Ortus Expert White Sdn Bhd v Nor Yanni Binti Adom (02(f)-12-02/2020 (W))

NOORFAEZAL BIN ROMLI (Trading in the name and style of Rafica Resources) (Business Registration No: SA012005639-D) …..RESPONDENTS [In the Court of Appeal of Malaysia at Putrajaya Civil Appeal No: W-02(IPCv)(W)-1808-09/2018)

NOORFAEZAL BIN ROMLI (Trading in the name and style of Rafica Resources) (Business Registration No: SA012005639-D) …..APPELLANTS (Company No: 951378-H) …..RESPONDENT] 2 [In the High Court of Malaya at Kuala Lumpur In the Federal Territory of Kuala Lumpur, Malaysia (Commercial Division) Civil Suit: 22IP-25-06/2017 (Company No: 951378-H) …..PLAINTIFF

NOORFAEZAL BIN ROMLI (Trading in the name and style of Rafica Resources) (Business Registration No: SA012005639-D) …..DEFENDANTS] _________________________________________________________ CORAM: Nallini Pathmanathan, FCJ Zabariah Mohd Yusof, FCJ Rhodzariah Bujang, FCJ JUDGMENT A. INTRODUCTION [1] The appellant, Ortus Expert White Sdn Bhd was granted leave to appeal to the Federal Court on the following questions of law: 3

(a) Whether in a trade mark infringement and passing off action, the court ought to consider the disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark for the purpose of deciding whether there is a likelihood of confusion and/or deception?;

(b) In a tort of passing off case, can the goodwill of a business be destroyed completely by mere publication (s) of documents that make no specific reference to the business owner? [2] In this judgment we shall refer to the parties as they were before the High Court. [3] The plaintiff commenced an action against the defendants in the High Court premised on 3 causes of action, namely, infringement of trade mark of the plaintiff, breach of dealership agreement and the tort of passing off. [4] After a full trial the learned High Court Judge decided in favour of the plaintiff on all the 3 causes of actions. However, upon appeal to the Court of Appeal, the decision was reversed in favour of the defendants with costs of RM 40, 000 to be paid to the defendants. Hence, the appeal by the plaintiff before us on the aforesaid questions of law. B. BACKGROUND [5] The plaintiff is a distributing company for “Royal Expert” beauty products. These products bear a “Royal Expert White” trade mark which has been registered in the Register of Trade Marks under the Trade Marks 4 Act 1976 (TMA) for goods in Class 3 (inter alia, creams for wrinkles and skin whitening). In that regard, the Plaintiff is the owner of the registered trade mark which is set out below: ” [6] The 1st defendant (D1) is the wife of the 2nd defendant (D2). [7] D1 entered into a dealership agreement (Agreement) dated 9.9.2019 with the plaintiff. D2 is the sole proprietor of Rafica Resources (RR) and has distributed (together with D1) the plaintiff’s products. [8] D1 had sold skin whitening cream bearing the trade mark “Real Expert White” as well as packaging which is allegedly similar to the plaintiff’s products. The defendants’ products “Real Expert White” cream bears the mark as shown below: 5 [9] As a result, the plaintiff commenced an action against the defendants for the following causes of action:

(i) breach of the Agreement, namely clauses 7.4 and 14.4;

(i) general damages for losses incurred;

(i) What is the effect when the defendants elected not to adduce oral evidence in this case;

(v) Whether the defendants committed the tort of passing off Real Expert White products as the plaintiff’s goods. C.1. The effect of the defendant in not adducing oral evidence [13] The learned trial Judge referred to Takako Sakao v Ng Pek Yuen & Anor [2009] 6 MLJ where the court presumed that the plaintiff’s evidence to be true. The court found that the witnesses, SP 1, SP 2 and SP 3 are credible witnesses and their evidence was not undermined during cross examination. The court invoked an adverse inference under section 114(g) of the Evidence Act 1950 when the defendant failed to adduce any evidence to rebut the evidence of the plaintiff. [14] The basis for such holding by the learned trial Judge are:

(a) If the defence wishes to make a submission of no case to answer, then the trial court is under an obligation to put to the election of the defence counsel that he would not call any evidence. The reason for such obligation is that no judge should be asked for his conclusion or opinion on the evidence until such evidence is concluded.

(b) If the party on whom the burden of proof lies, gives or calls evidence, then the judge is bound to call upon the other party, and has no power to hold that the first party has failed to prove his case. At this stage the truth or falsity of the evidence is 8 immaterial. For the purpose of testing whether there is a case to answer, all the evidence given must be presumed to be true.

(c) Therefore, once a defendant elects not to call evidence, then all the evidence led by the plaintiff must be assumed to be true. C.2. Whether the defendants have breached the Agreement by selling Real Expert White Products [15] It was held that the Agreement was between D1 and the plaintiff. D2 was never a party to the Agreement although the Agreement states that D1 traded under RR’s name and that she was an employee of RR. As a result, the court found that D2 could not be held liable under the Agreement premised on the doctrine of privity of contract. [16] Consequently, the court was satisfied that D1 has breached clause 7.4 of the Agreement which provides: “7.4 The Dealer shall at all times conduct its business in such a manner as to enhance the reputation and credibility of the Company and Products. It shall, in particular:

7.4.1. refrain from participating in any unlawful, unfair, deceitful or immoral practices and refrain from selling the Products to any other dealer or organisation, which has recourse to such practices; and

7.4.2. present the Products in a fair and appropriate manner. For such purpose, the Dealer shall not disparage the Company and the Products and shall not make statements concerning the characteristics or capabilities of the 9 Products which may not be in accordance with those described in this documentation; nor shall the Dealer market the Products for correspondence.” D1’s sales of Real Expert White products was to enhance the reputation and credibility of the plaintiff and the plaintiff’s products, as clearly stated in the said Clause. [17] It was also found that D1 has breached clause 14.4 of the Agreement when she failed to notify the plaintiff promptly regarding the “actual, threatened or suspected” infringement of the plaintiff’s registered trade mark and the tort of passing off. Clause 14.4 provides: “14.4. The dealer must promptly and fully notify the Company of any actual, threatened or suspected infringement in the Territory of any intellectual property of the Company that comes to the dealer’s notice, and of any claim by any third party coming to his notice that the importation of the Products into the Territory or their sale in it infringes any rights of any other person.” C.3. Whether the defendants can rely on a press release from the Ministry of Health pertaining to the application of Regulation 18A of the Control of Drugs and Cosmetics Regulations 1984 [18] D1 contended that based on the Ministry’s Press Release, Ortus Expert White’s registered trade mark should not have been registered by the Registrar of Trade Marks as the use of the same would be contrary to law, namely, regulation 18A of the CDCR 1984 (as provided under section 14(1)(a) of the TMA) and is not entitled to protection by the court (as provided under section 14(1)(b) of the TMA). 10 [19] The Learned High Court Judge rejected such argument by D1 and held that D1 is precluded from relying on the Ministry’s Press Release as it concerned Ortus Expert Cosmetics Sdn Bhd (OEC) products and not that of the plaintiff, Ortus Expert White. Based on trite principle of separate legal entity, Ortus Expert White is a legal entity which is distinct and separate from Ortus Expert Cosmetics Sdn Bhd. The court could not lifted the corporate veil of the plaintiff and OEC as the defendants failed to plead that OEC and plaintiff are part of a single group entity and neither was such evidence adduced by the defendants during trial. [20] The plaintiff’s products are included in the list of Registered/Notified Products, therefore they are “notified cosmetic” within the meaning of regulation 18A(1) and (2) of the CDCR 1984. Under the CDCR 1984, regulation 18A (1) provides: “(1) No person shall manufacture, sell, supply, import, possesses any cosmetics-

