extent does this element provide sufficient distinction.

Even if the applicant manages to persuade the European Trademarks Office that there is no similarity between the trademarks, and consequently no risk of confusion, they will still need to disprove any connection between them. This is, in our opinion, a more challenging task. Most people looking at Mikaello's packaging would surely be reminded of the Marlboro logo, so this decision is bound to be interesting.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.