RE MITA KOGYO KABUSHIKI KAISHA

IN THE SUPREME COURT OF HONG KONG

MISCELLANEOUS PROCEEDINGS NO. 2835 OF 1990

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J U D G M E N T

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1. This is an appeal from the Decision of Mr. Fox for Registrar of Trade Marks when he decided that the opposition to the Applicant's application for the registration of a Trade Mark had failed.

2. The Applicant had applied for the registration of the mark 'MITAC'. The opponent who in 1982 applied to become registered as the Proprietor of the Trade Mark MITA opposed this. These words were presented in a similar type of script which Mr. Rogers for the opponent described as being "Stylised Italics". I must say immediately that there is a marked similarity in the appearance of the way these words are presented and this was accepted by Mr. Fox.

3. I do not propose rehearsing in any detail the factual evidence in support or in opposition to the application as the facts are fairly comprehensively set out in Mr. Fox's decision. There is, however, one matter which I will refer to which has arisen since the said Decision. The Decision was delivered on the 22nd November 1989. On the 30th November the Board of Trade in Canada delivered a Decision on an application for a Canadian Trade Mark which came to the opposite conclusion to the one reached by Mr. Fox. There, the opponent's opposition to the application prevailed. On the 9th January of this year the. Federal Court of Canada dismissed the Applicant's appeal.

4. In the present appeal the Opponents place heavy reliance upon S.20 of our Ordinance Cap. 43.

"20. Prohibition of registration of identical and resembling trade marks

(1) 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.

(2) Except as provided by section 22, no trade mark relating to services shall be registered in respect of any services or description of services 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 services;

(b) the same description of services; or

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

5. Mr. Rogers submitted at some length that his clients goods which come within class 9 in respect of "electrostatic copying machines, photocopying machines, diazo copying machines and other copying machines" are of the same description as the Applicant's goods which also come within class 9 being "disk drives for computers, computers, electronic components for use with computers and parts and fittings included in class 9 for all of the aforesaid goods".

6. In deciding whether or not the said goods are goods of the same description it is necessary to consider how the Courts have dealt with this problem previously.

7. There is a very helpful analysis of the way in which the court should approach the problem in the judgment of Lord Evershed M.R. at p.127 of J. Lyons & Co. Ltd. Application to rectify the Register 1959 RPC 120:-

"     A number of cases was cited to us, though they were, for the most part, decisions not under Sec. 26 of the Act but under Sec. 12 or its predecessors in which is also found the formula "goods of the same description." Thus, in McDowell's case (1926) 43 R.P.C. 334 (C.A.), (1927) 44 R.P.C. 342 (H.L.), it was held that paraffin oil intended to be used for machine lubrication constituted goods of the same description as paraffin oil used medicinally for human consumption, on the ground that both ware chemically the same substance, the difference between them depending on the degree of refinement. As Sargant, L.J., observed in the Court of Appeal, the qualitative difference between medicinal oil and a refined lubricating machine oil would appear to be appreciably less than the corresponding difference between machine lubricating oils of widely divergent refinement.

    Another case much canvassed before us was the Australian Wine case, reported (in this Court) (1899) 6 R.P.C. 311. In that case, the claim for registration of the mark and device of the Golden Fleece in respect of wines was rejected, having regard to the existing registration of an identical device in respect of spirits, particularly rum and whisky. Cotton, L.J., was of opinion that wines and spirits were goods of the same description, both being alcoholic liquid refreshment which would probably be bought for consumption from the same shop; and in one sentence of his judgment he appears to have based himself, partly at any rate, on the view that the manufacturing processes for both were similar - a view which might not, I venture to think, be universally accepted. He said : "Well, it is not confined to the same goods, but it is 'the same goods or description of goods'; and if it were necessary to decide it absolutely on that point, my opinion would be that there was an application for registration with respect to the same description of goods; because although wine and whisky, and wines and spirits are in a great many ways considered as different goods, yet we are not considering here how chemists would describe them, but whether manufacturers would describe them as being the same description of goods or not".