(a) unless the cosmetic is a notified cosmetic;” Regulation 18A(2) provides that: “(2) For the purpose of subregulation (1), “notified cosmetics” means a cosmetic as specified in the notification issued by the Director of Pharmaceutical Services, in the manner as he deems fit.” Under the CDCR 1984, it is an offence for anyone to manufacture, sell, supply, import, possesses any cosmetics without prior notification to the Director of Pharmaceutical Services. In the present case there was no evidence to show that the Director of Pharmaceutical Services has cancelled the notification of the plaintiff’s products pursuant to Regulation 11 18A (8) of the CDCR 1984. With this notification, the plaintiff is entitled to “sell, supply, import, possess or administer” the plaintiff’s products. As the Ministry’s Press Release is in reference to another entity which is not the plaintiff, it therefore follows that the defendants cannot rely on the Ministry’s Press Release to argue that the plaintiff’s registered trade mark should not have been registered by the Registrar of Trade Marks, relying on ss. 14(1)(a) and (b) of the TMA. [21] D1 also failed to adduce evidence to prove that the plaintiff, Ortus Expert White has been investigated, prosecuted and/or convicted of any offence under the CDCR 1984 regarding Ortus Expert White’s beauty products. C.4. Whether the defendants infringed the plaintiff’s registered trade mark under section 38(1)(a) TMA by selling Real Expert White Products [22] The High Court relied on the Federal Court decision in Low Chi Yong (Berniaga sebagai Reynox Fertichem Industries) v Low Chi Hong & Anor [2017] MLJU 1657, (at paragraphs 35-37) which held that 5 elements must be proven to show that there was an infringement of section 38 of the TMA. The High Court found that the present case satisfies all the 5 elements of trade mark infringement under section 38(1)(a) of the TMA, namely:

(i) The defendants have used Real Expert White mark which so nearly resembles the plaintiff’s registered Trade Mark so as to cause a likelihood of confusion or deception between the consumers of the plaintiff’s products and Real Expert White products; 12

(v) The defendants have used Real Expert White mark in such a manner as to render its use likely to be taken as being used as a trade mark or as importing a reference to the plaintiff or the plaintiff’s registered trade mark. [23] The learned trial Judge was satisfied that the plaintiff has discharged the legal and the evidential burden to prove the existence of a likelihood of confusion/deception through visual comparison and similarity in the types of products and descriptions. This was explained by the learned High Court Judge at paragraph 28 of His Lordship’s judgment which can be summarised as follows:

(i) There are 2 “distinguishing” or “essential features” of the plaintiff’s registered trade mark which strike the eye and fix themselves in the recollection of the users of the plaintiff’s goods i.e. the “Crown Device” and the “rectangle”. The trial court further held that Real Expert White mark has a Diamond-shaped device which is similarly confusing and/or deceptive as the Crown Device. The Diamond-shaped device is placed at 13 the top and the middle of Real Expert White mark (the same position as the Crown Device in the plaintiff’s registered trade mark). Real Expert White mark has a rectangle (same as the plaintiff’s registered trade mark);

(v) There is a similarity of ideas or concept between the two products as both marks are similarly applied on the box packaging of the goods; and

(i) the existence of likelihood of confusion/deception;

(i) On visual comparison, the plaintiff’s registered trade mark has a crown device, while the defendants’ Real Expert White mark has a Diamond-shape device. Therefore, they are not similar;

(a) The element of goodwill for the product of the plaintiff i.e. “Royal Expert Whitening Cream” was destroyed by the Ministry’s Press Statement that it contained mercury.

(b) The learned trial Judge had wrongfully referred to the list of Registered/Notified Products, whereby the list does not include the “Royal Expert Whitening Cream”, and that the list contained products of the plaintiff and of another non-party to the suit. Therefore, the plaintiff had failed to prove that the defendants in selling the Real Expert Whitening Cream was passing off a product of the Plaintiff and the goodwill of the plaintiff.

(c) Since there was no infringement of the plaintiff’s registered trade mark, then the alleged misrepresentation also fails. D.4. Decision of the Court of Appeal: [45] As there was no infringement of the plaintiff’s registered trade mark and the plaintiff failed to prove passing off by the D1 and D2, the Court of Appeal held that there was no breach of the Agreement. As a result, the Court unanimously decided that the appeal was allowed with cost and the High Court’s decision was set aside. E. PROCEEDINGS AT THE FEDERAL COURT [46] The plaintiff premised its appeal on the following grounds that the Court of Appeal had erred in holding that there was no infringement of trademark and no likelihood of confusion and/or deception as the Court of Appeal: 21

(i) failed to take into consideration of the disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark in the determination of the infringement of registered trade mark and the tort of passing off (this is a novel point of law in which a question was framed for the determination of this Court);

(v) took into account the defendants’ unpleaded defence, namely non-use of the trade mark. F. OUR DECISION F.1. The 1st Question of Law [47] The 1st Question of law refers to the role of disclaimers and essential features in the registered trade mark for the purpose of deciding whether there is likelihood of confusion and/or deception in the determination of infringement of trade mark and the tort of passing off. [48] However, before we proceed to determine the 1st Question of law, we need to state our view on the way the 1st Question of law was drafted, 22 which we view as being incorrect. A reading of the said question has combined/mixed the role of disclaimers in trade mark infringement action and the tort of passing-off. [49] The law on disclaimers vis-à-vis in the context of infringement of trade mark and in the context of the tort of passing-off is different and distinct. In trade mark infringement cases, it is the plaintiff who attaches a disclaimer in the application from trade mark registration. Whereas, in a passing-off case, a disclaimer is where the defendant uses a mark which is distinctive of the plaintiff, but attaches a disclaimer to its usage to indicate that there is no link or nexus between the defendant’s mark with that of the plaintiff. We also need to state at the outset that the facts in the present case show that the defendant did not have a disclaimer stating the non-nexus between the plaintiff’s goods and the defendant’s. [50] Given the aforesaid, the way the 1st Question of law was drafted failed to take into account this distinction of the role of disclaimers in trade mark infringement and in the tort of passing-off. Hence, the 1st Question of law as it stands, is misconceived. This was also in accordance to the submission of the plaintiff. Therefore, on our own motion, we amend the 1st Question of law to read: “Whether in a trade mark infringement action, the court ought to consider the disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark for the purpose of deciding whether there is a likelihood of confusion and/or deception?” (hereinafter referred to as “the Amended Question 1”) We now proceed to answer the Amended Question 1. 23 The Amended Question 1: [51] There is a disclaimer in the plaintiff’s registered trade mark, in that the plaintiff has no right to the exclusive use of the words “Royal” and “Expert White”. [52] The Court of Appeal is of the view that the Court cannot consider the disclaimed words in deciding on the existence of a likelihood of confusion and deception and it is to be borne in mind that the trade mark of the plaintiff is a “combined” trade mark. This means the words used, the picture or logo used combined together make up the registered trade mark of the plaintiff. When the type of trade mark is combined, the registration will not protect the words only or the picture only in isolation. Hence, they must appear in this same combination mark for protection against infringement of trade mark. Moreover the disclaimed words are not protected under the TMA pursuant to sections 18(2), 35(1) and 40(2) of the same. [53] However, counsel for the plaintiff submits that the Court of Appeal had erred when it failed to take into consideration the disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark in a trade mark infringement. [54] The plaintiff’s stand is that the disclaimed word(s) ought to be taken into consideration together with all the essential features of a trade mark or get-up when determining whether there is a likelihood of confusion and deception in a trade mark infringement instead of disregarding the disclaimed word(s) in totality. Otherwise, infringers can easily escape liability by relying on the presence of the disclaimed words in their 24 products, as is illustrated by the present appeal where the defendants’ products consist of so many similarities in several aspects. F.1.1. Whether there is Infringement of Trade Mark [55] In determining whether there was infringement of trade mark of the plaintiff, section 38 of the TMA and the case of Low Chi Yong provides and established the ingredients that needs to be proved for such a cause of action: “[37] Under s. 38 of the TMA 1976 the appellant needs to establish the following ingredients, inter alia:

