The words “my love” written in reverse, the Shimansky Evolym diamond ring is a reflection of your love and commitment in a truly breathtaking, innovative design. The Shimansky Evolym collection features diamond engagement rings that are hand-made with precision to ensure it has the appearance of a delicately set solitaire diamond yet it is firmly secured between three bands – sealing your commitment.
This is how Yair Shimansky describes his EVOLYM collection of diamond engagement rings and wedding bands, which he registered with a trademark. So, when on an SAA flight he read in the in-flight magazine Sawubona that his rivals, Browns The Diamond Store, were marketing a range of men’s wedding bands with the mark EVOLVE on them, he saw Browns as infringing his trademark and instructed his attorneys to bring an urgent interdict against Browns to prevent them from using the EVOLVE mark.
In bringing the application, Shimansky had to prove that EVOLVE so nearly resembled EVOLYM as to be likely to deceive or confuse a substantial number of potential customers and when his case reached the Western Cape High Court it dismissed his application. Shimansky then took his case to the Supreme Court of Appeal.
The Court hearing the matter relied on well-established principles in South African law. In order to establish whether EVOLVE created deception or confusion in the minds of potential customers:
Regard had to be had to the similarities between EVOLVE and EVOLYM, the impact EVOLVE would make on the average customer (a person of average intelligence, having proper eyesight and buying with ordinary caution).
The marks had to be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances.
Most importantly, the comparison had to be made with reference to the sense, sound and appearance of the marks, which had to be considered both side by side and separately.
If each of the marks contained a dominant feature, the likely impact on the mind of the potential customer had to be taken into account.
Consideration had to be given to the manner in which the marks were likely to be employed.
Finally, EVOLVE had to be considered “globally” in the sense that there should be a global appreciation of the visual, aural or conceptual similarity with EVOLYM.
The Court found that although the first four letters of EVOLVE and EVOLYM were the same, they did not look the same, nor did they sound the same. Also, their meanings were quite different since EVOLYM spelled “my love” in reverse and EVOLVE was meant to suggest that a man who is about to marry might evolve.
The Court also took into account that the prospective purchaser of Shimansky and Browns jewellery was not the consumer buying from a supermarket shelf in the course of routine domestic shopping. After all, Shimansky jewellery with the EVOLYM trademark is sold only at Shimansky stores (5 in the whole of South Africa), while the Browns wedding bands are sold only at Browns Stores (20 in South Africa). The customer buying such an expensive piece of jewellery was making a considered purchase and would hardly go into a Browns store and be deceived or confused into believing that he or she was buying a Shimansky product.
The Supreme Court of Appeal refused to accept that the EVOLVE mark was so similar to the EVOLYM trademark that it would deceive and confuse a potential customer, and dismissed Shimansky’s application.