There’s nothing ground-breaking in the most recent Supreme Court of Appeal (SCA) trade mark judgement, Yair Shimansky v Browns the Diamond Store (1 December 2014) What there is, however, is a concise and useful summary of the law as regards that most fundamental of questions – when is a trade mark confusingly similar to an earlier trade mark?
The case involved two jewellers. Shimansky, the owner of five jewellery stores, has a registration in class 14 for jewellery for Evolym, a trade mark that he uses for engagement rings and wedding bands. When Shimansky found out that his much bigger rival, Browns (some 20 stores), was selling men’s wedding bands called Evolve he sued for trade mark infringement. He lost his case in the Cape High Court and he took that decision on appeal.
This judgement could, I think, be described as a safe one. Judge Lewis, who handed down the judgment on behalf of the five judges, started off where all South African judges start off, the famous 1983 decision of Plascon-Evans Paints v Van Riebeeck Paints. This was the case where the Supreme Court of Appeal set out the factors that need to be considered when deciding whether or not there is an infringement. As Judge Lewis said: ‘There have been many glosses on the approach but none changes the fundamental principles.’
There have, however, been some tweaks over the years. The concept of a ‘global appreciation’ of the visual, aural and conceptual similarities – first raised in the EU in the famous case of Sabel v Puma - was adopted by the SCA in the case of Bata v Face Fashions. As was the idea that courts must always bear in mind that the essential function of a trade mark is to indicate origin – Cowbell v ICS Holdings. More recently, the SCA has spoken of the fact that the likelihood of confusion is a ‘value judgment’ - Online Lotteries v National Lotteries Board.
Recently, the SCA handed down judgment in the case of Roodezandt v Robertson Winery. In this case the court went back to basics, and reminded those who have to determine trade mark issues that it must always involve a short, perhaps uncomfortable, trip from the ivory tower to the marketplace. The court quoted these wise words from the old South African case of Laboratoire Lacharte v Armour-Dial:
‘We have had ample time for full consideration and close comparison of the two trade marks with which we are concerned. These advantages, however, carry their own dangers. They have caused us to look at the trade marks 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 have as they go about their daily lives. Hypothetical consumers … 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’.
The SCA in the Robertson Winery case went on to list the principles of comparison that have developed in order to reach the value judgement: total confusion is not required, confusion amongst a substantial number of people is enough; by confusion we simply mean that people are confused about the origin of the goods, not that they necessarily believe there is a connection between the goods; the issue must be considered through the eyes of the average consumer; the trade marks must be considered both side-by-side and separately; imperfect recollection must be taken into account; and the dominant feature of the trade marks must be considered because people remember striking features.
So how about Evolym and Evolve, are they confusingly similar? The court accepted that the trade marks are visually similar. As for aural similarity, the court wasn’t convinced. But the court’s real focus was on the conceptual side.
Judge Lewis referred to the earlier SCA decision of National Brands v Blue Lion, which dealt with the biscuit trade marks Romany Creams and Romantic Dreams. In this case the court said this: ‘The 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.’ Judge Lewis went on to say that ‘a word mark is not necessarily a combination of abstract symbols, but is usually recognizable as a whole, and for what it conveys.’
Judge Lewis took account of the fact that Shimansky had himself claimed that Evolym was ‘My Love’ spelt backwards, and that he had taken steps to educate his customers about this in his advertising - although the judge acknowledged that extraneous matter like packaging generally doesn’t play any role in trade mark infringement cases, evidence of meaning given by the trade mark owner was different. The judge also seemed to take some account of the argument put by Browns that the trade mark Evolve suggests that a man who is about to marry might evolve - many married women will no doubt dispute this!
Judge Lewis considered notional use and other practicalities. For example, the fact that Evolve is only sold in Browns, whereas Evolym is only sold in Shimansky’s stores. The fact that rings are expensive, hopefully once-off purchases where the purchaser is cautious: ‘He or she is making a considered purchase at a jewellery shop.’ And the fact that there was no proof of actual confusion (not necessary, but not irrelevant either): ‘At the hearing no feasible example of such a consumer being confused between the Evolym mark and the Evolve mark could be given.’
The question, said the judge, was really this: would a buyer of a ring go to a Browns store and be confused into thinking that they were buying a Shimansky product because the name started with ‘evol’? Her pithy response: ‘I think not.’ So no infringement!
Trade mark lawyers may well argue about this one, because certainly the marks do look very similar. They may also be frustrated that this most cautious of judgments leaves certain things up in the air. For example, in response to Shimansky’s claim that an invented word like Evolym deserves greater protection than an ordinary word, Judge Lewis simply said ‘that may be so’, before going on to say that the dominant impression of the marks could not be ignored. And, perhaps more frustratingly, she declined to comment on the suggestion that, as a result of the recent SCA decision of Orange Brand Services v Orange Works Software, ‘the confusion need not be lasting’ – in that case the SCA, somewhat surprisingly, seemed to accept the concept of ‘initial interest confusion’ without any discussion.
As I said at the start, a useful judgement rather than a ground-breaking one!