(i) The respondent used a mark identical with or so nearly resembling the trade mark as is likely to deceive and/or cause confusion…:

(v) The respondent used the offending mark in such a manner as to render the use likely to be taken either as being used as a trade mark or as importing reference to the registered proprietor or the registered user or to their goods or services.” [56] The first ingredient as laid down in Low Chi Yong is known as “the test of Likelihood of Confusion or Deception”. In this regard, the Supreme Court in the case of Tohtonku Sdn Bhd v. Superace (M) Sdn Bhd [1992] 25 2 MLJ 63, at page 65 sets out what constitutes an infringement of a registered trade mark when it held as follows: “Under s 38 of the Trade Marks Act 1976, a registered trade mark is infringed by a person who uses a mark which:

(a) is identical with it; or

(b) so nearly resembling it as is likely to deceive; or

(c) so nearly resembling it as is likely to cause confusion.” (Emphasis Included) [57] Section 38 TMA explicitly requires the Court to consider whether such resemblance of the trade mark is likely to deceive or cause confusion. Mere resemblance is insufficient. The resemblance must be such as to cause a likelihood of deception or confusion amongst customers. [58] The word, “likely” denotes what is required to be established is only a probability or possibility of confusion/deception (as per Azahar Mohamed J (as he then was) in the High Court case of Danone Biscuits Manufacturing (M) Sdn Bhd (formerly known as Britania Brands (M) Sdn Bhd) v Hwa Tai Industries Bhd [2010] 8 MLJ 500.). [59] As for the word, “deceived”, we are aided by the judgment of the Court of Appeal of New Zealand in the case of Pioneer Ht-Bred CORN Co v Hy-line Chicks Pty Ltd [1977] RPC 410, to mean, “the creation of an incorrect belief or mental impression”. As to the words “cause confusion” it “means perplexing or mixing up the minds of the purchasing public.” 26 [60] In the infringement of a trade mark action, the determination of whether there is likelihood of confusion/deception of the public ultimately lies with the Court and not for the witnesses to decide. Support for this proposition can be found in the Federal Court case of Ho Tack Sien & Ors v Rotta Research Laboratorium Spa & Another Appeal; Registrar of Trade marks (Intervener) [2015] 3 MLRA 611; Judgment of Lord Hodson in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265, 285). [61] The issue as to whether the mark used by the defendant is identical with, or so nearly resembling the trade mark 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 M I & M Corporation & Anor v Mohamed Ibrahim [1964] 30 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. [62] Whilst there is no formula to determine the degree of resemblance before one can determine that a mark so nearly resembles another as is likely to cause confusion, there are however, several guidelines devised by the courts through decided cases, which we will elaborate in the later part of this judgment. 27 F.1.2. The Legal Position of “Disclaimed” Words in a Registered Trade Mark [63] Section 18 of the TMA provides that a disclaimer is a condition upon the Register of Trade Mark, that the proprietor shall disclaim any right to the exclusive use of any such part or matter. Further provisions can be found in sections 35(1) and 40(2) of the TMA which provide that the proprietor of a registered trade mark does not have exclusive right to use in relation to the disclaimer. [64] Ambrose J in the Singapore case of British-American Tobacco Co Ltd v Tobacco Importers & Manufacturers Ltd & Ors [1963] 29 MLJ 196, accepted the following passage from Kerly's Law of Trade Marks, 8th edition, page 150, as a correct statement of the law with regards to the effect of disclaimers on proprietors of registered trade marks when His Lordship said at page 198 of the judgment: "The effect of a disclaimer is that the proprietor of the registered trade mark cannot claim any trade mark rights in respect of the parts of the mark to which the disclaimer relates, so that, for instance, no action for infringement lies in respect of the use or imitation of the disclaimed particulars." [65] As no exclusive trade mark rights may be claimed in relation to disclaimers, a subsequent application for a trade mark is free to use that component. A 3rd party may use such parts in their trade mark for registration. In our present appeal, the plaintiff therefore has no exclusive right to the use of the disclaimed words “Royal” and “Expert White”. 28 [66] Our High Courts have, over the years, the occasion to decide on the effect of disclaimer found in a mark in the following cases:

(a) Tint Shop (M) Sdn Bhd v. Infinity Audio Marketing Sdn Bhd [2017] MLJU 597; HC (“Tint Shop”);

(b) Jyothy Laboratories Ltd v. Perusahaan Bumi Tulin Sdn Bhd [2018] MLJU 359; HC (“Jyothy Laboratories”)

(c) Shizens Cosmetic Marketing (M) Sdn Bhd v. LVMH Perfumes and Cosmetics (M) Sdn Bhd [2019] MLJU 1377; HC (“Shizens”)

(d) Sanbos (Malaysia) Sdn Bhd v. Tiong Mak Liquor Trading

(M) Sdn Bhd [2008] 10 CLJ 538; HC (“Sanbos”), but none provided a clear answer to the question of whether the Courts can consider disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark for the purpose of deciding whether there is a likelihood of confusion and/or deception. The cases appear to decide as follows:

(a) The principles are only confined to the extent that the Court cannot decide on trade mark infringement upon the use of disclaimed words. In other words, the Court cannot decide that there is trade mark infringement solely on the basis that the defendant uses the disclaimed words itself. It does not expand further, than holding that the Court cannot consider the disclaimed words at all in a holistic manner. 29

(b) In Sanbos, the Court held that the plaintiff had no exclusive right over the numerals “99” and “999”, and therefore the Court disregarded the same when comparing whether the defendant’s mark is confusingly similar to the plaintiff’s registered trade mark. However, the Court took cognisance that the plaintiff and the defendant’s marks are to be looked at as a whole in order to determine the essential features of the plaintiff’s registered trade mark. This will involve considering the phonetic, visual and get-up of the whole marks which would include the disclaimed words altogether, although disclaimers are not considered as essential particulars (Paragraphs 20-24). Sanbos held that the get-up which contains words and numerals in gold with a red background is not peculiar and/or distinctive of the plaintiff. Further, the numeral '9' and get-up is common to the trade. The court also finds that the plaintiff has failed to adduce any evidence on use of the "CLUB 999" mark.

