Law Lords settle 29-year dispute

THE Judicial Committee of the Privy Council yesterday settled a 29-year dispute by awarding a Venezuelan company the registered trademark BELMONT for its cigarette product. The Law Lords ordered the Registrar General of Trinidad and Tobago to allow Cigarrera Bigott to use the name BELMONT, a dispute which arose way back in 1975. The judgment was delivered by Lords Hoffmann, Hope, Hutton, Brown, and Baroness Hale. The Privy Council ordered Philip Morris Products Inc to pay the costs in the High Court, Court of Appeal and before the Board, to Bigott. Before either Bigott or Philip Morris came on the scene, two other companies had shown an interest in registering BELMONT as a mark. Both applied in January 1975, but the registrar, faced with rival applications, exercised his discretion under the Trade Marks Ordinance 1955 and refused to register either applicant until the rights had been determined by the court. Neither company took steps to go to court.

Philip Morris applied on November 29, 1978, but this was refused by the registrar. Bigott applied to register the trade mark on August 13, 1990 and the application was accepted by the registrar. The 1975 applications were specifically noted on their respective files as deemed to have been abandoned in November and December 1992. There was no such note on Philip Morris’ file, but after failing to take steps to go to court after 14 years, the registrar treated their application as abandoned. Bigott was given clearance to advertise their application and did so in the Trinidad and Tobago Gazette on October 22, 1993. When the advertisement appeared, Pollonais and Blanc, Philip Morris’ attorneys, wrote to the registrar asking for clarification on the status of their 1978 application which they said they wanted to renew. They had three months to give notice of opposition to the Bigott application, but they failed to do so. They asked for an extension and were given one. But then the registrar realised that the Act gave him no power to extend the three-month period.

Both Philip Morris and Bigott made applications to the registrar. The matter went before the deputy registrar Francis Sandy who eventually found for Bigott. Philip Morris appealed to the High Court. Justice Carlton Best ruled for Philip Morris in a judgment in November 2000. This decision was upheld by the TT Court of Appeal. The proceedings before the deputy registrar were conducted on the basis that Philip Morris made an application for registration. Before the judge however, Philip Morris produced the entries and relied on them as evidence that it was the registered proprietor of the trademark. Philip Morris argued that the entries showed that it was the registered proprietor and that no contrary evidence had been produced by Bigott.

But the Privy Council disagreed. Lord Hoffmann, who delivered the judgment, said it did not appear to the Board that upon a true construction, the register evidenced registration of the mark in the name of Philip Morris. “The fact that it contains no entry whatever of the actual registration of the mark but only an entry of an assignment is puzzling enough to make it necessary to resort to all admissible evidence to discover what the registration means,” Lord Hoffmann added. Lord Hoffmann said correspondence clearly showed that the application of Philip Morris was never accepted or advertised and in the absence of these steps, the registrar had no jurisdiction to register Philip Morris as the proprietor of the name BELMONT.