in determining this test, the court is entitled to give effect to their own opinions, and not confined to the evidence of witnesses.” (emphasis added) [14] Ortus Expert White (supra) also held that the issue of whether marks are identical or similar is a question of fact: “[62] The issue as to whether the mark used by the defendant is identical with, or so nearly resembling the trademark of the plaintiff, as is likely to deceive or cause confusion, is a question of fact having regard to the particular circumstances of the case (refer to MI & M Corporation & Anor v Mohamed Ibrahim [1964] 1 MLJ 392; Tan Hap @ Tan Hwa Ho & Anor (both t/a Kwong Hock Htn) v Liang Ann Hock t/a Kim Guan Trading Company [1989] 2 CLJ 500). It is the duty of the ! Court to conduct an enquiry as to whether a mark resembles another and this involves the eye as well as the ear together with some composite factors like phonetics and semantics.” (emphasis added) [15] Guided by the cases above, in determining whether the use of the Defendant’s Mark is likely to deceive or cause confusion to the public, the court is required to compare the Defendant’s Mark with the Plaintiff’s Mark by applying the side-by-side and imperfect recollection tests. The side-by-side test involves considering the two marks together, and comparing their features. The imperfect recollection test involves comparing the idea or impression each mark produces or suggests, taking into account the reality that the average customer would not have a photographic recollection of the details of a mark, but merely a general impression of the mark. In conducting this comparison, the court is required to take all surrounding circumstances into account, including the impression given by the marks and the closeness of the nature of the parties’ goods. [16] I am further guided by Bata Ltd v Sim Ah Ba @ Sim Teng Khor (trading as Kheng Aik Trading) [2006] 6 MLJ 445, where the Court of Appeal held that in assessing the similarities between two marks and determining whether there is a likelihood of deception or confusion, the marks must be considered and compared as a whole, and not part by part. ! Side-by-side comparison test [17] After conducting a holistic examination of the Defendant’s Mark and the Plaintiff’s Mark, I am in agreement with the finding of the learned Registrar that the marks are not similar. [18] In terms of visuals, the only similarity between the marks is the horses. However, the Plaintiff’s Mark is a device mark with one rearing horse, and while the Defendant’s Mark contains two rearing horses facing each other. In addition, the Defendant’s Mark does not focus only on the rearing horses. It contains a large letter “W” between the heads of the two horses and the words “WEE POWER” below the horses. [19] Two points should be noted with respect to the words “WEE POWER”. First, the word “POWER” had been disclaimed in the Defendant’s Application. The disclaimer states: “REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE WORD "POWER". [20] The plaintiff argued that because of this disclaimer, the words “WEE POWER” should not be considered when comparing the two marks. The plaintiff referred to British-American Tobacco Co Ltd v Tobacco Importers & Manufacturers Ltd [1963] 1 MLJ 196, which held that a disclaimed feature cannot be regarded as an essential feature of the mark. [21] I find the plaintiff’s reliance on British-American Tobacco (supra) to be misconceived, as the issue in the present case is not ! whether “WEE POWER” is an essential feature of the mark, but whether the word “POWER”, which has been disclaimed in the Defendant’s Application, can be looked at when assessing whether the Defendant’s Mark and the Plaintiff’s Mark are confusingly similar. [22] This question was considered by the Federal Court in Ortus Expert White (supra), and it was held that in deciding whether there is a likelihood of confusion between two marks, the disclaimed element of the marks ought to be examined in juxtaposition or in combination with the essential elements of the marks: “[113] Given the above analysis, in a trademark infringement action, whether the court ought to consider disclaimed words in juxtaposition and/or in combination with the essential features in the registered trademark for the purpose of deciding whether there is a likelihood of confusion and/or deception, we answer in the affirmative, upon the approach of the Imperfect Recollection Test. As such, there is infringement of the trademark. It is our judgment that the plaintiff has proven all the five ingredients to constitute an infringement of the trademark of the plaintiff. The learned High Court judge did not err in his findings with regards to the infringement of trademark by the defendants. The Court of Appeal failed to compare and analyse the essential features of the trademark of the plaintiff which is the Crown device and the Diamond shaped device on the impugned mark but misdirected itself by focussing on the difference of the word ‘Royal’ and ‘Real’ which is irrelevant in determining the likelihood of confusion and/or deception in an infringement action. Case law authorities ! has established that where disclaimers (or referred to as ‘common marks’) are included in the trademark to be compared, or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are disclaimed. The Court of Appeal disregard the disclaimers entirely when comparing the marks of the plaintiff and the defendants. The Court of Appeal also failed to consider the imperfect recollection of customers/customers test when making purchases in determining the likelihood of confusion/ deception, but premised merely on the side by side comparison test, which is erroneous.” (emphasis added) [23] The second point raised by the plaintiff on the words “WEE POWER” is that the word “wee” is an ordinary English word, which means “very small” or “very early”. As the word is a descriptive and non-distinctive English word, the plaintiff argued that no claim of ownership can be made on the word. [24] However, I accept the defendant’s explanation that the word “WEE” is derived from the name of the defendant’s founder, Wee Juan Chien, and does not refer to the ordinary definition of the word “wee” in the English language. I find it unlikely that the defendant