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Apr/03

Miles Promotion As Material Aspect of Marlboros


Extensive trademark complaint filed by Philip Morris against alleged cigarette counterfeitors, via Amlaw.com.

Interesting aside: included in the complaint is an allegation that defendant’s imported “grey good” Marlboros (authorized when sold outside the U.S but imported against the trademark owner’s wishes).  In order to overcome “trademark exhaustion” (that the trademark owner cannot exert control over its goods once they have been sold), the trademark owner must establish that the non-U.S. goods materially differ from the U.S. version.  Here, Philip Morris alleges that its non-U.S. cigarettes are materially different because, in part, the package doesn’t offer redeemable “Marlboro Miles.”

UPDATE: Famous and well-known trademark lawyer Peter Sloane from the Ostrolenk firm writes in to point out that in Philip Morris v. Allen Distributors, 51 USPQ2d 1013 (SD Ind. 1999), the Court ruled that the absence of redeemable Miles did constitute a material difference in the non-US manufactured Marlboros.  It should be noted that in that case, and here, Philip Morris alleged that the grey good Marlboros were also materially different because they were not subject to domestic quality control programs.

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