On 1 December 2014 the Supreme Court of Appeal (SCA) handed down its judgement in the case of Yair Shimansky v Browns the Diamond Store. The issue was whether Shimansky – the owner of five jewellery stores and a registration in class 14 for jewellery for Evolym, a trade mark that he uses for engagement rings and wedding bands – could stop the rival jewellery chain, Browns, from selling men’s wedding bands called Evolve.
The SCA agreed with the Cape High Court’s finding that there was no likelihood of confusion. Judge Lewis kicked off by summarising many of the cases that have dealt with confusing similarity, and which have highlighted the need for a ‘global appreciation’ of the visual, aural and conceptual similarities between the marks. She accepted that in this case the marks are visually similar. She wasn’t convinced that they’re aurally similar, making the point that she wasn’t even clear on how Evolym is pronounced. But she was very clear on the fact that the marks are not conceptually similar.
Judge Lewis referred to the well-known SCA case of National Brands v Blue Lion, which dealt with the biscuit trade marks Romany Creams and Romantic Dreams, and where the judge 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.’ She took account of the fact that Shimansky had himself claimed that Evolym was ‘My Love’ spelt backwards, and that his customers knew this.
She considered notional use, and said that what was important was that, whereas that Evolve is only sold in Browns, Evolym is only sold in Shimansky’s stores. As was the fact that rings are expensive (hopefully one-off) purchases, and that the purchaser is cautious: ‘He or she is making a considered purchase at a jewellery shop.’ She mentioned the fact that there was no proof of actual confusion: ‘At the hearing no feasible example of such a consumer being confused between the Evolym mark and the Evolve mark could be given.’ (it’s worth noting that, although in theory proof of actual confusion is not a requirement, proof of confusion certainly doesn’t do any harm, and courts do sometimes draw unfavourable inferences from a failure to come up with proof).
The question, said Judge Lewis, 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’? And the answer was really this: ‘I think not.’ Short and sweet!