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[2013] ZAWCHC 97
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Shimansky and Another v Browns the Diamons Store (Pty) Ltd (8304/13) [2013] ZAWCHC 97; 2013 BIP 286 (WCC) (20 June 2013)
REPUBLIC OF SOUTH AFRICA
IN THE HIGH COURT OF SOUTH AFRICA
(WESTERN CAPE HIGH COURT, CAPE TOWN)
Case
no: 8304/13
In
the matter between:
YAIR
SHIMANSKY
....................................................................
First
Applicant
MYLIGHT
HOLDINGS (PTY) LTD
.......................................
Second
Applicant
and
BROWNS
THE DIAMOND STORE (PTY) LTD
.............................
Respondent
Heard: 14
June 2013
JUDGMENT
DELIVERED: 20 JUNE 2013
savage AJ:
Introduction
In this application, instituted on an urgent basis, the applicants,
Yair Shimansky, the managing director of the second applicant,
My
Light Holdings (Pty) Ltd, seek to have the respondent, Browns The
Diamond Store (Pty) Ltd, interdicted on a final, alternatively
an
interim basis in terms of s34(1)(a) of the Trade Marks Act 94 of
1993 (“the Act”).
The applicants claim that the respondentis infringing the first
applicant’s rights in the trade mark registration no.
2009/17327 EVOLYM in class 14 (“the trade mark”) by
using the mark EVOLVE, or any other marks which so nearly resemble
the trade mark as to be likely to deceive or cause confusion, in the
course of trade, in relation to
inter alia
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.
In addition, the applicants seek that the respondent be ordered in
the presence of an authorised agent of the applicants to removed,
delete or obliterate the mark EVOLVE or any marks confusingly or
deceptively similar to EVOLYM from their goods, and where these
marks are inseparable or incapable of being so removed, to deliver
such goods up to the applicants’ attorneys for destruction;
and that an enquiry be directed to be held for the purposes of
determining the amount of any damages contemplated in s 34(3)(c)
of
the Act or a reasonable royalty as contemplated in s 34(3)(d) to be
awarded to the first applicant as a result of the infringement
of
the first applicant’s rights acquired by registration of the
registered trade mark in accordance with such procedures
as this
Court deems fit in terms of s34(4) and that the respondent pay the
amount found to be due to the first applicant.
The first applicant is the owner of South African trade mark EVOLYM.
The second applicant makes permitted use of the trade mark
in
conducting its jewellery business using the mark on rings on which
it is depicted in upper case letters of relatively substantial
size.
The respondent uses the trade mark EVOLVE in relation to goods
falling within the specification of the first applicant’s
registered trade mark, on rings on which it is depicted in upper
case letters of relatively substantial size.
The first applicant relies on the provisions of s34(1)(a) of the Act
in alleging that the respondent’s conduct amounts
to trade
mark infringement. It is not disputed that the marks are not
identical, that the use of the trade mark EVOLVE is unauthorised
by
the first applicant or that such use is use in the course of trade
in relation to goods in respect of which the applicant’s
trade
mark is registered. The applicants claim that the use of the mark
EVOLVE so nearly resembles the trade mark EVOLYM as to
be likely to
deceive or cause confusion and rely on the visual and phonetic
similarity of the marks, admitting that EVOLYM and
EVOLVE are not
conceptually confusingly similar.
Applicable
legal principles
S34(1)(a) provides that:
‘
(1) The rights acquired by registration
of a trade mark shall be infringed by –
(a) the unauthorised 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…
’
The approach to determining the likelihood of deception or confusion
was stated by Corbett JA (as he then was) in
Plascon-Evans Paints
(TVL) Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984 (3) SA 623
(A) at
640G-641E as follows:
‘
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, i.e.
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.’
In
Pianotist Co’s Application
(1906) 23 R.P.C 774
at
777 Parker J set out the test for the comparison of word marks:
‘
You must take the two words. You must
judge them, both by their look and by 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
.’
The Court must not compare the marks “…
in the calm,
quiet intellectual atmosphere of a court room or of a study
…”
but must notionally transport itself to the marketplace and stand in
the shoes of the potential customer(
Oude Meester Groep Bpk &
another v SA Breweries Ltd
1973 (4) SA 145
(W) at 161). This
process should be an objective comparison, not one that is overly
subjective, and requires a “
global appreciation of the
visual, aural or conceptual similarity of the marks …based on
the overall impression given by
the marks, bearing in mind, in
particular, their distinctive and dominant components
”.
Organon Laboratories Ltd v Roche Products (Pty) Ltd
1976 (1)
SA 195
(T) at 202F-203A quoted in
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) at 947J-948D.
