The case: Austria Tabak, which belongs to Japan Tobacco International, distributes cigarettes under the MemphiS brand:

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It had registered the word mark AIR for a specific type of cigarette. AIR appears on a blue cigarette packet in smaller type under the MemphiS brand. The word BLUE appears next to the AIR mark. This, together with the blue colour of the cigarette packet, is intended to indicate the mild flavour of the variety.

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One of the three largest manufacturers of smoking accessories in the Netherlands applied for cancellation of the AIR trade mark on the basis that it had not been used in a genuine manner in the preceding five years.

Austria Tabak’s defence was that it had reproduced its two marks, MemphiS and AIR, separately on the cigarette packet and had consequently used them. The word BLUE, together with the blue colour of the packet, was only the descriptive indication of the mild flavour of the variety and, unlike the word AIR, was not perceived as an indication of the origin of the cigarettes. Hence, it did not add any distinctive element to the AIR mark and therefore did not alter it.

The Court of First Instance of the European Union took a different view. While there is no rule that a registered trade mark must always and only be used in the same form in which it was registered, only very minor changes to the mark are permitted. Even if the mark is used together with other elements, it must still be recognisable as such. That requires an assessment of the distinctive and dominant character of the added elements on the basis of the intrinsic qualities of each of those elements and the relative position of the various elements within the configuration of the mark.

The Court of First Instance accepted Austria Tabak’s argument that the mark MemphiS was recognisable as such on the packet of cigarettes. However, the mark AIR had been associated with the word BLUE and had therefore been incorporated into a new overall term ‘AIR BLUE’, which indicated the origin of the cigarettes. Both words were capable of indicating the commercial origin of the cigarettes. It is true that the word BLUE is frequently used in the tobacco market by various manufacturers. However, it was not demonstrated that the meaning of ‘mild flavour’ was attached to it; it is understood by the public only as an indication of a characteristic of the cigarettes. At most, the frequent use on the tobacco market could be regarded as proof that the word BLUE is only to a lesser extent capable of indicating the origin of cigarettes. In the combination with BLUE, AIR was no longer independent and was not so used. Austria Tabak did not present any other form of use that could preserve its rights. Therefore, the court confirmed the cancellation of the trademark AIR, Court of First Instance of the European Union, 8 July 2020, T-800/19.

Learnings: When designing your product packaging and advertising, make sure that your trade marks remain recognisable as such and are not changed in their overall design. The trade marks must still be able to indicate the origin of the registered products in their overall design. Registered trade marks must be used in a way that may at best only slightly change the registered form.