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[2014] ZASCA 214
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Yair Shimansky and Another v Browns the Diamond Store Proprietary Limited (9/2014) [2014] ZASCA 214; 2014 BIP 341 (SCA) (1 December 2014)
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Case No: 9/2014
Not
Reportable
In the matter between:
Yair
Shimansky
.................................................................................................................
First
Appellant
My Light Holdings Proprietary
Limited
....................................................................
Second
Appellant
and
Browns the Diamond Store Proprietary
Limited
................................................................
Respondent
Neutral Citation:
Yair Shimansky v Browns the Diamond
Store
(9/2014)
[2014] ZASCA 214
(1
December 2014)
Coram:
Lewis,
Majiedt and Wallis JJA and Dambuza and Mocumie AJJA
Heard: 24 November 2014
Delivered: 1 December 2014
Summary:
Trade
mark: the EVOLVE trade mark on men’s wedding bands, sold by
Browns Store, does not infringe the registered EVOLYM trade
mark on
engagement rings sold at Shimansky stores: the two word marks,
considered globally, do not resemble each other in such
a way as to
cause deception or confusion.
ORDER
On appeal from:
Western Cape High
Court, Cape Town (Savage AJ sitting as court of first instance):
The appeal is dismissed with costs
including those of two counsel.
JUDGMENT
Lewis JA (Majiedt and Wallis JJA and
Dambuza and Mocumie AJJA concurring)
[1] This appeal turns on whether two
trade marks, the one registered in the name of the first appellant,
Mr Yair Shimansky, and
the other used by the respondent, Browns The
Diamond Store (Pty) Ltd (Browns), are so similar that the use of the
Browns mark is
likely to deceive or cause confusion. Shimansky’s
registered trademark is ‘EVOLYM’, the words ‘my
love’
spelled in reverse, and is used on engagement rings,
wedding bands and pendants made by him. The mark used by Browns is
‘EVOLVE’
and is used on men’s wedding bands.
[2] The second
appellant is My Light Holdings (Pty) Ltd, the company through which
the Shimansky jewellery stores operate. I shall
refer to both
appellants as ‘Shimansky’. The trade mark EVOLYM is
registered in class 14 in respect of: ‘Precious
metals and
their alloys and goods in precious metals or coated therewith, not
included in other classes; jewellery, rings, precious
stones;
horological and chronometric instruments’.
[3] Shimansky brought an urgent
application in the Western Cape High Court for an interdict against
Browns preventing it from infringing
his trade mark in terms of
s 34(1)
(a)
of the
Trade Marks Act 94 of 1993
. He also
sought orders that the mark EVOLVE be removed from the Browns rings,
or that they be delivered to him for destruction,
as well as an order
that an enquiry be held for the purpose of determining either a
damages award or a reasonable royalty in terms
of
s 34(1)(c)
of the
Act.
[4] As far as background to the
application is concerned, Shimansky has over a long period advertised
the EVOLYM brand in the South
African Airways in-flight magazine,
Sawubona. While on a flight from Johannesburg to Cape Town on 13 May
2013, he saw an advertisement
in that magazine for the Browns range
of men’s wedding bands, with the EVOLVE mark on them. The
Shimansky jewellery with
the EVOLYM mark are sold only at Shimansky
stores of which there are five, three of them in Cape Town. The
Browns wedding bands
are sold only at Browns stores, of which there
were more than 20 throughout South Africa. Once Shimansky had seen
the Browns advertisement
he immediately addressed the question of
infringement with his attorneys and brought the urgent application.
[5] The high court (Savage AJ) dismissed
the application on the basis that Shimansky had not discharged the
onus of proving that
use of the Browns trademark amounted to use in
contravention of
s 34(1)
(a)
of the Act. The appeal lies with
this court’s leave.
[6]
Section 34(1)
provides:
‘
The
rights acquired by registration of a trade mark shall be infringed
by—
(a)
the unauthorized use in the course of
trade in relation to goods or services in respect of which the trade
mark is registered, of
an identical mark or of a mark so nearly
resembling it as to be likely to deceive or cause confusion.’
