Monster Energy Co v. 洪嘉珮

HCIP 5/2019

[2020] HKCFI 561

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 5 OF 2019

(formerly HIGH COURT MISCELLANEOUS PROCEEDINGS

475 OF 2019)

____________

	IN THE MATTER of Trade Marks Ordinance (Cap. 559), of Laws of Hong Kong (“TMO”)
	and
	IN THE MATTER of Trade Mark Application No. 302457577AA for registration of the mark “” in Class 30 by 洪嘉珮(“the Subject Mark” & “the Subject Application”)
	and
	IN THE MATTER of the Opposition thereto by MONSTER ENERGY COMPANY
	and
	IN THE MATTER of an appeal by MONSTER ENERGY COMPANY

____________

____________

Before: Hon Lok J in Court

Date of Hearing: 25 November 2019

Date of Judgment: 2 April 2020

_________________

JUDGMENT

_________________

1.This is the appeal against the decision of the Registrar of Trade Marks (“the Registrar”) dated 6 March 2019.

2.The Appellant, who is the opponent in the contested trade mark application (“the Opponent”), is a leading beverage company in the world.  It has been using various marks containing the word “MONSTER” in relation to different kinds of beverages, including in particular energy drinks, since 2002.

3.On 5 December 2012, the Respondent (“the Applicant”) applied to register the mark “” (“the Subject Mark”) in Hong Kong under Application No. 302457577.  The said application was subsequently divided and the opposition proceedings below were only concerned with Application No. 302457577AA in respect of “ice; ice cream; edible ice; ice lolly; tea-leaf beverage; coffee drinks; pudding; sherbets [ices]; ice goods; hibiscus tea; herbal tea; fruit tea; tea beverages; Baicao tea; fruit ice slush; beverage water (冰；冰淇淋；食用冰；冰棒；茶葉飲料；咖啡飲料；布丁；冰沙；冰品；洛神花茶；仙草茶；水果茶；茶飲料；百草茶；水果雪泥冰；飲料用水)” in Class 30.

4.The original “ICE MONSTER” and device mark (“the Original Mark”), which consisted of a logo which was very similar to the ice device of the Subject Mark but much larger in relative size and the words “ICE MONSTER 冰館”, was first used in Taiwan in 1995 by one Mr Frank Lo (“Mr Lo”) for the sale of cold dessert.  Throughout the years, the business has expanded to the Mainland and Japan.  The Applicant and her business associates seek to expand the business in Hong Kong.  The Subject Mark was first introduced for the “ICE MONSTER” business in 2012.

5.Mr Lo first registered the Original Mark in Hong Kong on 20 March 2003 under classes 32 and 43, which was about 2.5 years earlier than the registration of any of the Opponent’s earlier marks (“the Earlier Marks”) in Hong Kong.  The registration of the Original Mark expired on 19 October 2013.  The present trade mark application is made by the Applicant with the consent of Mr Lo.

6.The substantive hearing for the opposition proceedings took place before the hearing officer, Ms. Doreen Wan who was acting on behalf of the Registrar (“the Hearing Officer”), on 11 October 2018.  The Opponent relied on s 12(3) of the Trade Marks Ordinance, Cap 559 (“TMO”) as the only ground of opposition.

7.On 6 March 2019, the Hearing Officer issued her decision dismissing the opposition (“the Decision”).

8.The Decision was written in Chinese, apparently because the trade mark application was filed by the Applicant in Chinese.

9.The Opponent now appeals against the Decision. The appeal was conducted in English with the same counsel appearing for the parties.

LEGAL PRINCIPLES ON APPROACH DEALING WITH APPEALS FROM THE REGISTRAR

10.Unlike an appeal from the Registrar in the United Kingdom which is limited to a “review” of the decision of the Registrar, an appeal from the Registrar in Hong Kong is by way of a rehearing.  However, the approach is generally similar.

11.On an appeal from a decision of the Registrar in Hong Kong, it is trite law that the correct approach is that the Registrar’s opinion has to be fully and carefully considered.  Any departure from the way in which the Registrar exercised his discretion has to be made upon a sound basis after giving full and most careful consideration to the Registrar’s views and reasons.  The exercise of discretion by the Registrar should not be overruled simply because the court itself might have come to a different conclusion.

12.In Lion Capital LLP v Registrar of Trade Marks[1], DHCJ Coleman SC (as he then was) has succinctly summarised the principles as follows:

“19. On an appeal from a decision of the Registrar, the Court should not interfere with the decision unless it is satisfied that it is wrong in principle.

20. The kind of error in principle as might justify interference would include approaching the problem incorrectly, taking into consideration matters which the Registrar ought not to have taken into consideration, or omitting to take into consideration matters which should have been considered.

21. It is clear that an appeal from the Registrar is a rehearing not a review, but the Court should nevertheless be slow to reverse the decision of an experienced registrar on a question which consists largely of a value judgment: Bongrain SA's Trade Mark Application [2005] ETMR 47, para.9.

22. As it was put by Robert Walker LJ (as he then was) in Reef Trade Mark [2003] RPC 5, para.28:

[28] … an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.

23. Similarly in Re NAKED [2010] 1 HKLRD 382, para.22, Rogers V-P said:

[22] In my view, the correct approach is that the Registrar’s opinion has to be fully and carefully considered. The Registrar has very particular experience. Any departure from the way in which the Registrar exercised his discretion has to be made upon a sound basis after giving full and most careful consideration to the Registrar’s views and reasons. The exercise of discretion by the Registrar should not be overruled simply because the court itself might have come to a different conclusion. Essentially, therefore, a similar approach should be taken to the exercise of discretion by the Registrar as by a judge.

24. When exercising this approach, it seems to me that the Court is indeed exercising an appellate jurisdiction, testing against the relevant principles whether the Registrar was in distinct and material error in reaching the decision on the materials then before the Registrar.

25. The Court is not exercising a function as though it were a first instance court deciding on registration by reference to whatever might be the factual circumstances pertaining as at the date of the hearing of the motion by which the appeal is brought.”