    Lindley, L. J. , did not go so far. He said that if wine and whisky were not goods of the same description they were at least very nearly so : the result was the same, since the matter must be judged (he said) by business standards.

    Lopes, L.J, appears to have based himself rather on the view that the applicants were plainly trying to filch a part of the goodwill of the existing registered proprietor of the mark.

    On the other side, we were referred to Jellinek's Application (1946) 63 R.P.C. 59, in which my Brother Romer, at first instance, after a careful review of all the cases and the grounds upon which they had been decided, held that shoe polish was not "goods of the same description" as shoes, though commonly sold in the same retail establishments In J. & J. Colman Lt.'s Application (1929) 46 R.P.C. 126, Eve, J., held that mustard and semolina, though commonly sold in the same establishment over the counter were not goods of the same description, having regard particularly to the divergence in use and method of preparation when they respectively reached the kitchen of the housewife.

    To all these cases the oft-quoted proposition that each was decided on its own particular facts is, to my mind, peculiarly applicable. In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases (as Mr. Levy observed) one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged, as Lindley, L.J., observed in the case already quoted, "in a business sense"; and this is to my mind made clear by considering the legislative background against. which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods, and the restriction contemplated by Sec. 26 is an incident of the general legislative purpose. The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited, and particularly McDowell's case and the Australian wine case, lend some support to the view that the phrase "goods of the same description" ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

8. Mr. Rogers produced a number of articles and trade journals which commented upon the trend of the function of copiers to become more analogous with some of the uses now being made of computers. What is to my mind significant is that all of these articles were published subsequent to the date of the original application in 1983 and refer to the situation at the time the articles were written or are projected into the future. It would seem to me that very little evidence was available to indicate that the basic function or nature of a computer was similar to that of a copier in 1983.

9. Mr. Rogers also places considerable reliance upon the fact that most if not all major manufacturers of copiers are also in the computer business. He also stressed the fact that advertisements for copiers were often made in a similar manner and indeed sometimes in the same format as advertisements for computer products. All of this would tend to support the opponent's contention that copiers and computers are goods of the same description. However, adopting all of the criteria referred to by Lord Evershed M.R. and in other authorities I have no doubt that the similarities referred to by Mr. Rogers are by no means conclusive and that if regard is to be had to the basic essential factors which have to be weighed the opponent's contention of similarity must fail. To adopt the words of Lopes L.J. in Australian Wine Importers Ltd. [1889] 41 Ch.D. 278. 'the prohibition is confined to cases in which the goods are substantially the same.' This the opponents cannot establish. This was the view taken by Mr. Fox and I have no doubt that he was right in coming to the conclusion he did that the goods in question were not goods of the same description.

10. That then leads me to the second main limb of this appeal. This is Mr. Rogers' contention that if the registration is permitted there is a likelihood that confusion will be caused. S.12 of the Ordinance provides:-

"    12. Every registered society shall keep a copy of this Ordinance and of the rules and of its by-laws and a list of its members open to inspection, free of charge, at all reasonable times at the registered address of the society."

11. The test to be applied in determining whether confusion is likely to arise was laid down by Lord Upjohn in his speech at p.496 of Bali 1969 RPC 472:-

"     What, then, is the test? This must necessarily be a question of fact and degree in every case. I am content in amplification of the test laid down by Evershed, J. to take the test as in effect laid down by Romer. J. in Jelinek's Trade Mark (1946) 63 R.P.C. 59 at page 78.

    It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to a passing off or (I add) an infringement action. It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt, but the court has to be satisfied not merely that there is a possibility of confusion; it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register. And so mutatis mutandis when it is sought to expunge a mark."

I accept that this is still the true test to be applied.

12. Mr. Rogers' main complaint on this score was the failure of Mr. Fox to deal with what he regarded as the most important issue on the question of confusion. He had failed to appreciate that the confusion which would arise would not be as a consequence of either the similarity in the phonetic sounds of the respective names nor simply on the appearance of the 2 names.

13. According to Mr. Rogers the confusion would arise as a consequence of the imperfect recollection of purchasers of the Applicant's products.

