THE QUEEN v. WONG YAM YIN

IN THE SUPREME COURT OF HONG KONG

APPELLANT JURISDICTION

MAGISTRACY APPEAL NO. 1172 OF 1992

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J U D G M E N T

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1. This is an appeal against conviction in respect of two charges of possession for sale of goods to which a mark so nearly resembling a trade mark as to be calculated to deceive was falsely applied, contrary to s.9(2) of the Trade Descriptions Ordinance, Ch.362. The evidence at the trial before the magistrate was tendered by agreement under s.65C of the Criminal Procedure Ordinance, Cap.221, and no oral testimony was adduced. The magistrate found the appellant guilty of both charges after hearing arguments from counsel for both parties.

2. Kokusan Kinzoku Kogyo Kabushiki Kaisha, a Japanese joint stock company is and was at the material time the proprietor (“the proprietor”) of a registered trade mark No.1445 of 1977 registered in Class 6 on 12th July 1973 with the Register of Trade Marks, Hong Kong. On Exh. P3, a certified true copy of the original entry in the Trade Marks Register, it can be seen the registered trade mark consists of a word “ALPHA” with the alphabet “A” at the beginning and the end of the word written in a stylised manner, and on the top of this word, there is a small “a” inside a frame in the shape of a diamond as on playing cards put sideways; i.e., <a>. I shall call this small “a” inside the diamond frame “the a logo”. It was also noted in the Register that the registration of the trade mark should give no right to the exclusive use of the letter “a”. The goods covered by the registration are locks and keys. Exh. P4 is a sample of the proprietor’s goods, from which it can be seen how the registered trade mark was applied to the key, the latch of the lock and the packaging box containing them.

3. The goods seized from the appellant’s premises for which the two charges were laid were packaging boxes containing locks, latches of the locks and keys to the locks. Exh. P5 is a sample. For ease of reference, I shall call them the appellant’s goods or key or latch or box, as the case may be. The alleged infringing mark as found on the appellant’s box contains the word “ALRHA” in various places, with the alphabet “A” in both places not written in a stylised manner as that in the registered trade mark. However, on the appellant’s key and the appellant’s latch on which the word “ALRHA” was impressed, the stylised “A” appears. Nowhere on the appellant’s box, key or latch was the a logo applied.

4. The issues raised in the perfected grounds of appeal before me revolve around whether the marks used on appellant’s goods so nearly resemble the registered trade mark as to be calculated to deceive.

5. Under findings, the magistrate wrote :

“I accepted Mr Wong’s arguments that passing off actions were different from actions of infringement of trade marks. In determining whether there was a near resemblance between the infringing mark and the trade mark I could only look at the resemblance between the former and the registered trade mark which appeared on the Certificate (exh. P2) without reference to the get-up of the goods and the trade mark actually printed on the genuine goods. The word “ALRHA” closely resembled the word “ALPHA”. The former word as printed on the keys the latch of the lock and on the package differed from the latter only by a small additional vertical stroke in the third alphabet “R”. This stroke was so small that it would escape the undiscerning eye and that I found the word nearly resembled the registered trade mark. This was so despite that the small logo “a” was missing from the infringing mark.

The next question was whether the resemblance was so near as to be calculated to deceive. In deciding that, contrary to what Mr Wong contended, I should consider how the trade mark was put on the genuine goods. The infringing mark was put on the more or less similar position on the keys, latches, the package box as the genuine goods. The sizes of the infringing marks were similar to those marks in the corresponding positions in the genuine goods. An end user did not always had (sic.) the chance of seeing the two types of locks at the same time or closely examining and comparing them side by side. The two types of locks might be sold at different prices. This only show that there was no intention to deceive the end user. However it was not necessary for the prosecution to prove an intention to deceive, a likelihood to cause confusion would be enough. Because of all these, an ordinary end user in the street with reasonable intelligence and perception on seeing the set of lock bearing the infringing marks could be deceived into thinking that such set of lock was of the same type and origin as those that bore the genuine trade marks. Accordingly I found the charges proved beyond all reasonable doubt.”

