VITA GREEN HEALTH PRODUCTS CO LTD v. VITASOY INTERNATIONAL HOLDINGS LTD

HCMP 593/2014

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 593 OF 2014

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J U D G M E N T

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INTRODUCTION

1. On 30 May 2008, the appellant, Vita Green Health Products Company Limited, filed an application under the Trade Mark Ordinance, Cap 559 (“the Ordinance”) for registration of the marks “VITAGREEN” and “vitagreen” (“the Suit Marks”) in a series in respect of certain goods in Classes 5, 9, 30 and 32.

2. The Suit Marks cover a series of four different expressions of a single word mark of “vitagreen” referred to as Marks “A”, “B”, “C” and “D” in the Decision hereinafter mentioned.  The letters in Mark “A” are in the upper case, while the letters in Marks “B”, “C” and “D” are in the lower case.  In respect of Mark “D”, the word “vitagreen” appear between a pair of incongruent bracket signs, viz “(” and “>”. The Suit Marks are reproduced in Appendix I of this judgment.

3. The respondent, Vitasoy International Holdings Limited, objected to the registration of the Suit Marks in respect of the following goods (“the Relevant Goods”):

1.  Class 29

milk and milk products, soya bean milk, preparations made from soya;

2.  Class 30

coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; and

3.  Class 32

non‑alcoholic drinks, soya bean based drinks and beverages, mineral and aerated water, fruit juices, syrups and other preparations for making beverages, powders, extracts and concentrates, soft drinks, honey syrup.

4. By a written decision dated 13 February 2014 (“the Decision”), the Registrar of Trade Marks (“the Registrar”) upheld the respondent’s objection and refused the registration of the Suit Marks in Classes 29, 30 and 32.

5. On 13 March 2014, the appellant lodged an appeal against the Decision of the Registrar by way of originating motion, which was subsequently amended on 2 April 2014.  This is my judgment on the appellant’s appeal.

BACKGROUND FACTS

6. The following background facts are taken largely from the Decision.

(i)  The respondent’s goods and marks

7. The respondent is the owner of various registered trade marks, “VITA” and “VITASOY” (“the VITA Mark” and “the VITASOY Mark” respectively) in Hong Kong in respect of goods in (inter alia) Classes 16, 25, 29, 30, 32, 35 and 43.  The particulars of registration of the VITA Mark and VITASOY Mark in Hong Kong are set out in Appendix II of this judgment.

8. The respondent was incorporated in Hong Kong in 1940 and was previously registered under the name of “The Hong Kong Soya Bean Products Company, Ltd” in English and “香港荳品有限公司” in Chinese.

9. Since its incorporation, the respondent has been carrying on the business of manufacturing and selling of soya bean milk (“VITASOY”) under the “維他奶” Mark.  The “VITASOY” Mark, as applied to VITASOY, has started to be used in Hong Kong since 1953.

10. VITASOY has been and is marketed and sold in a variety of food retail outlets in Hong Kong ranging from supermarkets, convenience stores, bakeries, tuck shops, canteens and vending machines.

11. Since about 1976, the respondent has started to introduce other varieties of beverage products to the Hong Kong market, including fruit juice, tea, herbal tea and fresh milk under the marks “VITA” and/or “維他” and/or other constituent marks such as “維他山水”, “維他茶字典” and “維他Light” (collectively referred to as “VITA Drinks”).

12. In April 1992, the respondent launched its bottled “VITA Pure Distilled Water” under a combination of the marks “VITA” and “維他”. In June 1992, the respondent further launched its “VITASOY Calsi‑Plus High Calcium Low Fat Soya Bean Milk” under the “VITASOY” and “維他奶” marks.

13. VITASOY, VITA drinks, VITA Pure Distilled Water and VITASOY Calsi‑Plus High Calcium Low Fat Soya Bean Milk will hereinafter collectively be referred to as “the VITA Products”.

