World Investment Co Ltd v. The Registrar of Trade Marks

HCMP 3815/1999

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 3815 OF 1999

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BETWEEN

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Before: Hon Cheung J in Court

Date of Hearing: 14 January 2000

Date of Judgment: 31 January 2000

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JUDGMENT

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The appeal

1. This is an appeal by the applicant against the decision of the Registrar of Trade Marks (the Registrar).

Trade Mark Application

2. The applicant applied to register the trade mark "555 & device" in Part A of the trade mark register in respect of "clothing, footwear, headgear". At the hearing before the Registrar, the applicant stated that it would exclude singlets and underwear in the specification of goods to be covered by its mark. In other words, these specifications will read as clothing except singlets and underwear, footwear, headgear.

The mark is as follows:

3. The Registrar refused the application on the ground that the mark conflicts with two existing trade marks. These two marks are as follows:

Trade Mark No 317/37:

Trade Mark No 232/40:

The goods covered by these two marks are singlets.

Trade Mark Ordinance

4. Section 20(1) of the Trade Marks Ordinance (“the Ordinance”) provides that:

“Except as provided by section 22, no trade mark relating to goods shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of -

(a)        The same goods;

(b)        The same description of goods; or

(c)        Services or a description of services which are associated with those goods or goods of that description.”

The objection

5. The objection of the Registrar was based on two grounds. First, the goods covered by the applicant's proposed mark and the existing trade marks are goods of the same description. Second, the applicant's mark is identical with or nearly resembles the trade marks that are already on the register. The Registrar was prepared to allow registration of the mark in relation to footwear and headgear.

Goods of the same description

6. The central issue to the appeal is whether singlets covered by the existing trade marks are goods of the same description as "clothing except singlets and underwear". This is in effect what the Registrar had decided.

7. Ms Tam, counsel for the applicant, submitted that it is illogical to come to such a view, as it is illogical to say "human beings except female and children" are of the same description as "female". My task in this appeal does not require me to decide on the example given by Ms Tam. My task is simply to decide whether, as a matter of law, the decision of the Registrar is correct or not.

The principle

8. In considering the principle in this area, one does not need to go beyond the House of Lords' decision of "Daiquiri Rum" Trade Mark [1969] RPC 600 in which Lord Wilberforce stated that the test of sameness in description is a business and practical test. He approved of the decision of Romer J in Jellinek's Application (1946) 63 RPC 59 in which the Judge held the relevant factors are: the nature and composition of the goods, the respective uses of the articles and the trade channels through which the commodities are bought and sold. In that case, the application was for the Panda trade mark in respect of shoe polish. The existing Panda trade mark was in respect of shoes. Romer J held that they are not goods of the same description in that their nature and composition are different and the respective use of the articles are different: shoes are used to wear and shoe polish is used for cleaning.

9. In Colman Application (1929) 46 RPC 126, it was held that although mustard and semolina are both food, mustard falls under the description of a condiment and semolina under the description of a cereal, and the goods are not of the same description.

10. In Floradix Trade Mark [1974] RPC 583, it was held that in order for specific goods to be of the same description as other specific goods, it is not necessary that all three criteria laid down in Jellinek  should be fulfilled.

Meaning of singlet and clothes

11. Singlet is defined in Collins English Dictionary as including a man's sleeveless vest, any vest, a garment worn with shorts by athletes, boxers, etc or a black woolen outer garment worn by bushmen.

12. ‘Clothes’ are defined in the New Shorter Oxford English Dictionary as "things worn to cover the body and limbs". Singlets clearly fall within the category of clothes. Clothes may be made of different materials, likewise for singlets. But ultimately the nature is the same. They are clothes for the purpose of covering the body and limbs. Singlet is just a style of clothes, like, for example, long-sleeves or short-sleeves shirts. Clothes other than singlets are still clothes. Applying the test by Romer J, the nature and composition of "clothes other than singlets and underwear" and "singlets" are the same: they are clothes which may be made of different materials. Their use is the same: they are worn as garments. The trade channels through which they are bought and sold are the same: they are sold in shops and department stores. There can really be no further distinction between a "singlet" and "clothes other than singlet" in this regard.

13. At the hearing before the Registrar, the applicant had produced a singlet in plastic packaging, displaying the cited registered mark "555 & device". Ms Tam submitted that the registered proprietor's goods were underwear of the type used by older men.

14. Apart from excluding underwear from its specification, the applicant excluded singlet as well. By doing so, the applicant clearly recognised that singlet may be in a form other than simply as an underwear. No matter how fine one may try to draw a distinction between "singlets" and "clothes other than singlets", they are ultimately garments. The difference is a matter of style and form only. It is quite unlike the examples of condiments and cereals.