had intended for its energy drinks to be branded with words that mean “very small power” or “very early power”. [25] Based on my assessment of the words “WEE POWER” in the Defendant’s Mark, I find that: ! a. Although the word “POWER” has been disclaimed in the Defendant’s Application (and is thus not protected for the defendant’s exclusive use), in deciding whether there is a likelihood of confusion or deception between the Defendant’s Mark and the Plaintiff’s Mark, the word should nonetheless be considered; and b. As the word “WEE” is derived from the name of the defendant’s founder and is not a reference to the ordinary English definition of the word “wee”, it satisfies the element of distinctiveness under section 10(1)(a) of the TMA 1976. [26] Therefore, I considered the Defendant’s Mark as a whole, including the words “WEE POWER”, in comparing the Defendant’s Mark with the Plaintiff’s Mark, and in concluding that the marks are not confusingly similar. [27] From a side-by-side comparison of the Defendant’s Mark with the Plaintiff’s Mark, I find that the similarity between the two marks is confined to the device of the horses, and that the other elements of the Defendant’s Mark, namely the letter “W” and the words “WEE POWER”, are sufficient to distinguish the Defendant’s Mark with the Plaintiff’s Mark. Imperfect recollection test [28] Further, I conducted a comparison of the two marks by applying the imperfect recollection test. The test is explained in Ortus Expert White (supra) in the following manner: ! “[95] ‘The imperfect recollection’ of customers/potential customers is the idea or impression which each mark produces or suggests to the minds of potential customers. This is premised on the norm and reality that the average customer does not have a photographic recollection of the details of the whole mark but merely a general impression of the mark and remembers the mark by this general impression’ (Blanco White TA & Jacob Robin on Patents, Trade Marks, Copyright and Industrial Designs). [96] The general impression guideline is related to the imperfect recollection tests, where due consideration ought to be given to the fact that an ordinary reasonable purchaser only has a limited recollection of what he has seen. It is different when one looks at the two marks when placed side by side. In such a situation, one may be able to see the difference between the two marks and one would not mistook the one for the other. However, in reality, customers, more often than not, would not have the opportunity to compare the two marks side by side, at the point of deciding to make purchases. In such instance, the customer can only rely on his memory of the mark he knows and contrasts it with the mark upon the product which he is considering to buy. … [99] In applying the general recollection test, due allowance must be given for reasonable customers and traders with an ! average memory and imperfect recollection of the precise details of the plaintiff’s trademark and the defendants’ marks, when determining whether there is a real likelihood of confusion/deception.” (emphasis added) [29] From Ortus Expert White (supra), it is the idea and impression created by two marks in the minds of potential customers – who would not have a perfect recollection of the details of the marks – that are essential to determine whether there is a likelihood of confusion between the two marks. [30] Ultimately, the question to be asked is whether the ordinary consumer with ordinary memory who would be likely to buy the defendant’s goods will be confused and think that the Defendant’s Mark is the same as the Plaintiff’s Mark. [31] After applying the imperfect recollection test by taking into account all circumstances, including the plaintiff’s and the defendant’s goods and the types of customers who are likely to purchase these goods, I am of the considered view that the question must be answered in the negative. [32] My view is premised on the differences in the defendant’s goods and the plaintiff’s goods, and in this regard, I find that the learned Registrar had not committed any error in finding that the defendant’s goods and the plaintiff’s goods are not identical or similar. ! [33] In The Pianotist (supra), the court considered the types of consumers of products bearing the competing marks, and held as follows: “… The second way it is put to me is, that the sounds of the words, although the look of the words may be different, are likely to be so similar that a person asking for a “Pianola” might have a “Neola” passed off on him, or vice versa. Of course, one knows that the persons who buy these articles are generally persons of some education, (it is not quite the same as somebody going and asking for wash soap in a grocer's shop) and some consideration is likely to attend the purchase of any instrument of the cost of either of these instruments, whether it be a “Pianola” or a “Neola”. Now, my opinion is that having regard to the nature of the customer, the article in question, and the price at which it is likely to be sold, and all the surrounding circumstances no man of ordinary intelligence is likely to be deceived. If he wants a “Pianola” he will ask for a “Pianola”, and I cannot imagine that anybody hearing the word "Pianola", if pronounced in the ordinary way in the shop, and knowing the instruments as-all shopmen do would be likely to be led to pass off upon that customer a “Neola” instead of a “Pianola”. (emphasis added) [34] In the present case, the plaintiff and the defendant are involved in different industries, with the plaintiff in the luxury automotive industry ! while the defendant traded in consumable goods. The goods sold by the plaintiff which contains the Plaintiff’s Mark, namely luxury and high-performance automobiles, are completely different from the goods sold by the defendant which contain the Defendant’s Mark, namely energy beverages sold in supermarkets. Both types of products do not compete with each other, and the plaintiff’s customers and the defendant’s customers are unlikely to overlap. [35] As such, I find that it is unlikely that the general impression on the mind of the average consumer when looking at the Defendant’s Mark would be that the Defendant’s Mark is similar to the Plaintiff’s Mark. D.