Slims E™A Trade Mark Rejected
Published in “Managing Intellectual Property”, 2010
The Romanian State Office for Inventions and Trademarks (SOIT) has rejected a national combined trade mark application Slims E™A, filed for registration for products in class 34 “unprocessed, semi-processed or processed tobacco; tobacco products; cigarettes; cigars and cigarillos; cigarette filters/cigarettes; articles for smokers; matches/lighters and ashtrays for smokers that are not made of precious metals” due to the conflict with the previous national combined trademark Eve, registered for products in class 34 “tobacco, raw or manufactured including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco; tobacco substitutes (not for medical purposes); smokers’ articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays not made of precious metals, their alloys or plated with such; pipes, pocket apparatus for rolling cigarettes, lighters; matches”.
In SOIT’s view, even though these trade marks are combined ones – they consist of both figurative and verbal elements – they are visually, phonetically and conceptually similar.
According to the decision, the visual similarity of the conflicting trade marks is first due to their dominant element, which is Eve/Eva, and to their appearance.
Thus, the filed trademark Slims E™A consists of this expression, where the Slims element lacks distinctiveness, even the applicant having requested and being granted by SOIT a disclaimer in relation to this verbal element.
The graphical element of the Slims E™A national trade mark application is represented by a setting situated on the right-hand side of the verbal part of the mark, a setting consisting mainly of floral elements.
On the other hand, the opposed trade mark consists in the verbal part – Eve – and a graphical element situated on the left-hand side of the trade mark consisting of a drawing representing stylised floral elements.
Considering these reasons, SOIT found that the overall image of the trade marks is similar, and that the average consumer may think that the owner of the mark for which registration is sought, namely Slims E™A, is in fact the owner of the previous trademark Eve and that he introduced a new design for the Eve packs of cigarettes.
Assessing the phonetic similarity, SOIT found that the verbal element Eva/Eve stands out when pronounced, so that consumers will not be able to tell the difference between the trade marks, all the more that the word Slims is an element lacking distinctiveness for products in class 34.
With respect to the conceptual similarity of these trademarks, SOIT found that the verbal element E™A, namely the proper noun “Eva” may be perceived by consumers as the translation of the English proper noun “Eve”, particularly considering the association with the English term “Slims”, used for products in class 34 in relation to slim cigarettes, with reduced content of tobacco, especially for women.
Finally, SOIT concluded that both trade marks associate a female first name Eva/Eve with floral elements and for all these reasons it considered the trade marks to be similar.
SOIT also found that the products in dispute are identical/similar.
After finding that the trade marks are similar and that the disputed products are identical/similar, SOIT concluded that the consumers will not be able to tell the difference between the products traded under these trade marks, particularly as the Eva/Eve verbal elements are not frequently used for products in class 34.
In conclusion, SOIT considered that the conflicting trade marks are overall similar and the differences between them are not sufficient to exclude any risk of confusion, especially as the conflicting products are similar.
SOIT’s decision to reject the application Slims E™A due to conflict with the previous registered trade mark Eve has been appealed by the applicant to the Bucharest Tribunal and the appeal procedures are pending.