Post on 11-Mar-2022
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FACV 15/2015
TSIT WING (HONG KONG) CO. LTD. & ORS
(Plaintiffs/Respondents “Ps”)
v
TWG TEA COMPANY PTE LTD & ANOR.
(Defendants/Appellants “Ds”)
RESPONDENTS’ CASE
[For the Court of Final Appeal 12-13 January 2016]
Key:- AppCas – Appellants’ Case (20.8.2015)
CFI § – Paragraphs in Judgment of DHCJ Saunders (24.7.2013) [A/1/1-63]
CA § – Paragraphs in Judgment of the Court of Appeal (“CA”) (3.12.2014)
[A/5/107-154]
CA Leave Judgment – Judgment of the CA (29.1.2015)
TMO – Trade Marks Ordinance (Cap.559)
TMA 1994 – UK Trade Marks Act 1994
Directive – European Directive 89/104, codified as 2008/95/EC.
ECJ – European Court of Justice, now the Court of Justice of the European
Union.
A. THE PARTIES
1. P1, incorporated in 1956, is a coffee and tea supplier and
distributor in Hong Kong. P2 was incorporated in 1991 as
the holding company of the Group. The business of the
Group is traced back to 1932 when an unincorporated
business, also under the name “Tsit Wing” (extensively
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abbreviated to “TW”), commenced trading as trader,
wholesaler, coffee roaster and tea blender in Hong Kong.
P3 and P4 are Ps’ trading arms.
2. D1 was incorporated in Singapore in 2001. It adopted its
present name in 2007. D1 started operating a business in
Singapore in spas under the trade name “The Wellness
Group”. In 2008, D1 adopted the initials “TWG” and a
number of logos including “TWG”.
3. D2 was incorporated in Hong Kong in June 2011, and has
since December 2011 operated a tea salon including a
shop at the IFC Mall, Central (“the IFC Tea Salon”). In
purported compliance with the injunction made by DHCJ
Saunders, Ds have changed the name of the IFC Tea
Salon from “TWG” to “Tea WG”.
B. THE PRESENT ACTION
4. Ps claim for trade mark infringement and passing-off.
5. Ps rely on the following registered marks1:-
(a) Registration No.300635463 comprising the mark
A/2/66-67
1 Originally, Ps also relied on another registered mark (No.300887734 – “TW Coffee Concept”). No finding of infringement was made in respect of this mark. This registration is irrelevant for the purpose of this appeal.
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; and
(b) Registration No.300655470 comprising the mark
,
both registered for “coffee, tea and sugar”2.
(“the Registered Marks”)
6. For passing-off, Ps rely on the Registered Marks and the
mark “TWG” per se (Re-Amended SOC §43).
7. Ps commenced the present action on 23.12.2011, and
applied for an interlocutory injunction. An injunction was
granted. The CA set aside the injunction upon Ds’
undertaking to limit their activities to the IFC Tea Salon
pending trial. The tea salon includes a retail shop selling
loose TWG tea and a restaurant selling, amongst other
consumables, TWG tea. It sells no other brands of tea.
8. Accordingly, Ps’ claims at trial were both actual and quia
timet in nature. Ds made it plain before DHCJ Saunders
that they intended to extend use beyond the IFC Tea
Salon to further salons, wholesale, retail through
supermarkets, supply to the food services industry and the
2 The marks were originally registered for other goods as well, but have been amended to “coffee, tea and sugar” only.
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like.3
9. DHCJ Saunders made a finding of infringement in respect
of the Registered Marks (CFI §134). Ds appealed against
the finding and the CA dismissed the appeal (CA §99).
10. In respect of passing-off, DHCJ Saunders found goodwill
in respect of the Registered Marks and the mark “TWG”
per se4 (CFI §§137-144), that the use of those signs would
deceive (CFI §§153-154), and that Ps succeeded in
respect of passing-off (CFI §§137-161). Ds appealed
against these findings and the CA dismissed the appeal
(CA §§100-101). There is no appeal to this Court in
respect of the finding that the use of Ds’ signs at the IFC
Tea Salon would be likely to deceive.
11. Section A3 of the AppCas is entitled “Main issues on
Appeal”. To the extent that it deals with issues which fall
within the questions permitted by the Leave, these are
dealt with below. To the extent that it goes beyond those
issues, there is no basis for raising such issues.
12. Ps will make limited comment on this section of the
A/1/48
A/5/145
A/1/49-51
A/1/53-54
A/1/49-55
A/5/145-
146
3 DHCJ Saunders decided the case on this basis. At the substantive appeal before the CA, Ds gave a further unconditional undertaking to the CA not to expand to other areas (CA §19 [A/5/114]) save for of further tea salons with or without a restaurant. 4 Contrary to Ds’ Submissions (AppCas §9), DHCJ Saunders made a finding of goodwill in respect of the mark “TWG” per se (CFI §§141-143 [A/1/50-51].
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AppCas:-
(a) §13; It has been found that the manner in which Ds
used “TWG”, including use alone, amounted to
trade mark infringement and passing off. It follows
that it is appropriate for the injunction to restrain
such use making it clear to Ds what it is that they
cannot do. Self-evidently, if the Cartouche
amounts to infringement, the initials alone will
inevitably amount to infringement.
(b) §13(a)&(b); Both Courts considered the entirety of
Ps’ Registered Marks and the entirety of all parts of
the various TWG signs (see further below).
(c) §14; The balloon device is used by Ds as a
decoration for a tin of TWG “Paris Singapore” tea.
Annexed to this Case is a collection of illustrations
of this tea as presented by Ds. This product
conveniently illustrates practically (if not) all
examples of the uses of TWG made by Ds and
shows that the initials are used on the product, on
packaging and on promotional material. The use of
TWG on the balloon is another example of the use
of the initials to reaffirm that the goods come from a
business associated with “TWG”. The illustration of
the balloon plays no part in identifying the source of
the product any more than do the elements of the
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cartouche.
(d) §15; The scope of the relief granted flows from the
facts that the initials are the dominant and
distinctive part of Ps’ marks; and that the identical
initials are used by Ds to identify their products and
business.
(e) §16; Both parties (inaccurately) referred to the
initials as an acronym. The Judge merely adopted
that indication.
13. It is apparent that Ds wish this Court to retry substantial
parts of the factual determinations of DHCJ Saunders and
the CA.