[7] In reaching the conclusion that use
of the mark EVOLVE was not likely to deceive or cause confusion,
Savage AJ followed the
approach adopted by this court in
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A) at 640G-641D, which has been repeatedly reaffirmed by
this court. Corbett JA said:
‘
In
an infringement action the
onus
is
on the plaintiff to show the probability or likelihood of deception
or confusion. It is not incumbent upon the plaintiff to show
that
every person interested or concerned (usually as customer) in the
class of goods for which his trade mark has been registered
would
probably be deceived or confused. It is sufficient if the
probabilities establish that a substantial number of such persons
will be deceived or confused. The concept of deception or confusion
is not limited to inducing in the minds of interested persons
the
erroneous belief or impression that the goods in relation to which
the defendant’s mark is used are the goods of the
proprietor of
the registered mark, ie the plaintiff, or that there is a material
connection between the defendant’s goods
and the proprietor of
the registered mark; it is enough for the plaintiff to show that a
substantial number of persons will probably
be confused as to the
origin of the goods or the existence or non-existence of such a
connection.
The determination
of these questions involves essentially a comparison between the mark
used by the defendant and the registered
mark and, having regard to
the similarities and differences in the two marks, an assessment of
the impact which the defendant’s
mark would make upon the
average type of customer who would be likely to purchase the kind of
goods to which the marks are applied.
This notional customer must be
conceived of as a person of average intelligence, having proper
eyesight and buying with ordinary
caution. The comparison must be
made with reference to the sense, sound and appearance of the marks.
The marks must be viewed as
they would be encountered in the market
place and against the background of relevant surrounding
circumstances. The marks must
not only be considered side by side,
but also separately. It must be borne in mind that the ordinary
purchaser may encounter goods,
bearing the defendant’s mark,
with an imperfect recollection of the registered mark and due
allowance must be made for this.
If each of the marks contains a main
or dominant feature or idea the likely impact made by this on the
mind of the customer must
be taken into account. As it has been put,
marks are remembered rather by general impressions or by some
significant or striking
feature than by a photographic recollection
of the whole. And finally consideration must be given to the manner
in which the marks
are likely to be employed as for example, the use
of name marks in conjunction with a generic description of the
goods.’
[8] There have been many glosses on the
approach but none changes the fundamental principles. I do not
propose to recite all the
cases that have dealt with infringement (or
opposition proceedings where the same issue arises) which consider
how one determines
the likelihood of deception or confusion. It is
important, however, to take into account a number of cases that state
that a likelihood
of deception or confusion in any of the
characteristics of sense, sound or appearance will be sufficient to
give rise to an infringement.
That said, the trade mark must be
considered globally – as a whole. That principle, originating
in the European Court of
Justice in
Sabel BV v Puma AG Rudolf
Dassler Sport
[1998] RPC 199
(ECJ) 221 at 224 was adopted by this
court in
Bata Ltd v Face Fashions CC & another
2001 (1) SA
844
(SCA) para 9.
Sabel
said that a court must consider
the allegedly infringing mark ‘globally’: ‘a global
appreciation of the visual,
aural or conceptual similarity of the
marks in question, must be based on the overall impression given by
the marks, bearing in
mind, in particular, their distinctive and
dominant components’.
[9] The dictum was again approved by
this court in
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) para 10, where Harms JA stressed also the principle that the
essential function of a trade mark is to indicate the origin
of the
goods in connection with which it is used. And, as he pointed out,
the decision whether there is a reasonable likelihood
of deception or
confusion amounts to a value judgment. (See also
Online Lottery
Services (Pty) Ltd & others v National Lotteries Board &
others
2010 (5) SA 349
(SCA) para 13.)
[10] In
Century City Apartments
Property Services CC & another v Century City Property Owners’
Association
2010 (3) SA 1
(SCA) para 13 Harms DP approved a more
recent dictum of Laddie J in the Chancery Division (England and
Wales),
Compass Publishing BV v Compass Logistics Ltd
[2004]
EWHC 520
(Ch). Laddie J said (para 24):
‘
The
likelihood of confusion must be appreciated globally, taking account
of all relevant factors. It must be judged through the
eyes of the
average consumer of the goods or services in question. That customer
is to be taken to be reasonably well informed
and reasonably
circumspect and observant, but he may have to rely upon an imperfect
picture or recollection of the marks.
The
court should factor in the recognition that the average consumer
normally perceives a mark as a whole and does not analyse its
various
details. The visual, aural and conceptual similarities of the marks
must be assessed by reference to the overall impressions
created by
the marks bearing in mind their distinctive and dominant components.
Furthermore, if the association between the marks causes the public
to wrongly believe that the respective goods come from the
same or
economically linked undertakings, there is a likelihood of confusion.
(My emphasis.)
[11] Most recently, in
Roodezandt
Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd &
another
(503/13)
[2014] ZASCA 173
(19 November 2014) Brand JA
elaborated on the meaning of the value judgment to be made (in the
context of an application to remove
a trade mark from the register).
