SpicyIP Tidbits: of Marlboro and Montblanc

It’s raining trademark tidbits today – in this post, we bring to you updates of two very exciting cases in progress, involving Indian and international majors, and world-famous brands, including Marlboro and Montblanc. For more, keep reading.

That’s a terrible pun, but I was in the mood. This case may be fascinating from the prospect of trademark jurisprudence, a cracker of a row, timed to perfection in the middle of the Diwali week.

The Indian conglomerate ITC has moved the Delhi High Court to restrain Philip Morris, the international global tobacco major, from using a new festive pack logo for its Marlboro brand of cigarettes. Interestingly, the case has come up once again in the court of Justice S R Bhat, whom we reported on in an earlier post today.

ITC has alleged that the new logo resembles and dilutes the ‘Namaste’, or ‘folded hands’ trademark, made popular by its hospitality brand, WelcomeGroup. An image of the Marlboro pack is unavailable online, but sources inform me that it is a black pack with a stylised form of Marlboro’s traditional logo of an inverted ‘M’. This one has a slightly tilted, inverted image of the character ‘M’, that appears to be on fire, alluding to the season, in all likelihood. (You can read a news-report on this here.)

The arguments at present pivot around the issue of trademark dilution. In a nutshell, a trademark is said to be diluted if the use of the same or similar marks in relation to completely different goods or services would reduce or weaken the value of the original mark. Readers will recall a fantastic guest post by Dev Gangjee of the London School of Economics which had appeared on SpicyIP about a year ago, which spoke of ‘the Polymorphism of Trade Mark Dilution in India”, which I would invite you to revisit to understand the evolving position of Indian law.

The WelcomeGroup logo, it was contended, has been associated with the ITC group for 30 years, and Philip Morris’s use of the mark in question could mislead customers. (Readers may be aware of the overlapping business interests of Philip Morris, and ITC, once an acronym for the colonial hand-me-down, the Imperial Tobacco Company).

On its part, Philip Morris, represented by senior advocate CA Sunderam, argued that their mark had been been registered in 1956, at least twenty years before that of ITC, and was a well established brand. The word Marlboro was clearly written on the pack in question, leaving little room for the plaintiff’s contention of dilution. We shall keep you posted on this as and when we get updates.

(Hat-tip to Ashish Prasad, who brought this matter to our attention.)

In a completely unrelated, but just as interesting tidbit, there is news that Montblanc (yes, the pen-wala Montblanc) has been issued a notice by the Supreme Court. For those whose eyes may be popping out in excitement, it is a mere trademark infringement matter, with no references having been made to emblems or other national symbols.

The notice was issued on an appeal filed by the Mumbai-based manufacturer, Add Corporation Ltd., challenging a Delhi High Court order that had earlier restained it from using the marks “Spacewalker” and “Goldtop” on its Add Gel pens. The High Court restraining order had come on a petition filed by Montblanc alleging that these marks were infringing of their own registered Indian trademarks, including “Starwalker” and “Mieserstruck”. Do read this news report for more details.