Marlboro Box
Philip Morrison filed an Israel trademark application (No. 184708) for a cigarette box with a distinctive opening – the top of the box hinges open along the short side (the depth) rather than the long side (width).
The box is a special edition of Marlboro.
The Deputy Commissioner, Noach Shalev Shmulovich upheld a decision of the Examiner that this was not appropriate as a trademark since if considered an aesthetic feature, should be protected as a registered design, and if functional, the correct protection is a trademark.
The Applicant tried to argue that, following the Toffiffee decision of the Israel Supreme Court, 3 dimensional marks for packaging were protectable as a trademark.
Shmulovich conceded that in some cases, packaging could be considered as distinctive and indication of origin, he just didn’t accept that this case was one of them, where the distinctive feature is the method of opening.
It is hard to argue with his reasoning. Both patents and designs require novelty when filed. Trademarks do not. One of the current Commissioners favorite principles is that there should not be overlap of types of protection, and each type serves different purpose and protects different types of things.
The decision is in line with the earlier Israel Patent Office decision where an attempt to register a rectangular box with cut-outs for viewing the perfume bottles within as a trademark was rejected. That case was filed by former Commissioner of Patents, Attorney Goldberg.
Then as here, the IPO was correct in refusing the mark. Actually Shmulovich has not rejected the application, just requested that the package be refiled as a 2D or 3D mark, but closed – thereby negating the unique opening. Then the case may be referred back to the examiner for consideration according to the guidelines Shmulovich provided.
We suspect that a rectangular box whose height is dictated by the length of a cigarette, and whose width and depth are dictated by the standard number of cigarettes in the pack, and whose shape is well, cigarette box shaped, will be considered as lacking distinctive character. If applicant decides to file amended image within 30 days - we’ll know.
It will be noted that for years Marlboro and Marlboro Light have been available in boxes that open in the traditional manner – hinging back from the long side. The new box does not serve as indication of origin.
I’d have preferred a more interesting case to come up. There are distinctive liqueur bottles and whiskey bottles which arguably are packaging that serves as indication of origin. The current case was a lost cause.
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