Webster & Page
South African Law of Trade Marks
at para
7.10 states that “(m)
arks, if subjected to a close
scrutiny, may disclose many points of difference but it is the
dominant feature of each that is
the determining factor
.”
However, Margo J in
International Power Marketing (Pty) Ltd v
Searles Industrials (Pty) Ltd
1983 (4) SA 163
(T) at 168H stated
that:
‘
The conclusion to be drawn from the
authorities is that, while in certain cases the dominant feature of
each mark may be the determining
factor, the true rule is a broader
one, namely, that the comparison is to be made between the main idea
or impression left on the
mind by each of the marks, having regard to
any essential or salient or leading or striking feature or features
in each
.’
In
John Craig (Pty) Ltd v Dupa Clothing Industry
1977 (3) SA
144
(T) at 150G-H it was stated that:
‘‘
Deception’…must mean
to cause someone to believe something which is false and ‘confusion’
must mean to
cause bewilderment, doubt or uncertainty. The ‘likely’
to deceive or cause confusion involves proof of a probability
of
deception or confusion. The applicant must, therefore, show that
there is a probability that a substantial number of people
who buy or
are interested in buying
[the product]
will be confused as to whether the
respondent’s
[product]
are
the product of the applicant or as to their existence or
non-existence of a material connection between the respondent’s
[product]
and
the applicant as a manufacturer of
[product]’.
Harms JA in
Cowbell AG v ICS Holdings Ltd
2001 (3) SA 941
(SCA) at para 10 stated that:
‘
The decision involves a value judgment
and “[t]he ultimate test is, after all, as I have already
indicated, whether on a comparison
of the two marks it can properly
be said that there is a reasonable likelihood of confusion if both
are to be used together in
a normal and fair manner, in the ordinary
course of business.” (SmithKline Beecham Consumer Brands (Pty)
Ltd (formerly known
as Beecham South Africa (Pty) Ltd v Unilever
plc[1995]
ZASCA 26
[1995] ZASCA 26
; ;
1995
(2) SA 903
(A)
912H.) “Likelihood” refers to a reasonable probability
(ibid at 910B) although the adjective “reasonable”
is
perhaps surplusage. In considering whether the use of the
respondent's mark would be likely to deceive or cause confusion,
regard must be had to the essential function of a trade mark, namely
to indicate the origin of the goods in connection with which
it is
used (The Upjohn Company v Merck1987
(3) SA 221
(A)
227E-F; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (formerly
Pathé Communications Corporation)[1999]
RPC 117
(ECJ)
par 28).
Registered
trade marks do not create monopolies in relation to concepts or
ideas.
’
Discussion
A global appreciation of the visual, the aural or conceptual
similarity of the marks requires a determination of the overall
impression bearing in mind the distinctive and dominant elements of
the marks. It was argued for the respondent that the applicant’s
admission that the words were not conceptually confusingly similar
is fatal to this application in that the visual and aural
appearance
of the marks cannot be separated from their sense. I do not agree.
In
Cowbell (supra)
at para 10 it was
stated that:
‘…
the
likelihood of confusion must “be appreciated globally”
(cf Organon Laboratories Ltd v Roche Products (Pty) Ltd
1976
(1) SA 195
(T) 202F -
203A) and… the “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.”Cf
SmithKline at 910B-H and Canon par 16 - 17
.’
It does not follow that a finding that a mark so nearly resembles
another asto be likely to deceive or cause confusion requires
that
the overall impression given by the marks must be based on a global
appreciation of the visual, aural
and
conceptual similarity
of the marks. It is entirely plausible that a global impression may
be formed without all of these elements
present and it follows that
the absence of an element does not in itself lead to a conclusion
that the mark does not, as a result
thereof, so nearly resemble the
other.
In considering the visual
similarity of the marks it is apparent that each word has six
letters and that both are therefore
of the same
length, with the first four letters identical. The applicants argue
that there exists a visual similarity between
the fifth letter of
the mark EVOLYM being ‘Y’ and the fifth letter of EVOLVE
being ‘V’. In addition,
the applicants rely on a visual
similarity between the final letters ‘M’ and ‘E’
given that ‘E’
on its side becomes ‘M’. The
respondent contends that a reader of the words would not read only
the first four letters
but the whole word and that it is untenable
that the last two letters ‘YM’ and ‘VE’ are
visually similar
or confusingly similar. The respondent referred to
the examples of
Darwin Ltd’s Appn
(1946) 63 RPC 1
in
which the trademarks MOREX and REX were held not be confusingly
similar; Enoch’s Appn
(1947) 64 RPC 119
, in which trademark
VIVYCYLLIN was held not to be confusingly similar to CYLLIN; and The
Upjohn Company v Merck & another
1987 (3) SA 221
(T) (Full
Bench) at 227D, in which the marks REPROMAP and REPRODIN were held
to be dissimilar. Counsel for the applicantstook
issue with two of
these examples, emphasising that these cases were not brought under
the new Act and that expert evidence was
required in relation to
pharmaceutical trademarks under the old Act, which makes them
incomparable.
