RE THE WELLCOME FOUNDATION LTD

1988 M.P. No. 2102

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H E A D N O T E

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This was an appeal against a decision of the Registrar of Trade Marks, allowing the registration of a trademark "Meptin" relating to a pharmaceutical product. The appellant, who was the proprietor of the trademark "Septrin" another pharmaceutical product used for the same purpose opposed the registration on the grounds that the phonetic resemblance of the two words was likely to deceive or confuse the majority of the purchasing public.

HELD:-    1. The respondent had to establish that there could be no likelihood of deception or confusion arising between the two words, either visually or phonetically.

2.    The test laid down in Pianotist Co. Ltd. (1906)23 RPC 774 to compare the two words as a whole and not syllable by syllable was followed.

3.    As there was no likelihood of confusion between the two words either visually or phonetically and no evidence of improper motive, the appeal was dismissed.

Obiter : the policy of the Trade Marks Ordinance is to allow legitimate traders to have their honest trademarks registered.

1988 M.P. No. 2102

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. This is an appeal from a decision of Miss A.C. Waters acting for the Registrar General as Registrar of Trade Marks, (the Registrar) dated the 22nd July 1988, although the beening was held on the 10th December 1985, allowing the registration by Otsuka Pharmaceutical Co. Ltd. (the respondent) of the mark "Meptin" in Class 5 of Schedule IV in respect of pharmaceutical drugs and medicines in Part A of the Register. The registration is opposed by the Wellcome Foundation Limited (the appellant) who are the registered proprietors of the mark "Septrin" in Class 5 of Schedule IV in respect of all goods included in such class.

2. The appellant is a large pharmaceutical company in England which has factories in other parts of the world. The mark "Septrin" is used for pharmaceutical and medical preparations and substances including products for the use in the treatment of bacterial infections of the respiratory tracts. "Meptin" is also used in respect of pharmaceutical preparations for the same purpose.

3. Septrin has been registered in the United Kingdom as a trade mark since December 1947 and appears to have been first used there in about 1968. The mark has also been registered in a number of other countries in the world and was registered in Hong Kong in 1969. However, Septrin has not been registered in Japan. The first user in Hong Kong was in 1971. From an annual turnover of $282,232.06 for the year 1971/72, sales increased to $739,499.00 in 1981/82, at the time when the respondent made the application to register the mark "Meptin".

4. The respondent is a pharmaceutical company in Japan where the mark "Meptin" was registered in 1978. The mark has also been registered in a number of other countries including some countries where the appellant has registered "Septrin".

5. The respondent applied for the registration of "Meptin" in Hong Kong in 1979 and have used the goods in Hong Kong since 1981.

6. The appellant opposes the registration of the mark under sections 12(1), 20 and 23 of the Trade Marks Ordinance and I will now set out the provisions of those sections.

"12.    (1) It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or would be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design.

20.     Except as provided by section 22 no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.

23.     The Registrar may refuse to register any trade mark if it is proved to his satisfaction by the person opposing the application n for registration that such mark is identical with, or so nearly resembles as to be calculated to deceive or cause confusion, a trade mark which is already registered in respect of the same goods or description of goods in a country or place from which such goods originate :

    Provided that no application to register shall be refused under this section -

(a)    if the applicant proves that he or his predecessors in business have in Hong Kong, in relation to such goods, continuously used the trade mark for the registration of which he has made application from a date anterior to the date of the registration of the other mark in such country or place of origin; or

(b)    if the opponent does not give an undertaking to the satisfaction of the Registrar that he will, within 3 months from the giving of the notice of opposition, apply for registration in Hong Kong of the trade mark so registered in the country or place of origin, and will take all necessary steps to complete such registration."

7. Mr Thomas, Q.C., who appeared for the appellant, submitted the following questions for consideration under section 12 and section 20. The first question under section 12 reads "Having regard to the reputation or the use of the mark 'Septrin' in Hong Kong by the appellant, is the court satisfied that 'Meptin' if used in a normal and fair manner in connection with any goods covered by the proposed registration will be unlikely to cause deception amongst a substantial number of persons?". The second question under section 20 "Assuming the use of the mark 'Septrin' in Hong Kong in a normal and fair manner for any of the goods covered by the registration (and including particularly goods covered by the proposed registration), is the court satisfied that there will be no reasonable likelihood of deception or confusion among a substantial number of persons if 'Meptin' is used normally and fairly in respect of any goods covered by the proposed registration. Both these questions are derived from similar questions that were formulated in Smith Hayden & Co. Ltd (1946)63 R.P.C. 97 see the judgment of Evershed J. at 101. Mr Rogers, Q.C., counsel for the respondent formulated one question that covered the position under section 20 in practically the same terms.

