Phillip Morris Products SA v Sean Ngu

Phillip Morris Products SA (the applicant) sought to register a trade mark for the word mark "IQOS" in relation to goods in class 34, specifically "tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, smoking tobacco, pipe tobacco, waterpipe tobacco, smokeless tobacco products, heated tobacco products, electronic cigarettes, and electronic cigarette liquids". Sean Ngu (the respondent) opposed the registration. The delegate of the Registrar of Trade Marks heard the opposition.

The delegate was required to determine whether the proposed trade mark "IQOS" was capable of distinguishing the applicant's goods from the goods of other persons. Specifically, the delegate considered whether the mark was inherently adapted to distinguish the goods, and whether it had acquired distinctiveness through use. The delegate also considered whether the mark was descriptive of the goods, or whether it was a common or invented word.

The delegate reasoned that the mark "IQOS" was an invented word, not descriptive of tobacco products. While the applicant argued it was an acronym for "I Quit Ordinary Smoking", the delegate found no evidence that this meaning was known or understood by the relevant public. The delegate concluded that the mark was not inherently adapted to distinguish the goods, as it was a short, pronounceable, invented word that could potentially be used for a wide range of products. However, the delegate found that the applicant had provided sufficient evidence of use and promotion of the "IQOS" mark, demonstrating that it had acquired distinctiveness in the minds of consumers as referring to the applicant's heated tobacco products.

The delegate upheld the opposition on the basis that the mark was not inherently adapted to distinguish the goods, but found that the applicant had discharged the onus of proving that the mark had acquired distinctiveness through use. Accordingly, the delegate ordered that the trade mark application proceed to registration.