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WARNING: CIGARETTE PACKETS CAN BE HARMFUL TO YOUR WEALTH

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Although he is famed and feted throughout Europe for his lack of linguistic skill, the IPKat still managed to work out what was happening in Case T-140/06, a ruling of the Court of First Instance in September 2007 in which the Court, in a decision recorded solely in French, dismissed the appeal of Philip Morris Products SA against OHIM's persistent refusal to register as a Community trade mark the three-dimensional shape depicted above. This, for those of you who might otherwise have no clue as to what it is, is a representation of a cigarette packet (or "Forme d?un paquet de cigarettes", as the French so eloquently put it), which Philip Morris wanted to register in respect of, er, cigarettes in Class 34. Philip Morris was also "condamnée aux dépens", which presumably didn't bankrupt them because their next step was to appeal to the European Court of Justice (ECJ). According to the appellants:

"... the Court of First Instance infringed Articles 4 and 7(1)(b) of Council Regulation ... 40/94 ... first, [it] based its assessment on a bias against the category of marks in which the mark applied for falls. In finding that consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or of the shape of their packaging, the Court of First Instance made a factual finding which has no scientific foundation whatsoever and misconstrues the human perception of signs in general, and of shapes in particular.

Second, ... the Court of First Instance carried out an incorrect legal analysis of the relevant public's perception of the mark. That error arises, on the one hand, from the fact that the Court envisaged use of the mark only through its incorporation into a packet of cigarettes, although the shape of packaging for a given product can be perceived by the public in a multitude of other forms, such as graphic or three-dimensional representations of the mark in advertising material. The error of assessment arises, on the other hand, from the fact that the Court of First Instance reduced the concept of a mark to its part which is perceptible by a prospective purchaser at the moment immediately prior to his purchase, whilst the public concerned by a mark is composed of all those who may be faced with it in the course of normal use of the mark, which occurs both during the advertising of the product before it has been purchased and during use or consumption of the product after it has been purchased.

The appellant claims, thirdly and lastly, that the grounds of the judgment under appeal are contradictory".

This week the Curia website published the Order, made by the ECJ in June, dismissing the appeal. The IPKat's not surprised that the appeal was dismissed, but he is surprised that it took so long for information concerning the Order to be posted on the Curia website. The operative part of the Order consisted of just 11 words, three of which were "Philip Morris SA". Other traders with similar types of mark may be kept in suspense for ages, awaiting news of pending appeals before deciding on their own advertising, marketing and trade mark portfolio strategy. Merpel says, I'd have liked to hear the arguments based on bias: this is an allegation that is usually made against individual applicants or nationalities, rather than classes of the Nice Classification. Tufty, making a rare comment on a trade mark topic, adds: I had to read the second ground of appeal several times before I could convince myself that I couldn't understand a word of it.

If you want to know more about cigarette packets, try:
Up In Smoke here
Cigarette Packet Collectors Club of Great Britain here
Collecting Cigarette Packets from All Over the World here

Full post as published by IPKat on October 30, 2008 (boomark / email).