14. Section B of the AppCas is entitled “Relevant Aspects of
Trade Mark Law – Historical Perspective”. Ps do not
propose to comment in detail on this material since there
is nothing in it which is not dealt with elsewhere in the
AppCas and hereinbelow that is relevant to any issue to
be decided by this Court.
15. Ps would, however, make the following comments:-
(a) Decisions under the old law (based upon UK
principles set out in the 1938 Act) need to be
treated with some care since the current UK Act
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and thence the TMO are based upon the Directive.
(b) Having said that, both the old law and the current
law reflect and are intended to comply with the
EU’s, UK’s, and Hong Kong’s commitments under
TRIPS.
(c) As appears in more detail below, and contrary to
what Ds say, the test for infringement in the UK
(and EU) is no different from that in Hong Kong. All
require proof of identity or similarity of mark and
sign, identity or similarity of goods or services and a
likelihood of confusion (insofar as one is not
concerned with identity of marks and identity of
goods).
(d) It is unsurprising that principles appearing in current
law reflect the old law, though inevitably differences
exist. Ps do not believe that any of the historical
matters discussed in these passages of the
AppCas are relevant.
C. QUESTIONS TO BE DETERMINED
16. By the Judgment dated 20.5.2015, the Appeal Committee
granted leave to appeal on the basis of the questions set
out in the Order of this Court dated 20.5.2015 which Ps
A/8/176-
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identify by the following abbreviated descriptions:-
(a) Question 1 – The Correct Approach to s.18(3) TMO
(b) Question 2 – The role of the initials TWG as
features of the Registered Marks and Ds’ signs –
are they a dominant feature?
(c) Question 3 – The significance of TWG compared
with other features including figurative features of
the Registered Marks and Ds’ signs. Do words
“generally speak louder than devices”?
(d) Question 4 – The role of the claim to colours in the
Registered Marks – is a mark registered in black
and white registered for all colours?
(e) Question 5 – The role of colour in the series
registration – is it necessarily non distinctive?
(f) Question 6 – Whether mere potential dilution of a
trade mark is sufficient damage to a plaintiff under
the law of passing off (this is in fact the whole
question identified by the Court)
177
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D. QUESTION 1 – The Correct Approach to s.18(3) TMO
17. This ground of appeal is based on a misunderstanding of
the approach adopted in the UK and EU. The approach
there is the same as that in Hong Kong (and
unsurprisingly, Singapore).
18. The “global appreciation” test pronounced by the ECJ in
Sabel and Canon is not a test for determining infringement
under s.10(2)(b) of TMA 1994 as a whole. Rather, it is a
test designed for determining the issue of “likelihood of
confusion”, being one of the three elements required to be
proved under that section.
19. After the enactment of the TMA 1994, initially, there was
doubt as to whether under s.10(2)(b) there is a threshold
requirement of similarity between the mark and the sign,
and between the goods or services in order to prove
infringement – in other words, whether there could be
infringement if there is likelihood of confusion but no
similarity between the mark and the sign, or no similarity
between the goods or services in question.
20. As demonstrated below, the position was soon made clear
that in order to prove infringement (or opposition based on
s.5(2)(b) of the TMA 1994), there must be identity or
similarity between the mark and the sign, identity or
similarity between the goods or services in question and
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likelihood of confusion.
21. In the present case, so far as relevant, both the CFI and
the CA considered and determined that Ds’ signs (the
versions of TWG used by Ds) were similar to the
Registered Marks, and Ds’ goods (TWG tea and tea
related products) and services (TWG restaurant services
supplying TWG tea and tea related products), were similar
to the registered marks and goods in respect of which the
marks are registered (namely tea). As regards tea, the
goods were identical.
EU
22. THE ECJ first considered the issue in Canon v MGM
[1999] FSR 333. This is a case relied upon heavily by Ds
(AppCas §§45-46), but, seemingly, Ds have failed to
understand the case properly. The focus of the ECJ in
that case was on the issue of “likelihood of confusion”, the
third element under Art.4(1)(b) of the Directive. The
question posed was whether the distinctive character (in
particular the reputation) of the earlier mark could be
taken into account when considering likelihood of
confusion (see §§11-12). What the ECJ ultimately ruled in
Canon must be read in that context.
23. The ECJ in Canon did not rule that in determining
opposition under Art.4(1)(b) of the Directive (or
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infringement under Art.5(1)(b)), one should apply a “single
inter-related test” as suggested by Ds (AppCas §46). In
fact, the ECJ remarked (§§22-23) that “even where a mark
is identical to another with a highly distinctive character, it
is still necessary to adduce evidence of similarity between
the goods or services covered… Article 4(1)(b) provides
that the likelihood of confusion presupposes that the
goods or services covered are identical or similar”, i.e. it is
assumed before considering likelihood of confusion that
these requirements have been met.
24. In Vedial v OHIM (Hubert) [2005] ETMR 23, the ECJ
affirmed the position stated in §22 of Canon:-
“51. For the purpose of applying Art.8(1)(b) of Regulation
No.40/94, the likelihood of confusion presupposes both
the mark applied for and the earlier mark are identical or
similar, and that the goods or services covered in the
application for registration are identical or similar to those
in respect of which the earlier mark is registered. Those
conditions are cumulative…”
25. Since then, the law has been well settled that similarity
between the mark and the sign, similarity of the goods or
services in question, and likelihood of confusion are
separate issues which need to be established by a plaintiff
in infringement proceedings and by an opponent in
opposition proceedings:-
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(a) In Gateway v OHIM [2009] ETMR 32, the ECJ
again affirmed the proposition that the existence of
a likelihood of confusion presupposes the existence
of the dual elements of (at least) similarity (§§45 &
52). Since the assessment of similarity of the
marks at issue led the Court of First Instance to
conclude that they were different, the ECJ held that
the Court was fully entitled to find that it was not
necessary to make apparent the degree of renown
of the earlier marks which it took into consideration
in that assessment (§56). Further, the ECJ held
that since the signs at issue were not similar or
identical, Gateway was not justified in claiming that
the Court of First Instance failed to have regard to
Sabel and Canon (§57). It is thus clear that the
“global appreciation test” is relevant to the question
of “likelihood of confusion” to be applied in
determining opposition under Art.4(1)(b) or
infringement under Art.5(1)(b) of the Directive. It is
not the “single inter-related test” (as Ds call it –
AppCas §46). The Court needs to be satisfied that
the mark and sign in question are (at least) similar,
and that the goods or services in question are (at
least) similar in the first place.