13.In the recent English decision of “Talk For Learning” Trade Mark^[2], Daniel Alexander QC (acting as appointed person dealing with an appeal from the Registrar in the United Kingdom) reviewed the relevant case authorities and explained that whilst the authorities used the expression of a cautious approach to appellate function, this has not stood in the way of an appellate tribunal reversing a decision of the Registrar if it is believed to be wrong. The degree of caution should not be so great as to permit decisions based on genuine errors of approach to go uncorrected.^[3] Daniel Alexander QC further stated the following:

“22. The reason for this is that none of the cases referring to the need for appellate caution in the context of trade mark or other appeals, were saying that there was a higher standard of error that a decision had to reach before appellate reversal was warranted (“clearly wrong” as opposed to “wrong” in which “clearly” is taken to be a descriptor of the degree of error – like “hopelessly” or “inexplicably”) albeit that the language was, in some respects, infelicitously chosen, including by me in Digipos). That would have been contrary to the requirements of CPR 52 which permit (indeed, require) a Court of Appeal to overturn a decision if it is “wrong”.

23. Rather, in my judgment, the point the courts and tribunals have been emphasizing is that the appellate court had to be sufficiently confident that the decision was wrong and was not merely one which the appellate tribunal would have taken differently had it been deciding the matter at first instance. Thus understood, appellate caution should be particularly exercised in the evaluation of whether a decision is wrong, not in declining to correct a decision which, following proper and careful evaluation, is wrong on the footing that it is not glaringly wrong. Put simply, there has to be sufficient clarity that there has been error (rather than mere difference in evaluation) not that the error itself has to be a particularly clear one. That is the approach which, so far as it is possible to tell, has obtained in practice in appeals from the registrar and which, in my judgement is what REEF and other cases require.”

14.In trade mark opposition proceedings, the Registrar often has to make “multi‑factorial comparison”, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing‑off claim.  A lot of these assessments involve value judgments.  The court has to guard against substituting the Registrar’s evaluation of these matters with its own evaluation.  Unless the Registrar has adopted the wrong approach in the evaluation exercise, the court should be slow in interfering with the Registrar’s decision.

S 12(3) OF THE TMO AND THE RELEVANT LEGAL PRINCIPLES

(i)      The statutory provision

15.As mentioned above, the only ground of opposition put forward is s 12(3) of the TMO which provides that a trade mark shall not be registered if:

(a)  the trade mark is similar to an earlier trade mark;

(b)  the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and

(c)  the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public.

16.In Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd (No. 2)^[4], the Court of Final Appeal has held that the coordinate “and” in s 18(3), and hence similarly s 12(3), of the TMO is employed in a cumulative and causal sense.  In other words, it is the “similarity” in the marks and goods (or services) in sub-sections (a) and (b) which renders the use likely to cause confusion specified in sub-section (c).

17.There is no serious dispute about the following legal principles relevant to the issues in the present case.

(i)      Comparison of the marks

18.When applying s 12(3) of the TMO, it is not erroneous in assessing “similarity” to consider if there are any striking features of the mark or sign which appear “essential” or “dominant”, but doing so without disregarding the entirety of the mark or sign or stripping it of its context.[5]

19.In assessing the distinctive and dominant components in a composite mark, generally speaking words “speak louder” than devices.[6]

20.The public will not generally consider a descriptive element forming part of a composite mark as the dominant element of the overall impression created by the mark.[7]

21.The likelihood of confusion on the part of the public is to be assessed globally, taking into account all the relevant factors. In conducting a global assessment of the similarity between the marks, the likelihood of confusion has to be based on the overall impression they create, taking particular account of their distinctive and dominant elements.[8]

22.The fact that a word element comes first in a composite mark does not always and automatically confer on it the status of most distinctive component.^[9]

23.Assessing the similarity between signs is rarely made on a simple matter of arithmetic.  The comparison must be based on the overall impression given by the signs and their perception by the consumer.^[10]

24.There is no minimum threshold level of similarity between marks.  If there is no similarity at all between the respective marks, there is no likelihood of confusion that has to be considered.  If however there is some similarity, it is then necessary to consider the likelihood of confusion.^[11]

(ii)     Comparison of the goods

25.In considering the similarity of the goods, the following factors are relevant:[12]

(i)  the respective uses of the respective goods or services;

(ii)  the respective users of the respective goods or services;

(iii)  the physical nature of the goods or acts of services;

(iv)  the respective trade channels through which the goods or services reach the market;

(v)  in the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or likely to be, found on the same or different shelves; and

(vi)   the extent to which the respective goods or services are competitive.

(iii)   Likelihood of confusion

26.In assessing the requirement of likelihood of confusion, the following has been held by the Court of Appeal and the Court of Final Appeal to be a useful and accurate summary of the approach:[13]

(i)  the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(ii)  the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(iii)  the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(iv)  the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(v)  nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(vi)  and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(vii)  a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(viii)  there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(ix)  mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(x)  the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(xi)  if the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

27.Although the courts were primarily dealing with the issue of “likelihood of confusion” in the above summary of approach, it is apparent from the text of propositions (iv), (v) and (vi) that the courts were also addressing the issue of “similarity”.[14]

28.The likelihood of confusion or deception is not disproved by placing the two marks side by side and demonstrating how small is the chance of error.  It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[15]

29.The global appreciation assessments in relation to the relative grounds must be made on the basis of “fair and notional” use of the earlier and later marks, rather than by taking into account the actual use in the marketplace as required in the equivalent assessments in relation to infringement.  Accordingly, an applicant cannot contend that any particular use of the mark by it will eliminate any likelihood of confusion.  However, the way the applicant has actually used the mark can be considered as a paradigm use of the mark, because no court would be astute to believe that the way that an applicant has used his trade mark is not a normal and fair way to use it.[16]

THE DECISION OF THE HEARING OFFICER

30.The Subject Mark and the Opponent’s Earlier Marks registered by the Opponent (“the Earlier Marks”) are set out in the table below:

The Subject Mark	The Opponent’s Earlier Marks
	MONSTER ENERGY
	MONSTER RIPPER
	JAVA MONSTER
	MONSTER REHAB
	MONSTER DETOX
	MONSTER REHABITUATE
	MONSTER UNLEADED
	X-PRESSO MONSTER

31.In the submissions before the Hearing Officer, Mr Tse, counsel for the Applicant, has categorised the Earlier Marks under 3 groups.  For easy reference, I will adopt the same grouping here:

(i)  “MONSTER ENERGY” which is apparently the most well-known mark of the Opponent (“Group 1 Mark”);

(ii)  “MONSTER RIPPER”, “MONSTER REHAB”, “MONSTER DETOX”, “MONSTER REHABITUATE” and “MONSTER UNLEADED”, which all start with the word “MONSTER” (“Group 2 Marks”); and

(iii)  “JAVA MONSTER” and “X-PRESSO MONSTER” which all end with the word “MONSTER” (“Group 3 Marks”).