6. The first ground of appeal is that the magistrate was wrong in law to compare the marks on the appellant’s goods with the marks on the proprietor’s goods. He should have only compared the marks on the appellant’s goods with the trade mark as appears on the register of the trade mark.

7. The magistrate made no mistake in treating infringement of trade mark differently from passing-off. Kerly on Trade Marks, 12th Ed., p.433, para. 17-01 reads :

“Questions whether there is or is not a deceptive resemblance between two marks, ... arise in several different proceedings which form the subject of different chapters in the book. ...

There are, however, differences in the way the rules governing this matter must be applied in the different proceedings. Thus actions for infringement and actions for passing-off raise rather different questions: in infringement, the question is whether the marks as such are confusingly similar, whilst in passing-off, the question is rather whether what the defendant has actually done is confusing or deceptive in the light of the plaintiff’s actual reputation. Thus passing-off depends on circumstances of use that would be irrelevant to infringement, whilst infringement involves consideration of the use the plaintiff might (fairly and within his registration) make of his mark.”

8. Miss Lam, for the appellant, directed my attention to Re Lyndon’s Trade-Mark (1886) 32 Ch. D. 109, CA, where an application to register a new mark was opposed by the proprietor of an existing registered trade mark. It was held by the Court of Appeal that the new mark was to be compared with the registered trade mark and not with the mark which the opponent had used on his goods. Bowen, LJ at p.120 said :

“We must compare the trade-mark which it is desired to register, with the trade-mark already on the register, as registered, although, as I have said, we are not confined to the paper registration, but must see how the proposed mark will probably in the legitimate user of it shew itself on the article upon which it is to be impressed.”

Cotton, LJ at p.117 also had this to say :

“I quite agree that we are bound not to look only to the figure on the register, but to consider what it will be like when used in the way in which it has to be used. ... the question is, if what you propose to register is fairly used will it be calculated to deceive? It was said part of it may be left out, and part of the opponent’s mark may be left out, and then they will be very much alike, but I am of the opinion that if the opponents leave out an essential part of their trade mark, what they use will not be their trade-mark. It is quite true that if a stranger uses the essential part of a registered trade-mark he will be restrained from such user, though he is not using the whole, because what he is doing is calculated to pass off his goods as the goods of the owner of the mark, and as I said before in In re Edwards’ Trade-mark, I think it was the general object of the Trade Marks Act not to give new rights, but to regulate the use of, and the means of protecting, trade-marks.”

9. I was also referred to the approval by Roberts, CJ in R. v. Chow Ng-lau and Anr. (MA No.1049/86, 13/11/86, unreported) of the approach of Deputy Judge H. Wong in R. v. Yan Yiu-wing & Ors (MA No.390/86, 19/5/86, unreported) where the Deputy Judge commented that there could be no quarrel on the aptness of the test applied by the magistrate which was “whether the infringing mark applied to the jeans in question so nearly resembling the registered trade mark as to be calculated to deceive”.

10. However, it is not at all clear from the above judgments whether it is permissible to compare the alleged infringing mark with the registered trade mark as applied to actual articles of the owner of the registered trade mark. This point was clarified by Christiansen (1886) 3 R.P.C.54, 59, where the Master of the Rolls said :

 “The first point in logical order in this matter is to consider whether we are to look only to the register itself, or whether we are to look at something else. That question was really raised in the case of Re Worthington’s Trade Mark, L.R.14 Ch. Div.8, ... it was held that you were to look at the manner in which they (the two marks in question) would probably be used in the course of trade, and, it being there determined that in the trade they might be printed of any colour although there was one colour only put on the Register, that you ought to look at the manner in which they would be used in the course of trade, and not merely at the Register.”

