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) ! [27] 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) [28] Guided by the cases cited above, and after closely examining the Plaintiff’s Trademark and the Defendant’s Trademark, the court made three findings. [29] First, from a visual comparison of the marks, the court finds that the marks are not similar. The main focus of the Plaintiff’s Trademark is the word “MONSTER”. The Defendant’s Trademark, on the other hand, is a composite mark. The mark is an oval shape with a blue ring surrounding the shape. The top half of the shape depicts a mountain range with green and white shades, while the bottom half is the sea in blue. Within the shape and at the forefront of the mark is the word ! “MOSNTA”, prominently featured in gold, with a black border around the letters forming the word. [30] I find that the features and elements within the oval shape of the Defendant’s Trademark clearly differentiate the Defendant’s Trademark and the Plaintiff’s Trademark from the visual perspective. I disagree with the submissions of learned counsel for the plaintiff that the features and elements within the oval shape of the Defendant’s Trademark (the mountains and the sea) are elements that will be forgotten by the public. From my examination of the Defendant’s Trademark, although the word “MONSTA” features prominently and conspicuously within the oval shape, the mountains and the sea in the background form part of the mark that cannot be disassociated from the word “MONSTA” and the trademark overall. [31] Second, the court finds that from a phonetic comparison of the Plaintiff’s Trademark with the Defendant’s Trademark, the marks are not similar. The similarity between the two words, “MONSTER” and “MONSTA” only arises from their first syllable, “MON”. The court finds the plaintiff to be misconceived in focusing on the first syllable and ignoring the full words, “MONSTER” and “MONSTA”. In McCurry Restaurant (KL) Sdn Bhd v McDonalds Corporation [2009] 3 MLJ 774, the Court of Appeal found that the High Court had erred in holding that the respondent had a monopoly over the prefix “Mc”. [32] Considering the two words as a whole, the words are not so similar as to cause confusion to the public. The word “MONSTER” which is contained in the Plaintiff’s Trademark is a defined word, defined in the Oxford English Dictionary as “any imaginary creature that is large, ugly, ! and frightening”. On the other hand, the word “MONSTA” is an invented word, which does not exist in the standard English language. There is no evidence to support the plaintiff’s claim that the word “MONSTA” is a commonly known idiom for “MONSTER” or conveys the same idea, concept or meaning as “MONSTER”. [33] Even if it can be established that the word “MONSTA” is a commonly known idiom for “MONSTER”, the Defendant’s Trademark must be considered as a whole. The courts have 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 (see Bata Ltd v Sim Ah Ba @ Sim Teng Khor (trading as Kheng Aik Trading) [2006] 6 MLJ 445, Elba Group Sdn Bhd v Pendaftar Cap Dagangan dan Patent Malaysia [1998] 4 MLJ 105 and Shaifubahrim bin Mohd v EM Exhibitions (M) Sdn Bhd & Anor [2012] 9 MLJ 84). [34] In the present case, the word “MONSTA” must be considered with the features and elements within the Defendant’s Trademark, namely the mountains and the sea. When considered in this manner, it is clear that the word “MONSTA”, used in the context of the Defendant’s Trademark, cannot be said to convey the same idea, concept or meaning as the word “MONSTER”. [35] This takes us to the court’s third finding, which is that there is no similarity in terms of ideas or concepts between the Plaintiff’s Trademark with the Defendant’s Trademark. ! [36] It is in evidence that the Plaintiff’s Trademark is usually used in connection with its claw icon, in this manner: “ ”. The word “MONSTER” with the claw icon would be the idea of the mark left in the minds of the public purchasing the plaintiff’s goods. In contrast, the idea left in the minds of the public purchasing the defendant’s goods is the mountains and sea elements within the Defendant’s Trademark, together with the word “MONSTA”, depicted in this manner: “ ”. As such, the court finds that the Plaintiff’s Trademark and the Defendant’s do not contain similar ideas or concepts. [37] The plaintiff argued that in comparing the Defendant’s Trademark with the Plaintiff’s Trademark, the court must apply the imperfect recollection test. The test is explained by the Federal Court 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) [38] I do not disagree with the argument of learned counsel for the plaintiff that the imperfect recollection test should be applied. However, my finding is that the ideas and concepts of the Defendant’s Trademark, ! as compared to that of the Plaintiff’s Trademark, are so different that it is unlikely that the general impression on the mind of the average consumer when looking at the Defendant’s Trademark would be that Defendant’s