32.I will also refer the Subject Mark and the Earlier Marks collectively as “the Marks”.

33.In the hearing before the Hearing Officer, the main contentions of the Opponent are as follows:

(i)     The element “MONSTER” is the most distinctive and dominant element in the Subject Mark, and it is also the most, or at least one of the most, distinctive and dominant element in each of the Earlier Marks.

(ii)   The Marks are similar to the extent that they all contain the identical word “MONSTER”, which is neither descriptive nor commonly used in the relevant field.  The Marks differ in that the Subject Mark contains additional descriptive elements (i.e. the word “ICE” and the ice device) and the Opponent’s Earlier Marks contain additional words, either equally or less distinctive.

(iii)  The identity in the distinctive word “MONSTER” in the respective Marks will not be overlooked by the average consumer.

(iv)  The goods for which the application is made (which include beverages) are identical or similar to those for which the Earlier Marks are protected (which also include beverages).

(v)   As the Marks are similar and the use of the Subject Mark is likely to cause confusion in the eyes of average consumer, registration of the Subject Mark should not be allowed.

34.The Hearing Officer had considered the Opponent’s arguments and reached the following conclusions:

(i)     With reference to the Opponent’s mark “MONSTER ENERGY”, average consumer would associate it with “having the energy of a monster” and “the very large capacity of a body or system to do work”.  Having conducted an overall assessment, that mark has only average degree of inherent distinctiveness insofar as beverages are concerned.[17]

(ii)    Having conducted an overall assessment, each of the Earlier Marks enjoys only average degree of inherent distinctiveness insofar as they relate to the goods covered by their individual registrations.  In reaching such conclusion, the Hearing Officer had taken into account the fact that “MONSTER” is a common English dictionary word.[18]

(iii)   Though the word “ICE” may be descriptive in respect of certain goods such as ice-cream and edible ice products, average consumer would look at the word elements of the Subject Mark as a whole as referring to one single element, which conveys the meaning of a kind of monster known as “ice monster” (冰怪獸).  Hence, the word “ICE” would not be descriptive in respect of the goods covered by the proposed registration.  Further, average consumer would not ignore the ice device in the Subject Mark.  As the ice device is a specially designed man-like logo, that device has certain trade mark significance.  The overall impression and distinctiveness of the Subject Mark are the words “ICE MONSTER” and the ice device, with the words carrying greater effect on the average consumer.[19]

(iv)   For the Earlier Marks, average consumer would not just focus on the word “MONSTER” ignoring the other composite words such as “ENERGY”, “JAVA” and “X-PRESSO”.  These other composite words carry the same effect and significance as the word “MONSTER”.[20] In other words, the word “MONSTER” is not the most or more dominant element of each of the Earlier Marks.

(v)    For the mark “MONSTER ENERGY”, it carries the meaning of “having the energy of a monster”, and so average consumer would not just focus on the word “MONSTER” ignoring the word “ENERGY”.[21]

(vi)   As the word “JAVA” is only used as an informal way for referring to coffee and “X-PRESSO” is not the proper word for coffee, these words would not be descriptive in nature.  In any event, average consumer would read the two words in the respective Group 3 Marks as a whole and probably understand them as referring to two different kinds of monsters with the names “Java Monster” and “X-Presso Monster”.[22]

(vii)  As for visual comparison, each of the Earlier Marks consist of two composite words, and the word “MONSTER” appears in all of them.  For Group 1 and Group 2 Marks, the word “MONSTER” is not descriptive of the products in classes 30 and 32.  Nevertheless, it is a common English dictionary word and is not a distinctive element in each of the Earlier Marks.  Further, they are different from the Subject Mark which starts with the word “ICE” and includes the ice device.  Overall, the degree of visual similarity between these marks and the Subject Mark is very low.  For the Group 3 Marks, the words “JAVA”, “X-PRESSO” and “ICE” are also different.  Taking into account the inclusion of the ice device, the degree of visual similarity between the Group 3 Marks and the Subject Mark is very low.[23]

(viii) As for aural comparison, except the word “MONSTER” appears in all the Marks, the other composite words of the Marks all pronounce differently. Overall, the degree of aural similarity between the Marks is not high.[24]

(ix)   As for conceptual comparison, the Subject Mark, which consists of the ice device, would convey the meaning of a kind of monster known as “ice monster”.  In other words, the word components will be understood as referring to one single element.  On the other hand, the other Earlier Marks, when the two words are read together as referring to one single element, would carry other different meanings as stated in §47 of the Decision.[25]  Hence, the Marks are not similar conceptually.[26]

(x)    Based on the aforesaid, comparing the Marks visually, aurally and conceptually, the Subject Mark is not similar to the Earlier Marks.[27]

(xi)   Having considered the legal principles as laid down in British Sugar Plc v James Robertson & Sons Ltd[28], the Hearing Officer found that: (i) tea-leaf beverage, coffee drinks, hibiscus tea, herbal tea, fruit tea, tea beverages, Baicao tea and beverage water are identical and similar to beverages which are covered by the registration of the Earlier Marks; (ii) ice, ice cream, edible ice, ice lolly, pudding, sherbets [ices], ice goods and fruit ice slush are not identical or similar to beverages which are covered by the registration of the Earlier Marks.[29]  For easy reference, I will refer the two groups of goods as “Similar Goods” and “Dissimilar Goods” respectively.