(b) In Ferrero v OHIM [2011] ETMR 30, the ECJ again
held (§65) that “although that global assessment
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implies some interdependence between the
relevant factors, and a low degree of similarity
between the marks may therefore be offset by the
strong distinctive character of the earlier mark…,
the fact remains that where there is no similarity
between the earlier mark and the challenged mark,
the reputation or recognition enjoyed by the earlier
mark and the fact that the goods or services
respectively covered are identical or similar are not
sufficient for it to be found that there is a likelihood
of confusion between the marks at issue or that the
relevant public makes a link between them…”. The
ECJ further stated (§66) that it is only if there is
some similarity between the marks at issue that the
Court must carry out a global assessment in order
to ascertain whether there is likelihood of
confusion.
(c) The ECJ has re-affirmed the position in Calvin Klein
v OHIM [2011] ETMR 5 (§§53, 67-68).
UK
26. The English court considered the question in British Sugar
v James Robertson [1996] RPC 281. The trial Judge held
(p.294) that the question of similarity and confusion should
be considered separately.
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27. However, contrary to Ds’ submissions (AppCas §§44-47),
the approach enunciated in British Sugar in this respect
has not been overruled. As demonstrated above, the
jurisprudence developed by the ECJ is totally consistent
with the approach stated in British Sugar. In fact, this
approach has been consistently applied in the UK after
Canon and to date:-
(a) In Intel Corp v Sihra [2004] ETMR 44, Patten J
specifically referred to British Sugar and Canon and
concluded (§12) that “it is clear that the flexibility
inherent in this global approach leaves intact the
threshold requirement for a recognisable degree of
similarity between the goods and services in
question. The distinctiveness and strength of the
earlier mark may lessen the degree of similarity
required, but it does not eliminate it.” (emphasis
added).
(b) In Hachette Filipacchi Presse v Saprotex [2007]
EWHC 63, the Court confirmed the test adopted in
Intel v Sihra stating that “both tests must be
satisfied” and that in the absence of a sufficient
degree of similarity the issue of likelihood of
confusion cannot arise (§40).
(c) In Spear v Zynga [2015] FSR 19, the Court of
Appeal summarised the position as follows (at
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§60):-
“60 ………………….
(i) The court should assess the phonetic, visual
and conceptual similarity of mark and sign
and decide whether, overall, mark and sign
would be perceived as having any similarity
by the average consumer.
(ii) If no overall similarity at all would be
perceived, the court would be justified in
declining to go on and consider the
likelihood of confusion applying the global
appreciation test, as art.9(1)(b) is conditional
on the existence of some similarity. Such
situations are not likely to occur often in
contested litigation, but where they do occur,
it is not legitimate to take account of any
enhanced reputation or recognition of the
mark.
(iii) Where the average consumer would
perceive some overall similarity, however
faint, the court must go on to conduct the
global appreciation test for the likelihood of
confusion, taking account where appropriate
of any enhanced reputation or recognition of
the mark.
(iv) In conducting the global appreciation test the
court must take forward its assessment of
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the degree of similarity perceived by the
average consumer between mark and sign.”
(emphasis added)
(d) The same test has also been applied in the recent
decision of the Court of Appeal in Maier v ASOS
Plc [2015] ETMR 26 (§§73-75).
28. The development of the approach in the EU and the UK
has been discussed in Kerly (15th Ed), §§14-077 to 14-
079, 9-061 to 9-072. The learned authors concluded by
saying that similarity between the mark and the sign, and
similarity between the goods or services in question, are
prerequisites in establishing infringement under s.10(2)(b)
of the TMA 1994 (or opposition under s.5(2)(b)).
29. The above approach has been consistently applied in the
EU (including in proceedings before OHIM), in the UK
(including in proceedings before the UK Trade Marks
Registry) and in Hong Kong (including in proceedings
before the Trade Marks Registry). The Court and the
Registrar always consider the 3 elements, namely
similarity between the mark and the sign, similarity
between the goods or services in question, and the
likelihood of confusion, as separate requirements. Ps are
not aware of any authority (and Ds have not cited any
authority) showing that infringement can be established or
opposition can succeed under s.12(3) or 18(3) of the TMO
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(or the equivalent provisions in the TMA 1994 and the
Directive) despite there being no similarity between the
mark and the sign, or between the goods or services in
question. And it did not happen in this case.
30. In the premises, Ds have misinterpreted the approach in
the EU and the UK. Insofar as Ds relied on the
Singaporean case of Staywell Hospitality (§15) (AppCas
§51), Ps respectfully submit that the Court of Appeal in
Singapore had also misunderstood the approach
developed and adopted in the EU and the UK. The Court
of Appeal in that case simply relied on its earlier decision
in Polo/Lauren v Shop-In Department Store [2006] 2 SLR
690. However, in Polo/Lauren, the so-called “step-by-
step” approach described by the Court of Appeal (§8) is in
fact the same approach which has been adopted
consistently in the EU and in the UK. With respect, the
Court of Appeal in Polo/Lauren, apparently relying on the
analysis of the trial Judge, had overlooked the point that
the test enunciated in Sabel and Canon is in relation to the
issue of “likelihood of confusion” rather than infringement
or opposition as a whole.
31. Accordingly, there has been one and only one approach
throughout, which has been adopted and applied
consistently in the EU, the UK, Hong Kong, and
Singapore. Incidentally, Ps agree with Ds that the
decisions of these various Courts are not binding but may
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be persuasive.
32. It should be noted that neither of the different teams of
counsel representing Ds took issue on the alleged
difference between s.18(3) of the TMO and s.10(2)(b) of
the TMA 1994 before DHCJ Saunders or the CA. In fact,
Senior Counsel for Ds, Mr Liao, conceded before the CA
that they were not contending any material differences
between the TMO and the TMA 1994 or the approach of
the ECJ. Ps respectfully submit that Ds’ previous
concession was indeed correctly made.
WHETHER CA APPLIED THE CORRECT APPROACH
33. Ds’ criticism of the CA for not applying the correct
approach is highly technical in the context of the present
case.
34. In the present case, Ds have never argued that the marks
and the signs in question are not similar nor even only
“faintly similar” (to use the words of the Court of Appeal in
Spear v Zynga, supra) such that the first condition under
s.18(3)(a) of the TMO is not satisfied. No such defence
was pleaded5 and no such case was run before DHCJ
Saunders. Ds contended that the level of similarity is not
significant enough (coupled with all the circumstances
5 In the Defence, Ds only denied that the signs are confusingly similar to the Registered Marks (Re-Amended Defence §§31, 32(a)).