14. As at 14 August 2009, with the exception of the outlying areas and some remote areas, over 6,000 retail outlets for the VITA Products were directly served by the respondent’s fleet of delivery trucks.

15. Since about the mid 1980s, the respondent have sold VITASOY, VITA Drinks (except syrups and fresh juices) and VITA Pure Distilled Water through “VITA” vending machines in public places such as KCR stations, bus stations and schools.  On the other hand, syrups for carbonated sodas and fresh juices are supplied through “VITA” dispensing machines which are marketed and sold to outlets such as snack‑bars, canteens, fast food shops and restaurants.  Further, “VITA” distilled water carboys are used with dispensers which are principally supplied to various workplaces.

16. Since 1991, the respondent’s subsidiary, Vitaland Services Limited, has started running tuck shops in schools in Hong Kong under the name “Vitaland 維他天地”, operating in some 306 schools in Hong Kong (as of 2007/2008).

17. From 2003/2004 to 2008/2009, the wholesale sales figures achieved by the sales of the VITA Products in Hong Kong amounted to an average of about HK$1,602 million a year.

18. Substantial expenditures have also been spent by the respondent on advertising and promoting the VITA Products in Hong Kong and internationally in television and radio programmes, newspapers and magazines, and sponsorship of local and international events.  The annual advertising expenses in Hong Kong for the years from 2003/2004 to 2007/2008 amounted to an average of about HK$43.2 million.

19. The VITA Products have won numerous awards over the years as mentioned in paragraphs 83 and 84 of the Decision which it is not necessary to set out in this judgment.

(ii)  The appellant’s goods and marks

20. The appellant was incorporated in Hong Kong in 1991 under the name of “Wellford International Limited”.  The name was changed to “VITA GREEN HEALTH PRODUCTS COMPANY LIMITED” in 1992, and further changed to “VITA GREEN HEALTH PRODUCTS COMPANY LIMITED 維特健靈健康產品有限公司” in 1993.

21. The appellant manufactures and trades in a wide range of goods, in particular, medicated herbal products, vitamins, health supplements and health foods, and is also a provider of related services.  It has developed a line of more than 100 products with both Chinese herbal remedies and western vitamins and supplements.

22. The appellant is the owner of various registered trade marks in Hong Kong in respect of goods or services in Classes 3, 5, 29, 30, 32, 35 and 44.  Each of the appellant’s said registered trade marks (“the VITA GREEN Marks”) has, as a part or a component thereof, the words “VITA GREEN”.  The VITA GREEN Marks are reproduced in paragraph 42 of the Decision. 

23. The appellant’s goods bearing the VITA GREEN Marks, including Vita Green Lingzhi, Vita Hair and Vita Calm, are mainly supplied through “VITA GREEN” retail shops, chain stores such as Watson’s and Manning’s, hospitals and medical practitioners in Hong Kong.

24. According to Chan Hei Ling Helen (“Helen Chan”), the chairman and chief executive officer of the appellant, substantial sales of the appellant’s goods bearing the VITA GREEN Marks have been achieved in Hong Kong (and overseas), and the appellant has incurred substantial advertising expenditures to promote its goods.  The expenditures increased from HK$15 million in 1995 to HK$160 million in 2007.  She said that due to the substantial sales and turnover of goods and services bearing the appellant’s trade marks, including the VITA GREEN Marks, the extensive advertising, numerous public relations activities and community services, and numerous registrations, the appellant’s trade marks have acquired highly regarded reputation, recognition, support and emotional attachment among the population both in Hong Kong and worldwide.  It is further said that the appellant’s trade marks have become distinctive of and are identified with the appellant and the appellant’s goods and services exclusively, and are also synonymous with health, quality and professionalism which are the values represented by and distinctive to the appellant’s goods.

25. The appellant’s goods bearing the VITA GREEN Marks have won many awards, details of which are set out in paragraph 26 of Helen Chan’s first Statutory Declaration dated 11 May 2011.