He said (para 5):
‘
Considerations
that could assist in the exercise of this value judgment have been
proposed in numerous decided cases. One of these
cases is
Laboratoire
Lachartre SA v Armour-Dial Incorporated
1976
(2) SA 744
(T) in which Colman J sounded the following note of
caution (at 746B-E):
“
We
have had ample time for full consideration and close comparison of
the two trademarks with which we are concerned. These advantages,
however, carry their own dangers. They have caused us to look at the
trademarks with far greater care than they would be looked
at by the
members of the public whose probable reactions we are required to
assess, and with a far keener awareness of similarities
and
dissimilarities than such people would probably have as they go about
their daily lives.
What we have now to
do is, therefore, to transport ourselves, notionally, from the
court-room or the study, to the market place.
We must try to look at
the marks as they will be seen, if they are both in fair and normal
commercial use, by the hypothetical
consumers of [wine]. Those will
be people of many races and degrees of education, having varied
gifts, interests and talents. We
are not to postulate the consumer of
“phenomenal ignorance or extraordinarily defective
intelligence”. . . We
are to consider a person of average
intelligence and proper eyesight, buying with ordinary caution.”’
[12] Brand JA then listed the principles
of comparison that have developed in order to reach the value
judgment. He said (para 6):
‘
Most,
if not all, of these considerations seem to find application in the
present context. Other principles of comparison which
have become
crystallised in earlier decisions of this court which I find to be
pertinent, include the following:
(a) A likelihood of
confusion does not only arise when every person interested or
concerned in the class of goods for which the
trademark has been
registered could probably be deceived or confused. It also arises if
the probabilities establish that a substantial
number of such persons
will be deceived or confused.
(b) The concept of
deception or confusion is not limited to inducing in the minds of
these interested persons the erroneous belief
or impression that the
two competing products are those of the objector or that there is a
connection between these two products.
A likelihood of confusion is
also established when it is shown that a substantial number of
persons will probably be confused as
to the origin of the products or
the existence or non-existence of such a connection.
(c) The
determination of the likelihood of confusion involves a comparison
between the two competing marks, having regard to the
similarities
and differences in the two and an assessment of the impact it would
have on the average type of customer who is likely
to purchase the
kind of goods to which the marks are applied.
(d) The marks must
not only be considered side by side, but also separately.
(e) It must be
borne in mind that the ordinary purchaser may encounter goods bearing
one mark with an imperfect recollection of
the other.
(f) If each of the
competing marks contains a main or dominant feature or idea, the
likely impact made by this dominating feature
on the mind of the
customer must be taken into account. This is so because marks are
remembered by some significant or striking
feature rather than by the
photographic recollection of the whole. (See eg
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at
640G-641E;
Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd
2010 (2) SA 600
(SCA) para 8; and
Adidas AG & another v
Pepkor Retail Ltd
2013 BIP 203 (SCA) paras 20-23.)’
[13] Relying on this passage, Shimansky
argued that, first, it was sufficient if substantial numbers of
customers for engagement
or wedding rings were likely to be confused
by the two marks, EVOLVE and EVOLYM. Second, the customer may have an
imperfect recollection
of what he or she has seen. And third, he
added, the confusion need not be lasting, relying in this regard on
Orange Brand Services v Orange Works Software
(970/12)[2013]
ZASCA 158 (22 November 2013) para 13.
[14] Shimansky referred also to the
classic case on word marks,
Pianotist Co’s Application
(1906) 23 RPC 774
at 777, where Parker J said:
‘
You
must take the two words. You must judge them, both by their look and
their sound. You must consider the nature and kind of customer
who
would be likely to buy those goods. In fact you must consider all the
surrounding circumstances; and you must further consider
what is
likely to happen if each of those trade marks is used in a normal way
as a trade mark for goods of the respective owners
of the marks.’
[15] The high court correctly considered
that it should examine the two word marks globally: a distinct
impression could be formed
without having all three components –
visual, aural and conceptual – present. Shimansky argued that
it relied primarily
on the visual and aural similarities of the words
EVOLYM and EVOLVE. The first four letters were identical and when
pronounced
(though it was not clear to this court how EVOLYM would be
pronounced) the last two letters, YM, his counsel said, dropped off.
Assuming that the emphasis is on the first syllable of the word, it
might sound similar to EVOLVE. But it looks very different.