(xii)  Since the Subject Mark is not similar to the Earlier Mark, there is no likelihood of confusion for average consumers and the public to believe that beverages bearing the Subject Mark would originate from the Opponent or to associate the said products with the Opponent.[30]

GROUNDS OF APPEAL

35.The Opponent has put forward 6 grounds of appeal relating to the following issues:

(i)  the inherent distinctive character of the Opponent’s Earlier Marks;

(ii)  the most distinctive and dominant element in the Subject Mark;

(iii)  the most distinctive and dominant elements in the Opponent’s Earlier Marks;

(iv)  comparison of the Marks;

(v)  comparison of the goods;

(vi)  likelihood of confusion.

36.Grounds 1 to 4 relate to the comparison of the Marks.  The Opponent basically complains that the Hearing Officer’s evaluations of the inherent distinctive character and distinctive and dominant elements of the Marks are wrong.  Due to such errors and some other reasons, the comparison exercise conducted by the Hearing Officer is flawed and her evaluation of the similarity between the Marks is wrong.  As the Hearing Officer’s assessment of no likelihood of confusion is based on the premise that there is no similarity between the Marks, such assessment undertaken by the Hearing Officer is also flawed.

37.Ground 5 relates to the comparison of the goods. Since the Hearing Officer had taken into account all the relevant factors set out in British Sugar Plc v James Robertson & Sons Ltd[31] in reaching her conclusion on the comparison of goods, Mr Wong, counsel for the Opponent, is not seriously challenging the Hearing Officer’s decision on such particular issue.  Hence, even if the Opponent succeeds in the other grounds of appeal, the Applicant should be allowed to register the Subject Mark at least in respect of the Dissimilar Goods.

(i)   Ground 1: Inherent distinctive character of the Opponent’s Earlier Marks

38.The Opponent first complains that the Hearing Officer had wrongly evaluated the inherent distinctive character of the Earlier Marks.

39.Mr Wong submits it is trite law that when considering the inherent distinctive character of a mark, one has to consider it in respect of the goods or services registered.  A word may have low inherent distinctiveness in respect of some goods, but it may have high inherent distinctiveness in respect of others, citing “APPLE” as an example.

40.Mr Wong argues that, when the Hearing Officer considered the inherent distinctiveness of the Opponent’s earlier mark “MONSTER ENERGY”, she only focused on considering the inherent distinctiveness of the mark by reference to “energy drinks”.  She had overlooked the fact that the registration of the Opponent’s earlier mark “MONSTER ENERGY” also covers “mineral and aerated waters and other non-alcoholic drinks, isotonic beverages (non-medicated), fruit drinks, fruit juices and syrups for preparing beverages, and beverages in general”.  In other words, the mark “MONSTER ENERGY” is also registered in respect of non-energy related beverage products. Had the Hearing Officer properly considered all the other goods in respect of which the mark “MONSTER ENERGY” is registered, she would have realized that the word “MONSTER”, and even the word “ENERGY”, cannot be said to be descriptive to all those “non-energy” related beverages, and should therefore have held that the mark enjoys more than average inherent distinctiveness in respect of the goods registered.

41.Further, the Hearing Officer only focused on one of the Earlier Marks relied upon, i.e. “MONSTER ENERGY”, and had not addressed the inherent distinctive character of all the other Earlier Marks in details if at all, let alone by reference to the goods registered.  The only paragraph in which the Hearing Officer had seemingly touched upon the inherent distinctive character of the other Earlier Marks is §28 of the Decision.  However, the only point the Hearing Officer made there was that “MONSTER” is a common English word which can be found in dictionary.

42.Mr Wong submits that such reasoning is fundamentally flawed because as a matter of law, the fact that a word is common or that it can be found in the dictionary does not necessarily have any bearing on its inherent distinctive character.  A common English word can enjoy high inherent distinctiveness in respect of some goods or services.

43.Despite the able submissions of Mr Wong, I do not accept that the Hearing Officer had erred in her evaluation of the inherent distinctive character of the Earlier Marks.

44.It is well established that in determining the distinctive character of a mark, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered.^[32]

45.In §29 of the Decision, the Hearing Officer had pointed out that the Opponent was not relying on “enhanced distinctive character” of the Earlier Marks through their actual use.  If the Opponent was not relying on such matter, the Hearing Officer could only assess the inherent distinctive character of the Earlier Marks by reference to the word components used in the respective Earlier Marks.  In making such evaluation, the following factors would be relevant.

46.First, whether the words are newly-invented words or common English dictionary words.  Obviously, a common English word may have high inherent distinctiveness, but as compared with newly-invented word, it may be more difficult to establish high inherent distinctiveness unless there is substantial use of the word so as to make it “allusive”[33] to the goods registered.  On the contrary, a newly-invented word has more inherent distinctive character as it would be easier to lead the average consumer to associate it as coming from a particular undertaking.

47.Second, the inherent distinctive character of a words composite mark would depend on whether the average consumer would perceive the word elements of a mark as referring to one single element or different elements, and whether certain word in the composite mark is descriptive of the goods concerned.

48.In determining the question of inherent distinctive character of the Earlier Marks, it is clear that the Hearing Officer had given her evaluations on these matters.  The Hearing Officer had taken into account the fact that “MONSTER” is a dictionary word.  Further, to an average consumer, the overall impression is that the word “MONSTER” would carry the same weight as the other word element, and when read together, the word elements of each of the Earlier Marks would give different meanings as those stated in §47 of the Decisions.[34] Hence, the Hearing Officer assessed that the word “MONSTER” is not the more distinctive element in each of the Earlier Marks.  All these evaluations involve value and perception judgments.  The Hearing Officer was entitled to make her own evaluations on these matters and there is no room for intervention by the appellate court.

49.In the Decision, the Hearing Officer had particularly referred to the “MONSTER ENERGY” mark in addressing the issue of inherent distinctive character.  Apparently, she did so because Mr Wong had relied on the Decision of the Register in “MONSTER HUNTER”^[35]  with a view to show that, though the word “ENERGY” is descriptive of the Opponent’s energy drinks, neither the word “MONSTER” or “ENERGY” is descriptive of the goods concerned in that case (i.e. goods under classes 16 and 25), and hence the “MONSTER ENERGY” mark enjoys a high level of inherent distinctiveness.