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surrounding the context of the use) to cause a risk of
confusion (Ds’ Opening §§47-716).
35. Before the CA, Ds’ arguments on the similarity between
the marks and the signs were again made in the context of
“likelihood of confusion” under s.18(3)(b) (rather than
under s.18(3)(a)) (Ds’ CA Skeleton dated 24.9.2014 §§25-
29, 34).
36. As Ds’ case before the CA was never that the marks and
the signs are not similar (or faintly similar) such that the
threshold requirement under s.18(3)(a) TMO is not
satisfied, it was unnecessary for the CA to deal with the
point expressly in its judgment.7
37. The CA addressed Ds’ case by focusing on the issue of
“likelihood of confusion” under s.18(3)(b). What the CA
stated in §43 (which is relied upon and cited by Ds out of
context, AppCas §68) related to “likelihood of confusion” –
the CA was responding to Ds’ submissions on contextual
approach (CA §42), and then stated (§43) that “the
A/5/124-
125
A/5/123-
6 In fact, if one looks at the structure of Ds’ Opening, Ds first identified the elements needed to be established under s.18(3) of the TMO (§47). Ds then proceeded to address different issues under different headings. For instance, in §49, Ds addressed the requirement that there must be similarity between the goods or services in question. However, Ds never identified “similarity of the marks and the signs” as a distinct issue. The issue of “similarity of the marks and the signs” was only mentioned in the context of “likelihood of confusion” – see §67 in which context they made it clear that they regarded the marks and signs as being similar. 7 When the CA cited the “global assessment test” (§35), it correctly regarded that as a test for assessing “likelihood of confusion” [A/5/120].
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comparison is between the mark and a defendant’s use of
his sign in relation to the goods or services to determine
whether it is identical or similar such that it is likely to
cause confusion on the part of the public” (emphasis
added). The word “use” clearly refers to the context of
use as the CA was addressing the contextual approach
immediately before and after this paragraph.
38. The issue of “similarity between the marks and the signs”
is clearly one of the most important factors the court has
to take into account when considering the issue of
“likelihood of confusion” under s.18(3)(b). The greater the
degree of similarity the greater the risk of confusion. This
was further discussed in the context of the global
assessment of likelihood of confusion in Canon (CA §55)
– “…it is indispensable to give an interpretation of the
concept of similarity in relation to the likelihood of
confusion, the appreciation of which depends, in
particular, on the recognition of the trade mark on the
market and the degree of similarity between the mark and
the sign and between the goods or services identified.”
There is nothing to show that the CA automatically
proceeded to a finding of likelihood of confusion based
solely on the existence of similarity between the marks
and the signs (as suggested by Ds in AppCas §68). If one
reads the CA as a whole, it is clear that the CA took into
account all relevant factors, including the context of use,
before concluding on likelihood of confusion – CA §§76-
125
A/5/129
A/5/136-
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98.
39. Ds’ criticism on the CA (AppCas §68) is unfounded.
40. In AppCas §69, Ds also criticise the CA for notionally
extending the Registered Marks to other goods or services
beyond the specification. Such criticism is again
unwarranted. What the CA said by “tea salon” in §92
must be understood in its proper context. The CA was
referring to the particular IFC Tea Salon of Ds which has,
as a substantial feature, a retailing section selling TWG
tea – CA §94. The CA was not extending the Registered
Marks notionally to “restaurants” or any typical tea salon
not operated alongside a retail section selling a particular
brand of tea products. In any event, the passage cited
follows the (correct) finding of a likelihood of confusion.
Put another way, had the CA referred to the possibility of
Ps opening a retail shop selling TWG tea under its
Registered Marks, the same conclusion would and should
have been reached.
41. As submitted above, it was not necessary for the CA to
separately deal with the issue of “similarity between the
marks and the signs” under s.18(3)(a) in the light of the
case put forward by Ds. There is no doubt that the CA did
in fact consider the issue of similarity and came to the
same conclusion as DHCJ Saunders (CA §86). It is
superficial for Ds to criticise the CA for not having
144
A/5/142
A/5/143
A/5/140
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separately considered the issue again under s.18(3)(a)
despite having done so when considering the issue of
likelihood of confusion under s.18(3)(b) in precisely the
manner suggested by the Ds. Had they concluded in that
context that the marks and signs were not similar and
continued to find likelihood of confusion, then Ds would
have had a case.
E. QUESTION 2 – The role of the initials TWG as features of
the Registered Marks and Ds’ signs – are they a dominant
and distinctive feature?
QUESTION 3 – The significance of TWG compared with
other features including figurative features of the
Registered Marks and Ds’ signs. Do words “generally
speak louder than devices”?
42. In comparing the marks and the signs as part of the global
appreciation test (for the purpose of determining whether
there is any likelihood of confusion), the court must assess
the visual, aural and conceptual similarities of the marks
by reference to the overall impressions created by the
marks bearing in mind their distinctive and dominant
components, but it is only when all other components of a
complex mark are negligible that it is permissible to make
the comparison solely on the basis of the dominant
elements (Specsavers v Asda (Court of Appeal) [2012]
FSR 19 at §52(d)).
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43. When considering the degree of similarity the Court must
take into account the context in which Ds have used the
signs in issue. In this case, Ds have emphasised the
nature of the IFC Tea Salon and the presence of the
initials TWG throughout the salon both alone, with the
word Tea and with various forms of decorative and
descriptive material (See the Annex to this Case as
illustrating such uses). This is further highlighted in the
photograph annexed to the AppCas. The tin which bears
the “balloon” on its lid, has TWG on the balloon, and
incorporates several other versions of TWG, emphasising
that the use of TWG on the balloon is intended to indicate
that “TWG” was the source of the product. The
overwhelming impression is that the indicium which
identifies the source of all of Ds’ goods and services is
TWG – not the cartouche and not the balloon.
44. Irrespective of the different terminology used (be it
“essence of the registered mark” or “features which have
trade mark significance”), DHCJ Saunders and the CA
were simply ascertaining the “dominant and distinctive”
elements of the marks and the signs. That is the correct
approach. The decision in Comic Enterprises (see below)
indicates the approach normally taken in comparing a
composite mark with a word used in a particular context.
