RE "HICALIQ", THE TRADE MARK

1994, MP. No.638

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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D E C I S I O N

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1. This is an appeal from a decision of Mr. Fox acting for the Registrar of Trade Marks whereby he held that the Applicant had overcome the opposition to registration of its trade mark HICALIQ and allowed registration thereof. The mark as applied for was for a broad range of goods in Class 5. The Applicant has, however, limited the goods to which its application now relates to a "Parenteral solution for intravenous hyperalimentation". This is a product which is used in relation to patients who are unable to take food orally and therefore the solution is passed into the blood stream by means of what is commonly referred to as a drip. The Opponents are the local representative of the pharmaceutical division of Beecham Group Plc, one of whose trade marks, HYCAL, is registered in Part B in respect of a demineralized glucose drink containing calories prepared for invalids. The specific product to which it has been applied in the past is a drink which was developed in cooperation with the renal research unit of Leeds General Infirmary for use in cases of acute and chronic renal failure. There are a large number of other conditions where the use of this product is beneficial. The Opponents' HYCAL product has been on sale in Hong Kong for upwards of 25 years and although the volume of sales might appear to be small, when viewed in the context of the specialized product which it is I am prepared to accept it is significant.

2. Some point was sought to be made in the first declaration on behalf of the Opponents that there was a material irregularity in the restriction of the specification of goods. I am not sure as to the basis of the point that was sought to be made and Mr. Garland, who appeared for the Opponents, told me that he and those instructing him took a conscious decision not to pursue the point below and therefore when I raised the matter with him, he explained that this was not a point which was being pursued here and I say no more about it.

3. The objection to the registration is based on Section 12, Section 20 and under Section 13(2) of the Trade Marks Ordinance. Mr. Garland's point on the appeal was put very concisely and directly. He said that the Hearing Officer framed the correct test, but when he came to apply it, he came to the wrong decision. The formula for the tests which the Hearing Officer applied was a more restricted version of the time honoured tests which he set out in para. 36 of his decision:-

(a) (Under section 12(1))"Having regard to the user of the opponent's mark is the tribunal satisfied that the mark applied for, if used in a normal and fair manner in connection with the goods covered by the registration proposed, will not be likely to cause deception and confusion amongst a substantial number of persons? May a number of people be caused to wonder whether goods under the respective marks come from the same source? Is there a real tangible danger of confusion if the applied for mark is put on the Registrar?"

(b) (Under section 20) "Assuming user by the Opponent of its mark in a normal and fair manner for the goods covered by its registration, is the tribunal satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the Applicant also uses its mark nonnally and fairly in respect of the goods covered by its proposed registration?"

The restriction which Mr. Fox applied was to disregard the word "substantial" since it was inappropriate, and to substitute references to "real tangible" and "reasonable" with the word "small". The reason for the substitution lies in the fact that the instant goods are pharmaceutical and the danger of mistake in identity of a pharmaceutical product could lead to disastrous consequences. For the purposes of this case, I am prepared to adopt the same approach, although it may not necessarily be appropriate in all cases where pharmaceutical substances are being dealt with that such a test is applied.

4. Mr. Pao on behalf of the Respondents urged me to pay particular attention to the finding of the Hearing Officer in respect of confusion. He drew my attention quite rightly to the case of In the matter of an Application by Bayer Products Ltd. 64 RPC 124, where at p.131 Wynn-Parry J. cited the Decision of Farwell J. in Re An Application by William Bailey (Birmingham) Ltd. where in a decision under what corresponds to Section 20 the learned judge said that in his judgment the Court interferes with the decision of the Registrar, only where it is satisfied that the Registrar has acted on some wrong principle, for example, has not approached the problem in the right way, or has taken into consideration matter which he ought not to have taken into consideration, or has omitted to take into consideration matters which were proper for consideration.

5. I do not consider it is necessary in this decision to examine fully the powers of the Court and what precisely comes within the meaning of discretionary powers in S.79(2) of the Trade Marks Ordinance, since I consider that the Hearing Officer came to the right decision. I would, however, say that in matters of this sort in common, I believe, with all my predecessors both in this jurisdiction and elsewhere, the Court always gives due consideration to what has been said by an experienced Hearing Officer.

6. In my view, the possibility of confusion between the two marks is so slight in the circumstances of this case that I consider that registration should be allowed. If one considers the way in which Lord Parker dealt with the matter in the Pianotist case 23 RPC at 777, where he said that one had to compare the words both by their appearances and by the sound and to consider the kind of customer who would be likely to purchase the goods and all the surrounding circumstances, in my judgment, one comes to the inevitable conclusion that there would not be confusion. There is always a danger in applying tests with multiple factors to be considered of separating out the questions into so many different categories, that one loses sight of the overall test.

7. I consider that there is no reasonable likelihood.of deception and confusion by reason of any legitimate hypothetical use of the mark HICALIQ.