50.The Hearing Officer was right in saying that that particular case was only concerned with goods in classes 16 and 25.  As I see it, the Hearing Officer was very conscious of the fact she had to assess the inherent distinctive character of the Earlier Marks by reference to the goods covered by their registrations.  After an overall assessment, she evaluated that each of the Earlier Marks enjoys moderate degree of inherent distinctiveness in respect of those goods.  It is clear that the Opponent had made no differentiation between the “MONSTER ENERGY” mark and the rest of the other Earlier Marks in advancing its arguments on the issue, and so the Hearing Officer laid more emphasis on the “MONSTER ENERGY” mark in the discussion in §27 of the Decision.  In my judgment, the Hearing Officer was entitled to make the assessment that each of the Earlier Marks only enjoys moderate degree of inherent distinctiveness in respect of the goods in question.

51.Further, whether certain word is descriptive of the products is not a legal question but a perception question to be determined from the perspective of an average consumer.  The Hearing Officer had clearly stated that she had evaluated the inherent distinctive character of each of the Earlier Marks by reference to the goods covered by their respective registrations.  There is no room for the court to doubt that the Hearing Officer had not followed or deviated from such approach.

52.In the course of his submissions, Mr Wong has kept on emphasising that the average consumer would have a deep impression of the word “MONSTER” in the Earlier Marks.  I hope that Mr Wong is not suggesting that the word “MONSTER” simpliciter enjoys a high degree of inherent distinctiveness as indicating the origin of the goods in the beverages market. The present case cannot be compared with “APPLE” in respect of computer products and “SKY” in respect of telecommunication services in the United Kingdom[36]. Without considering the enhanced inherent distinctiveness through actual use of the Earlier Marks, it would be difficult for the court or the Hearing Officer to make such assessment, in particular “MONSTER” is a common dictionary word and not a newly-invented word.  Furthermore, according to the search in the Trade Mark Registry conducted by the Applicant^[37], there are quite a number of registrations including the word “MONSTER” even under classes 30 and 32.  Though there is no evidence about the actual use of these marks in the market, it would be difficult to establish that the word “MONSTER” simpliciter has a high degree of inherent distinctiveness indicating the origin of the goods.

53.For the above reasons, there is no room for the appellate court to disturb the Hearing Officer’s evaluation about the inherent distinctive character of the Earlier Marks.  Even if I have to conduct a fresh evaluation myself, I would have agreed with the Hearing Officer on her evaluation.

(ii)     Ground 2: Distinctive and dominant element in the Subject Mark

54.Ground 2 covers the evaluation of the Hearing Officer in respect of the Subject Mark.  The Subject Mark consists of the word “ICE” against a light background, the word “MONSTER”, and an ice device.

55.The evaluation made by the Hearing Officer in respect of the Subject Mark is summarised in §34(iii) above.

56.Mr Wong attacks the evaluation of the Hearing Officer on the following grounds.

57.First, the Hearing Officer held that the average consumer would not dissect the word elements in the Subject Mark and would consider “ICE MONSTER” as referring to one single element, relying on the principle mentioned in §26(iii) above, i.e. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

58.Mr Wong submits that the Hearing Officer had misunderstood such principle.  That particular principle actually reflects the well-known principle of “imperfect recollection” in trade mark laws.  The rationale behind is that the court or the Registrar should not expect the average consumer to remember every single detail of a mark.  However, this particular principle has nothing to do with the views expressed by the Hearing Officer in §43 of the Decision, namely whether the average consumer would consider the words “ICE” and “MONSTER” as referring to two elements or one single element.

59.Second, the view expressed by the Hearing Officer that the average consumer would regard the word “ICE” and “MONSTER” as forming one single element is not only unsupported by any evidence, but is directly contrary to the case of the Applicant:

(i)  According to the Applicant’s own pleaded case at §11.1 of the Counter-Statement, the word “ICE” was deliberately intended to be prominent and made unique by the use of a square light background.  Accordingly, by deliberately highlighting the word “ICE”, the Applicant has effectively conceded that the average consumer would consider the word elements separately instead of forming one single element.

(ii)  In the evidence adduced by the Applicant[38], she again highlighted the difference in treatment of the words “ICE” and “MONSTER” in the Subject Mark so as to make the word “ICE” more prominent.

(iii)  At the substantive hearing, the Applicant’s counsel agreed that the element “ICE” is represented more prominently and that it would more readily catch the public’s attention, and it was intended to be so, than the element “MONSTER” in the Subject Mark.  Hence, even the Applicant’s own case is that the two English words are two separate elements and the word “ICE” is intended to be more prominent than the word “MONSTER”, and that the former is intended to catch the general public’s attention more readily than the latter.

60.Mr Wong also draws my attention to the actual use of the Subject Mark by the Applicant.  The way the Applicant has actually used the Subject Mark can be considered as one of the notional and fair uses of the mark.  According to a photograph of the Applicant’s shop in Taiwan^[39], the two words “ICE” and “MONSTER” were presented and deliberately presented as two separate words in the front signboard of the shop, but the Hearing Officer had failed to take such into account in making her evaluation of the Subject Mark.

61.Third, Mr Wong argues that the relevant question here is not whether the average consumer would overlook the word “ICE”, but which element, if any, forms the most dominant and distinctive part in the Subject Mark.  In this regard, he contends that “ICE” is highly descriptive in respect of the goods in question, citing two decisions of the Office for Harmonization in the Internal Market (“OHIM”) in support.^[40]  On the other hand, “MONSTER” is not descriptive to the goods in question and must therefore be the most distinctive and dominant element in the Subject Mark.

62.Further, the ice device is also descriptive to the goods in question.  As words speak lounder than device in a composite mark, the ice device in the Subject Mark can hardly contribute any significant distinctiveness to the overall mark, in particular such device does not appear prominently (size-wise) in the Subject Mark. Hence, had the Hearing Officer applied the proper test and not overlooked the Applicant’s own case and evidence, she should have held that the most distinctive and dominant element in the Subject Mark is the word “MONSTER”.