8. The burden lies upon the respondent to establish to the satisfaction of the court that there is no likelihood likelihood of deception or confusion. Mr Thomas conceded that if he fails under sections 12 and 20, he cannot succeed under section 23.

9. In order to determine the issue of resemblance as likely to deceive, the Registrar's attention was drawn to the test set out by Parker J. in the Pianotist Company Ltd (1906)23 R.P.C. 774 where at 777 he said :-

"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 they are 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."

10. The hearing of this appeal is by way of rehearing so that it is my duty to consider the case afresh, although having regard to the wide experience of the Registrar, great weight should be given to her decision, which should not be lightly disturbed see F. Reddaway & Co. Ltd. [1927]44 R.P.C. 27.

11. In considering the persons who are likely to be deceived and the nature of the goods, the Registrar considered the possibility of confusion and considered that the evidence of user by the respondent after the date of the application could be taken into account. She decided that upon the evidence, the products could be sold over the counter to members of the public and did not require a doctor's prescription.

12. Mr Thomas did not seek to argue the question of visual resemblance for it is clear that there could be no deception or confusion arising from the get-up of the two products which are clearly distinguishable. The argument has therefore concentrated upon the phonetic resemblance of the two words on the basis that "Meptin" so closely resembles "Septrin" as to be likely to deceive or confuse those seeking pharmaceutical treatment for respiratory infections. In particular, I was urged to take into consideration the fact that the majority of members of the purchasing public in Hong Kong are likely to be Chinese, many of whom do not read or understand English. In comparing the two marks, the Registrar, in her decision at page 15, analysed the two words as follows :-

"MEPTIN consists of 6 letters and 2 syllables and would be pronounced as MEPTIN with equal emphasis on the two syllables. I consider it unlikely that TIN would be slurred so as to drop the 'n' although I suppose if said quickly it could be pronounced 'TUN' but I suspect this is not really fair use.

SEPTRIN consists of 7 letters and 2 syllables and would be pronounced as SEP TRIN or SEPT TRIM in both cases with equal emphasis on the 2 syllables. Mr Garland suggested there was a possibility that the R could be lost with which I agree but equally I consider it could be emphasised by 'rolling' the 'R'. Again I think it is unlikely that the second syllable would be slurred."

13. Mr Thomas, levelled criticism at the Registrar's decision when she said that "the marks do have similarities but I have to consider the sounds of the two marks MEPTIN and SEPTRIN when compared as a whole and I find that there is a difference and that the phonetic resemblance is slight." Mr Thomas disagreed with that view contending that the sounds of the two words are strikingly similar and rhyme whilst the "R" would be slurred.

14. There was no admissible evidence before the court of either deception or confusion with the result that it is for the court to decide whether one mark so nearly resembles the other as to be likely to deceive or to cause confusion.

15. The task of the Court is to look at the two words as a whole and not to compare them syllable by syllable see William Bailey (Birmingham) Ltd (1935)52 R.P.C. 136. In considering this matter, I have taken into account imperfect recollection and enunciation which is not clear and to orders being made over the telephone and over the counter, which matters were taken into consideration by the Registrar together with the fact that the local population is 98% Chinese. My views on these points coincide with those of the Registrar. The Registrar also properly disregarded the question of concurrent registration which was not an issue upon the appeal. There is a marked difference between the pronunciation of the first syllable of the two words which, in my judgment, could not conceivably cause any confusion. Further, I agree with the decision of the Registrar that the "R" in "Septrin" would not be slurred. As has been said in the authorities see Aristoc Ltd v Rysta Ltd (1945)62 R.P.C. 65 and Smith Hayden & Co. Ltd, the issue is one of first impression and my first impression was that there could be no likelihood of confusion arising between the two words, either visually or phonetically. The sound of the first syllable of the two words is quite distinct. In the circumstances, I have no hesitation in coming to the conclusion that the Registrar was entirely correct in the decision that she made. The onus of proof has therefore been discharged by the respondent. Further, there was no evidence that the respondent had any knowledge of Septrin before the application was made to register Meptin or that there was any improper motive in making the application.

16. There remains one submission raised by Mr Thomas upon which I should comment which concerns the policy of the Trade Marks Ordinance. He argued that the policy is to ensure fair competition and to decide the boundaries of unfair competition so that newcomers to the trade should be discouraged from sailing close to the wind. However, I am unable to agree that this is the policy that underlies the ordinance, but that it is to allow as submitted by Mr Rogers legitimate traders to have their honest trade marks registered.

17. In the result, the appeal will be dismissed with costs.