26. According to Helen Chan, the appellant has also been offering tea products bearing the name or mark of “VITA GREEN” for over two years (as at May 2011) in Taiwan.

27. Lastly, Helen Chan said that the Suit Marks have been used for a number of the appellant’s goods in Classes 29, 30 and 32, and that the appellant has concrete business plans to develop further health and nutritional supplements in the form of food, drinks and preparation of beverages.  She produced photocopies of packets of “organic millet”, “organic brown rice (long grain)”, “organic raw oat groat” and “organic red rice” as exhibits in her first Statutory Declaration.

THE REGISTRAR’S DECISION

28. By way of preliminary observation, it may be noted that although the Registrar has considered and made references to both the VITA Mark and the VITASOY Mark in the Decision, ultimately her conclusion that the ground of opposition under section 12(3) of the Ordinance is made out is by reference to the VITA Mark and not the VITASOY Mark.

29. Accordingly, in the following discussion, I shall concentrate on the Registrar’s findings in relation to the VITA Mark and omit any reference to the VITASOY Mark.  As can be seen from the Decision, the Registrar made the following material findings:

(i)  The VITA Mark is an earlier mark

The date of application for registration of the VITA Mark is earlier than that of the Suit Marks (paragraph 58 of the Decision).

(ii)  Comparison of marks

(1)  The Relevant Goods cover mainly beverages and drinks provided to the general public in Hong Kong.  Since beverages and drinks are consumed on a daily basis and they are relatively inexpensive, the relevant consumers are expected to exercise an average, but not high, level of care and attention.  So far as “preparations made from soya; syrups and other preparations for making beverages, powders, extracts and concentrates, soft drinks; honey syrups” are concerned, they may target consumers such as businessmen in the trade.  These consumers may be expected to exercise a slightly above average level of care and attention (paragraph 60 of the Decision).

(2)  The Suit Marks are likely to be perceived by consumers as being constituted by a combination of “VITA” and “GREEN”.  Each of the Suit Marks is a word mark which incorporates “VITA” at the beginning, and “VITA” would be perceived as the more significant element.  An average consumer may perceive “GREEN” as denoting something organic or derived from fresh or natural ingredients.  As such, the consumer would not pay as much attention to this weak element, while “VITA” is more prominent and distinctive (paragraph 67 of the Decision).

(3)  It has been recognised that consumers generally pay more attention to the first part of a mark, taking account of the fact that they read from left to right and that the beginning of a word sign is on the left.  Despite the difference in length of the “VITA” Mark and the Suit Marks, they are similar overall as a result of the common element “VITA” (paragraph 68 of the Decision).

(4)  The Suit Marks are pronounced with three syllables (VI‑TA‑GREEN), while the VITA Mark is pronounced with two syllables (VI‑TA).  However, with the common element of “VITA”, the first two syllables (VI‑TA) are reproduced in their entirety.  Taking the marks as a whole, they are aurally similar (paragraph 69 of the Decision).

(5)  Although the word “vita” means “life” in Latin, that meaning is not apparent to the general public in Hong Kong except those who know Latin or Italian.  If any member of the public understands the meaning of “vita”, there would be a conceptual similarity between the Suit Marks and the VITA Mark given they share the same “VITA” element.  On the other hand, if the public perceives both marks are constituted by words bearing no meaning, there is no conceptual similarity between the marks (paragraph 70 of the Decision).

(6)  Having regard to the Suit Marks and the Vita Mark respectively as a whole and the visual and aural similarities between the marks, the marks are similar to each other (paragraph 71 of the Decision).

(iii)  Comparison of goods

The goods for which the appellant’s application for registration is made are identical to some of the goods respectively registered under the VITA Marks (paragraph 75 of the Decision).

(iv)  Likelihood of confusion

(1)  “VITA” is not a word which has a meaning in English.  The VITA Mark is not descriptive of the respondent’s goods and is distinctive per se (paragraph 77 of the Decision).

(2)  The VITA Mark enjoys a very strong reputation and is widely known by members of the public in Hong Kong as at the date of the appellant’s application.  In other words, the distinctiveness of those marks have been much enhanced and they have become highly distinctive of the respondent’s beverage products (paragraph 85 of the Decision).

(3)  In assessing the likelihood of confusion, regard should be had to the fair and notional use of the marks in question.  There is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it.  The enhanced distinctiveness of the VITA Mark would contribute to a greater likelihood of confusion.  A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa (paragraph 86 of the Decision).

(4)  It is common for manufacturers to use “sub‑brands” to distinguish certain goods from other lines of goods.  Considering the nature of the Relevant Goods and the enhanced distinctiveness of the VITA Mark, the appearance of “GREEN” after “VITA” in the Suit Marks can possibly be perceived by consumers as denoting a new sub‑brand or a subsidiary line of products of the respondent which are made of organic, fresh or natural ingredients (paragraph 88 of the Decision).

(5)  When the Suit Marks are used in relation to the Relevant Goods, there is a risk that the public might believe that the goods provided under those marks and those under the VITA Mark come from the same or economically‑linked undertakings, and that such risk constitutes a likelihood of confusion within the meaning of section 12(3) of the Ordinance (paragraph 91 of the Decision).

(v)  Conclusion

The respondent’s ground of opposition under section 12(3) of the Ordinance is made out (paragraph 92 of the Decision).

APPLICABLE PRINCIPLES

30. Section 12(3) of the Ordinance states as follows:

“A trade mark shall not be registered if –

(a) the trade mark is similar to an earlier 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.”

31. It can be seen immediately that there are three conditions which have all to be satisfied before the registration of a trade mark is to be refused under section 12(3) of the Ordinance.  In the present case, there is no doubt that the second condition is satisfied, namely, that the goods for which the application for registration is made (ie the Relevant Goods) are identical or similar to some of the goods for which the VITA Mark is protected.  There can also be no dispute that the VITA Mark is an earlier trade mark when compared to the Suit Marks within the meaning of section 5(1) of the Ordinance.

32. The main issues before the Registrar were (i) whether the Suit Marks are similar to the VITA Mark, and (ii) whether the use of the Suit Marks in relation to the Relevant Goods is likely to cause confusion on the part of the public.

(i)  Likelihood of confusion

33. The relevant date for considering the issue of likelihood of confusion is the date of application for registration of the Suit Marks, ie 30 May 2008.

34. Section 7(1) of the Ordinance provides that in determining whether the use of a trade mark is likely to cause confusion on the part of the public, the Registrar or the court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier mark.

35. In the recent judgment of the Court of Appeal in Tsit Wing (Hong Kong) Company Limited and Others v TWG Tea Company Pte Limited, CACV 191/2013 (3 December 2014), at paragraph 35, Lam VP (delivering the judgment on behalf of the Court of Appeal) stated that the following propositions endorsed by Kitchen LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 555 provide useful guidelines for assessing likelihood of confusion:

“On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it:

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

(b) 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;

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

(d) 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;

(e) 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;

(f) 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;

(g) 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;

(h) 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;

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

(j) 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;

(k)   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.”

36. At paragraph 38 of the judgment of the Court of Appeal, Lam VP further mentioned that there are two main components of the correct test, namely: (1) the average customer; and (2) contextual assessment.

37. On the question of the inter‑relationship between the distinctiveness of an earlier mark and the likelihood of confusion, the following general observations should be borne in mind:

(1)  There is a greater likelihood of confusion with a very distinctive mark.

(2)  On the other hand, where a mark is largely descriptive, small differences between it and a latter mark may suffice to avoid confusion.

(3)  Analogous considerations apply to elements which have a general meaning suggesting a positive quality attributable to a large range of different goods or services.

See Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 at paragraphs 83 to 86; Vitakraft‑Werke Wűhrmann & Sohn GmbH & Co KG v OHIM ‑ Kraft (VITAKRAFT) [2004] ECR II‑3445 at paragraphs 51 to 52.

