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 (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 (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