45. Ds criticise DHCJ Saunders and the CA for treating the
24
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Registered Marks as TWG simpliciter, and for
disregarding the presence of other elements in Ds’ signs
(AppCas §73). Such criticism is unjustified and is simply a
second attempt to attack the finding of DHCJ Saunders
that the marks and the signs in question are similar (CFI
§§103-114), which was upheld by the CA (CA §§78-80,
83-90) and that TWG is the dominant and distinctive
element – emphasised by the many ways in which the
initials are used in relation to goods and services offered
by Ds to indicate their origin i.e. the context in which the
signs are used by Ds.
46. DHCJ Saunders did not treat Ps’ Registered Marks as
TWG simpliciter. Otherwise, the learned Judge would not
have needed to form any view about the dominant
element (CFI §§107, 114). The CA correctly rejected Ds’
argument that DHCJ Saunders had ignored the other
features in Ds’ signs (CA §89).
47. The CA did not overlook the other elements in Ps’
Registered Marks or in Ds’ signs – CA §§78-80, 83-90; CA
Leave Judgment §14.
48. Ds take issue on the proposition “generally speaking
words speak louder than devices” (AppCas §§83-84).
This principle does not mean that in assessing the visual,
aural and conceptual similarities of the marks, the device
element in a composite mark should be ignored. The
A/1/35-39
A/5/136-
142
A/1/37, 39
A/5/141
A/5/136-
142
A/6/159
25
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principle simply suggests that generally speaking, a word
element in a composite mark will more easily impress
upon the average consumer than will descriptive and
decorative elements in the device, visually, aurally and
conceptually. In the end, it is still for the court to decide
the likelihood of confusion by reference to such similarities
of the marks having regard to the distinctive and dominant
element in the marks. Self-evidently, a (relatively) non-
distinctive word will impress less than a more distinctive
word and be less significant in relation to a more
distinctive figurative element than to a less distinctive
figurative element. In the present case both parties
selected the initials TWG because they were distinctive
and presented them with figurative elements (if any) which
are not particularly distinctive.
49. The CA specifically stated that it did not regard the adage
as an immutable principle of law to be applied irrespective
of the facts. Rather, the CA considered the matter from
that angle “in the context of Ds’ business at the tea salon
at the IFC Mall” (CA Leave Judgment §13).
50. In the AppCas §§83-84, Ds suggest that the proposition
stated in Oasis Stores [1998] RPC 631 is inconsistent with
the more recent and higher authority of the General Court
of the EU in 2005 and 2010 (Codorniu Napa and Simonds
Farsons Cisk). As mentioned above, the proposition is
only a general proposition. Each case depends on its own
A/6/159
26
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facts, and such general proposition does not mean that
the Court must conclude that words will inevitably be more
dominant and distinctive than devices in a composite
mark. Neither DHCJ Saunders nor the CA rely on the
proposition to this extent. Instead, both DHCJ Saunders
and the CA did consider the 3 overlapping circles in Ps’
Registered Marks, and concluded that in the context of Ps’
Registered Marks, it is inevitable that the word element
“TWG” is the most dominant and distinctive feature. The
CA even stated that it would be perverse if one were to
come to a conclusion that the letters “TWG” were not at
least one of the dominant features of Ps’ Registered
Marks (CA §83). In a very recent decision (Alpinestars
Research v OHIM [2015] ETMR 42), the General Court of
the European Union stated (§24):-
“Furthermore, it must be pointed out that, as the applicant
rightly submits, in the case of a mark consisting of both
word and figurative elements, the word elements must
generally be regarded as more distinctive than the
figurative elements, or even as dominant, since members
of the relevant public will recall the word element to
identify the mark concerned, the figurative elements being
perceived more as decorative elements…”
This would be more so where the word element is, as
here, highly distinctive, and used by Ds in a variety of
different ways including alone.
A/5/138
27
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51. In any event:-
(a) There is nothing to suggest that DHCJ Saunders’
finding that “TWG” is the most dominant and
distinctive element in Ps’ Registered Marks (CFI
§107), which was affirmed by the CA (CA §§81, 83-
85), is wrong. Ps submit that it would be perverse
to conclude that “the 3 beans” (rather than “TWG”)
is the most distinctive and dominant element in Ps’
Registered Marks.
(b) Contrary to Ds’ submissions, neither DHCJ
Saunders nor the CA assessed the similarities of
the marks (for the purpose of determining the
likelihood of confusion) by simply comparing the
initials without having regard to the other elements
(see §§46-47 above). Obviously, and entirely
properly, the initials played an important role.
52. Ds criticise the judgments of DHCJ Saunders and the CA,
saying that they were wrong in focusing on aural similarity
between the marks and the signs (AppCas §§87-91). The
criticism is again entirely unwarranted.
53. First, it is trite law that aural confusion alone can give rise
to a likelihood of confusion – Lloyd Schuhfabrik Meyer v
Klijsen Handel [2000] FSR 77 at §29.
A/1/37
A/5/137-
140
28
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54. Second, as the most distinctive and dominant element of
Ps’ Registered Marks is “TWG”, the average consumer
will refer to the brand orally and recognise it visually by the
letters “TWG” (there is no other way to represent the
brand orally or to present it in writing). So, for instance,
upon being recommended by a friend orally to try “TWG”
brand of tea, and upon coming across Ds’ IFC Tea Salon
and being presented with a plethora of visual versions of
the sign “TWG” in the IFC Tea Salon (see the picture
annexed to the AppCas), a direct and immediate
association with the oral recommendation of the “TWG”
brand of tea would be inevitable. Upon requesting “TWG”
brand of tea, itself rather unlikely since the only brand of
tea available in the salon is “TWG” tea, it is highly unlikely
(and there is no evidence to show) that Ds would deny the
oral designation of “TWG” as a reference to their brand of
tea, or that they would instead suggest that their brand is
“TWG Tea” or “1837 TWG Tea”. The unchallenged
evidence before DHCJ Saunders is that Ps’ and Ds’
names are abbreviated in email communication and on
other occasions to “TWG”, and both will clearly be referred
to simply as “TWG” orally. (see further Re Ping An (2009)
12 HKCFAR 808 at §49).
55. In any event, Ds’ various signs include (or comprise) the
dominant feature “TWG”, and are visually and
conceptually similar to Ps’ Registered Marks.
