Cigarette marks containing variants of same name held to be confusingly similar
In Philip Morris Products SA v Akzionerno Drujestvo (Bulgartabac Holding) (CA 3975/10, October 2 2011), the Supreme Court has reversed the decision of the deputy registrar to allow the registration of the device mark SLIMS EVA for cigarettes and tobacco, holding that it was confusingly similar to the EVE device marks, registered in the name of Philip Morris Products SA.
In April 2010 the deputy registrar dismissed Philip Morris' opposition to the registration of the stylised mark SLIMS EVA (196741), with the letter 'V' being represented as a heart, in the name of Bulgartabac Holding:
The deputy registrar found that there was no likelihood of confusion with Philip Morris' registered marks EVE. All the marks at issue covered tobacco products in Class 34 of the Nice Classification and were used for women's cigarettes. Applying the three-fold test of confusing similarity, the deputy registrar concluded that, due primarily to the difference in pronunciation between 'Eva' and 'Eve', the marks were not confusingly similar.
On appeal, the Supreme Court noted the interests underlying the decision to allow the registration of a trademark that potentially conflicts with a registered trademark - namely:
- the applicant's freedom of occupation;
- the registered owner's property right; and
- the protection of consumers.
The Supreme Court noted that, for the purpose of preventing the registration of a mark that is confusingly similar to a registered mark under Section 11(9) of the Trademarks Ordinance (New Version) 5732-1972, the court must carry out an overall assessment of the marks to determine whether the similarities between them are liable to mislead consumers.
The Supreme Court further held that confusing similarity must be assessed in relation to members of the public of ordinary intelligence, having regard to the relevant products. The court further stressed the importance of the initial impression left by the marks and the imperfect recollection of consumers. Finally, it noted that the assessment of the similarities and differences between the marks was not quantitative, but qualitative. The court emphasised that, based on these principles, it should not look at the minute details of the marks, but focus on their overall impression.
The Supreme Court concluded that consumers of women's cigarettes who were familiar with the cigarettes sold under the mark EVE in floral design packs were liable to be misled by floral design packs bearing the mark SLIMS EVA. The difference in pronunciation between 'Eva' and 'Eve' – on which the deputy registrar had based his decision, assuming that consumers would follow the English pronunciation of 'Eve' and the Hebrew pronunciation of 'Eva' - was insufficient to distinguish the marks phonetically. The court pointed out that there was a possibility of confusion for speakers from different ethnic backgrounds. The court also noted that the phonetic similarity between the marks had an increased importance in view of the fact that the goods at issue were usually sold over the counter. Moreover, from a visual point of view, the court found that both parties' marks and products featured a floral design. These similarities were given great weight in light of the quick buying process of cigarettes.
In addition, unlike the deputy registrar, the Supreme Court took into consideration the conceptual similarity between the marks, as they both referred to the same biblical name.
Finally, the court held that the difference in price between the products did not imply that the parties targeted different consumers, as the gap was insufficient.
The court thus ordered that the mark be struck off the register. The costs of IS45,000 for both proceedings were awarded to Philip Morris.
David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv
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