17 Apr 2015

IP Newsletter

Coffee and Tea – WHOSE???
Tsit Wing (Hong Kong) Company Limited & Anor v TWG Tea Company PTE Ltd & Anor CACV 191/2013 – Court of Appeal

The plaintiffs were part of “Tsit Wing Group”, a large and famous Hong Kong coffee and tea manufacturer, supplier, distributor and retailer, which owned the trade marks “TW” and “TWG” registered in Hong Kong in 2006 and used them over a number of fast food chains, tea houses, hotels and cafes and western restaurants. The plaintiffs also supplied products directly to corporate end-users such as banks, accounting firms and law firms and sold its products in supermarkets and convenience stores.




Registered Trade Marks of the Plaintiff

 

The defendants were part of “The Wellness Group”, which manufactured luxury tea and operated international tea boutiques/counters and salons, including a tea salon set up in the IFC Mall in Hong Kong. The defendant’s Hong Kong registered trade mark of “1837 TWG Tea” co-existed with the plaintiff’s mark in Taiwan, Singapore and China.


Registered Trade Marks of the Defendant

 

In the present appeal from the Court of First Instance, the Court of Appeal decided on whether it should uphold the decision of the Court of First Instance, which granted a permanent injunction restraining the defendant from using its own registered trade marks.

The court first of all stated that as the Judge’s assessment on similarity and likelihood of confusion are on the application of the law to the facts of the case, the appellate court should not reverse the Judge’s decision unless he has erred in principle.

In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its usage context.

The court would also consider as relevant context the circumstances in which the defendant used its sign, and take a global assessment of the likelihood of confusion which considers the interdependence between the relevant factors. The notional and fair use of the marks should be used as a reference point in conducting the global assessment, which should not be replaced exclusively with the actual uses of a plaintiff’s mark.

Therefore, the court held that even if the colours of the defendant’s marks are different from the plaintiff’s marks as used, it does not follow that there is no likelihood of confusion as there are other similarities between them.

The court then held that “TWG” was a “distinctive” element in the plaintiff’s marks which indicates the origin of the goods. Although the three beans on the plaintiff’s marks could be regarded as a significant feature, the absence of this feature in the defendant’s marks cannot substantially remove the likelihood of confusion.

The court further found that the defendants wished their tea salon and tea and associated products to be known as “TWG” service and products, as there were extensive uses of other signs in which the letters “TWG” appeared prominently. An average customer would describe the identity of the tea salon or products by reference to the pronounceable part of the defendants’ marks.

The court therefore concluded that the Court of First Instance was correct in giving judgment to the plaintiffs and the injunction was upheld.