香港終審法院
THE HONG KONG COURT OF FINAL APPEAL
This Summary is prepared by the Court’s Judicial Assistants
and is not part of the Judgment.
The Judgment is available at:
http://www.hkcfa.hk/en/work/cases/index.html
or
http://legalref.judiciary.gov.hk/lrs/common/ju/judgment.jsp
PRESS SUMMARY
Tsit Wing (Hong Kong) Company Limited
Tsit Wing International Company Limited
Tsit Wing Coffee Company Limited
TW Café Limited
and
TWG Tea Company Pte Ltd
The Wellbeing Group (HK) Company Limited (formerly known as TWG Tea (HK) Company Limited)
FACV No. 15 of 2015 on appeal from CACV No. 191of 2013
APPELLANTS: TWG Tea Company Pte Ltd (1st Appellant); The Wellbeing Group (HK) Company Limited (formerly known as TWG Tea (HK) Company Limited) (2nd Appellant)
RESPONDENTS: Tsit Wing (Hong Kong) Company Limited (1st Respondent); Tsit Wing International Company Limited (2nd Respondent); Tsit Wing Coffee Company Limited (3rd Respondent); TW Café Limited (4th Respondent)
JUDGES: Chief Justice Ma, Mr. Justice Ribeiro PJ, Mr. Justice Tang PJ, Mr. Justice Fok PJ and Mr. Justice Gummow NPJ
COURTS BELOW: Court of First Instance, DHCJ Saunders; Court of Appeal, Lam VP, Barma and McWalters JJA
DECISION: Appeal unanimously dismissed
JUDGMENT: Mr. Justice Gummow NPJ delivering the main judgment with which all members of the Court agreed
DATES OF HEARING: 12-13 January 2016
DATE OF HANDING DOWN JUDGMENT: 29 January 2016
REPRESENTATION:
Mr. Martin Howe QC and Mr. Douglas Clark, instructed by Hogan Lovells, for the Appellants
Mr. Mark Platts-Mills QC, Ms. Winnie Tam SC and Mr. Philips BF Wong, instructed by Deacons, for the Respondents
SUMMARY:
1. The Respondent group of companies is the successor to a Hong Kong business which commenced operations in 1932, initially as a wholesaler in the supply of tea and coffee products. The second Respondent, a member of the TWG Group, is registered as owner of trade marks 300635463 and 300655470 in respect of goods including coffee, tea and sugar. Each registration is of two marks. Each mark contains concentric ovals adjacent to the letters “TWG”.
2. The first Appellant was incorporated in Singapore in 2001 and in 2008 adopted “TWG” to identify “The Wellness Group”. On 8 December 2011 the second Appellant opened a “Tea Salon and Boutique” in Hong Kong Central at Podium LevelOne, IFC Mall. There were adopted two signs, a cartouche mark which involved the use of “1837 TWG TEA” in the middle and a balloon mark which involved the use of “TWG TEA” and “PARIS SINGAPORE TEA”.
3. The Respondents succeeded at trial before Deputy High Court Judge Saunders in their action as plaintiffs against the Appellants for passing-off and also for infringement of registered trade marks contrary to s 18(3) of the Trade Marks Ordinance Cap 559. Subject to modification of the terms of the injunction restraining trade mark infringement, an appeal was dismissed by the Court of Appeal. The Appellants appealed to this Court.
4. In respect of the claim of passing off, the Court accepted the Appellants’ submission that the United States approach to “dilution” of common law trade marks does not represent the law of passing-off in Hong Kong. However, the Court found for the Respondents because:
(a) the present case is not one where there was a finding of liability on the ground of dilution without confusion and deception;
(b) it is well established that the passing-off action protects goodwill against its threatened erosion by the activity of the defendant in cognate fields into which the plaintiff may wish to enter, where that activity causes or is likely to cause deception of those familiar with the mark or other indicia of the plaintiff; and
(c) on the findings at trial the present is just such a case.
5. In respect of the correct approach to determining infringement of a registered trade mark under s 18(3), the Court held that:
(a) if there are several reasonably possible interpretations of a statutory provision such as s 18(3), it should favour that which is consistent with the international obligation found in Art 16(1) of TRIPS;
(b) given the text of Art 16(1) of TRIPS and, in particular, its evident influence in Hong Kong upon the relevant amendment ordinance in 1996, the coordinate “and” in s 18(3) should be employed in a cumulative and causal sense; and
(c) the alleged appeal point failed because it was never contended by the Appellants that the absence of similarity was such that para (a) of s 18(3) was not satisfied and there was thus no occasion to consider para (b); rather their case was that the level of similarity, coupled with the context of use, was that there was no likelihood of confusion.
6. In respect of the approach to determining questions of similarity and likelihood of confusion where the marks and signs comprise letters of the alphabet and other elements, the Court held that:
(a) when applying s 18(3) it cannot be erroneous in assessing “similarity” to consider if there be any striking features of the mark or sign which appear “essential” or “dominant”, but doing so without disregarding the entirety of the mark or sign or stripping it of its context, including evidence of what happens in the particular trade; and
(b) there was no error in this respect by the approaches to the evidence by the trial judge and the Court of Appeal.
7. The Court unanimously dismissed the appeal.