Philip Morris Products has a brand of cigarettes called Eve and a number of trade marks registered in Israel for the brand, including word marks and flowery designs. Atsionerno Droujestvo Bugartabac Holding filed a mark (Israel trade mark TM 196741) for cigarettes called Eva, with a heart replacing the v – Ea. Philip Morris filed an opposition, but neither side submitted evidence.
The Israel Deputy Commissioner of Patents and Trade Marks, Noach Shalev Shmulovich, applied the triple test:
- appearance and sound;
- distribution channels and customers; and
- everything else of relevance
In his ruling, Shmulovich concluded that the second and third considerations are subservient to the sound and appearance and since cigarettes are ordered over the counter, the relevant consideration is the enunciation of the mark rather than its appearance. He went on to rule that the Atsionerno mark is pronounced EH-va (rhyming with feather), whereas the Morris brand is pronounced Eev (as in beaver), thereby establishing that the marks are phonetically distinct and there is no likelihood of confusion. Accordingly, he allowed the Bulgarian mark to be registered and awarded Bugartabac costs.
Since no side submitted evidence, it is difficult to fault Shmulovich, but as a native English speaker, I would certainly pronounce Eva to rhyme with beaver. I asked my Israeli wife to read the mark and she read it the same way that I would, as did a high proportion of our office staff, including Israelis. Some native English speakers read the mark to rhyme with feather.
I would further argue that even if greater weight is given to the sound, the appearance is also important as the seller has to select a box and frequently smokers point to the packet they want. I assume that the similarity in choice of font was not coincidental.
 |
| Michael Factor |
JMB Factor & Co
1 Hamarpe Street
PO Box 45087
Har Hotzvim, Jerusalem
Israel 91450
Tel: +972 2 571 4777
Fax: +972 2 571 4455
info@israel-patents.co.il
www.israel-patents.co.il