Back in May 2010, we reported that the then Deputy Commissioner of Patents and Trademarks, Noah Shalev Shlomovits ruled that the Aktsionerno Droujestvo Bulgartabac Holding’s cigarette brand Eva was not confusingly similar to the Philip Morris brand Eve. See here for more details.
Essentially, Shlomovits ruled that the fact that the marks had different graphical elements was less important than the sound of the mark since cigarettes are bought by requesting a brand from a salesperson. He went on to rule that since the Bulgartabac Holdings cigarette was pronounced Eva (rhyming with Never), it was very different from Eve (rhyming with weave). I was less than confused, as I would typically pronounce Eva as EEva rhyming with Beaver. I did a small survey of IP professionals and others, and am certainly not the only one to pronounce the name differently than Shmulovitz.
Anyway, Philip Morris wasn’t happy either and appealed the decision to the Supreme Court.
Counsel for Philip Morris claimed that the name Eve would be pronounced EEV in the UK, EV in France, and Eva or Yeva in Russia. Also, cigarettes are sometimes purchased from vending machines so placing all the evidence on the sound of the name exaggerated the audible aspects of the name.
In their defense, Bulgartabac Holdings relied on Shmulovitz’ ruling and also pointed out that the name is not Eva, but rather an ‘E’ followed by a heart followed by an ‘a’ and should not necessary be assumed as being a ‘v’, although they admitted that the cigarettes are sometimes labelled Eva in Hungary. Whilst acknowledging that both cigarettes were aimed at female smokers, Bulgartabac Holdings argued that the price difference to indicate that the Philip Morris cigarette was aimed at connoisseur market, whereas their fag was more aimed at the mass market. Because both cigarettes were somewhat established, even were it argued that there was perhaps a possibility of confusion once upon a time, this was certainly no longer the case.
Somewhat refreshingly, the Israel Supreme Court quoted Maimonides, acquisition, Laws of Sale 18: 1, that passing off is forbidden, and went on to refer (perhaps somewhat irrelevantly to a responsa of Rabbi Moshe Isserles (the Rema) concerning an Edition of the Maimonides Code published by MaHaRam Padua, and also to Talmud Babli, Baba Batra 21:2, all quoted by Rabbi Navon in his article Copyright in Jewish Law, Tsohar 7:35.
Then the decision related to Article 11 of the Trademark Ordinance 1972, to prevent confusingly similar marks from issuing. After acknowledging that an appeal is not supposed to be a retrial, the judges noted that in this case, it is not witnesses that are being reconsidered but the nature of objects. They went on to point out that analyzing the likelihood of confusion by a pedestrian application of the triple test was insufficient, and that as well as analysis, one should synthesize the evidence and come to a decision based on the total picture. With this perspective, the judges ruled that the marks were indeed confusingly similar and overturned the deputy commissioner’s ruling, preventing the marks from issuing.
The upshot of this is that Aktsionerno Droujestvo Bulgartabac Holding’s Eva brand was not allowed to be registered, and legal costs of NIS 45,000 (more than $12,000) were awarded.
Civil Appeal 3975/10 Philip Morris Products S.A. vs. Akisionerno Droujestvo, Supreme Court (Judges Handel, Hayot and Amit) 2 October 2011.
I am very pleased with this decision, not least becuase the judges ruled in accordance with my comments last year! We hope that more weight will be given to common sense in the ‘any other considerations’ strand of the triple test. We also applaud the reference to Jewish Civil Law in the Supreme Court decision.