This matter concerned a dispute as to the ownership of the trademark “Belmont” for tobacco products.
On November 29, 1978, Philip Morris Inc. applied for registration of the trade mark “Belmont” for “tobacco, whether manufactured or unmanufactured”. In 1983, for reasons relating to earlier rival applications for the same mark, the register refused the application until the rights of Philip Morris Inc. had been determined by a court.
As a result of an internal reorganization in the Philip Morris Group in 1987, Philip Morris Inc. assigned various assets to Philip Morris Products Inc. (“PM Products”). Subsequently, PM Products made a request to the registrar to be substituted as the applicant in relation to the application of November 29, 1978. The effect of this would be that if that application were to be granted, it would be granted to PM Products as the assignee of the application.
On August 13, 1990, Cigarrera Bigott SUC (“Bigott”) applied to register the same mark for “cigarettes, tobacco products and related goods”. This application was eventually accepted by the registrar.
Due to an administrative error, it was thought that PM Products was an assignee of ownership of the mark “Belmont”, although such ownership had never been granted to Philip Morris Inc. and therefore could not have been assigned. As a result, a Notice of Renewal was sent to PM Products, to which they responded by indicating that their application was still pending and that no certificate of registration had been issued.
On January 24, 1994, Philip Morris Inc. requested an extension for filing a Notice of Opposition to the application filed on behalf of Bigott. On the same date, the registrar responded by granting an extension, which was later retracted.
A dispute between the Appellant and the First Respondent regarding ownership was heard by the Assistant Registrar, who concluded that the Application of the Appellant
should be accepted for registration On appeal to the High Court, the PM Products argued that it was the registered proprietor of the mark and relied on the register entries concerning the assignment by Philip Morris Inc. as evidence. The court held that PM Products was the true owner of the mark. The Court of Appeal upheld this decision.
However, the Privy Council, on taking a closer look at the facts and evidence in the matter, found that the register contained no entry whatever of the actual registration of the mark, but only an entry of an assignment. Even if the entries in the register were to be taken as prima facie evidence that PM products was the owner of the mark, there was overwhelming evidence to show that it was not.
The appeal was allowed and the Privy Council directed that Bigott be registered as the owner of the mark “Belmont” in accordance with its application. PM Products was ordered to pay costs before the Privy Council and all courts below.
Case referred to: Tailby v Official Receiver (1888) 13 App Cas 523
Other authority referred to:
UK Trade Marks Registry Work Manual paragraph 30-141.