In comparing the applicant’s mark EVOLYM to the respondent’s
mark, EVOLVE, the respondent argued that any reader
with a fair
command of English would recognise EVOLVE as a verb with a
well-known meaning which has nothing to do with EVOLYM,
being MY
LOVE spelt backwards. EVOLYM does not bear any resemblance to any
Englishverb, or common noun but is ostensibly a proper
noun
reminiscent of the name EVELYN. On semantic grounds, it was
contended that the word EVOLVE is patently distinct from the
word
EVOLYM.
I accept that the mere fact that competing trademarks contain a
common element does not axiomatically render them similar or
even
confusingly similar, as was held to be the case in
National
Brands Ltd v Blue Line Manufacturing (Pty) Ltd
2001 (3) SA 563
(SCA) in which Romany Creams and Romantic Dreams were considered.
The common element between the marks in this case is their
length
and the first four letters of each word. I accept that there also
exists a degree of visual similarity between the applicant’s
fifth letter ‘Y’ and the respondent’s ‘V’.
This similarity does not however extend in my mind to
the sixth
letter of the mark which I consider to be visually distinct and I do
not agree that from a visual perspective the ‘E’
is
viewed as the letter ‘M’ on its side. I also accept that
some semantic distinction arises between the marks from
the fact
that EVOLYM is the sum of the English words ‘MY LOVE’
spelt backwards and that EVOLVE is a verb, although
I do not accept
that there exists a reminiscence between EVOLYM and the name
EVELYN.Having had regard to the visual similarities
and differences
between the marks, I find that the visual similarities, while they
do exist, do not outweigh the differences.
Consequently, the
similarities are not in my mind of such a nature as to persuade me
that the use of by the respondent of its
mark is likely to deceive
or confuse visually.
With regard to phonetic similarity, the applicants argued that the
mark EVOLVE is confusingly similar to the mark EVOLYM with
the
emphasis on both marks falling on the initial potion of the word;
and that the dominant feature of both marks is the first
syllable,
with the remaining two letters of each word tending to drop off, a
tendency which has been accepted in trade mark cases
to be usual.
The respondent disputed phonetic similarity arguing that the stress
in on the second syllable of the word EVOLVE,
while the emphasis is
on the first syllable of the word EVOLYM. The respondent argued that
the phonological structure of the
word is markedly different in that
EVOLVE is bisyllabic while EVOLYM is trisyllabic and t
he
words arepronounced differently, even allowing for imperfect usage.
I am not persuaded that the marks are likely to deceive or confuse
aurally by their sound or phonetic similarity. I do not share
the
applicant’s view that the emphasis is on the first part of the
word and that the last part of the word drops off in
each mark. This
is given that EVOLYM is clearly trisyllabic, while EVOLVE is
bisyllabic. The marks are pronounced differently,
even with
allowance being made for different or alternate pronunciations and
the pronunciation of the applicant’s EVOLYM
does not drop off
at the end. The final letter sounded in each mark is distinct with
the “YM” sounded at the end
of the applicant’s
mark and the ‘V’ sound repeated at the end of the
respondent’s mark. Consequently,
the two marks sound
sufficiently distinct as to allow a conclusion that the respondent’s
mark does not so nearly resemble
the applicant’s mark aurally
as to be likely to deceive or cause confusion.
It is not disputed that the marks are used in expensive products,
the purchase of which are likely to be restricted to a
discriminating
market. The onus is on the applicants to show the
probability or likelihood that
a substantial
number of personsinterested or concerned (usually as customer) in
the class of goods for which the trade mark has
been registered
will
probably
be deceived or confused
.
The applicant has failed to show this to be the case.
Considered
globally, having undertaken a comparison between the main idea or
impression left on the mind by each of the marks,
with regard had to
the essential, salient, leading or striking feature or features, the
similarities and differencesbetween the two
marks,
I do not find that the applicant has discharged the
onus to prove that the use by the respondent of its mark amounts to
the use
of a mark so nearly resembling the applicant’s as to
be
likely
to cause deception or confusion as contemplated by s34(1)(a).
It follows in the circumstances that the
application must fail and there
exists no reason as to why
costs should not follow the result.
Order
In
the result, I make the following order:
The application is dismissed with costs.
KM SAVAGE
ACTING JUDGE OF THE HIGH COURT
Appearances
:
Plaintiff: A R Sholto-Douglas SC instructed byAdams & Adams
Defendant: J Kaplan instructed byIan Levitt Attorneys