11. It follows, therefore, that the magistrate had committed no error in looking at the appellant’s marks on his goods and comparing the same with the registered mark as used on the proprietor’s goods. Attention, however, has to be paid to the fact that apart from the registered mark with the stylised “A” in the word “ALPHA” and the a logo used in relatively small print on the front and back of the box of the proprietor’s goods, the large prints of “ALPHA” on various parts of the box were without the stylised “A” and without the a logo. If the magistrate had compared the marks on the appellant’s box with those on the proprietor’s box without noting these differences, then he would have fallen into error. However, there is no indication that was what he did.

12. The appellant’s complaint boils down to the fact that as the proprietor did not use the trade mark as registered on the box in any prominent position, the get-up of the box is irrelevant, because this case must be considered differently from a passing-off action. Moreover, as the a logo was not applied by the proprietor on its key and latch, the impression of the word “ALRHA” on both the key and the latch of the appellant’s goods could not be considered as an infringement of the registered trade mark.

13. In this connection, it is pertinent to note the judgment of Sir T. L. Yang, CJ in AG v. Yao Ching-pin (MA No. 758/92, 2/1/93, unreported), in which the learned Chief Justice cited what Lord Radcliffe said in In De Cordova v. Vick Chemical Company (1951) 68 RPC 103, at 105 :-

“Their Lordships consider the Court of Appeal were right in holding the Appellants had infringed Trade Mark 1852. They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with the goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. It is sufficient to refer to the words of Lord Cranworth L.C., in Seixo v. Provenzende (1886) L.R. 1 Ch.192 at p.197: ‘If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adaptation by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device.’ Decisions to the same effect are to be found in Ford v. Foster (1872) L.R. 7 Ch.661, Orr Ewing & Co. v. Johnston & Co. (1880) 13 Ch. D. 434, Saville Perfumery Ltd v. June Perfect Ltd. (1941) 58 R.P.C. 147. The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed under such conditions. 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.”

14. Miss Lam’s argument was that the a logo formed an integral and essential part of the registered trade mark, and it made a distinct and distinguishing impression on the eye. For those who knew or who knew of the registered trade mark, they could not fail to appreciate that the appellant’s goods were not the proprietor’s because of the absence of the a logo on the appellant’s box, key and latch. On the other hand, Miss Lam conceded that the stylised “A” in the word “ALPHA” was also one of the essential features in the registered trade mark. Although the stylised “A” was not used on the appellant’s box, the word “ALRHA” used on the appellant’s key and latch has a stylised “A”, similar to that used in the registered trade mark. In the circumstances, I cannot say that magistrate was wrong in stating that :

“The word ‘ALRHA’ closely resembled the word ‘ALPHA’. The former word as printed on the keys the latch of the lock ... differed from the latter only by a small additional vertical stroke in the third alphabet ‘R’. This stroke was so small that it would escape the undiscerning eye and that I found the word nearly resembled the registered trade mark. This was so despite that the small logo ‘a’ was missing from the infringing mark.”

15. The other grounds of appeal are as follows :

(2)     The learned Magistrate erred in law in failing to or to sufficiently consider all the circumstances that he was required to consider, which included, apart from their appearances, the sounds and ideas of the 2 marks, the nature and price of the goods to which the marks were applied and the kind of customers who would be likely to buy these goods.

(3)     The learned Magistrate erred in law to hold that “an ordinary end-user in the street” would be deceived without considering sufficiently or at all who the prospective purchasers of the goods to which the marks are applied will be or will likely to be.

(4)     In all circumstances, there was no or no sufficient evidence whereon to found the convictions.

16. Miss Lam’s complaint, in a nutshell, is that the magistrate wrongly separated his consideration “whether the appellant’s mark was so nearly resembling the registered trade mark as to be calculated to deceive” into two steps, by first considering whether the appellant’s mark resembled the registered mark, and then separately considering whether the resemblance was so near as to be calculated to deceive. She also complained that the magistrate did not take into account all the relevant circumstances in reaching his conclusion.