14. He placed particular reliance upon the way in which the letters had been presented. In such circumstances, if a purchaser saw the name they were very likely to think that the Applicant's goods came from the same source as the Opponents. He was also critical of Mr. Fox's emphasis on the circumstances which would most likely prevail when goods of this nature were acquired. Mr. Fox had placed too much emphasis on the fact that these were major purchases where it was likely that purchasers would expend time and thought before parting with their money. Such a situation could readily be distinguished from what has been described as an impulse purchase.

15. I do not consider that this criticism to be well-founded.

16. I believe that it is only possible when considering whether or not confusion is likely to arise to bear in mind all of the surrounding circumstances which are likely to exist when a purchase is being made. I find that the remarks made by Falconer I on p.316 of The Lancer Trade Mark [1987] RPC 303 are helpful:-

"     I now have to consider the circumstances in which the marks would be used bearing in mind what Parker J. said in the passage which I have just read from the Pianotist case; that, is to say whether, having regard to the nature and value of the goods in question - and we are considering motor cars - the likely customers for such goods, how the goods are normally sold and purchased, and what goes on in the marketing of such goods, the degree of phonetic similarity which I found raises that real tangible danger postulated by Lord Upjohn. This is not a case of goods of relatively small value which might be purchased regularly daily or weekly by all kinds of persons, including children, for example the classic example of a bag of sweets or a breakfast cereal or a bar of soap across the counter: we are dealing with motor cars.

The Assistant Registrar said

" For the purpose of the section 11 test it is accepted that the name or marks LANCIA is widely established in the car market. LANCIA cars are seen on the streets. There are showrooms from which LANCIA cars are sold. There is an abundance of literature about LANCIA cars. But, as Mr. Davis of Fiat states in his evidence, these cars are 'specialist motor vehicles'. The LANCIA mark is presently used in the Fiat group for its relatively low volume specialist car range directed to a more discerning motoring public."

That was the use of the mark LANCIA itself. The Assistant Registrar compared that with the use of the mark in question so far by the applicants, Mitsubishi, whose cars are known overall as Colt cars. So far they appear to have used the mark LANCER for a particular model but in combination with Colt. It is true when one looks at all the many examples of trade publicity which are found in the exhibits to the evidence that in many cases the motoring journalists do refer to the car simply as the LANCER. Wherever you get an actual advertisement it uses the dual mark, COLT LANCER, Mr. Hamer said the opponents have no objection to the use of COLT LANCER."

17. I do not see any reason to differentiate between purchasing goods by the type envisaged in the present case and purchasing a motor car. As Mr. Fox said they are expensive items and it is not unreasonable to assume the type of considerations referred to by Falconer J.

18. I also do not think that it makes any difference whether the alleged source of confusion arises from phonetic similarities or similarities in appearance or whether such confusion arises through an imperfect recollection of the actual mark.

19. I consider that in adopting Lord Upjohn's test Fox to arrive at the conclusion he did.

20. I accept the correctness of Mr. Rogers' submission that a judge has an independent discretion in the matter and that if he comes to a different conclusion to that reached by the Registrar it is clearly open to him to reach a different decision. I do, however, also accept the validity for Mr. Kotewall for the Applicant's contention that great weight should attach to the decision of the Registrar particularly where in a case such as the present one the Registrar has considerable experience in such matters.

21. These questions do not, however, arise in the present case as for the reasons I have given I would myself to similar conclusions to those present case as for the independently have come reached by Mr. Fox.

22. The only other matter I will deal with in closing is the apparently disparate conclusions reached in Canada in respect of the appeal there.

23. What has to be borne in mind here is that I do not have a great deal of information concerning this litigation.

24. It may well be the case that the Law in Canada has developed along slightly different lines and I do not know exactly how the case was presented to the court by the parties. Whatever the situation may be I do not consider that it would be right for me to attach undue importance to the fact that I have come to a different conclusion to the one reached by the Federal Court.

25. For the reasons I have given I would dismiss this appeal. I will hear the parties on costs.