MARLBORO vs. Manchester: A Reminder That Reputation Does Not Eliminate the Need for Similarity

1. Introduction

A famous trade mark can be a powerful enforcement tool, but it is not a veto over every later sign that happens to share its first two letters. That is the lesson of a recent EUIPO opposition in which Philip Morris’ iconic “MARLBORO” mark failed to block an EU trade mark application for the figurative sign “Manchester UNITED KINGDOM”, covering tobacco products.

2. Facts

The opposition was brought by Philip Morris Brands Sàrl against an EU trade mark application filed by J.S.S. Tobacco Ltd for the figurative mark 

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covering a broad range of tobacco products and related goods in Class 34. Philip Morris relied, inter alia, on an international registration designating the EU protecting the figurative mark 

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also registered for tobacco products and smokers’ articles in Class 34.

3. Reputation of the Earlier Mark

Philip Morris submitted extensive evidence to substantiate the reputation of MARLBORO in the EU, including historic press articles, national and international trade mark registrations, annual reports, articles, and independent ranking reports on the brand value of MARLBORO in the tobacco industry. On this basis, the EUIPO acknowledges a high degree of reputation of MARLBORO for cigarettes in the EU.

4. Comparison of the Signs

In comparing the signs, the EUIPO finds that “Marlboro” and “Manchester” coincide visually only in the initial letters “Ma” and in a similar, yet standard, typeface. The contested sign also contains an independent heraldic crest device and the words “UNITED KINGDOM”, which are absent from the earlier mark. Aurally, the similarity is likewise confined to the sound “Ma”; the remaining sounds differ entirely, so the signs are visually and aurally only similar to a low degree. Conceptually, the difference is even greater: “Marlboro” is a fanciful name without meaning, whereas the contested sign is perceived as a reference to the city in the United Kingdom. Because one sign has no meaning and the other conveys a clear and recognisable geographical meaning, the EUIPO considers the signs to be conceptually dissimilar.

5. No Likelihood of Confusion

Although the goods at issue are largely identical or similar and the earlier mark was proven to enjoy a reputation, the EUIPO concludes that there is no likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. The overall impressions created by the signs are so different that, even taking into account the principle of interdependence from the Canon judgment – under which a high degree of similarity between the goods can offset a lower degree of similarity between the signs – the limited visual and aural similarity and the clear conceptual distance are not sufficient to justify confusion or association on the part of the relevant public.

6. No “Link” and No Unfair Advantage

The EUIPO then examines whether there could be unfair advantage taken of, or detriment caused to, the distinctive character or the reputation of the earlier mark within the meaning of Article 8(5) EUTMR. In doing so, the EUIPO applies the criteria from the Intel judgement, such as the degree of similarity between the signs, the nature of the goods and the strength of the reputation. It emphasises that a high reputation does not automatically create a mental link; the decisive factor is the degree of similarity between the signs. The clear conceptual content of the contested mark, combined with the at most very low visual and aural similarity, in the EUIPO’s view effectively dispels any risk that the earlier mark will be brought to mind by the public. The EUIPO therefore considers it unlikely that the relevant public will establish a mental link between the signs and rejects the opposition also under Article 8(5) EUTMR.

7. Take‑away

This decision shows that even an iconic brand such as MARLBORO cannot block every new sign with a partially overlapping graphic style or initial letters where the remainder of the sign creates sufficient distance. For opponents, the decision underlines the importance of not relying solely on reputation and broad overlap of goods, but of presenting a convincing case on genuine similarity between the signs. The EUIPO’s position is clear: reputation expands the scope of protection, but it is not a carte blanche to prevent all remote signs from being registered.