mardi, août 03, 2010

Israel: Court rules no confusing similarity between marks EVE and EVA

Court rules no confusing similarity between marks EVE and EVA

Contributed by S Horowitz & Co


On April 25 2010 the adjudicator of the Israeli Trademarks Office held that no confusing similarity existed between the registered trademark EVE and an application for the design mark EVA.
(1)

Facts

Philip Morris Products SA is the owner of a brand of cigarettes called Eve and the owner of various registered trademarks which include the word 'eve' (one of which includes the word 'eve' in block letters and two other design marks which include the word 'eve' against a background of flowers and butterflies).

Aktsionerno Droujestvo Bugartabac Holding (the applicant) filed an application with the Trademarks Office to register a design mark which included the word 'eva', with a heart replacing the letter 'v' (Slims ea).

Consequently, Philip Morris filed an opposition with the Trademarks Office.

Philip Morris argued that: (i) there was no need to file evidence, since the confusing similarity between the marks was so obvious; and (ii) the confusing similarity between the marks indicated a lack of good faith on the part of the applicant.

In response, the applicant argued that since Philip Morris had filed no evidence to support its arguments, it should be regarded as having waived its opposition.

Thus, neither party filed any evidence to support its respective arguments within the context of the opposition.

Decision

The opposition was rejected on the following grounds:

  • In order to examine whether a likelihood of confusion exists, a 'triangular test' should be conducted based on three secondary tests:
    • the visual and phonetic test;
    • the type of customer and class of goods test; and
    • a test of the remaining relevant circumstances.
  • Similarity per se between marks is not sufficient to determine whether a likelihood of confusion exists, and weight should be given to the manner in which consumers purchase cigarettes. It is within judicial cognisance that cigarettes are usually purchased over the counter, requiring the consumer to request a certain cigarette brand from the seller. Thus, in this case the main secondary test to be implemented should be with regard to the phonetic aspect of the marks (EVE and EVA). The adjudicator stated that the registered trademarks were pronounced 'eev', while the requested mark was pronounced 'eevuh' (a notion admitted even by Philip Morris). A phonetic comparison showed that the marks did not resemble one another in a manner which was likely to cause confusion (and no evidence was filed to prove otherwise).
  • The only similarity was that of conceptual similarity, as the two marks comprised the word 'eve', albeit in different languages.
  • Finally, the adjudicator examined the similarity between the marks by means of the visual test. It was further decided that the visual aspects of the marks indicated no likelihood of confusion, even if the products were presented together.

In view of the above, the opposition was dismissed.

Comment

This decision demonstrates the importance of supporting arguments in opposition proceedings with appropriate evidence in order to ensure that sufficient grounds are presented to the Trademarks Office, and of not relying merely on judicial cognisance.

For further information on this topic please contact Avi Ordo at S Horowitz & Co by telephone (+972 3 567 0700), fax (+972 3 566 0974) or email (avio@s-horowitz.com).

Endnotes

(1) Aktsionerno Droujestvo Bugartabac Holding v Philip Morris Products SA, April 25 2010.