29
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56. Ds’ criticism of DHCJ’s reliance on Decon and June
Perfect is also misconceived (AppCas §§94-96). The CA
has already dealt with the point in its judgment (CA §§36-
40) and concluded that DHCJ Saunders had clearly had
regard to the correct principles of law in his assessment.
In any event, neither DHCJ Saunders nor the CA
discounted matters other than “TWG” in Ds’ signs. The
Judge and the CA applied the contextual approach. The
relevant part of the judgment of the Court of Appeal in
Specsavers (Court of Appeal), supra, was cited in CFI
§88, and DHCJ Saunders went on to apply the same
approach. The learned Judge also took into account the
alleged “highly elaborate and elegant “get-up” of Ds’ tea
shops and advertising” in considering the likelihood of
confusion (CFI §§128-132). It is that context that shows
the wide use of TWG in a variety of different forms thus
emphasising, in its context, the importance of the initials,
and, the (relative) insignificance of any other matters
which from time to time surround the initials, as identifying
the source of the goods and services – i.e. as providing a
distinctive character. Ds’ complaint is that the learned
Judge did not accept that the context had the significance
that Ds asserted for it. It is clear that the learned Judge
took it into account.
57. Similarly, the CA took into account the context in respect
of which Ds’ signs were used (CA §§94-98).
A/5/121-
123
A/1/29-30
A/1/46-47
A/5/143-
144
30
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58. Finally, Ds argue that the CA, having ruled that DHCJ
Saunders was wrong to place weight on the opinions of
trade mark registries (insofar as the Judge had placed
weight)8 , should not have relied on the Judge’s “multi-
factorial assessment” to uphold its overall conclusion but
should instead have applied its own assessment (AppCas
§102). What Ds have overlooked was the fact that the CA
had already indicated in the judgment that “even if such
opinions were disregarded, on the other evidence before
the court, the conclusion that the letters “TWG” is a
dominant feature of the Plaintiffs’ marks and the
Defendants’ sign is compelling” (CA §75). It is clear that
the CA would have come to the same conclusion if they
had applied their own assessment without regard to the
opinion of the trade mark registries and assertions on
behalf of Ds to the same effect (assuming it was
necessary for the CA to do so).
59. Although rejected by the CA, Ps suggest that the following
factors taken cumulatively must at least be of forensic
value in this case that a court cannot ignore:-
(a) that Trade Mark Registries around the world
(applying, at least very similar tests) and the Hong
Kong Registry (applying the same Ordinance) had
reached the same conclusion as the CFI and CA;
A/5/136
8 CFI §§95-102 [A/1/32-35]
31
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and
(b) that Ds had themselves in overseas registry
proceedings asserted that Ps registered marks
would be confusingly similar to Ds’ scroll marks and
that TWG was the dominant part of both parties’
marks.
60. It would indeed be surprising in the light of the above
evidence were it to be concluded that the marks and signs
are not “similar” or that TWG is not at least a dominant
feature of both marks and signs.
F. QUESTIONS 4 – The role of the claim to colours in the
Registered Marks – is a mark registered in black and
white registered for all colours?
QUESTION 5 – The role of colour in the series registration
– is it necessarily non distinctive?
61. Question 4, as posed, is academic in the context of the
present case, as the present case does not turn on
whether Ps’ Registered Marks should be regarded as
registered in respect of all colours.
62. Likewise, in view of the finding of CFI and CA that the
initials TWG are the (or a) dominant and distinctive
element of the Registered Marks, whether or not the
32
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figurative element of Ps’ marks should be treated as being
in colour or not fades into considerable insignificance.
63. Ds agree that whatever the approach to the colour (and
series) issues, the Court still has to apply the test set out
in Specsavers (Court of Appeal), supra, taking account of
the dominant and distinctive character of the marks and
signs. Ds argue that it is the figurative elements of both
Ps’ marks and Ds’ signs that are dominant and distinctive.
Both CFI and CA have disagreed. That was a decision
which was open to them and, Ps submit, correct.
64. If, contrary to the consistent findings in this jurisdiction and
around the world, the figurative element of Ps’ marks was
the dominant and distinctive feature of the registrations,
again Ps submit that whether that element is treated as
being in colour or not is of little importance since there is
no similarity between that element of the marks and any
element of Ds’ signs.
65. The (possibly) interesting debate as to the effect of the
marks being registered in series, one in colour and one
not, may be one which this Court may feel is better
determined on facts which render those issues
determinative or at least important, which Ps submit they
are not in the context of the present case.
66. To understand how the issue of “colour” came about, it is
33
IP\NFITZG\ .. \08098586.doc
important to understand Ds’ case before the CA. Before
the CA, Ds relied on Specsavers v Asda (ECJ) [2014]
FSR 4 (§§37-38) and argued that in applying the “global
appreciation test”, the court should take into account the
actual colour used by Ps in respect of their marks –
irrespective of whether the registration included any
colour. Ds contended that such colours used by Ps would
eliminate any likelihood of confusion (Ds’ CA Skeleton
dated 24.9.2014, §§22-24; CA §§46-48). This is both
wrong and not a live issue on this appeal.
67. Such argument is of course misconceived because
Specsavers (ECJ), supra, only ruled that if a mark is
registered in monochrome, and the proprietor has used it
extensively in a particular colour with the result that it has
become associated in the mind of a significant portion of
the public with that colour (a point which was neither
pleaded nor proved by Ds in this case), the colour which a
defendant uses in representing the alleged infringing sign
is relevant in the global assessment test. If a defendant
uses the same colour scheme (without some other
justification), this may enhance the likelihood of confusion.
This is a point which will assist a plaintiff to prove
likelihood of confusion. However, it does not logically
follow that if the colour scheme of the sign used by a
defendant is different from the one extensively used by a
plaintiff, such use will somehow make the defendant’s
mark less likely to be confused with the (black and white)
A/5/126-
127
34
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mark as registered than if the plaintiff made no such
extensive use. If that were the case, a trade mark
registered in black and white will attract better protection if
it is unused or used from time to time in different colours
than if it has been consistently used in a particular colour.
This cannot be correct. Neither is it the decision of the
ECJ in Specsavers.9
68. The CA rightly rejected this argument (CA §§46-62).
69. In any event, the proposition that a mark registered in
black and white should be regarded as being registered in
respect of all colours is well supported by the authorities –
Specsavers v Asda (CA) [2012] FSR 19, at §96; Sony
Ericsson Mobile Communications’s TM BL-0-138/06, 25
May 2006, at §24 ; Comic Enterprises v Twentieth Century
Fox “GLEE CLUB” [2014] FSR 35 §70. Its effect in any
particular case is another matter.
