Yair Shimansky and My Light Holdings Proprietary Limited v Browns the Diamond Store Proprietary Limited

Yair Shimansky owned the registered trade mark 'EVOLYM' (the words 'my love' spelled in reverse) in class 14, used on engagement rings, wedding bands and pendants sold at Shimansky stores (5 stores, including 3 in Cape Town). Browns the Diamond Store used the mark 'EVOLVE' on men's wedding bands sold at Browns stores (over 20 stores throughout South Africa). On 13 May 2013, while on a flight, Shimansky saw an advertisement in the South African Airways in-flight magazine Sawubona for Browns' range of men's wedding bands bearing the EVOLVE mark. He immediately brought urgent proceedings for trade mark infringement under s 34(1)(a) of the Trade Marks Act 94 of 1993. The high court (Savage AJ) dismissed the application, finding no infringement. Shimansky appealed to the Supreme Court of Appeal.

• Whether the use of the trade mark 'EVOLVE' by Browns infringed the registered trade mark 'EVOLYM' owned by Shimansky
• Whether the marks were so nearly resembling each other as to be likely to deceive or cause confusion within the meaning of s 34(1)(a) of the Trade Marks Act 94 of 1993
• Whether visual and aural similarity alone, without conceptual similarity, is sufficient to establish likelihood of confusion
• What is the proper approach to determining likelihood of confusion in trade mark infringement cases

The appeal was dismissed with costs including those of two counsel.

For trade mark infringement under s 34(1)(a) of the Trade Marks Act 94 of 1993 to be established, the allegedly infringing mark must be so nearly resembling the registered mark as to be likely to deceive or cause confusion. The determination requires a global appreciation of the marks based on the overall impression they create, considering visual, aural and conceptual similarities. Visual and aural similarity alone are insufficient to establish infringement where there is no conceptual similarity and the overall impression is different. The likelihood of confusion must be assessed in the context of how the marks would be encountered in the marketplace, taking into account the nature of the goods, the type of customer (including whether they are making a considered or routine purchase), and the circumstances of the purchase. Where customers are making careful, considered purchases (such as expensive jewellery), they are less likely to be confused than those making routine purchases.

The Court noted that while invented words like EVOLYM may receive greater protection than ordinary words, this does not eliminate the requirement to assess the dominant impression created by the marks. The Court also observed that trade marks serve the essential function of indicating the origin of goods, and this must be kept in mind when assessing likelihood of confusion. The Court commented that confusion need not be lasting to constitute infringement, citing Orange Brand Services v Orange Works Software. The judgment also reiterated the caution from Laboratoire Lachartre SA v Armour-Dial Incorporated that courts must guard against over-analyzing marks through close comparison in the courtroom, and must instead transport themselves notionally to the marketplace to consider how ordinary consumers would perceive the marks.

This case reaffirms and applies the well-established principles for determining trade mark infringement in South Africa, particularly the 'global appreciation' approach adopted from European jurisprudence (Sabel BV v Puma AG). It clarifies that visual and aural similarity alone are insufficient to establish infringement where there is no conceptual similarity and the overall impression of the marks is different. The judgment emphasizes the importance of context in assessing likelihood of confusion, noting that customers making considered purchases (such as engagement or wedding rings) are less likely to be confused than those making routine purchases. It also confirms that invented words may receive greater protection, but this does not eliminate the need to assess the dominant impression created by competing marks. The case provides guidance on the value judgment required in assessing likelihood of confusion, emphasizing that courts must consider the marks as they would be encountered in the marketplace by the average consumer with ordinary caution.