Narrow specification

15. In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, the plaintiff had registered "TREAT" for dessert sauces and syrups, the defendant launched a sweet spread labelled "Robertson's Toffee Treat". In the infringement action by the plaintiff, Jacob J held that:

“ . . . First it should be noted that the wider the scope of the concept, the wider the absolute scope of protection of a mark may be. In effect a registration covers the goods of the specification plus similar goods. No one may use the registered mark or a similar mark for any of those goods unless he has some other defence. This suggests caution. Otherwise, however narrow a specification, the actual protection will be wide. In particular this would be so in the important sort of case where a mark owner only got registration on the basis of actual distinctiveness for a narrow class of goods. It would surely be wrong that he should then in practice get protection for a wide range of goods. If a man wants wide protection he can always ask for it and will get it only if his claim is justified.”

16. Ms Tam relied on this case and submitted that in Trade Mark No 317/37, there was an indorsement declaring it to be distinctive pursuant to s.9(5) of the Trade Marks Ordinance of 1909. In other words, the mark only became distinctive by reason of use. Further, the existing trade marks were registered in respect of singlets which is a narrow specification. However, despite the applicant's exclusion of singlet in the goods to which the proposed mark is to be applied, they are nonetheless treated as goods of the same description as singlets. As a result, the existing trade marks would be given a wider protection than they intended to cover.

17. This is a valid point. However, it seems that this will be an inevitable result if the applicant's goods are of the same description as the singlet. The existing marks are, after all, registered trade marks which are given protection by the Ordinance.

Decision correct

18. In my view, the Registrar was clearly right when she came to the conclusion that the applicant's goods are of the same description as the goods covered by the existing trade marks. Bearing in mind the nature of the goods in question, there really is no need for evidence to be called before a determination can be made on this issue by the Registrar. In any event, the burden is on the applicant to call evidence if it wished to do so before the Registrar.

Similar trade marks

19. On the question of similarity of the marks, the test is propounded in Pianotist Co Ltd's Application (1906) 23 RPC 774 at p.777:

“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which theyare to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion      -      that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods      -      then you may refuse the registration, or rather you must refuse the registration in that case.”

First impression

20. On the question whether the marks are deceptively similar, one must take into account first impressions and imperfect recollection: Aristoc v Rysta (1945) 62 RPC 65 at p.72. In most persons, the eye is not an accurate recorder of visual detail and marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole: De Cordova v Vick Chemical Coy (1951) 68 RPC 103 at p.106.

Eclipse and 555

21. The applicant's mark is a composite mark of a device and the numeral "555". The device is an eclipse against a background of the sky and constellations. The Registrar held that the device on its own is inherently distinctive and registrable under s.9(1)(e). In considering the applicant's mark as a whole, she found that "555" is prominent in the mark because the numeral is clearly presented and outlined against the shadowed eclipse device.

The Registrar's view

22. The Registrar considered that the number "555" in the applicant's mark is prominent and eye-catching. "555" is the more readily articulated element of the mark. In relation to the existing trade marks, the number "555" is prominent and centrally placed in the marks and is at least as striking as likely to be remembered as the company name. The Registrar stated that the descriptive characters and the declarative scroll in Trade Mark No 232/40 are the type of additions commonly made to marks and cannot affect the purchasers' public impression of the mark. The existing registered marks would be remembered as "555" marks. Furthermore, the eclipse is not the only way of describing the applicant's device which could equally be described in other ways since the numeral "555" is prominent and eye-catching. The applicant's mark is likely to be referred to as a "555" mark and that is likely to lead to confusion.

Similarity and likelihood of confusion

23. In my view, the decision of the Registrar on the question of similarity and likelihood of confusion is correct. Clearly, the dominant feature of the applicant's mark and the existing trade marks is the "555" numeral. First impressions and imperfect recollections are clearly matters that have an impact on the issue of likelihood of confusion. The applicant argued that the Registrar had attached too much weight to the visual effect and not on the ideas in the mark. Having taken into account the Chinese scroll, the name of the factory inside the scroll and also the two circle marks beside the "555" numeral with the words ‘super’ and ‘thread woven garment’ respectively in Trade Mark no. 232/40, and the eclipse device of the proposed mark, the overall impression of both devices is still that the "555" numeral is the dominant and eye-catching feature of the two marks. The Registrar had recognised that the eclipse device is distinctive. However, when the device and the "555" numeral is combined together, the overall impression is that the "555" mark is the prominent feature.

24. I further accept the Registrar's reasoning that the goods of the respective marks are ordinary goods. Purchasers of ordinary goods are unlikely to exercise any particular care in purchasing them. This may make confusion more likely.

Disclaimer

25. The applicant offered to disclaim the exclusive use of the "555" numeral. However, it is clearly stated that a disclaimer does not affect the significance which a mark conveys to others when used in the course of trade. Disclaimers do not go into the market place and the public generally has no notice of them: Granada Trade Mark [1979] RPC 303 at p.308.

Conclusion

In my view, the Registrar's decision is correct and the appeal is accordingly dismissed with costs nisi to the respondent.

Ms Winnie Tam, instructed by Messrs Johnson Stokes & Master, for the Applicant

Mr Herbert Li, SGC of Department of Justice, for the Respondent