(ii)  Court’s approach in relation to an appeal from the Registrar

38. Section 84(1) of the Ordinance provides that an appeal lies to the court from any decision or order of the Registrar under the Ordinance.  Section 85 goes on to provide that the court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under the Ordinance, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question.

39. An appeal from the Registrar to the Court of First Instance is a rehearing, not a review.  Nevertheless, 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: see Lion Capital LLP v Registrar of Trade Mark [2011] 1 HKLRD 272 at paragraphs 21 and 25, per Deputy High Court Judge Coleman SC.

40. The following guidance was given by Rogers VP in Re NAKED [2010] 1 HKLRD 382 at paragraph 22 in relation to the approach which the court should adopt in an appeal from a decision of the Registrar:

“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.”

41. This reflects the current English approach regarding an appeal from a decision of the registrar to the Chancery Division of the High Court or to an “appointed person” (usually drawn from a small panel of Queen’s Counsel practising in the Chancery Division and having special experience of trade mark law) under sections 76 and 77 of the Trade Marks Act 1994.  In Reef Trade Mark [2003] RPC 5 at paragraph 28, Robert Walker LJ (as he then was) stated as follows:

“… the hearing officer had to make what he himself referred to as a 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. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer’s specialised experience… On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”

42. In summary, the court should be slow to reverse the decision of an experienced registrar on a question which consists largely of a value judgment, but interference may be justified where, for example, the registrar erred in principle, took into consideration matters which he ought not to have considered, or omitted to take into consideration matters which he ought to have been considered: see Lion Capital LLP v Registrar of Trade Mark [2011] 1 HKLRD 272 at paragraphs 20, 21 and 24, per Deputy High Court Judge Coleman SC.

DISTINCTIVENESS OF THE WORD “VITA”

43. Although four points are raised in the appellant’s amended notice of originating summons filed on 2 April 2014 to contend that the Registrar erred in finding that the use of the Suit Marks is likely to cause confusion on the part of the public, essentially two arguments were raised by Mr John Yan SC (for the appellant) in his written skeleton submissions dated 7 November 2014 and oral submissions at the hearing of the appeal on 12 November 2014.

44. First, Mr Yan argues that the Registrar was clearly wrong in coming to the view that “VITA” is not a word which has meaning in English and is distinctive per se.  Mr Yan refers to the respondent’s website and a booklet “厚生與創業” published by the respondent which recorded the historical growth of the respondent which, it is said, clearly shows that “VITA” is a word which alludes to words such as “vitamin” and “vitality” in English and would be perceived by the public in Hong Kong as having a very general meaning suggesting positive qualities attributable to a large range of different goods.  Mr Yan further argues that the Registrar failed to have regard to the principle that the public would generally not consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark when coming to her conclusion on the issue of likelihood of confusion.

45. As correctly pointed out by the Registrar in paragraphs 70 and 77 of the Decision, the word “VITA” is not an English word.  In the Shorter Oxford English Dictionary, 6^th Edition, it is mentioned that the word “VITA” is of Italian or Latin origin meaning “life”. No meaning of that word in English is given.  It cannot be assumed that the average consumer in Hong Kong knows the Latin or Italian origin or meaning of the word “VITA”, or would allude it to words such as “vitamin” and “vitality” in English.  Neither do I think it right to assume that the word “VITA” would be perceived by the average consumer in Hong Kong as having a very general meaning suggesting positive qualities attributable to a large range of different goods.

46. I bear in mind the forensic point made by reference to the respondent’s website and its booklet, but there is nothing in the evidence to show that the explanation there given regarding the origin of the words “VITASOY” or “VITA” is a matter of general knowledge.