[16] Shimansky argued, however, that one
should not peer too closely at the marks to find their differences
and similarities, relying
on
Puma AG
cited above by Brand JA
in
Roodezandt
. Moreover, he contended, the protection afforded
to an invented word like EVOLYM, should be greater than that for an
ordinary word
in use in the language in question (
American Chewing
Products Corporation v American Chicle Company
1948 (2) SA 736
(A) at 745;
Cavalla Ltd v International Tobacco Co of SA
Ltd
1953 (1) SA 461
(T) at 467A-F and
Zimbo Spare Co (Pty) Ltd t/a
Motoquip v Car Quip CC & another
2006 BIP 230 (T) at 240C-E).
[17] That may be so. But one must still
consider the dominant impression that the marks make even where one
of the words is invented
in order to ascertain whether there is
likely to be deception or confusion. Shimansky disavowed reliance on
conceptual similarity
between the trade marks, relying only on visual
and aural similarity between the words EVOLYM and EVOLVE. The high
court found
that even where there is no conceptual similarity, if
there is sufficient similarity between the visual and oral features
of the
words, infringement can be found.
[18] In
National Brands Ltd v Blue
Lion Manufacturing (Pty) Ltd
2001 (3) SA 563
(SCA) this court was
asked to determine whether the use of word marks in respect of
biscuits led to confusion. The registered trade
mark was ‘Romany
Creams’. The allegedly infringing mark was ‘Romantic
Dreams’. Finding that there was no
infringement, Nugent AJA
said (para 10): ‘[T]he visual distinctions in the words . . .
bearing in mind that each immediately
conjures up a different
picture, are such that there is not likely to be deception or
confusion . . . ’. Moreover, he said,
a word mark is not merely
a combination of abstract symbols, but is usually recognizable as a
whole, and for what it conveys.
[19] Savage AJ concluded that the common
elements between EVOLYM and EVOLVE, that the first four letters of
each are the same, were
not sufficient to cause deception or
confusion since the balance was different. And the aural
similarity is clearly not established,
however one pronounces EVOLYM.
I consider that to be correct.
[20] It remains to consider the question
of conceptual similarity that Shimansky did not rely upon. Browns
argued that the lack
of conceptual similarity was fatal to the case
based on infringement. Any potential customer would think about the
meaning of the
words in question – what they convey, as said in
National Brands
, above. Shimansky himself claimed that he had
attempted to educate the public that EVOLYM spelled my love in
reverse. Some of the
advertisements he attached to his founding
affidavit had underneath the mark the words ‘MY LOVE’, in
effect in shadow
form. It is trite that in ascertaining whether there
is a likelihood of deception or confusion, a court does not consider
extraneous
material such as packaging or advertisements. But this is
evidence of the meaning that was conveyed by Shimansky.
[21] EVOLVE, on the other hand, suggests
that a man who is about to marry might evolve, argued Browns. The
meanings – if one
can put one to EVOLYM – are very
different. Why would the use of the word EVOLVE cause either
deception or confusion? In
addition, the infringement, if there is
one, must be determined on the basis of notional use: whether the
customer would be confused
in a Browns store (per Harms J in
The
Upjohn Company v Merck & another
1987 (3) SA 221
(T) at
227C-D).
[22] One must assume that the customer
is the average purchaser, and given the price of engagement rings,
wedding bands and other
jewellery, one must also assume that any
decision to buy is made carefully. A significant factor to be taken
into account, argued
Browns, is that engagement and wedding rings are
bought usually once, or possibly twice, at most a few times, by the
average customer
in a lifetime. Would a person contemplating the
purchase of these items go to a Browns store, and be confused into
believing that
he or she was buying a Shimansky product with the mark
beginning with the letters EVOL? I think not.
[23] In my view, the
prospective purchaser of an engagement or wedding ring is not the
consumer (described most recently in
Pioneer
Foods v Bothaville Milling
[2014] ZASCA
6
;
[2014] All SA 282
(SCA) who is buying from a supermarket
shelf in the course of routine domestic shopping. He or she is making
a considered
purchase at a jewellery shop.
At
the hearing of the appeal no feasible example of such a customer
being confused between the EVOLYM mark and the EVOLVE mark could
be
given. In the circumstances, the high court was correct
in finding that there was no infringement of Shimansky’s
trade
mark by Browns.
[24] In the circumstances the appeal is
dismissed with costs including those of two counsel.
___________________
C H Lewis
Judge of Appeal
APPEARANCES
For Appellant: A R Sholto-Douglas SC
Instructed by: Adams & Adams, Cape
Town
Honey Inc,
Bloemfontein
For Respondent: O Salmon SC and J L
Kaplan
Instructed by: Ian Levitt Attorneys,
Sandton
Lovius Block
Attorneys, Bloemfontein