Supreme Court reverses Eve-Eva trademark decision

In May 2010 then Deputy Commissioner of Patents and Trademarks Noah Shalev Shlomovits ruled that Eva cigarettes, produced by Aktsionerno Droujestvo Bulgartabac Holdings in Bulgaria, were not confusingly similar to Eve cigarettes, produced by Philip Morris (see here for details of that decision).

Shlomovits considered the fact that the marks had different graphic elements was less important than the sound of the mark when spoken, since cigarettes are bought by requesting a brand from a salesperson. He went on to rule that since the Bulgarian cigarette was pronounced Eva (to rhyme with "never"), it was very different from Eve (which rhymes with "weave").

Philip Morris appealed the decision to the Supreme Court. Counsel for Philip Morris claimed that the name "Eve" would be pronounced as "eev" in the United Kingdom, "ev" in France and "eva" or "yeva" in Russia. Because cigarettes are sometimes purchased from vending machines, placing all the evidence on the sound of the name exaggerated the audible aspects of the name.

In its defence, Bulgartabac Holdings relied on Shlomovits's ruling and pointed out that the name was not "Eva", but rather an "e" followed by a heart and an "a". The heart symbol should not necessarily be assumed to represent a "v", although it admitted that the cigarettes were sometimes labelled "Eva" in Hungary. While acknowledging that both brands were aimed at women smokers, Bulgartabac Holdings argued that the price difference indicated that the Philip Morris cigarette is aimed at the connoisseur market, whereas its cigarette is aimed at the mass market. Furthermore, since both cigarettes are somewhat established, even if it were argued that there had been a possibility of confusion previously, this was no longer the case.

In its decision the Supreme Court referred to Article 11 of the Trademark Ordinance 1972 to prevent issuing confusingly similar marks. After acknowledging that an appeal should not be a retrial, the judges noted that in this case, it was not witnesses who were being reconsidered but rather the nature of objects. They explained that analysing the likelihood of confusion by a pedestrian application of the triple test is insufficient. In addition to analysis of the individual details, the judge should synthesise the evidence and the decision should also reflect 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 result was that Atsionerno Droujestvo Bugartabac Holdings' Eva cigarette cannot be registered. The court awarded legal costs of NIS45,000 (just over US$12,000).

Civil Appeal 3975/10 Philip Morris Products SA v Akisionerno Droujestvo, Supreme Court (Judges Handel, Hayot and Amit) October 2 2011.