How close can you get to a famous trademark? MARLBORO versus MILLBORO provides the answer

Some trademarks are so strong that even marks keeping a little more distance may still fall within the danger zone.

One example of a highly reputed trademark is MARLBORO, one of the best-known cigarette brands in the world. In a recent opposition, Philip Morris objected to a European trademark application for a figurative mark containing the word MILLSBORO for tobacco goods and related products in Class 34, such as cigarettes, cigars, electronic cigarettes, lighters and rolling papers.

MARLBORO versus MILLSBORO: visually, the marks do keep some distance from one another. But this opposition was not decided on the basis of likelihood of confusion, but on the broader scope of protection afforded to a reputed trademark.

In these opposition proceedings, the Opposition Division found that it had been sufficiently established that MARLBORO enjoys a very strong reputation in the European Union, at least for cigarettes. That followed from annual reports, market shares, articles, rankings and earlier decisions.

The EUIPO then turned to the signs themselves. Although MARLBORO and MILLSBORO are not identical, the Office considered the degree of visual and phonetic similarity to be average. In particular, the shared initial M, the structure of the word and the ending -BORO bring the signs fairly close together.

When the broader protection of a reputed trademark is invoked, the key issue is not only whether the signs are similar, but above all whether it is likely that the relevant public will make a link between them. In this case, the European Union Intellectual Property Office found that the relevant public will establish a connection between MILLSBORO and MARLBORO.

Finally, the contested mark must also take unfair advantage of, or be detrimental to, the reputation of the earlier mark. According to the EUIPO, that was the case here. Because both parties operate in exactly the same commercial sphere, namely tobacco products and smoking articles, it is likely that the applicant would benefit from the attractive power and selling power of the well-known earlier mark, without having made any investment of its own.

This is a classic example of what is often referred to in trademark law as free-riding. Even if, as a competitor, you keep some distance, you should not be surprised if the owner of a famous trademark decides to enforce its rights where consumers still make a link with that mark.

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.