The likelihood of consumers being confused by two trade marks lies at the very heart of trade mark law. A recent South African judgment that made the headlines dealt with this very issue.
A jeweller called Shimansky has a trade mark registration for the mark Evolym for jewellery. When a competitor called Browns, The Diamond Store, started using the trade mark Evolve for jewellery, Shimansky sued for trade mark infringement. In trade mark infringement cases it’s sometimes necessary to consider both the similarity of the marks and the similarity of the goods or services in order to decide whether confusion is likely. In many cases, however, the goods or services are exactly the same and the only issue is whether the marks are so similar that confusion is likely. This was such a case.
The case was heard in the Western Cape and the judge started off by looking at some of the well-known judgments that deal with the issue of comparing marks. There’s the very old British case of Pianotist, where the court said that the test for comparing word trade marks is this: ‘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.’
Then there’s the famous old South African case of Plascon-Evans Paints v Van Riebeeck Paints, where the court said this: '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…The determination involves 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... marks are remembered rather by general impressions or by some significant or striking feature than by a photographic recollection of the whole.'
And there’s the more recent South African case of Cowbell, where the court said that there needs to be 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.’ And this: ‘The decision involves a value judgment and the ultimate test is… 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.’
The judge applied these principles to the issue of Evolym v Evolve. The two sides agreed that there was no conceptual similarity between the marks, with the one being a meaningless word (which also represents ‘My Love’ spelt backwards), and the other a well-known verb meaning ‘to grow’. However, the judge felt that the conceptual differences were not critical, because if one applies a global test the visual and phonetic similarities may be sufficient to cause confusion.
So the judge looked at the visual similarities: the fact that both marks comprise six letters; the fact that in each case the first four letters are the same; and the fact that the fifth letters (Y and V) look quite similar. The judge placed great emphasis on the fact that the sixth letters are different, and she rejected the argument that the letter ‘E’ would be seen as the letter ‘M’ on its side. She also felt that the semantic differences between ‘my love’ backwards and ‘evolve’ were relevant, although she disagreed that Evolymwas reminiscent of the name Evelyn. The judge concluded that the visual differences outweighed the similarities.
On to the phonetics. The judge rejected the argument that in each case the first part of the word would be emphasized and the second would drop off. Instead, she felt that the words would be pronounced quite differently, because one consists of two syllables and the other three.
Finally the judge looked at the likely customer. As jewellery is an expensive product, the judge felt that the likely customer is a discerning one, someone who is unlikely to be as easily confused as the purchaser of a cheap supermarket item – a South African court recently adopted a similar ‘sophisticated purchaser, therefore confusion unlikely’ test in a case involving whisky, and the marks Knight’s Gold and Black Knight.
So the judge concluded that there was no likelihood of confusion between Evolym and Evolve in the context of jewellery. Which means that Shimansky’s case failed. And Browns, The Diamond Store, can continue selling jewellery under the name Evolve.