Ever wondered how the English word “Parliament” was coined to represent the legislative body in various countries? The root of the word, interestingly and rather aptly, is derived from the French word “parler”, which means “to talk” or “to discuss”.
What may be a generic word in the political and legislative arena has surprisingly become a trademark of choice of not one but two international tobacco companies, British American Tobacco Malaysia (BAT) and Philip Morris International (“Philip Morris”).
A dispute arose in our Malaysian High Court when Philip Morris, who sought to introduce its “PARLIAMENT” branded cigarettes in Malaysia, was prevented by the existence of prior “PARLIAMENT” trademarks registered in Malaysia by BAT.
Philip Morris, who also sells the “MARLBORO” brand cigarettes, has been selling tobacco products bearing the trademark “PARLIAMENT” in many countries worldwide, but not in Malaysia.
BAT had registered the word mark “PARLIAMENT” in Malaysia as early as 1953 and also had device marks such as , , and registered as well.
Philip Morris filed a cancellation action in Court to remove BAT’s registered “PARLIAMENT” trademarks on the basis that the registered proprietor was not using the trademark in good faith for a continuous period of three (3) years up to one month before the application to cancel the trademark.
For Philip Morris to be successful, it had to prove that (i) it was an aggrieved person and (ii) there had been non-use by BAT for a continuous period of 3 years (for the period of 9.3.2011 up to 9.3.2014). The Court found the first criteria easily met as Philip Morris had been using the “PARLIAMENT” trademark in 40 other countries and has the intention to expand into Malaysia under the same trademark. In fact, Philip Morris had filed a trademark application for the “PARLIAMENT” trademark in Malaysia in 2007 and has registered trademarks in 60 countries worldwide. As such, it was an “aggrieved person”.
As for whether there had been non-use for a continuous period of 3 years, the onus of proof was on the party bringing forth the cancellation action in Court. Philip Morris used two reports prepared by a firm of investigators to establish non-use. The investigation firm relied on the annual returns of BAT, the website of BAT, the BAT price list, contents of the website “bat-ingredients.com” where BAT brands were listed, enquiries made at leading Duty Free operators, search on product and image databases in respect of tobacco products in Malaysia and enquiries made with BAT in South East Asia.
The investigation revealed that there has been no listing of the “PARLIAMENT” brand tobacco products on the websites and reports and there has been no use of the “PARLIAMENT” trademark by BAT in Malaysia.
Philip Morris further adduced an admission from BAT through a statement from a Statutory Declaration filed by Benson & Hedges (Overseas) Limited (part of the BAT group) in an opposition proceeding in Nigeria, whereby it was stated that the “PARLIAMENT” trademark was only used in Australia and South Africa.
In its defence, BAT contended that it introduced the “PARLIAMENT” trademark into the Malaysian market in January 2008 at Bidor and Slim River, Perak and claimed that the purpose of this market launch was to test the response and acceptance of the product amongst the Malaysian public.
BAT further argued that it has in fact used its “PARLIAMENT” trademark after the launch and was conducting research and collating information to have a revised launch strategy and to ensure commercial success of its “PARLIAMENT” trademark. BAT emphasized that there was no intention to abandon or discontinue use of the trademark and that the trademarks are regularly renewed.
With regard to the investigative reports evidenced by Philip Morris, BAT attacked the reports stating that the reports failed to comply with the minimum requirements needed. BAT claimed that there was no evidence of supermarkets, hypermarkets, retail outlets, convenience stores and provision stalls visited by the investigators to find out whether BAT has sold “PARLIAMENT” brand tobacco products. Further, BAT argued that the Annual Reports and website referred to by the investigation firm only highlights selected brands and not all their brands.
The Court dismissed the first argument by BAT and held that as the party in question is an international company that has filed its corporate governance documentations on its website, details published on the website, from annual returns reports and price lists, are direct evidence of the use of the “PARLIAMENT” trademark in Malaysia. As for the second argument, the Court held that even if a not all the brands were published in the Annual Reports or the website, it is for BAT to produce the full list of brands it sells to reflect the “true picture”.
The Court ordered for seven of BAT’s registered trademarks to be expunged from the Trademark Register. This decision would certainly be a bitter pill for BAT to swallow, especially since it had always renewed its registered trademarks since securing registration in 1953 and 1977 for its older marks. However, the decision is in line with our Trademark Law, which requires trademarks that are registered to be in active use in the market for the products or services which it is registered for. Merely keeping the registered trademark renewed alone is itself not sufficient. Use it or lose it, as they say…