63.First, I do not accept that the Hearing Officer had applied the wrong test when she adopted a holistic approach in analysing the overall impression of the Subject Mark to an average consumer.  Whether the Hearing Officer had wrongly referred to “imperfect recollection” principle or not, it is clear to me that she had looked at the Subject Mark as a whole and come to the conclusion that average consumer would perceive the two word elements in the Subject Mark as referring to one single element.  This is a value and perception judgment which should not be disturbed by the appellate court.

64.It is true that the Hearing Officer had not made any reference to the fact that the word “ICE” in the Subject Mark is presented against a light background which is different from that of the word “MONSTER”. That factor may have some impact as to whether an average consumer would read both the words “ICE” and “MONSTER” as referring to one single element or indeed two elements.

65.It is fair to say that Mr Wong had not, at least in the written submissions below, expressly referred the Hearing Officer to the evidence about the Applicant’s actual use of the Subject Mark.

66.Despite the omission in specifically mentioning this factor, I do not find that the exercise is flawed.  First, as pointed out by Daniel Alexander QC (sitting as a Deputy High Court Judge) in Digipos Store Solutions Group Ltd v Digi International Inc^[41], not every error of the hearing officer warrants the intervention of the appellate court.  Unless the error is one of principle, the court may not need to disturb the evaluation made by the hearing officer.

67.In my judgment, it would be very difficult to imagine that the Hearing Officer had ignored such obvious factor.  In §§30 and 43 of the Decision, the Hearing Officer had expressly referred to the Subject Mark in the evaluations.  In particular, she had reproduced the Subject Mark with different stylization of the word elements in §30.  Whilst acknowledging that the word “ICE” may be descriptive in respect of some of the goods (mainly the Dissimilar Goods), the Hearing Officer took the view that the average consumer would look at the Subject Mark as a whole.  It is in line with the principle that, in considering whether there are any striking features of the mark or sign which appear “essential” or “dominant”, an average consumer would look at the mark in its entirety without stripping it of its context.[42]

68.According to the evaluation of the Hearing Officer, the overall impression of the Subject Mark to an average consumer is that both words “ICE” and “MONSTER” would carry the same weight and he would get the impression that both words refer to one single element which has the meaning of a monster called “ice monster”.  In that sense, the word “ICE” would not be descriptive in nature.

69.In my judgment, Mr Wong has inflated the effect of the different stylization of the word elements in the Subject Mark on the average consumer.  As words generally speak louder than device, they may also speak louder than the stylization of the word elements.  To average consumer, he would probably refer and remember the products as “ICE MONSTER” products. Many products may have different stylization of the word elements in the mark but the average consumer would still remember the products by reference to its full name as referring to one single element.

70.Further, the Hearing Officer was of the view that average consumer would not ignore the ice device in the Subject Mark.  As the ice device is a specially designed man-like logo, that device has certain trade mark significance.  Such device may also reinforce the impression of average consumer that the words “ICE MONSTER” actually mean a monster called “ice monster”.  The overall impression and distinctiveness of the Subject Words are therefore the words “ICE MONSTER” and the ice device, and not the word “MONSTER” as contended for by the Opponent.  Again this is a value and perception judgment entitled to be made by the Hearing Officer.

71.There is also no basis to challenge the evaluation of the Hearing Officer in respect of distinctiveness or the trade mark significance of the ice device in the Subject Mark.  The Hearing Officer had properly taken into account the relative size, the position and the nature of the logo of the ice device in determining these issues.  The Hearing Officer was also aware of the principle that words generally speak louder device in the overall perception of a trade mark.  The Hearing Officer was not bound to perceive the Subject Mark in the way as suggested by the Opponent, and so there is no room for the court to disturb these evaluations.

72.Even if I am wrong and the evaluation of the Hearing Officer in respect of the dominant element in the Subject Mark should be set aside simply because she had omitted to mention expressly the different stylization of the word elements, the result of the case would be the same.

73.In case that this is an error of principle which necessitates appellate intervention, this court has to conduct a fresh and independent assessment about the dominant element in the Subject Mark.  In my judgment, though the stylizations of the word “ICE” and “MONSTER” are different, the average consumer would still look at the Subject Mark as a whole focusing more on the word elements.  As mentioned above, the average consumer, after seeing the Subject Mark, would probably perceive and remember the products as “ICE MONSTER” products.  Further, the word “ICE” may not be directly descriptive of beverages, and the average consumer would probably understand the two words as referring to one single element.   Finally, though words generally speak louder than device, the ice device in the Subject Mark has its own trade mark significance for the same reasons given by the Hearing Officer in the Decision.  In fact, the device looks like a “ice monster” itself, and so it would reinforce the impression of average consumer that the word elements of the Subject Mark actually refer to such kind of monster.  Hence, I would have arrived at the same assessment that the dominant elements of the Subject Mark are the words “ICE MONSTER” and the ice device.

74.For these reasons, I reject the second ground of appeal.

(iii)    Ground 3: Most distinctive and dominant elements of the Earlier Marks

75.In determining the inherent distinctive character of the Earlier Marks, the court also has to consider the distinctive and dominant elements of the Earlier Marks, if any, in the evaluation exercise. The two are related matters, and so the observations I made under the first ground of appeal are also applicable here.

76.According to Mr Wong, in assessing the most distinctive and dominant elements in the Earlier Marks, the Hearing Officer asked the wrong question and focused on whether the average consumer would neglect the other word element in the Earlier Marks.  The Opponent has never contended that the other element in the Earlier Marks would be neglected. It is only contending that the word “MONSTER” is the most dominant element, or one of the most dominant elements, in the Earlier Marks.

77.In particular, Mr Wong has focused the attack on the Hearing Officer’s evaluation of the distinctive element in the Opponent’s “X-PRESSO MONSTER” mark.  According to the Hearing Officer, “X-PRESSO” is not the proper way of referring to coffee.[43]  Mr Wong submits that this is not the correct question to be asked.  The crucial question is whether the average consumer would perceive the word “X-PRESSO” as referring to coffee and hence descriptive.  The Hearing Officer even failed to note the acknowledgment of the Applicant’s counsel in the submissions below that the word “X-PRESSO” denotes coffee.

78.Again I find no merit in this ground of appeal.

