Marlboro’s iconic design: one of a kind?
In our previous blog, we discussed Marlboro's opposition against the European trademark application of Gold Mikaello.
The Gold Mikaello cigarette pack stands out because it replicates several key elements of Marlboro's iconic design.
The critical questions before the Opposition Division were whether consumers would associate Gold Mikaello’s packaging with Marlboro and whether such an association could harm the distinctiveness of Marlboro’s well-established brand.
Marlboro argued that Gold Mikaello's contested design visually resembles their well-known Rooftop element (the top of the pack) and therefore unfairly benefits from the reputation and distinctiveness of the MARLBORO brand. Furthermore, Marlboro claimed that this similarity undermines the distinctiveness of their brand.
The more well-known an older brand is, and the greater the similarity between the products offered under the respective brands, the more likely it is that a similar trademark will unfairly benefit from the reputation of the established brand. Although the Opposition Division considered the visual similarities between the two trademarks to be minimal, this is outweighed by the extensive and long-standing recognition of the Marlboro trademark in the cigarette market.
The Division concluded that Gold Mikaello was likely to gain an unfair advantage by leveraging Marlboro's established reputation in the tobacco industry. The ‘Rooftop’ element is unique to Marlboro’s cigarette packaging, having been used consistently in various color schemes and styles. This distinctiveness ensures that consumers associate the Rooftop element exclusively with Marlboro. Consequently, the use of this design element by Gold Mikaello would allow them to capitalize on Marlboro’s marketing and promotional investments without undertaking similar efforts themselves.
In conclusion, Gold Mikaello is likely to derive unfair advantage from the distinctiveness and reputation of Marlboro. The Opposition Division upheld Marlboro's opposition. The Rooftop design remains firmly Marlboro’s domain.
Gold Mikaello will need to return to the drawing board for a new logo. Will they come up with a more distinctive design next time, to carve their path in the tobacco market?
Author: Erwin Haüer
Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.