(c) In Shizens, the Court held that it cannot consider the disclaimed word “Lip” in deciding whether the defendant’s mark infringed the plaintiff’s registered trade mark, because the plaintiff had no exclusive use of the disclaimed word. However, the Court proceeded to decide the issue of infringement based on the plaintiff and defendant’s marks as a whole which would mean including the disclaimed word in terms of phonetic, visual and trade channel aspects (paragraph 48 of the judgment). The court placed great emphasis on the substantial reputation of the LVMH brand or products as compared to Shizen’s and thus there is no likelihood of deception/confusion between reasonable purchasers that LVMH’s DIOR mark (i.e. Dior 30 Addict LIP TATOO Products) will distinguish it from Shizens’ LIP TATOO mark. Given the aforesaid authorities, the current state of the law in Malaysia as to whether Courts can consider disclaimed words together with essential features in trade mark infringement, is unclear. However, we take note of Shizens, which demonstrated that the Court can proceed to decide the issue of infringement based on the plaintiff and defendant’s marks as a whole which would include the disclaimed word in terms of phonetic, visual and trade channel aspects. We will be addressing whether Courts ought to adopt this approach and whether it is legally justified to do so. [67] As early as 1953, it has been held that in comparing marks, due allowance must be given to the fact that a mark is a whole thing and therefore should be considered in its entirety (Re Lovens Kemiske Fabrik Ved A Konsted’s Application for Registration of Trade Marks “Leocillin” [1953] 19 MLJ 215 and Tan Hap @ Tan Hwa Ho & Anor (both t/a Syarikat Kwong Hock Hin) v Liang Ann Hock t/a Kim Guan Trading Company [1989] 2 CLJ 500 ). When comparing the marks, one ought not to break down a mark into parts and compare each part with the corresponding part of the other mark to determine resembling features. [68] Ambrose J in British-American Tobacco, agreed with the view as expressed by Lloyd-Jacob in Taw Manufacturing Co Ltd v Notek Engineering Co Ltd (1951) 68 RPC 271 when His Lordship held that a disclaimed feature cannot be regarded as an essential particular and that a disclaimed feature is the antithesis of an essential particular. Further, Ambrose J accepted the following passage from Kerly's Law of Trade 31 Marks, 8th edition, page 150, as a correct statement of the law, which states: "The effect of a disclaimer is that the proprietor of the registered trade mark cannot claim any trade mark rights in respect of the parts of the mark to which the disclaimer relates, so that, for instance, no action for infringement lies in respect of the use or imitation of the disclaimed particulars." [Emphasis included] [69] This particular passage by Ambrose J, has often been cited in support of the proposition that Courts cannot consider disclaimed words in deciding whether there is infringement of trade mark and comparing whether there is likelihood of confusion or deception. However, such a proposition is misconceived upon a full consideration of Ambrose J’s Judgment in the said case. [70] In fact, after Ambrose J held that “no action for infringement lies in respect of the use or imitation of the disclaimed particulars”, His Lordship proceeded to decide that when comparing the marks, the proper course is to look at the marks as wholes and not to disregard the parts which are common. From His Lordship’s judgment, it appears that disclaimed words which was referred to as the “common parts” in the marks ought to be considered by the Court in a holistic manner in reaching a decision as to whether there is likelihood of confusion or deception. The case made specific reference to words having being disclaimed by the plaintiffs may be treated as something common to the trade. This is evident from His Lordship’s view at page 198 of the judgment, as reproduced below: 32 “The second proposition of counsel for the plaintiffs was that where common marks are included in the trade marks 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 common. He cited Re Farrow's Application (1890) 7 RPC 260, as authority for it. The proposition is to be found in Kerly's Law of Trade Marks. 8th edition, at page 407. It was conceded by counsel for the defendants. And I accepted it as a correct statement of the law. Counsel for the plaintiffs said that the words "Gold Leaf" having been disclaimed by the plaintiffs may be treated as something common to the trade. The expression "common to the trade" has two meanings: (1) in common use in the trade; (2) open to the trade to use. Counsel meant that the words "Gold Leaf" were open to the trade to use. I found on the evidence before me that the words "Gold Leaf" were in common use in the trade; and also that red and white panels were in common use in the trade. Before applying the above proposition to the facts of this case, I had to consider the evidence adduced by the plaintiffs as to actual confusion. … For the proper principle to apply in comparing marks is to look at the marks as wholes and not to disregard the parts which are common.” [Emphasis Included] [71] Similar proposition has also been held in the English case of Re Farrow's Application (1890) 7 RPC 260, where the High Court said that: “It has been said and argued that the distinguishing feature of the Applicant’s trade mark is the word ‘Nitedals,’ and that we are to regard that, and not to regard other matters contained on the trade mark, which are said to be common to the trade. It may be that those other matters are common to the trade, but in dealing 33 with matters which are common to the trade, I think we must look at the combination of those different matters common to the trade, their collocation and arrangement; and if we find things that are common to the trade, all inserted in a similar position in a similar form, and in similar arrangements, so as to make the whole so similar as to be calculated to deceive, I think that is enough.” [Emphasis Included] F.1.3. Whether disclaimed words could only be considered in an action of expungement, not infringement: [72] The plaintiff has directed our attention to the English case of Granada Trade Mark [1979] RPC 303, which was referred to, by the learned High Court Judge in Jyothy Laboratories, where His Lordship there, made a distinction between an action for infringement and expungement and held that disclaimed words could only be considered in an action of expungement not infringement. This can be discerned from His Lordship’s judgment at paragraph 54 (2) which reads: “(2) although the court cannot refer to the subject matter of a Disclaimer when an owner of a registered trade mark enforces his or her exclusive right to the use of the registered trade mark, the court may however, refer to the subject matter of the Disclaimer in deciding whether the registered trade mark should be removed from the Register on the ground of existence of a Likelihood of Deception/Confusion pursuant to the first limb of s 14(1)(a) read with ss 37(b) and 45(1)(a) TMA. This is understandable as the purpose of the first limb of s 14(1)(a) TMA is to protect the public from being deceived or confused regarding the origin or quality of goods and services by the use of a registered trade mark. 34 Our first limb of s 14(1)(a) TMA is similar to s 12(1) of United Kingdom’s (UK) Trade Marks Act 1938 [TMA 1938 (UK)]. As such, decisions of UK’s Registrar of Trade Marks (UK’s Registrar) on s 12(1) TMA 1938 (UK) may be referred to in the construction of our first limb of s 14(1)(a) TMA. I rely on the following decisions of UK’s Registrar-

(a) in Granada Trade Mark [1979] RPC 303, at 306, Mr. Myall (from the office of UK’s Registrar) …….” [73] However, General Cigar Co Inc v Partagas Y Cia SA [2005] All ER (D) 505 (Jul); [2005] EWHC 1729 (Ch); HC, held that such a distinction (between the effect of a disclaimer upon registration matters and infringement) is misconceived and based on a false premise. This is evident from the judgment: “87. I accept the argument for the Registrar that General Cigar's suggested distinction between the effect of a disclaimer upon registration matters and infringement issues is based upon a false premise. A disclaimer only applies to part of a mark (because the whole of a valid mark could never be disclaimer, otherwise it would not be distinctive), and so a disclaimer only has any relevance when the marks under consideration are similar, rather than identical. This is because a disclaimer operates to affect the scope of protection by influencing the analysis of the likelihood of confusion. This concept is common to both section 10 (infringement) and section 5 (registrability), and should be applied equally in each scenario.” [Emphasis included] [74] General Cigar established the proposition that there should not be any different in the approach to be taken on the effect of a disclaimer in determining confusion for the purposes of opposition to a proposed 35 registration of a trade mark from that applicable to determine confusion in an infringement action. The Singapore Court of Appeal also adopted this approach as evident in Valentino Globe BV v. Pacific Rim Industries Inc [2010] 2 SLR 1203; CA, when it held that: “Whilst we recognised that the case of Polo was concerned with the question of confusion relating to infringement under section 27(2) of the [1998 Act], we were unable to see why the approach to be taken for determining confusion for the purposes of opposition to a proposed registration under section 8(2) should be any different from that applicable to determine confusion under section 27(2). Moreover, and more importantly, the material words of the two provisions are identical.” [Emphasis Included] We are also inclined to adopt such an approach in this matter. [75] Hence, following from the abovesaid authorities, the justifications for the test of likelihood of confusion and/or deception is to be applied equally in expungement and infringement actions, namely, the Court ought to consider the marks as a whole and take into account the disclaimed words in infringement action as it does in expungement actions. [76] Thus, discerning from the aforesaid authorities, we are of the view that:

(a) In a trade mark infringement action, the Court ought to consider disclaimed words in juxtaposition or in combination with the essential features in the registered trade mark for the purpose of deciding whether there is a likelihood of confusion and/or deception; 36

(b) The Court cannot decide the issues of infringement of trade mark and likelihood of confusion and/or deception solely upon the basis of the use of disclaimed words;

(c) Disclaimed words cannot be regarded as essential feature;

(d) The Court can consider disclaimed words in terms of phonetic, visual, and trade channel aspects for comparison to decide whether there is likelihood of confusion and/or deception;

(e) The Court shall consider the marks as wholes and not to disregard the disclaimed words, and whether their collocation and arrangement all inserted in similar form and similar position or arrangement so as to make the whole so similar as to be calculated to confuse and/or deceive. The end purpose is whether the mark is so similar as to be calculated to cause a confusion and/or deception. [77] To sum up, it is our judgment that the Court can consider disclaimed words in juxtaposition or in combination with the essential features in determining the likelihood of confusion in a trade mark infringement action. However to determine the applicable test for likelihood of confusion and/or deception in a trade mark infringement action, it is pertinent to look at the nature and legal position of essential features. 37 F.1.4. The Legal Position of Essential Features: [78] In the determination of the likelihood of confusion/deception in a trade mark infringement action, case law has held that the Court would also consider what are the “essential” features of the registered trade mark. [79] As to what constitutes “essential features” was explained by Sir Wilfred Green MR in the English case of Saville Perfumery Ltd v June Perfect Ltd and FW Woolworth & Co Ltd (1941) 58 RPC 147, at page 162 line 2-9, where His Lordship held as follows: “… traders who have to deal with a very large number of marks used in the trade in which they are interested, do not, in practice, and indeed cannot be expected to, carry in their heads the details of any particular mark, while the class of customer among the public which buys the goods does not interest itself in such details. In such cases the marks come to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.” [Emphasis Included] [80] Our Court of Appeal in the case of Sinma Medical Products (M) Sdn Bhd v Yomeishu Seizo Co Ltd [2004] 4 MLJ 358 not only affirmed and adopted the aforesaid proposition by Saville Perfumery Ltd as to what constitutes an “essential” feature but has expanded it to include the sound and significance of the word forming part of the registered trade mark used in trade, when it held as follows: 38 “[24] In De Cordova and Others v Vick Chemical Co (1951) 68 RPC 103, the Privy Council held that the word 'VapoRub' was an essential feature of the trade mark, that the words 'vapour rub' so closely resembled that word as was likely to deceive, and that the mark was infringed. In his judgment, Lord Radcliffe said: … A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result. …” [Emphasis included] [81] The issue then arises - how does one find or determine these “essential” or “distinguishing” features in a registered trade mark? In this regard, Sir Wilfred Green MR in Saville Perfumery Ltd at page 162 line 10-13 of the judgment, provided guidance “In deciding whether or not a feature is of this class, not only ocular examination, but the evidence of what happens in practice in the particular trade is admissible.” [82] As to who determines these “essential” or “distinguishing” features was explained by Ambrose J in British-American Tobacco at page 198, when it held that: “I had, however, to consider the evidence placed before the Court as to what the public regards as essential feature s of the plaintiffs’ registered trade mark. The identification of an essential feature 39 depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it: de Cordova v Vick Chemical Co [1951] 68 RPC 103 at p 106. In that case the Privy Council said: "If a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result." [Emphasis included] [83] The above proposition was also adopted by Mohamed Dzaiddin J (as he then was) in J S Staedtler & Anor v Lee & Sons Enterprise Sdn Bhd [1993] MLJU 569, where His Lordship held that: “Identification of these features depended partly on the Court's own judgment and partly on the burden of the evidence that was placed before the Court (De Cordova v. Vick Chemical Coy. (1951) 68 R.P.C. 103, 106). IN De Cordova, the Privy Council held that the word “Vepo Rub” was an essential feature of the trade mark, that the words “vapour rub” so closely resembled that word as was likely to deceive, and that the mark was infringed. … A trademark is a visual device and it is a well-established law that one way of ascertaining its essential features is by ocular test (De Cordova, supra, p.106).” [Emphasis Included] [84] A mark has been held to be infringed if one of more of its essential features are used by another trader. As was held by the Privy Council 40 case of De Cordova and Others v. Vick Chemical Company (1951) 68 R.P.C. 103 that: “……They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.” [Emphasis Included] [85] This was followed and adopted by an English case of Taw Manufacturing Co Ltd at page 273 where the High Court held that: “A trade mark is infringed if a person other than the registered proprietor or authorised user uses, in relation to goods covered by the registration, one or more of the trade mark's essential particulars. The identification of an essential feature depends partly upon the court's own judgment and partly upon the burden of the evidence that is placed before the court. As Lord Radcliffe observed in de Cordova v Vick Chemical Coy (1951) 68 RPC 103 at 106: 'In most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.” [Emphasis Included] [86] The case of British-American Tobacco also held the same at page 197, as evident from its holding as follows: “The first proposition of Counsel for the plaintiffs was that "a trade mark is infringed if a person other than the registered proprietor or authorized user uses, in relation to goods covered by the registration, one or more of the trade mark's essential particulars." The authority cited for this proposition was a passage to that effect from the judgment of Lloyd-Jacob J. 41 in Taw Manufacturing Co Ltd v Notek Engineering Co Ltd (1951) 68 RPC 271 at page 273. I accepted this proposition.” [Emphasis Included] [87] A mark cannot be said to resemble another mark within the meaning of section 38 TMA although it shares many identical features with that other mark, because the essential features of that mark are not incorporated in the other. In considering whether the two marks resemble each other, the significant factors are the essential features (Re Pianotist Co Ltd [1906] 23 RPC 774; Tohtonku Sdn Bhd v Superace (M) Sdn Bhd) [1992] 2 MLJ 63 at 66). JS Staedtler & Anor provides a good illustration where the plaintiff’s trade mark consisted of the words “Staedtler Noris” together with yellow and black thick and thin stripes running along the hexagonal wooden casing of the pencil. The defendant’s products which were put on the market were of similar hexagonal wooden casing pencils which were with thick black and yellow stripes and the word “NIKKI” printed on the wooden casing. Looking at the products side by side, it is clear that both marks were definitely not identical. However, the issue was whether they nearly resembled each other. In deciding on this issue, the court found that the essential features of the marks are the striking black and yellow stripes, not the words “Staedtler Noris” or “NIKKI”. Base on a visual comparison, the court found that the striking black and yellow stripes of the defendant’s mark, nearly resembled that of the plaintiff’s essential features of the striking black and yellow stripes mark and therefore the plaintiff’s infringement action succeeded. It is the striking black and yellow stripes which is the essential features of the plaintiff’s pencils. 42 [88] Therefore, premised on the above authorities we can collate the following principles to be borne in mind, in determining essential features in a trade mark infringement action, namely:

(a) the particular mark is remembered by some feature in it which strikes the eye and fixes itself in the recollection or mind of a consumer;

(b) a word forming part of a mark has come in the usual course of trade to be used to identify the goods belonging to the owner of the mark;