79.In rejecting the Opponent’s contention that the word “MONSTER” is the most distinctive element in each of the Earlier Marks, the Hearing Officer held that, in the eyes of the average consumer, the word “MONSTER” should share equal or similar prominence with the other English word element in each of the Earlier Marks.  That is the overall impression as perceived by an average consumer.  Again this is a value and perception judgment, and the court cannot substitute its own evaluation with that of the Hearing Officer.

80.For the “X-PRESSO MONSTER” mark, Mr Wong is right in pointing out that the correct question to be asked is whether the average consumer would perceive the word “X-PRESSO” as referring to coffee.  Though the Hearing Officer had not expressly stated such question in the Decision, it is quite clear to me that the Hearing Officer had not ignored the possible association between the word “X-PRESSO” and coffee in the eyes of average consumer, otherwise she would not have mentioned “the incorrect way of describing coffee” in §44 of the Decision.

81.In fact, “X-PRESSO” is a newly-invented word which, to a certain extent, has its own distinctiveness, otherwise the Opponent would have used the correct word of “espresso”.  Even taking into account the “imperfect recollection” principle, the average consumer should have noticed the difference.  Further according to the Hearing Officer, the average consumer would attach equal significance to both words and understand the two words as referring to one single element or a kind of monster.  She was entitled to make such perception judgment, even though the word “X-PRESSO” may somewhat relate to coffee.

82.Further, if I am wrong on such issue and the evaluation of the distinctive element of the “X-PRESSO MONSTER” mark should be set aside because the Hearing Officer had omitted to mention the possible association between the word “X-PRESSO” and coffee in the eyes of average consumer, I would still affirm the evaluation of the Hearing Officer.

83.On the basis that I have to make a fresh and independent assessment of the dominant element of the “X-PRESSO MONSTER” mark, I am of the view that both words should carry the same weight in the eyes of the average consumer.  Though the word “X-PRESSO” may denote coffee which may be descriptive in nature, such word is a newly-invented word which has its own distinctiveness.  When the two words are read together, it also gives a new meaning which is a kind of monster known as “X-Presso monster”.  I agree with the evaluation of the Hearing Officer that this would be the overall impression to an average consumer, and so the word “MONSTER” is not the more distinctive element in the “X-PRESSO MONSTER” mark.

(iv)   Ground 4: Comparison of the Marks

84.It is the Opponent’s case that, as the Hearing Officer had erred in evaluating the inherent distinctive character of the Earlier Marks or had erred in assessing the most dominant and distinctive element in each of the Marks, it will necessarily follow that the comparison exercise undertaken by the Hearing Officer is flawed and should be set aside.

85.Mr Wong acknowledges that each case turns on its own facts, but he refers me to a number of authorities to indicate the approach that the courts and the registries have adopted over the years in assessing similarities of marks.[44] There can be varying degree of similarities.  However, unless there is no similarity at all, the hearing officer must proceed to consider the other elements under s 12(3) of the TMO.[45]

86.Mr Wong submits that the Marks are similar to the extent that they all contain the identical word “MONSTER”, which is neither descriptive nor commonly used in the relevant field, at least there is no evidence adduced suggesting otherwise.  The Marks differ in that the Subject Mark contains additional descriptive elements (the word “ICE” and the ice device) and the Earlier Marks contain additional words (either equally or less distinctive).  Mr Wong contends that the similarities outweigh the differences.  Alternatively, the identity in the distinctive word “MONSTER” in the respective Marks would not be overlooked by the average consumer.  Hence, it cannot be said that the Marks are dissimilar as held by the Hearing Officer in §48 of the Decision.  Had the Hearing Officer applied the proper test, she ought to have come to the conclusion that the Marks in question are highly similar, or similar to an average degree at the very least.

87.Even if the average consumer would understand the two words in each of the Earlier Marks as referring to one single element, Mr Wong still seeks to argue that there is a significant degree of similarity between the Marks visually, aurally and conceptually.  It is too much to expect an average consumer of beverage products to be able to differentiate clearly two “MONSTER” brands of beverages by reference to the qualifying words (e.g. one is an “ice” monster and one is a “coffee” monster). To the average consumer in question, these are all “MONSTER” brands. Fundamentally, the concept of “monster” is very distinctive and unique to beverage products.  This very concept appears in all the Marks.  Whilst there may be qualifying or descriptive words to further describe the characteristics of the monster, the fundamental concept remains the same, i.e. the concept related to a monster.  In the premises, the Hearing Officer’s evaluation that the Marks are completely dissimilar conceptually must be incorrect.

88.The effect of Mr Wong’s arguments virtually suggests that the Opponent has a monopolistic use of the word “MONSTER” in the beverages market.

89.Despite Mr Wong’s able submissions, I must emphasise that the comparison exercise is very much a matter for the Registrar or the hearing officer concerned.  The Registrar has ample experience in dealing with trade mark applications, and in most cases he would be in the best position to judge whether certain marks are similar.  If he has taken all relevant factors into consideration, the court will be reluctant to disturb the evaluation made by the Registrar.

90.In order to assess the degree of similarity between the Marks, the Hearing Officer had to determine the degree of visual, aural or conceptual similarities between them and, where appropriate, evaluate the importance to be attached to those different elements taking account of the category of goods in question and the circumstances in which they are marketed. Undoubtedly, the Hearing Officer did perform such task.

91.There is no basis for the Opponent to complain that the Hearing Officer had paid too much regard to a particular factor, or that the visual, aural and conceptual comparisons done by the Hearing Officer are wrong.  All these multi-factorial comparisons involve value judgments and the court cannot substitute its own evaluations with those made by the Hearing Officer.

92.In making the comparison, the Hearing Officer had taken into account the relevant factors, in particular: (i) each of the Marks contains different elements apart from the word “MONSTER”; (ii) “MONSTER” is not the most distinctive element in each of the Marks; (iii) “MONSTER” is a dictionary word and not a newly-invented word; (iv) comparing the Group 1 and Group 2 Marks vis-à-vis the Subject Mark, the first words of the marks are different, and the first part of a mark is usually more impactful visually to average consumer; (v) the word “ICE” alone is descriptive of some of the subject goods, mainly the Dissimilar Goods; (vi) comparing the Group 3 Marks and the Subject Mark, the first words of the respective marks are different; (vii) the average consumer would not ignore the trade mark significance of the ice device which is a significant differentiating factor; (viii) the aural similarity by reason of the common element “MONSTER” is counterbalanced by the differences in syllables and in pronunciations between the Earlier Marks and the Subject Mark; and (ix) there is no conceptual similarity between the Marks.

