This action pertains to both trade-mark and copyright law. It relates to the use of ROOFTOP design and MARLBORO trade-marks as well as copyright issues in the MARLBORO Red Roof Label. The Plaintiffs commenced this action seeking a declaration that the sale of their Rooftop cigarettes in Canada did not contravene the rights of the Defendants in respect of the trade-mark MARLBORO. The Defendants counterclaimed alleging infringement.
The Court held that the Plaintiffs could not be found to infringe the defendant’s MARLBORO word mark as they do not use it. Furthermore, the Plaintiffs use their own design trade-marks. Thus, there is no confusion. The Court also refused to expunge the Defendant’s MARLBORO word mark, as it had legitimately acquired rights to the trade-mark from the Plaintiff’s predecessor. Furthermore, the Court held that the Defendants had not used their mark to deceive customers and mislead the public. Thus, the Court granted the Plaintiffs’ declaration, and found non-infringement of the Defendants’ trade-mark.
In considering the copyright issue, the Court held that the packages were not sufficiently similar to constitute copyright infringement.