(c) essential features can be ascertained through ocular test, as well as consideration of sound and the significance of the words in the mark, because “in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.”;

(d) identification of essential features is achieved through the Court’s own judgment and evidence; and

(e) use of one or more of a trade mark’s essential features will lead to infringement of the trade mark. [89] Therefore, upon determining the nature and legal positions of disclaimed words and essential features, we shall now proceed to consider the test for likelihood of confusion and/or deception. 43 F.2. The Test for Likelihood of Confusion and/or Deception: [90] It was argued by the plaintiff in submission that the correct test to be applied is the imperfect recollection test, and not the side by side comparison test as applied by the Court of Appeal. [91] Authorities has established that the side by side test is not the only test to be used in determining the likelihood of confusion and/or deception. As early as 1906, Parker J in Re Pianotist Co’s Application [1906] 23 RPC 774 at page 777, laid down the test to be applied, in determining whether a mark is “likely to deceive or cause confusion”, in which he said: “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied…In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of the trade marks is used in the normal way as a trade mark for the goods of the respective owners of the mark.” [92] Our Supreme Court in Tohtonku Sdn Bhd v Superace (M) Sdn Bhd) [1992] 2 MLJ 63 at 66; [1992] 1 CLJ (Rep) 344 and Elba Group Sdn Bhd v Pendafter Cap Dagangan dan Paten Malaysia & Anor [1998] 1 MLRH 697, adopted the tests as laid down by Parker J in Re Pianotist Co Application. This is evident from what was held by the Supreme Court in Tohtonku, that: “We are in agreement, having regard to the ‘tests” as mentioned by Wan Adnan J in Chong Fok Shang, citing with approval Parker J’s judgment in Re Pianotist Co Ltd, the trial Judge was correct when he concluded that: 44 Applying the above test and considering the appearance of the two marks together with their features I find it is not likely that ordinary purchasers would be deceived into regarding the intervener’s product to be the product of the applicant.” [93] However subsequent case laws developed further tests and principles which are widely accepted and applied which are as follows:

(a) The idea conveyed by both trade marks must be compared;

(b) The marks as a whole must be compared;

(c) The 1st syllable of the trade marks is important;

(d) The effect on the ear as well as the eye must be considered;

(e) The imperfect recollection of customers/potential customers must be considered;

(f) The essential features of the trade marks must also be compared. [94] “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). 45 [95] 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. [96] As Thompson LP pointed out in MI & M Corporation & Anor v A Mohamed Ibrahim [1964] 30 MLJ 392, in certain cases the test of whether a trade mark so resembles another as to be likely to deceive or cause confusion is not a side by side comparison of every point of similarity and dissimilarity. Rather, the test is whether a person who sees one mark in the absence of the other mark would be likely to be deceived and to think both marks are the same in view of his general recollection of the latter mark. [97] MI & M Corporation, is an action for infringement of trade mark against the defendant. The plaintiff’s products bore the registered trade mark of a picture of a flower. The products consisted of ghee being sold in tins bearing yellow labels containing printed matters in red and green together with the picture of a red hibiscus flower and the word “Chop Bunga”. The defendant also sold ghee in tins which also bore the yellow labels on which were printed matters in red and green. The defendant’s tin however, had the word “sunflower” with the picture of a flower different 46 from that of the plaintiff. The court found that placing the two marks side by side showed that they were obviously different. However, the court was mindful that the test of resemblance or otherwise of two marks, is the general recollection test, not the side by side comparison. In applying the general recollection test, the court took into consideration the evidence of the category of persons who would buy the goods and the circumstances in which the goods were bought. The Court found from the evidence that customers of such goods were generally illiterate. Such customers would shop in small dark grocers’ shops where large quantities of goods were crowded in a disorderly manner into a very small space. Although it was obvious to the court that the flower marks of both parties were different, the court placed much emphasis on what aspects of the mark would affect the minds of the customers. In this case, considering the illiterate characteristics of the customers, the court took into account that the customers’ minds would be imprinted by the colouring of the flower device and the arrangement on the label rather than on the flower per se. As a result, the court held that there was a likelihood of deception or confusion and hence, an infringement was proved against the defendant. [98] 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 trade mark and the defendants’ marks, when determining whether there is a real likelihood of confusion/deception. [99] Possibility of careless pronunciation by the consumers who have general recollection has also to be considered which may cause real likelihood of confusion and deception. This was well illustrated in the case 47 of Huan Schen Bhd v SRam, Llc (Encl 1) [2016] MLRHU 828 where the Court held that: “When the Plaintiff’s Trade Mark and the Defendant’s 1st to 4th Trade Mark are pronounced, the real likelihood of deception and/or confusion is clear. Both the 1st Plaintiff’s Trade mark and the Defendant’s 1st to 4th Trade Marks sound alike, especially when the 1st word “SRAM” is pronounced. I have-

(i) given due allowance for reasonable customers and traders with an average memory and an imperfect recollection of the precise details of Plaintiff’s Trade Mark and the Defendant’s 1st to 4th Trade Mark – please see Lord Russel’s judgment for the Privy Council in an appeal from Canada, The Coca-Cola Co Ltd v Pepsi-Cola Co of Canada Ltd [1942] 59 RPC 127, at 133. Such an allowance has also been explained by Thompson LP in the Federal case of M I & M Corporation & Anor v Mohamed Ibrahim [1964] 1 MLRA 439; [1964] 1 MLJ 392, at 394 (appeal from Singapore); and

(a) In The Pianotist, the test includes, the following: “… you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those marks are used in 48 a normal way as a trade mark of the goods of the respective owners of the marks.” [Emphasis Included]

(b) In MI & M Corporation, the Imperfect Recollection Test was laid down as follows: “The question is not whether if a person is looking at the two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection.” [Emphasis Included]

(c) The reading of these 2 tests would lead to the result that the Imperfect Recollection Test is entailed in “all the surrounding circumstances”, whereby when the plaintiff’s registered trade mark and the defendant’s mark are used “in a normal way as a trade mark” of their respective goods, whether it is “likely to happen” that the consumer who sees the defendant’s mark in the absence of the plaintiff’s registered trade mark would be deceived and think that the defendant’s mark is the same as the plaintiff’s registered trade mark. This whole process is termed as the Imperfect Recollection Test. 49 [101] We find support for the aforesaid reasons from the Singaporean academic reference in Law of Trade Marks and Passing Off in Singapore, by Tan Tee Jim, S.C., Third Edition, Vol. I, Sweet & Maxwell, pp. 657-658, paras [12.031] - [12.033] and [12.040], where the Court of Appeal of Singapore in The Polo/Lauren Co, LP v Shop-in Department Store Pte Ltd [2006] 2 SLR(R) 690 adopted the approach of extraneous factors in determining the likelihood of confusion as follows: “[12.031] It is axiomatic that the determination of a likelihood of confusion on the part of the public inevitably involves a fact-finding and inference-drawing exercise in which all relevant facts are to be considered. This is unlike an inquiry into the similarity of marks which is solely directed at the features of the marks themselves. The exercise focuses on the effect that the similarities of the marks as well as the goods or services in question are likely to have on the relevant section of the public. It is clear that the likelihood of confusion is not to be presumed simply because the marks and the goods in question are identical or similar. [12.032] The Court of Appeal has repeatedly stressed that the question of the likelihood of confusion is to be “assessed globally”, taking into account: all the circumstances including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically-linked sources. [12.033] It is noticeable that this approach is reminiscent of the approach encapsulated in the following celebrated passage of Parker J in Pianotist Co Ltd's Application under the old UK law: 50 You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public, which will lead to confusion in the goods - then you may refuse the registration or rather you must refuse the registration in that case. … [12.040] Upon appeal, the Court of Appeal endorsed the learned judge's approach in taking into account “extraneous” factors as well as his rationale for the approach. It said: The question of likelihood of confusion has to be looked at globally taking into account all the circumstances including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically-linked sources. … But that is not all. Steps taken by the defendant to differentiate his goods from those of the registered proprietor are also pertinent. 51 [Emphasis included] [102] Furthermore, the High Court in J S Staedtler had also laid down the method and standard of the test to be satisfied, whereby the Court in determining this test is not confined to the evidence of witnesses. Instead, the Court is entitled to give effect to their own opinion. The relevant part of the judgment read as follows: “Thirdly, was the close resemblance between P2 and NIKKI likely to deceive or cause confusions in the course of trade? The standard of test to be applied had been stated by Lord Diplock in GE Trade Mark (1973) R.P.C. 297 at p.321:- "……..That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself." Further, in determining the amount of close resemblance as is likely to deceive or cause confusion, the Court must consider the goods to which they are to be applied, the nature and kind of customers who would be likely to buy these goods, e.g. the students. In fact, the Court must consider all the surrounding circumstances and whether taken as a whole the Defendants' pencil was substantially different from P2 (Re Pianotist (1906) 27 R.P.C. at 777)” [Emphasis included] [103] Upon a full consideration of the principles and authorities aforementioned, the test for likelihood of confusion and/or deception would be as follows: 52

