British American Tobacco (Brands) Limited v Philip Morris Products S.A

This matter concerned an opposition by British American Tobacco (Brands) Limited (the Opponent) against the registration of an international registered designation (IRDA) by Philip Morris Products S.A. (the Holder). The dispute arose in the context of trade mark law, specifically concerning the potential for the IRDA to be identical or deceptively similar to existing trade marks, and the Holder's intention to use the mark. The decision was made by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the IRDA should be rejected or opposed under sections 44 and 59 of the relevant Act. Section 44 concerns the registration of identical or deceptively similar trade marks, while section 59 relates to the applicant's intention to use the trade mark. The Opponent presented evidence regarding existing trade mark registrations containing the word "pod" in relevant classes and for related goods, as well as dictionary definitions and market perception surveys concerning the term "pod" in the context of tobacco products. The Holder, in turn, provided evidence of its intention to use the IRDA in conjunction with its existing branded products and presented materials demonstrating the use of "pod" or "pods" in relation to tobacco products.

The delegate considered evidence of numerous trade mark registrations containing the word "pod" in Class 34 and related classes for goods such as nicotine, vape products, and cigarettes. This evidence suggested that "pod" was a descriptive or common term within the relevant market. The delegate also had regard to a decision from the EU Intellectual Property Office concerning the meaning of "pods" in the context of tobacco products. The Holder's intention to use the IRDA was also a factor, with evidence suggesting its use in combination with existing products. The delegate was required to assess whether the IRDA was identical or deceptively similar to existing marks, and whether the Holder genuinely intended to use the mark.