17. Counsel, however, had not been able to refer me to any authority that separating the consideration of “resemblance” and that of “as to be calculated to deceive” was a wrong approach. I would have disposed to say that it appears preferable for the court to consider deceptive resemblance as one integral issue but for the fact that the two-step approach was adopted by Sir Wilfred Greene, MR. in “June” (1941) 58 R.P.C.147, at 161 where he said :

“The questions therefore arise: First, is there a resemblance, and, second, is the resemblance so close as to be likely to cause deception?”

18. Regarding what circumstances must be looked at for deciding the issue whether the resemblance was so near as to be calculated to deceive, my attention was drawn to Feltcher Moulton & Langdon Davies : “The Law of Merchandise Marks”, p.5, where the learned authors stated :

“In fact, all the relevant circumstances must be considered - e.g., the nature of the goods, their price, their uses, the class of prospective customers, etc.”

19. In Pianotist (1906) 23 R.P.C.774, 777, a case involving the comparison of two words, Parker J. said as follows :

“... without going into the details of the cases, it may be taken that the law is as follows: - You must take the two words. You must judge 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.”

20. The various circumstances that the court should look at are dealt with in detail in Kerly on Trade Marks under the heading of Rules of Comparison, paras.17-07 to 17-23.

21. Miss Lam complained that the magistrate had failed to consider the references to the respective goods in the trade of the appellant as shown on the invoices produced in evidence, the sound of “ALRHA” as distinct from the sound of “ALPHA”, the sound of “red AR” shown in the invoices as distinct from the sound of “red A”, the idea of “ALPHA” being the first alphabet in Latin whereas the word “ALRHA” had no meaning, and the fact that it was locksmiths who were the likely customers of this kind of goods and not end-users in the street. Miss Lam stressed the likely customer which the court ought to consider by referring me to Alaska Packers’ Assoc. v. Crooks & Co. (1901) 18 RPC 129. At p.137 of the report, Kekewich J. referred to Payton v. Snelling (1900) 17 RPC 628 and said :

“There is a passage in Lord Justice Romer’s judgment which to my mind is of very great value, because I think he rather corrects the views expressed in many cases, that you have only to think of the unwary customer. The unwary customer is extremely difficult to find. Now Lord Justice Romer says this, and having regard to what Lord Macnaghten said in the House of Lords about the judgment, I think it is not unfair to say that it was approved by the House of Lords :- ‘It seems to be a sort of popular notion of some witnesses that, in considering whether customers are likely to be deceived, you are to consider the case of an ignorant customer who knows nothing about, or very little about, the subject of the action. That is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the Plaintiff’s goods - those characteristics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the Plaintiff’s goods by reason of these distinguishing characteristics. If he does not know that, he is not a customer whose views can properly, or will be, regared by this Court.’ That will get rid in many cases, I hope, in future, of a great deal of evidence which takes up time and is of a very trivial character - evidence of young people - like girls out of lodging-houses, who run in and want another tin of what they had yesterday, but do not really know the difference. They get, say, a tin of salmon, perhaps with a head on it, and they are easily deceived, and they do not know the difference. Customers of that kind are not to be regarded.”

22. Kerly at para. 17-05 states :

“... the persons to be considered in estimating whether the resemblance between the marks in question is likely to deceive are all of those who are likely to become purchasers of the goods upon which the marks are used, provided that such persons use ordinary care and intelligence.”

23. As I said before, there can be no dispute that it was proper for the magistrate to compare the appellant’s mark and the registered trade mark as appeared on exhibits P5 and P4. The ocular view of the magistrate as to the resemblance of the words “ALRHA” and “ALPHA” also cannot be challenged. The magistrate did take into account for his consideration of the issue of deceptive resemblance the positions in which the appellant’s mark and the registered trade mark were put on the two exhibits, the sizes of the two marks and the different prices of the respective goods.