47. The Registrar is, it seems to me, entitled to take the view that the Latin meaning of the word “VITA” is not apparent to the general public in Hong Kong, and the word “VITA”, not being an English word, cannot be regarded as descriptive of the respondent’s goods.  In this regard, the decision of the Court of First Instance of the European Communities (Second Chamber) in Vitakraft‑Werke Wűhrmann & Sohn GmbH & Co KG v OHIM on the issue of whether the word “vita”  has a concrete meaning is of little assistance.  This is because, as pointed out by Ms Winnie Tam SC (for the respondent), the “target public” in that case consisted of Spanish‑speaking consumers (paragraph 57) and the court found that the term “vita” would be perceived by a Spanish‑speaking consumer as alluding to words such as “vitality” or “vital” (“vitalidad” or “vital” in Spanish) (paragraph 51), and the word “vita”, to a Spanish speaking consumer, would carry a very general meaning suggesting a positive quality attributable to a large range of different goods or services (paragraph 52).

48. Further, in considering the distinctiveness of the word “VTIA”, the Registrar was, it seems to me, entitled to come to the view that, as a result of years of sale and extensive promotion of the respondent’s products under (inter alia) the VITA Mark and taking into account the numerous awards received by the respondent in respect of goods marketed and sold under the VITA Mark, it has acquired a very strong reputation and is widely known by members of the public in Hong Kong as at the date of application of the Suit Marks, and thus the distinctiveness of the VITA Mark has been much enhanced and it has become highly distinctive of the respondent’s beverage products (paragraph 85 of the Decision).  The enhanced distinctiveness of the VITA Mark, as pointed out by the Registrar in paragraph 86 of the Decision, would lead to a greater likelihood of confusion.

49. I would add that, generally speaking, questions relating to the distinctiveness of a given mark and the likelihood of confusion are essentially matters of contextual assessment and evaluation.  As earlier mentioned, the court should be slow to reverse the decision of an experienced registrar on such questions unless clear grounds for intervention are shown.  No such ground has, in my view, been established.

50. In all, I reject the first major argument advanced by Mr Yan on behalf of the appellant that the Registrar erred in coming to the view that “VITA” is not a word which has meaning in English and is distinctive per se.

THE COMMERCIAL REALITIES OF THE MARKET

51. The second major argument advanced by Mr Yan in support of the present appeal is that the Registrar wholly overlooked the principle that an opposition under section 12(3) of the Ordinance should be assessed with due regard to the commercial realities of the market place, in particular the reputation attached to the mark sought to be registered, and the Registrar completely failed to take into account the substantial reputation enjoyed by the appellant in the VITA GREEN Marks which had been built up through over 16 years of use and promotion of those marks when considering the issue of likelihood of confusion.

52. In support of his argument, Mr Yan has set out, in paragraph 25 of his written skeleton submissions, the marketing activities carried out by the appellant since 1992 to promote its goods bearing the VITA GREEN Marks, the many awards won by the appellant’s goods marketed and sold under those marks, and the reputation enjoyed by the appellant in those marks.

53. It is not necessary for me, for the purpose of this judgment, to recite the matters relied upon by Mr Yan because I accept that the evidence before the Registrar established that the appellant did enjoy a degree of reputation in the VITA GREEN Marks as at the date of application for registration of the Suit Marks.

54. It does not appear to be the case, however, that the Registrar failed to take into account the reputation enjoyed by the appellant in the VITA GREEN Marks as submitted by Mr Yan.  The history of the use by the appellant of the VITA GREEN Marks, the appellant’s marketing activities, the awards received by the appellant in respect of goods marketed and sold under the VITA GREEN Marks, as well as the reputation enjoyed by the appellant in the VITA GREEN Marks, were referred to and considered by the Registrar in paragraphs 40 to 47 and 51 of the Decision under the heading of “Applicant’s evidence”.  Although the Registrar did not expressly refer to those matters again when considering the issue of likelihood of confusion in paragraphs 76 to 92 of the Decision, I do think it would be right to assume that the Registrar had failed to take those matters into account before she reached her conclusion on the issue of likelihood of confusion.