70. The only authority cited by Ds in challenge to Kitchin LJ’s
decision in Specsavers (Court of Appeal) above is Pico
Food (AppCas §108). However, as rightly pointed out by
the CA, not much assistance can be derived from that
case as there was no in-depth discussion as to why the
A/5/126-
131
9 See §§37 & 38 of the ECJ judgment in Specsavers. The mark was registered in monochrome but the plaintiff used it in a shade of green such that it had come to be associated in the minds of consumers with that colour. The defendant’s sign was also in green a colour which the defendants had also used in other contexts. The similarity of the colour was a factor to be taken into account in the global assessment.
35
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notional and fair use by a plaintiff of a registered mark
should be confined by its actual use. On the facts of that
case, given the dissimilarities in other aspects of the
marks, the rejection of the opposition was correct (CA
§58).
71. In relation to the fact that the Registered Marks are a
“series”, the starting point is s.51(3) of the TMO which
defines “series of trade marks” as “a number of trade
marks which resemble each other as to their material
particulars and differ only as to matters of a non-distinctive
character not substantially affecting the identity of the
trade mark.” Ps’ marks are a series of two which differ in
that in the first of the series the figurative element
(whether you wish to call them coffee beans or ovals
matters not) is coloured and in the other it is not. This
means that the colour is to be regarded as being non
distinctive.
72. For marks registered in series, the correct approach is to
identify a “single point of comparison”. All the instances in
the series are manifestations of the same mark. In order
to carry out a comparison with a sign so as to assess
infringement, it is necessary to work out what the single
registered mark is so as to provide a single point of
comparison with the sign alleged to infringe – Thomas
Pink v Victoria’s Secret [2014] FSR 40, at §§104-106;
Sony Ericsson, supra, at §§20-22.
A/5/130
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73. The validity of Ps’ Registered Marks is not in issue. There
is no ground for attacking the validity of a registration that
it is wrongly registered as a series. They should be
regarded as being properly registered as a series. This
means that the difference between mark “A” and mark “B”
in the series is so insignificant that such difference may go
unnoticed by an average consumer, and the marks are
functionally identical to each other and provide what is in
essence a single point of comparison:- Sony Ericsson,
supra, at §§21-22.
74. In mark “A” of Registered Mark 300655470, Ps claim
yellow (pantone 109C), brown (pantone 469C), orange
(pantone 151C) and white as elements. In mark “A” of
Registered Mark 300635463, Ps claim yellow, brown,
orange and white as elements.
75. Ps have not claimed colour in respect of mark “B” in either
Registered Mark. Under Rule 6(3) of the Trade Marks
Rules (Cap.559A), an application for registration of a
colour or colours as a trade mark, or as an element or
elements of a trade mark, shall not be treated as such
unless (a) the application contains a statement claiming
the colour or colours as the trade mark, or as an element
or elements of the trade mark, as the case may be; and
(b) the trade mark, or the element or elements of the trade
mark, as the case may be, appear in the representation of
37
IP\NFITZG\ .. \08098586.doc
the trade mark included with the application in the colour
or colours for which the claim is made.
76. The effect of Rule 6(3) is that mark “B” of both Registered
Marks should be treated as monochrome, i.e. not
registered in respect of any colour. Ds’ submissions that
mark “B” of the Registered Marks should be treated as
registered in “shaded greyscale” (AppCas §§6 & 105) is
accordingly wrong as a matter of law (see also Simba
Toys GmbH v OHIM [2015] ETMR 15 at §46, Comic
Enterprises, supra, at §§2 & 70).
77. By having the marks registered in series (one in
monochrome and one in colour), the difference (i.e. the
colour) must be regarded as non-distinctive and not
affecting the identity of the mark. Various suggestions
have been made as to how the single point of comparison
should be defined in the present case and it is clear that
the area of controversy can only be as regards the
approach to the colour of overlapping ovals in version A.
For the reasons given above, Ps submit that this is an
academic issue in the context of this Appeal. However,
Ps tentatively put forward the suggestion that the “single
point of comparison” should be the mark with contrasting
ovals:- Thomas Pink, supra, at §106; Comic Enterprises,
supra, at §§63-70.
78. In any event, neither DHCJ Saunders nor the CA took into
38
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account the “colour” element of the Registered Marks in
considering the likelihood of confusion and they were right
not to do so.
79. Since the difference between the marks in series is taken
to be so insignificant that it may go unnoticed by an
average consumer, Ds’ argument (AppCas §109) that the
inclusion of the coloured representation “necessarily
implies that the device parts of the marks form part of their
substantial identity” is illogical. In fact, Ds have not cited
any authority in support of such proposition. In Comic
Enterprises, supra, the mark comprised a series of two,
one with some colour and the other with none. The trial
Judge in that case concluded that the word “Glee” was the
dominant and distinctive feature of the mark and held that
the use of Glee (in context) by the defendants amounted
to infringement.
G. QUESTION 6 – Whether mere potential dilution of a trade
mark is sufficient damage to a plaintiff under the law of
passing off.
80. As regards the first two elements of a successful passing
of claim, DHCJ Saunders found that Ps owned goodwill (in
a business under the various TWG marks). It was shown
at trial that no other trader in Hong Kong had ever used
the initials TWG for any business at all. The initials were
39
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unique to Ps.
81. DHCJ Saunders also found that Ds’ use of TWG (in the
various forms appearing at the IFC Tea Salon) was likely
to deceive – not merely cause confusion (CFI §153). Ds
wrongly (AppCas §114) characterise this as purely oral
confusion. It is clear that DHCJ Saunders was
considering someone who knew of Ps’ marks, recalled the
dominant element TWG, and then saw the use of Ds’
signs. The only use to which he could be referring is the
use in relation to Ds’ salon, i.e. the customer is confused
when he or she sees Ds’ signs in the context in which they
are in fact used.
82. The evidence in support of deception included witnesses
who were aware of Ps’ business for one reason or another
and seeing Ds’ salon believed that it had been opened by
Ps (CFI §§120-121). DHCJ Saunders’ assessment of
these witnesses is not (now) challenged. The CA did not
disturb those findings. There is no appeal from those
findings.
83. Unsurprisingly, DHCJ Saunders also found that such
deception would cause damage. There was no appeal
from this finding (CFI §§155-160).
