Yair Shimansky and Another v Browns the Diamond Store Proprietary Limited (9/2014) [2014] ZASCA 214; 2014 BIP 341 (SCA) (1 December 2014)

Yair Shimansky and Another v Browns the Diamond Store Proprietary Limited (9/2014) [2014] ZASCA 214; 2014 BIP 341 (SCA) (1 December 2014)

The court held that the marks EVOLYM and EVOLVE, when considered globally, do not resemble each other in such a way as to cause deception or confusion. The visual similarity of the first four letters is insufficient, as the remainder of the marks differ significantly. Aural similarity is not established, and conceptual similarity is absent. The average purchaser of engagement or wedding rings is careful and unlikely to be confused, given the considered nature of such purchases and the distinct meanings of the marks. The court found no infringement under section 34(1)(a) of the Trade Marks Act and dismissed the appeal.

Citation
[2014] ZASCA 214
Parties
Appellant: Yair Shimansky; Appellant: My Light Holdings Proprietary Limited; Respondent: Browns the Diamond Store Proprietary Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
1 December 2014
Case Number
9/2014
Procedural Posture
Civil Appeal / Appeal From Western Cape High Court, First Instance
Outcome
Appeal dismissed with costs, including those of two counsel.
Judges
Lewis, Majiedt, Wallis, Dambuza, Mocumie
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Visual and Aural Similarity, Dominant Feature Analysis, Invented Word Protection
Intellectual Property Trade Mark Infringement Likelihood of Confusion Visual and Aural Similarity Dominant Feature Analysis Invented Word Protection

Case Brief

Summary, issues, holding and outcome

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Parties

Yair Shimansky

Appellant

My Light Holdings Proprietary Limited

Appellant

Browns the Diamond Store Proprietary Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Western Cape High Court, First Instance

Legal Issues

  1. 1 Whether the use of the EVOLVE mark by Browns infringes the registered EVOLYM trade mark of Shimansky under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether the marks EVOLYM and EVOLVE are so similar as to be likely to deceive or cause confusion among customers.
  3. 3 Whether visual, aural, or conceptual similarity exists between the two marks sufficient to establish infringement.

Ratio Decidendi

The court held that the marks EVOLYM and EVOLVE, when considered globally, do not resemble each other in such a way as to cause deception or confusion. The visual similarity of the first four letters is insufficient, as the remainder of the marks differ significantly. Aural similarity is not established, and conceptual similarity is absent. The average purchaser of engagement or wedding rings is careful and unlikely to be confused, given the considered nature of such purchases and the distinct meanings of the marks. The court found no infringement under section 34(1)(a) of the Trade Marks Act and dismissed the appeal.

Court Disposition

Appeal dismissed with costs, including those of two counsel.

Orders

  • The appeal is dismissed with costs including those of two counsel.