8. The look of the two marks HYCAL and HICALIQ is to me very different. To my eye, at any rate, the word HYCAL is a compact mark which can easily be taken in at a glance by the eye. The word HICALIQ is at first glance a complex word and my immediate reaction when I first saw it, was that it was probably unpronounceable. On reading it, it is of course pronounceable, but I do not consider that there is any similarity in the looks of the two words. On this point, a tentative argument was put forward that given the often hurried nature of a medical practitioner's handwriting, there may be difficulties in deciphering one rather than the other. My own view is that even given such circumstances, I can scarcely see how the two words would be confused, short of the writing being virtually illegible in any event. My own view is that a word such as HYLAC which apparently is also registered as a pharmaceutical trade mark is far more likely to be confused with HYCAL when written, since in handwriting C's and L's can often come out looking similar. I can hardly see scope for confusion in the present case other than instances where one or other of the marks simply has not been written.

9. Turning to the sound of the marks, I comment here, first of all that there is scarcely, it seems to me, any admissible evidence. The matter contained in the statutory declarations seems to me to be largely argument supplemented by inadmissible statements of opinion. As has been said on many occasions, the question of whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 20 of the Trade Marks Ordinance is primarily one of first impressions. The Hearing Officer treated the visual and phonetic similarities, or rather differences, on the same footing. I doubt whether I myself would have been disposed to do so, since I consider that there is a closer affinity in the phonetic resemblance than in any visual resemblance. This is perhaps acknowledged however, in para. 57 of the Hearing Officer's Decision whereby he finds that the final syllable IQ is unlikely to be slurred and that this militates against the weight which should be attached to the identical first 2 syllables of the marks. He concludes that there are phonetic differences between the marks not, it seems to me, holding that there are extravagant differences. In keeping with the observations of Farwell J. in the case to which I have referred I would not disturb his finding. Particularly, I would not do so, because I agree with his final conclusion.

10. I turn to consider the goods and the nature and kind of customer who would be likely to buy the goods and to use the test of Parker J. in the Pianotist case to consider all the surrounding circumstances. It is clear to me that in respect of both sets of goods, one could categorize them as being specialized products used for feeding purposes in hospitals. There it seems to me the similarity stops. The Opponents' goods relate to a drink. On the other hand, the Applicants' goods relate to something which is first of all specifically not a drink and is something which is prepared for intravenous introduction. Although the specification of goods does not specifically so state, it seems to me inevitably this must be a sterile solution suitable for use as a drip and undoubtedly packaged as such or possibly, as put in argument but I can scarcely imagine it, for use as an injection. I acknowledge that this product could be purchased without a prescription. The possibility however, of somebody who is not medically qualified administering goods falling within the Applicants' specification either to himself or to somebody else must, it seems to me, be something which is so remote that I should disregard it. Any medically qualified person who was intending to use an intravenous drip feed or else inject a patient would it seems to me never use a drink for that purpose. Even if I were to postulate the hypothetical customer or user to be somebody looking for a drink, the suggestion that when presented with a solution which is packaged for intravenous feeding or perhaps injection purposes, he would use it as a drink must again it seems to me be more than remote. Weighing all these matters together, I come to the conclusion that there is not even a small danger of confusion which will lead to confusion between goods marked with the Applicant's trade mark and goods marked with the Opponents'. Hence, I do not consider that there is any realistic possibility of confusion as even on the more stringent test to which I have referred, the mark should be refused.

11. Mr. Garland on behalf of the Appellant did not seek to suggest that the test under Section 12 of the Ordinance would carry his client's case any further than it would under Section 20 rather he tended to suggest that the Section 20 test would be more favourable to his case. With that I tend to agree and pass to the other major point upon which the Appellant relies.

12. I have been urged that the application should be refused on the grounds of discretion under Section 13(2) of the Trade Marks Ordinance. Particular reliance was placed upon the dangers that would be attendant upon a risk of confusion in respect of pharmaceutical products. Reliance was placed on the case of Harker Stagg Ltd.'s Trade Mark 70 RPC 205 which indicates the importance and care which the Court must apply to trade marks in the pharmaceutical field and the risk of confusion and also to the case of Edwards' Trade Mark 63 RPC 19 at p.23. I appreciate that mistakes occur and in the pharmaceutical field and specifically in relation to the goods to which this application relates and the Opponent's goods, that these could be serious if not fatal. It is not necessary to go as far as the article in the Observer newspaper of the 13th October 1991 to know that this is so. But in my view, in order for there to be confusion, in the circumstances of this case, there would have to be more than one single act of negligence, but a combination of factors and mistakes would be necessary before there would be a likelihood of confusion causing danger to health. In those circumstances, I do not consider it is right for me to exercise my discretion to refuse the trade mark.

13. I, therefore, dismiss the appeal and make an Order Nisi that the Appellant do pay the Respondent's costs to be taxed if not agreed.