(a) Both side-by-side comparison and the Imperfect Recollection Test must be satisfied;

(b) The comparison is made in terms of phonetic, visual, trade channel, and idea aspects of the marks;

(c) The purpose of such comparison is to determine whether the defendant’s mark contains essential features of the plaintiff’s registered trade mark, which strike the eye and fix themselves in the recollection of the users of the plaintiff’s goods;

(d) The Court shall then take into account all surrounding circumstances and apply the Imperfect Recollection Test, bearing in mind the outcome of the comparison, in order to determine whether it is likely that ordinary consumer with ordinary memory who would be likely to buy the goods would be deceived and think that the defendant’s mark is the same as the plaintiff’s registered trade mark. In other words, the test of whether one trade mark is confusingly similar is an objective test and the test is that of an ordinary person with an appropriate level of literacy (Merck Kgaa v Leno Marketing

(M) Sdn Bhd: Registrar of Trade Marks (Interested Party) [2017] 1 LNS 1006); and

(e) In determining this test, the Court is entitled to give effect to their own opinions, and not confined to the evidence of witnesses. 53 F.3. “Extraneous” or “surrounding” circumstances to be considered in determining infringement of trade mark [104] The rationale for the Courts to consider extraneous and surrounding circumstances in determining infringement of trade mark was comprehensively explained by the Court of Appeal of Singapore in Sarika Connoisseur Cafe Pte Ltd v. Ferrero SpA [2013] 1SLR 531, at p 557, which are: “[60] The appellant here took the position as in Polo (CA). The reasons given for including ‘extraneous factors’ in the confusion analysis are as follows: firstly, extraneous factors used to be considered under the Trade Marks Act 1939; secondly, the English High Court decision of Re Pianotist Co’s Application (1906) 23 RPC 774 called for ‘all the surrounding circumstances’ to be considered; and thirdly, the underlying aim of trade mark law is ultimately to prevent confusion. …the better view is that ‘extraneous factors’ should be included in determining if there is a likelihood of confusion on the facts. This was the view of this court in Polo (CA). The observation was made ([2006] SGCA 14 at [25]) that if Parliament had intended that upon establishing similarity in marks and goods there would immediately be a finding of confusion, Parliament would have used the phrase ‘there shall be deemed to be confusion’. There would then be no question of there being a three-step approach to establishing trade mark infringement. We should mention that the judge in Polo (HC), having examined similar arguments before him, came to the same conclusion as well. In his view, under s 27(2)(b) of the TMA, the likelihood of confusion must arise from the similarity of goods and marks. The judge further observed that where steps had been taken to distinguish the goods, the likelihood of confusion can become merely hypothetical or speculative. As to the argument that the nature 54 of protection under passing off and the TMA is different, the judge in Polo (HC) [2005] 4 SLR(R) 816 at [23] emphasised that the difference between the regimes was that for TMA infringement actions confusion must result from the similarity of marks and goods and only then can the court proceed to examine if the likelihood of confusion was real. We would also add that simply because the nature of protection under both these regimes is different, this does not lead to the conclusion that a consideration of ‘extraneous factors’ in TMA infringement actions must necessarily be erroneous. … [61] At this juncture, we would pause to briefly touch on the policy considerations in relation to trade mark law. There appear to be two competing policy concerns here, that of preventing confusion on the one hand and promoting business certainty on the other. Additionally, the need to guard against the danger of creating a monopoly in the trade mark for the registered trade mark proprietor which extends protection beyond what is necessary and fairly required in the circumstances must be kept in mind. As the judge in Polo (HC) observed (at [19]), protection offered to a registered trade mark proprietor is ‘wide but is not indefinite’. In the final analysis, we agree that the main concern is to ensure that consumers do not get confused as to trade sources. This view was very pertinently stated in Polo (HC) [2005] 4 SLR(R) 816 at [19]: ‘[19] …The ambit of (trade mark) protection should be guided by the underlying aim of a trade marks regime, which is to ensure that consumers do not confuse the trade source of one product with another. For instance, where the consideration of other matters can assist the court in drawing the line at cases where the likelihood of confusion is merely imaginary, there is no reason not to 55 do so. Otherwise, the law will end up extending protection where none is needed.’… [62] Therefore, the court has to take a holistic view of all the circumstances - including the ‘extraneous factors’ - in order to determine whether a likelihood of confusion can be said to exist on the facts of each case. [63] Confusion will not be presumed simply because the marks and the goods are similar: Polo (CA) [2006] SGCA 14 at [25]. As this court stated in Polo (CA) [2006] SGCA 14 at [28], citing Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 (Ch), [2004] IP & T 378, the question of likelihood of confusion has to be assessed globally, taking into account all the circumstances such as the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that it may be believed that the goods came from the same source or economically-linked sources. … [66] We recognise that there are ‘extraneous’ factors which seem to weigh against the finding of a likelihood of confusion, such as the differences in retail outlet locations of the parties goods, purchasing process and product packaging. That said, there are other considerations which lean toward the opposite finding. These include the closeness of the parties’ goods as consumption foodstuff, the impression given by the marks that the goods are related since the words ‘Nutello’ and ‘Nutella’ are substantially similar, and that some portion of the relevant public had actually believed that the goods came from the same source or that authorisation had been given to the appellant to use the ‘Nutello’ name for its drink. Further, we would add that where confusion is in the sense of the parties being related or 56 having a business link between them, the fact that the parties’ goods are sold through different channels would not be very significant.” [Emphasis Included] [105] As such, we can sum up the justifications for the Court in deciding the likelihood of confusion and/or deception upon the basis of all the surrounding circumstances which can be listed as follows:

(a) the underlying aim of a trade marks regime, which is to ensure that consumers do not confuse the trade source of one product with another;

(b) if Parliament had intended that upon establishing similarity in marks and goods there would immediately be a finding of confusion, Parliament would have used the phrase ‘there shall be deemed to be confusion’; and

