Necessity to Submit Arguments and Evidence in Trademark Oppositions Rather than Relying on the Self-Evident

Eva and Eve Not Confusingly Similar!?!

Philip Morris Products has a brand of cigarettes called Eve, and has a number of trademarks registered in Israel for the brand, including word marks and flowery designs.

Atsionerno Droujestvo Bugartabac Holding filed a mark (Israel Trademark No. TM 196741) for cigarettes called Eva, with a heart replacing the V.

Philip Morris filed an opposition, but neither side submitted evidence.

The Israel Deputy Commissioner of Patents and Trademarks, Noach Shalev Shmulovich, applied the classic Triple Test:

1. Appearance & Sound
2 Distribution Channels and Customers
3. Everything else of relevance

In his ruling, Shmulovich explained that the 2nd and 3rd 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.

Having established that the relevant consideration is the sound,  Shmulovich went on to explain that the Aktsionererno 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. Consequently, he allowed the Bulgarian mark to be registered and awarded them costs.

COMMENT

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 (whose English pronunciation is appalling) to read the mark and she read it the same way that I would.

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 is also not arbitrary. there seems, therefore, to be inequitable behavior with the Bulgarian company intentionally causing confusion and attempting to capitalize on the monopoly of the other party.



Categories: Intellectual Property, Israel Patent Office Rulings, Israel Trademark, trademarks, Uncategorized

2 replies

  1. “… I would certainly pronounce Eva to rhyme with beaver. I asked my Israeli wife (whose English pronunciation is appalling) to read the mark and she read it the same way that I would.”

    Hmmm … As a native American speaker I would pronounce “Eva” roughly the same way I’d pronounce “Ava”, because I know that’s it not “English”, but rather a European variant on Eve – which is itself just a mutation of the good old Hebrew Chava (and some other time you can explain to me what happened to the “R” at the end of feather and beaver). FWIW, my Israeli wife would pronounce it the same way since her mother was born in Hungary and she has an eye/ear for such things.

    So I do not believe that the two marks as pronounced are particularly similar. Having said that, I do wonder why the Deputy Commissioner did not consider the fact that the requested mark is in fact a translation (or at least localization) of the existing mark. How would he have ruled had the requested trademark used the name “Chava”?

    This seems to be in line with previous discussions we’ve had on my understanding ofthe Deputy Commissioner’s view of foreign language trademarks, namely that an Israeli consumer will recognize foreign language marks, but will not particularly be able to detect and notice analyze the meanings of related/nonrelated words. Accordingly, in this case, the average consumer is not expected to know that Eva and Eve are essentially the same name. Personally, I would have to disagree.

    • I’ve asked around the office, and it appears to be about 50-50, with both pronunciations being used. Interestingly, in my small sampling, I found Israelis, Brits and Americans with both pronunciations, so it seems a little like the tomahto – tomeito question.

      Does it matter wha the registrant intended? can I always argue that there is no likelihood of confusion orally because the “Sale of two titties” by Dutch author Dikkens is actually correctly pronounced “Haddocks eyes”?

      There is no R in eva, but I chose feather and beaver to explain the stress on the first part of the word. Do you have a better idea?

      This reminds me of a discussion on one of the blogs, I think the IP watch-dog, as to whether we write Pah-tent applications (as in Pat ), or Pei-tent applications? (as in pay or pate – the head rather than the sort you eat, that comes from the French and rhymes with matinee).

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