Trademark is similar to the Plaintiff’s Trademark, even in a case of an imperfect recollection of the Plaintiff’s Trademark. [39] Thus, after conducting a comparison of the Plaintiff’s Trademark and the Defendant’s Trademark – visually, phonetically, and in the ideas and concepts they represent – the court finds that the Defendant’s Trademark is not similar to the Plaintiff’s Trademark. [40] As the court has found that the Plaintiff’s Trademark and the Defendant’s Trademark are not similar, it follows that the use of the marks is not likely to deceive or cause confusion to the public. Are the plaintiff’s goods and the defendant’s goods of the same description? [41] The second issue that the court considered is whether the plaintiff’s goods and the defendant’s goods are of the same description. [42] In assessing the likelihood of confusion between two trademarks, the court must consider the goods to which the marks are applied, and the nature and kind of customers who would be likely to buy those goods. [43] The plaintiff is engaged in the business of selling and producing energy drinks, while the defendant sells coffee, tea and baked products. The court finds that the plaintiff’s goods and the defendant’s goods are not similar. There are a few reasons for this finding. ! [44] First, the plaintiff’s and defendant’s target customers are not similar. The plaintiff’s target customers are those seeking immediate energy such as athletes, students and those with active lifestyles, while the defendant’s target customers would include a broader demographic, as the defendant’s goods appeal to the larger public. [45] Second, the nature and characteristics of the plaintiff’s goods and the defendant’s goods are not similar. In Colman (JJ) Ltd's Application, Re, 46 RPC 126, the applicants’ application for a label in respect of semolina was refused on the ground that the label should be associated with other trademarks of the applicants, including labels registered in the name of the applicants in respect of mustard. The registrar held that semolina and mustard are prepared for use as food, and are thus goods of the same description. The court disagreed, holding as follows: “One must, I think, go a little further and find out what is the real nature of the article. One here is a condiment. I should define mustard and the class of articles which are used in a similar way, such as salt and pepper and cayenne and many sauces, as in the nature of a condiment. The other, semolina, I should rather treat as a cereal, one of those things which is used in larger bulk, and is used for quite different purposes from those for which mustard is used. I think it would be a fair division of the two sets of goods to say that one would fall under the description of a condiment and the other under the description of a cereal, and although these goods are found side by side and in juxtaposition when offered for sale and in domestic use, that cannot of itself alter the real description of the goods. In my opinion, although I hesitate a ! long time before differing from the conclusion of the learned Registrar, there is sufficient distinction between these two classes of goods, mustard on the one hand and semolina on the other, to enable me to say that the registration of the Mark is respect of the latter can be proceeded with notwithstanding the existence on the Register of the Mark for mustard.” (emphasis added) [46] In the present case, the plaintiff's goods are categorised as energy drinks, and are specifically formulated beverages designed to provide a boost in energy. In contrast, the defendant's goods include a range of products such as coffee, tea, cocoa and artificial coffee, along with baked goods like flour, pastries, cookies and other confectionery items. The plaintiff’s goods and the defendant’s goods are distinct in nature and in use, with the plaintiff’s goods generally marketed to those who are active and require an immediate boost of energy. In contrast, the defendant’s goods are generally marketed to those in a slower-paced environment, and are consumed for flavour and enjoyment. In addition, the defendant’s products such as flour, pastries, and baking goods are not beverages at all. These items fall into entirely different categories of food products, aimed at culinary use rather than direct consumption. Their target consumers differ significantly from consumers of energy drinks. [47] Thus, the court finds there to be no overlap in the nature and characteristics of the plaintiff’s goods and the defendant’s goods. It therefore follows that the plaintiff’s and defendant’s goods are not of the same description. ! Is the Defendant’s Trademark distinctive? [48] The third and final issue considered by the court is whether the Defendant’s Trademark is distinctive. [49] Section 10 of the TMA 1976 contains the requirement of distinctiveness, with the provision stating as follows: “(2A) For the purposes of this section, "distinctive", in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration.