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2024 WIPO IP Judges Forum Informal Case Summary – Baku Administrative Court, Azerbaijan [2023]: British American Tobacco (Brands) Inc v Intellectual Property Agency of the Republic of Azerbaijan, e-2-1(112)-7623/2023

This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

 

Session 4

 

Baku Administrative Court, Azerbaijan [2023]: British American Tobacco (Brands) Inc v Intellectual Property Agency of the Republic of Azerbaijan, e-2-1(112)-7623/2023

 

Date of judgment: September 19, 2023

Issuing authority: Baku Administrative Court

Level of the issuing authority: First instance

Type of procedure: Judicial (Administrative)

Subject matter: Trademarks

Plaintiff: British American Tobacco (Brands) Inc.

Defendant: Intellectual Property Agency of the Republic of Azerbaijan

Keywords: Distinctive trademarks, Lack of inherent distinctiveness, Descriptive trademarks, Non-protectable elements, Intended use of the product

 

Basic facts: On April 27, 2021, British American Tobacco (Brands) Inc. (the plaintiff) filed an application with the Intellectual Property Agency of the Republic of Azerbaijan to register a word mark “TASTE ON FILTER” for goods in Class 34 of the Nice Classification.

On October 19, 2021, the Patent and Trademark Examination Center of the Intellectual Property Agency denied the registration of the word mark. The decision stated that the words included in the mark are in English and are descriptive for the products in Class 34.

The plaintiff appealed the decision to the Appellate Board of the Intellectual Property Agency, which affirmed the Examination Center's decision and denied registration of the word mark in question.

The plaintiff sought to annul the decision and appealed to the Baku Administrative Court.

In its submission, the plaintiff argued that the descriptiveness of the term must be evident and should not require additional analysis. The plaintiff further contended that the expert had incorrectly interpreted the word “taste” as a noun, when in fact, “taste” functions as a verb in this context. Consequently, the plaintiff asserted that it does not describe the characteristics of the product.

The plaintiff also argued that “TASTE ON FILTER” should be understood as a slogan or motto rather than a descriptive phrase. According to the plaintiff, the word “ON” was incorrectly interpreted as a preposition, whereas its separate display in a circle suggests it is used in the sense of turning something on, as in the phrase “ON/OFF”.

In summary, the plaintiff claimed that the Office erroneously concluded that “TASTE ON FILTER” describes the type, features, or intended purpose of the product. According to the plaintiff, when "taste" is interpreted as a verb, the entire phrase can only be perceived as a slogan. Therefore, the plaintiff argued that the word mark, being a slogan, should be granted protection or, at the very least, granted protection with a disclaimer for the individual elements “TASTE” and “FILTER.” Additionally, the plaintiff noted that this trademark has been registered in other countries, which further supports its non-descriptive nature.

 

Held: The Court dismissed the action.

 

Relevant holdings in relation to the strength of trademarks: The Court found that the terms “TASTE” and “FILTER” are descriptive of the nature of the goods in Class 34. Consequently, granting trademark protection to a word mark comprising these terms would unjustifiably restrict the rights of others to use the same descriptive terms to describe their products. Furthermore, the Court underscored that the mark in question lacks any distinctive elements that would justify its registration; it consists solely of components that are not eligible for protection and merely describe the nature and characteristics of a specific category of goods.

 

Relevant legislation:

 

·         Law of the Republic of Azerbaijan No. 504-IQ of June 12, 1998, on Trademarks and Geographical Indications

·         Decision of the Cabinet of Ministers of the Republic of Azerbaijan on the approval of the Rules on application and examination of application documents for registering trademarks

 

Law of the Republic of Azerbaijan No. 504-IQ of June 12, 1998, on Trademarks and Geographical Indications

 

Article 5: Absolute Grounds for Refusal of Trademark Registration

 

The following signs shall not be registered as trademarks:

 

c) Signs that are used to designate the type, quality, quantity, intended purpose, value, or other characteristics of goods or services, as well as the place of origin of the goods and the time of their production.

 

A detailed interpretation of the aforementioned clause is also provided in Clause 4, Subsection “b” of the “Rules on application and examination of application documents for registering trademarks,” approved by a decision of the Cabinet of Ministers of the Republic of Azerbaijan.