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Intellectual Property

Trademark decision positive for branding cases

A recent trademark decision may prompt lawyers to encourage clients to push product placement in movies and TV shows, Toronto IP lawyer John Simpson says in Law Times.

In Empresa Cubana Del Tabaco v. Tequila Cuervo S.A. Dec. V., Law Times reports, the applicants used popular culture references to emphasize Cohiba cigars’ status as an iconic brand.


The case began when Tequila Cuervo applied to register the trademark Lazaro Cohiba for its bottles of rum in 1996, the report says, noting Empresa Cubana Del Tabaco opposed the application due to confusion with its own registered Cohiba trademarks for tobacco products.


The trademarks opposition board rejected Empresa Cubana Del Tabaco’s grounds of opposition in 2008, and the case went to appeal at the Federal Court in Ottawa last year, Law Times reports.


New evidence was submitted, including rap lyrics and clips from TV shows and movies, and as a result, Justice Judith Snider allowed the appeal after finding Cohiba to be “an iconic brand of cigar, associated with wealth and status,” the article says.


The decision could reduce the cost of future trademark cases by replacing expensive surveys with evidence found online of movie scenes and song lyrics, the report continues.


“Usually, we need survey evidence. We go out to shopping malls and street corners and interview thousands of people and find out how many people recognize that brand,” Simpson says in Law Times.


While Tequila Cuervo is appealing the decision, Simpson says its impact if it stands will be significant.


“This will be cited by every trademark owner who wants to make a case that their trademark is well known or famous,” he says in the article.


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