93.The Hearing Officer was entitled to make these evaluations.  As to the contention that there should be at least some similarity between the Marks, one must understand that the comparison exercise is rarely made on a simple matter of arithmetic.[46]  As pointed out by Iain Purvis EC (sitting as an Appointed Person of the United Kingdom Intellectual Property Office) in Errea Sport SPA v The Royal Academy of Arts[47],

“[The] difference between ‘no visual similarity’ and ‘a low degree of visual similarity’ is not only impossible to define but quite subjective. It is hard to imagine a case in which the spread of reasonable opinions about visual similarity could not cover both of these characterisations. This is not, therefore, fertile ground upon which to base an alleged error of principle.”

94.In my judgment, it would be counter-productive trying to securitize whether the Hearing Officer was right in saying that there should no similarity or low degree of similarity between the Marks.  One thing is clear from the Decision.  The Hearing Officer has evaluated that the degree of similarity between the Marks is very low, and there is no room for the court to disturb such assessment.

95.It is fair to say that the main attacks against the comparison exercise relate to the evaluations of the inherent distinctive character of the Earlier Marks and the distinctive elements of the respective Marks. As I have demonstrated in the earlier part of this Judgment, there is no error in these evaluations.  Even if the court has to make a fresh and the independent assessment on these matters, I would have arrived at the same conclusions.  Hence, I affirm the evaluation of the Hearing Officer on the similarity of the Marks.

(v)   Ground 5: Comparison of the goods

96.I repeat what I have said in §37 above.  There is simply no basis to challenge the decision of the Hearing Officer on the comparison of the goods concerned.

(vi)   Ground 6: Likelihood of confusion

97.The reasoning of the Hearing Officer on such issue is a simple one: since there is no similarity between the Marks, there is no likelihood of confusion.

98.As I find that the Hearing Officer had not erred in assessing the similarity of the Marks, there is again no basis for the court to disturb her assessment of no likelihood of confusion.  It is clear from the Decision that, whether one would conclude that there is no similarity or low degree of similarity between the Marks, the Hearing Officer was of the view that there is no likelihood of confusion.

99.In “ROCHESTER” Trade Mark[48], it has been held that the reluctance of the Appointed Person to interfere with a decision of a hearing officer on likelihood of confusion is quite high at least for the following reasons:

“(i)  the decision involves the consideration of a large number of factors, whose relative weight is not laid down by law but is a matter of judgment for the tribunal on the particular facts of each case

(ii)  the legal test ‘likely to cause confusion amongst the average consumer’ is inherently imprecise, not least because the average consumer is not a real person

(iii)  the Hearing Officer is an experienced and well-trained tribunal, who deals with far more cases on a day-to-day basis than the Appellate tribunal

(iv)  The legal test involves a prediction as to how the public might react to the presence of two trade marks in ordinary use in trade. Any wise person who has practised in this field will have come to recognize that it is often very difficult to make such a prediction with confidence. Jacob J (as he then was) made this point in the passing off case Neutrogena v Golden[1996] RPC 473 at 482:

‘It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more “it depends on the evidence.’

Any sensible Appellate tribunal will therefore apply a healthy degree of self-doubt to its own opinion on the result of the legal test in any particular case.”

100.Despite such high burden, Mr Wong seeks to rely on the following arguments to establish likelihood of confusion:

(i)  When properly analysed, the Marks are highly similar and the overall impression created by the Marks is the word “MONSTER”.

(ii)  The Earlier Marks enjoy more than average inherent distinctiveness.

(iii)  Given the nature of the goods in question, the average consumer would not be expected to be very careful in identifying the marks in question before purchasing.  In most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

101.Mr Wong also invites the court to answer the following question: assuming an average consumer of tea beverage products purchases a can of tea bearing the brand “MONSTER ENERGY”, and after a few days, he comes across a can of tea bearing the Subject Mark (i.e. “ICE MONSTER & device”), whether the average consumer would consider that product to be associated with the product bearing the “MONSTER ENERGY” mark, taken into account the doctrine of imperfect recollection?  According to Mr Wong, the answer must be in the affirmative.

102.The main theme of Mr Wong’s argument is that, to an average consumer, the overall impression created by the Marks is the word “MONSTER”.  However, the Hearing Officer had given reasons as to why she did not accept such contention of the Opponent.  Further, without relying on actual use to establish “enhanced distinctive character”, the Hearing Officer was justified to make the assessment that each of the Earlier Marks only enjoys moderate degree of inherent distinctiveness in respect of the goods registered.  Apart from the word “MONSTER” appearing in all the Marks, the Hearing Officer had considered the other factors differentiating the Earlier Marks on the one hand and the Subject Mark on the other.  These observations are also applicable in evaluating the likelihood of confusion.

103.For the scenario put forward by Mr Wong, the answer is negative according to the evaluation of the Hearing Officer on the similarity of the Marks.  That is the case even if the goods are coffee products bearing “X-PRESSO MONSTER” and “ICE MONSTER and device” marks.  The Hearing Officer had performed the task of evaluating the visual, aural and conceptual similarities between these marks.  In the end, she came to the assessment that there is no likelihood of confusion for average consumers and the public to believe that beverages bearing the Subject Mark would originate from the Opponent or to associate the said products with the Opponent.  Being experienced adjudicator in handling these matters, there is no room for the court to substitute its own assessment with that made by the Hearing Officer.  Again I find no merit in such ground of appeal.   

CONCLUSION

104.For the above reasons, I dismiss the appeal and affirm the Decision made by the Hearing Officer dismissing the opposition under s 12(3) of the TMO.

105.I also make a costs order nisi that the costs of the appeal be to the Applicant which shall be made absolute 14 days after the date of the handing down of this Judgment.

Ms Philips B F Wong, instructed by Rebecca Lo & Co, for the Appellant (the Opponent)

Mr William Tse, instructed by K&L Gates, for the Respondent (the Applicant)