24. It appears to me, however, that the magistrate failed to have limited his consideration of the issue to the evidence adduced before him. Copies of the invoices issued by the appellant to his customers were included in the agreed facts and were exhibited. The agreed facts and all the agreed evidence were admitted under s.65C of the Criminal Procedure Ordinance, and as such neither the Crown nor the appellant could rebut or contradict them. The parties also admitted that on the invoices which were written in Chinese, “red A” referred to the genuine ALPHA goods and “red AR” referred to the appellant’s goods. The references to these two types of goods in the invoices were different, the prices very different - the appellant’s goods about slightly over one half of the price of the genuine goods, and the sounds of how the respective goods were called in the appellant’s trade in Chinese (following their descriptions in the invoices) were different. Apart from the invoices, there was simply no evidence as to who the purchasers were or would be. It was shown in the agreed facts that the appellant was the wholesaler of the two respective goods, and he sold them to his customers as two distinct and different types of goods, differently called and differently priced. It could be inferred from the quantities sold to such customers that they were retailers. I am of the view, therefore, that the magistrate had failed to consider the issue in the light of the only evidence concerning purchasers before him and he erred in considering the position of the end-users and concluding that they were likely to be deceived or confused. There was no evidence as to the impression of the end-users of the two types of goods, nor indeed was there evidence that the end-users were or would be the ultimate purchasers. The only evidence available was that the appellant sold his goods as a wholesaler to various retailers. The magistrate should therefore have confined himself to such evidence and consider the issue as to resemblance likely to cause confusion in the light of such evidence. He should have considered whether the purchasers as shown on the evidence or likely purchasers of the same category were likely to be deceived or confused. It is apparent from the record that he had not done so; rather he considered the position of the end-users which was unsupported by the evidence. If he was allowed to consider the end-users as he did, then it would have been equally open to Miss Lam for the appellant to say to me, without any evidence in support, that the purchasers of the two types of goods, or one or the other of them, would only be locksmiths, builders, decorators and masons who were the persons to install them on doors for the ultimate consumers, and that there was no likelihood or even possibility that such specialist customers could be deceived. The court would also have to consider whether in the local circumstances it was likely that these two types of locks were likely to be bought by the end-user or consumer in shops or supermarkets for him to install them in his own home. Or on the other hand, the court would also have to consider whether the English names of the two types of goods, their ideas and meaning, and how they are pronounced in a foreign market, would be likely to cause confusion. I do not think that this is a legitimate exercise into which the court should enter.

25. There is no dispute that the decision of the magistrate on whether the appellant’s mark so nearly resembled the genuine registered trade mark as to be calculated to deceive is a finding of fact (see Kerly, para. 17-08) and in the usual case, a finding of fact cannot be interfered with by an appellate court. This is one of those cases where the appellate court is in as good a position to evaluate the evidence, all of which is on documents without any testimony from witnesses the credibility of whose oral evidence the magistrate has decided after observing their demeanours. The same approach was adopted by the learned Chief Justice in R. v. Chow Ng-lau & Anr., ibid.

26. The evidence is this case is very limited regarding the purchasers and likely purchasers. The purchasers were on the evidence retailers who bought the two types of goods, or one or the other of them, from the appellant as wholesaler. The two types of goods were differently and distinctly described as “red A” and “red AR” respectively, and sold at very different prices. There is no evidence whether the name “ALPHA” was so well known in the lock trade that purchasers like those on the evidence would be confused by the name “ALRHA” to think that “ALRHA” was the product of the proprietor of “ALPHA”. On the evidence as a whole, the use of the word “ALRHA” on the appellant’s box does not seem to infringe the trade mark as registered, because the stylised “A” and the a logo of the registered trade mark, both of which are the essential, distinct and distinguishing features of the trade mark, are not in anyway employed on the box. Despite the close resemblance between “ALRHA” and “ALPHA” and the stylised “A” being used in the word “ALPHA” on the appellant’s key and latch, the prosecution’s case against the appellant in respect of both charges cannot be said to have been proved beyond a reasonable doubt that the purchasers on the evidence who bought and those who would be likely to buy the proprietor’s goods alone or the two types of goods together on the same occassion or different occasions would be likely to be confused or deceived.

27. In the result, I allow the appeal. The convictions are quashed and the sentences set aside.