55. In any event, even if the Registrar did fail to take into account the reputation enjoyed by the appellant in the VITA GREEN Marks when considering the issue of likelihood of confusion such that it would be open to this court to reconsider this issue afresh, I would still have come to the same conclusion having regard to the following matters:

(1)  None of the VITA GREEN Marks upon which the appellant has built a reputation is a simple word mark consisting only of the words “VITA GREEN”.  All of them consist of two words “VITA GREEN” in combination with other devices and/or words.

(2)  In most cases, the words “VITA GREEN” lack prominence when compared to the other devices and/or words in the VITA GREEN Marks.

(3)  The appellant’s VITA GREEN Marks which had gained reputation as at the date of application for registration of the Suit Marks were in relation to goods such as health food supplements, vitamin products, and Chinese herbal remedies (particularly lingzhi products), and not in relation to the Relevant Goods.

(4)  As earlier mentioned and as in the case of many areas of the law, the context is all important.  Here, the relevant context is ordinary beverage products, such as distilled water, fruit juice, tea, etc purchased and consumed by the general public on a daily basis.  As found by the Registrar in paragraph 85 of the Decision, the VITA Mark already enjoyed very strong reputation and was widely known by members of the public in Hong Kong as at the date of application for registration of the Suit Marks.  The distinctiveness of the VITA Mark had been much enhanced and it had become highly distinctive of the respondent’s beverage products.

56. In other words, notwithstanding the evidence regarding the reputation enjoyed by the appellant in the VITA GREEN Marks, I would still reach the conclusion that the use of the Suit Marks in relation to the Relevant Goods is likely to cause confusion on the part of the public within the meaning of section 12(3)(c) of the Ordinance on the facts of the present case.

57. Mr Yan has drawn my attention to the decision of the Second Board of Appeal relating to Community trade mark application No 73 155 in Porsche AG v Intertex Hobby SA, Case R‑77/2003‑2 (11 May 2004).  In that case, the applicant, which was the manufacturer of a well known two‑seater convertible sports car known as Porsche Boxster, applied to register “Boxster” as a trade mark for clothing, playthings and Christmas tree decorations, not with a view of diversifying and converting its plant to the production of those types of goods, but for the purpose of engaging in merchandising.  The opponent to the application was the owner of a word mark “BOSKER” in various classes, including Class 25 (cloths, footwear (except orthopaedic), and headgear) and Class 28 (games, toys, gymnastic and sports articles not included in other classes, decoration for Christmas trees).

58. The Second Board of Appeal found in favour of Porsche AG, holding that registered trade marks are a legitimate vehicle for securing the exclusive rights that are necessary if merchandising is to be practised effectively.  It was further held that a typical European consumer, upon encountering the word “Boxster” on an item of clothing, a toy or a Christmas tree decoration, will not assume that it has any connection with the trade mark “BOSKER” (even if he or she knows that trade mark and retains “an imperfect picture” of it) but is far more likely to think that the product is an item of merchandising which is intended to evoke and exploit the image of the Boxster sports car.  In my view, this decision is very much a decision on the facts of that case and does not establish any principle of general application. 

59. I should also mention that Mr Yan has referred, in his written skeleton submissions, to the fact that numerous entities have registered trade marks incorporating and/or prefixed by the word “VITA” as another facet of the commercial realities of the market place which it is alleged the Registrar failed to take into account, and it is said that this fact is further evidence that the word “VITA” is one which has a very general meaning suggesting positive qualities attributable to a large range of different goods.  This point can be disposed of shortly because, as correctly observed by the Registrar at paragraph 90 of the Decision, reference to the other marks on the register is not helpful when considering a particular mark tendered for registration: see British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 305, per Jacob J.

60. For the above reasons, I reject Mr Yan’s second major argument that the Registrar erred in failing to pay due regard to the commercial realities of the market place when considering the issue of likelihood of confusion.

61. In all, I dismiss the amended notice of originating summons filed on 2 April 2014 with costs to the respondent.

62. Lastly, it remains for me to thank counsel for their helpful assistance rendered to the court.