Siti Norma Yaakob J:

The applicants in this originating motion are the proprietors of a registered trade mark consisting of the words "Double Lion" and the design of two lions standing facing each other with a tower of flames separating them, all coloured in gold and outlined in black. The trade mark was registered on 24 June 1978 and was renewed on 24 June 1985 for another 14 years. The trade mark is used in the applicants' product of flavouring concentrates for beverages.

It has since come to the knowledge of the applicants that bottles of flavouring for beverages not manufactured by them bearing the "Dragon City" trade mark on an identical label design in the same colour get-up were being sold and passed off as a product of the applicants and in order to protect their trade mark and product, the applicants obtained a trade description order, ex parte , on 11 May 1987 under s. 16 of the Trade Descriptions Act 1972 (the Act).

Following the order, raids were conducted by the Enforcement Officers of the Ministry of Trade & Industry and that all bottles of flavouring concentrates bearing the respondent's "Dragon City" trade mark were taken away as the respondent had infringed the applicants' registered trade mark bearing the words "Dragon Lion" and the design of 2 lions.

Denying that its trade mark had infringed the applicants' trade mark, the respondent applied and was added a party to these proceedings on 11 November 1987 and the instant proceedings before me was a motion on the part of the respondent to have the trade description order dated 11 May 1987 set aside with costs and an enquiry as to all loss suffered following the enforcement of the order and to be paid by the applicants.

As the respondent had challenged the legal basis of the order, I shall now consider whether all requirements of the law have been met with when the order was first applied for by the applicants.

The ex parte order was obtained under s. 16(1) (a) of the Act and following the decision of Socoil Corporation Bhd. v. Ng Foo Chong & Anor.[1984] 1 MLRA 310, [1981] 2 MLJ 7, all that the applicants need to show are;

1. that they are the proprietors of a registered trade mark and

2. that some other person is infringing their registered trade mark in the course of trade.

There is no dispute on the first requirement and the only issue left to be determined was whether the respondent had infringed the applicants' trade mark.

Under s. 38(1) of the Trade Marks Act 1976, the offence of passing off is committed when the infringing party uses a trade mark identical with or closely resembling the registered trade mark of another person, as is likely to deceive or cause confusion. It is a question of fact in the light of evidence for the Court to reach a conclusion whether there is in truth a likelihood of deception and confusion. It is the respondent's submission that its trade mark does not resemble the applicants' trade mark and for this relies on the comparison test for which 3 rules have to be adhered to;

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1. The marks concerned must be considered as a whole as the true test on the totality of impression given both orally and visually is as to cause mistake, deception or confusion. Re Bailey's Application [1935] 52 RPC 136, Broadhead's Application [1950] 67 RPC 113 and Saville Perfumery v. June Perfect [1941] 58 RPC 149.

2. In comparing 2 trade marks, it must also be considered whether the marks suggest the same idea or lead to the goods being referred to by the same name.

3. Where words of 2 trade marks are compared, they must be judged by their looks and sound. In re Application by Pianotist Company Ltd. [1906] 23 RPC 774, Kidax's case [1959] RPC 295.

Comparing the 2 trade marks, there is no denying the fact that both marks bear the same colour and that is as far as the similarity goes. Different animals are used to signify the 2 trade marks and the designs of the flame on both trade marks are also different. The applicants' trade mark of 2 lions are in no way