(c) the substantial resemblance of the trade mark would tend to lead some segment of the relevant public to believe that the goods came from the same source or that authorisation had been given to the Defendants to come up with their products, such confusion involved a business link between them. F.4. Application of the aforesaid principles to the present Appeal [106] Based on the principles we have set out in determining the infringement of trade mark, and aided by the submissions of both parties, a comparison of the plaintiff’s registered trade mark and the defendants’ Real Expert White mark, reveal the following: 57 SUBJECT ROYAL EXPERT WHITE REAL EXPERT WHITE Position of the Words “Expert White” The words “Expert White” being placed together at the second paragraph/line, and within a rectangle. The colour of rectangle where the words “Expert White” placed within The rectangle is dark in colour The font style of the words “Expert White” Arial The font colour of the words “Expert White” White The position of the symbol / icon A crown shape icon on the top and middle of the words “Royal” and “Expert White”. A diamond shape icon on the top and middle of the words “Real” and “Expert White”. Phonetically 2 syllables that start with the sound “Ro”. Single syllable that starts with the sound “Ray”. Idea / Concept The words “Royal” and “Expert White” together with the essential feature i.e. crown denotes exclusively and high class. Royal connotes ideas of kings queens, majestic, royalty and regal grandiosity etc. and in Bahasa Malaysia, diraja, sultan keagungan, kerabat diraja. The words “Real” and “Expert White” together with the essential feature i.e. diamond also denotes exclusively and high class. Real means true, actual, authentic, genuine and physical and in Bahasa Malaysia, “benar”, “betul”, “sebenar”. Positioning of the words on the Packaging

(i) The use of identical wordings “EXPERT WHITE” 58 SUBJECT ROYAL EXPERT WHITE REAL EXPERT WHITE

(a) The Crown device; and

(b) The 2 rectangles. The Court of Appeal however disregarded the disclaimed words entirely and failed to even consider what are the essential features of the plaintiff’s goods, despite referring to the case of JS Staedtler. The Court of Appeal also failed to consider the cases which we have referred to with regards to essential features in determining the likelihood of confusion/ deception (paragraphs 78-89). [108] The next question to be considered is whether an ordinary consumer, with an ordinary memory of the general impression or 59 significant details of the plaintiff’s registered trade mark, would be deceived/confused and think that the defendant’s Real Expert White mark resembled the plaintiff’s registered trade mark, taking into account the disclaimed words “Royal” and “Expert White”. We answer this in the affirmative, upon the following grounds, which was also the findings of the High Court Judge:

(a) The general impression or significant details of the plaintiff’s registered trade mark would be their essential features as stated above;

(b) Real Expert White mark’s diamond-shaped device is similarly confusing and/or deceptive as the Crown Device of the plaintiff’s, and the Diamond-shaped device is placed at the top and the middle of Real Expert White mark, which is the same position as the Crown-shaped device in the plaintiff’s registered trade mark (as per the decision of the High Court);

(c) The defendants’ Real Expert White mark has a rectangle which contains the words “Expert White”, same as the plaintiff’s registered trade mark, and such rectangle is one of the essential features of the plaintiff’s registered trade mark;

(d) Both the plaintiff and defendants focus their business within the same market and target the same segment of the public. In fact both products are of the same class, i.e. cosmetics (closeness of goods) (Romer’s J judgment in the English High Court case of Re Ladislas Jellinek [1946] 63 RPC 59; at p.70 60 and Mohd Yusof Mohammad SCJ’s judgment in Tohtonku Sdn Bhd at p 347);

(e) The consumers of both the plaintiff and the defendants are of the same category, as indicated by the plaintiff’s evidence that there was a drop in its gross profit and sales;

(f) The trade channel or distributor of the plaintiff and defendants are the same, as indicated in the fact that D1 is the distributor for Royal Expert White products and Real Expert White products. Looking at the surrounding circumstances, there are overlapping of trade channels between the parties that could cause confusion and deception to the public. In this regard we refer to the Court of Appeal case of Bata Ltd v Sim Ah Ba & Ors [2006] 1 MLRA 762;

(g) The evidence of similarity of idea and concept between the plaintiff’s registered trade mark and the defendants’ Real Expert White mark as both are applied in similar positioning on the box package of the goods (Refer to the judgment delivered by Lord Fraser in an appeal from New Zealand, Solavoid Trade Mark [1977] RPC 1, at p.30). The idea or concept of the plaintiff’s and defendants’ marks is the same which connotes exclusivity and class, as mentioned at paragraph [106]; [109] It is pertinent to note that the category of consumers of the plaintiff and the defendants are the same, whose focus are on the whitening effect of the cosmetic products on the skin. Such consumers with ordinary 61 memory of the essential features from the plaintiff’s registered trade mark in mind, would likely be confused or deceived and in their mind imprinted that the defendants’ Real Expert White mark is the same as the plaintiff’s registered trade mark, taking into account that both plaintiff and defendants’ products are from the same trade channel, namely that the products of the plaintiff and the defendants are distributed by D1. [110] To sum up, bearing in mind the earlier discussion of the principles and authorities, in deciding the test of likelihood of confusion and/or deception, the Court shall take into account:

(a) All the surrounding circumstances which includes:

(i) the closeness of the goods;

(v) the steps taken by the defendant to differentiate his goods from the plaintiff’s is also pertinent;

(b) The Court is entitled to decide the likelihood of confusion and/or deception based on its own opinion, and not confined to the evidence from the parties. [111] On the other elements of the infringement of trade mark, namely:  The defendant is not the registered proprietor nor the registered user; 62  The use was in the course of trade;  The use was in relation to goods or services within the scope of registration;  Use as a trade mark or as importing as a reference to the registered proprietor or registered user or to their goods or service. The use of a mark “as a trade mark” in section 38(1) means use for the purposes set out in the definition of a “trade mark” in section 3 (1). The use must be to indicate the source or origin of the goods in relation to which the mark is used (refer to Irving Yeast [1934] 51 RPC 110), we are in agreement with the learned trial Judge that the aforesaid elements have been proven by the plaintiff. F.5. Conclusion on the Amended Question 1 [112] Given the above analysis, in a trade mark infringement action, whether the Court ought to consider disclaimed words in juxtaposition and/or in combination with the essential features in the registered trade mark 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 trade mark. It is our judgment that the plaintiff has proven all the 5 ingredients to constitute an infringement of the trade mark of the plaintiff. The learned High Court Judge did not err in his findings with regards to the infringement of trade mark by the defendants. The Court of Appeal failed to compare and analyse the essential features of the trade mark of the 63 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 trade mark 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. F.6. Tort of Passing Off [113] The plaintiff submits that the Court of Appeal erred in deciding that there was no tort of passing off when it erred:

(i) in failing to consider the goodwill attached to the plaintiff’s business;

(v) when the Court of Appeal failed to take into account that there was misrepresentation that would caused the likelihood of confusion and deception. [114] Passing-off does not have a statutory basis and it does not need to be registered to be effective, unlike trade marks, registered designs and copyright. However, passing-off rights cannot be underestimated as they are valuable assets of a business, as they protect the value of the brand of the goods, otherwise known as “goodwill”. [115] Lord Oliver in Reckitt & Coleman Products Limited v Borden Inc [1990] 1 AER 873, a decision of the House of Lords, held that there are three elements of the tort which a claimant needs to establish in order to succeed with an action. These three elements, which are termed as the "classical trinity", can be summarised as:

(i) establishing a goodwill or reputation in the goods or services by association with a particular 'get up' which would be recognised by the public as distinctive of the claimant's goods and services;

(i) there exists a likelihood of confusion/deception between plaintiff’s trade mark and Real Expert White mark;