84. Such damage included dilution of goodwill, and
“inevitable” diversion of business (CFI §155) in the event
A/1/53-54
A/1/43-44
A/1/54-55
A/1/54
40
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of sale of products through retail outlets and to the food
services industry.
85. Ds contend (AppCas §112) that somehow the position has
changed in the light of undertakings offered by them
during the hearing of the Appeal (CA §19). It has not. Ds
continue to sell retail products through their IFC Tea Salon
and the undertaking does not prevent the establishment of
further retail shops with or without a restaurant. The
evidence also showed that Ds were selling tea (whether
knowingly or not) to customers who operated restaurants
and cafes and were using Ds’ tea in those businesses – in
direct competition with Ps10. On the findings of DHCJ
Saunders diversion of trade is inevitable in such
circumstances.11
86. The right protected by passing-off is “goodwill”. The
relevant damage is damage to “goodwill”. Goodwill has
been identified as “the attractive force that brings in
custom” (Wadlow §3-002). The presence of competing
traders using the same or deceptively similar indicia is
likely to affect the ability of the first trader to exploit his
own goodwill. One way that Ps could exploit their goodwill
would be to open a restaurant selling TWG tea both to be
consumed on site and to be taken home and used there.
A/5/114
10 In Hong Kong, Ds have already supplied the restaurant MIST with tea for sale through that restaurant. They had also supplied to the residential clubhouse restaurant in Wong Tai Sin. 11 See further Ps’ Closing dated 9.7.2013, §§149-151
41
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The evidence showed that Ps have from time to time
opened restaurants under amongst other names “TW
Coffee Concept” but in which TWG branded products and
promotional materials have been sold and displayed.12
87. Ds suggest that Dawnay Day and Och-Ziff are not
authority for the proposition that dilution is a form of
damage in passing off. They are wrong. In Dawnay Day,
Scott VC stated at 705-706:-
“In respect of each of the Dawnay Day members the
necessary ingredient of damage, or the likelihood of
damage, is, in my judgment, present. The damage is of
two varieties. First, the Dawnay Day members, collectively
and individually, have no control over the activities of the
proprietors of Dawnay Day Securities. The Dawnay Day
reputation will suffer if those activities become in any
respect reprehensible. The Dawnay Day companies will
be unable to prevent that happening. Secondly, the use of
Dawnay Day as a trading style by a company that is not a
member of the Dawnay Day group will dilute and,
potentially, may destroy the distinctiveness of the name.
(See Taittinger SA v. Allbev Ltd [1993] F.S.R. 641, per
12 Between 1994 and 2009, Ps provided café and restaurant services by operating cafes at prime commercial sites under the TW or TW Coffee Concept Marks (Witness Statement of Mr Wong, §§33-38). There is clear evidence that the TW marks on the sign is directly and unmistakably associated with the TWG Logos and therefore Ps, by the use of sugar sachets in the shops and products such as coffee beans in packaging bearing the TWG Logos (Witness Statement of Mr Wong, §§36-37).
42
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Peter Gibson L.J. at page 669.)”
88. Both heads of damage apply in the present case.
89. In Och-Ziff, Arnold J said at 333-335 (§§158-160):-
“…it is well established that, even in the absence of
competition and hence diversion of sales, a
misrepresentation leading to the belief that the
defendant’s business is associated with the claimant’s is
damaging to the claimant’s goodwill. Secondly, it is also
well established that, if there is a misrepresentation which
erodes the distinctiveness of the indication in question,
then that is damage for the purposes of a claim in passing
off…”
90. In Taittinger SA v Allbev Ltd [1993] FSR 641, the Court of
Appeal stated the following (at 670):-
“By parity of reasoning it seems to me no less obvious that
erosion of the distinctiveness of the name champagne in
this country is a form of damage to the goodwill of the
business of the champagne houses. There are
undoubtedly factual points of distinction between the New
Zealand case and the present case, as Mr. Isaacs has
pointed out, and he placed particular reliance on the fact
that in the New Zealand case as well as in Bollinger v.
Costa Brava Wine Co. Ltd. (No.2), the court held that
there was a deliberate attempt to take advantage of the
43
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name champagne, whereas in the present case the Judge
found no such specific intention. In general it is no doubt
easier to infer damage when a fraudulent intention is
established. But that fact does not appear to have played
any part in the reasoning on this particular point either of
Jeffries J. or of Sir Robin Cooke P., who ([1992] 2
N.Z.L.R. 327 at 332) thought the case exemplified the
principle that a tendency to impair distinctiveness might
lead to an inference of damage to goodwill, or of Gault J.;
nor in logic can I see why it should. It seems to me
inevitable that if the defendants, with their not insignificant
trade as a supplier of drinks to Sainsbury and other retail
outlets, are permitted to use the name Elderflower
Champagne, the goodwill in the distinctive name
champagne will be eroded with serious adverse
consequences for the champagne houses.”
91. The Singaporean case of Amanresorts (AppCas §§123,
125) is not authority for the proposition suggested by
Ds. The CA did not deal with “dilution” as a separate head
of damage, as it had stated that such head of damage
would have been covered by their finding of another head
of damage (§§124-128). The citation of §105 of
Amanresorts is also out of context. In §105, the Court of
Appeal was considering “Likelihood of damage should the
appellants get into financial, legal or other Trouble”. The
issue of “Loss of exclusivity” and erosion of the
distinctiveness of the “Aman” names as well as dilution of
44
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the goodwill were dealt with in §122 onwards of the
judgment.
92. Ds’ argument that erosion or dilution of the plaintiff’s mark
as a result of a belief in association engendered by
confusion was sufficient damage was rejected by Lloyd J
in HFC Bank (AppCas §126) is also wrong (See pp.199-
200). The learned Judge was not rejecting the proposition
that erosion or dilution of a mark could be a head of
damage.
93. Quite apart from the likely dilution of Ps’ goodwill by
erosion of the distinctive character of Ps’ marks, DHCJ
Saunders found, as a fact, that Ds’ business was not
operated “on the highest moral level”. To this may be
added the fact that Mr Law, Ds’ principle witness, and
others, lied to the Court extensively in witness statements
and in the witness box (CFI §§18-71) in attempting to
justify their conduct. There was clear evidence that Ds’
business was not run at a high moral level.
94. Ds rely on a passage from Wadlow (§4-049). In that
passage, the author argues that Taittinger is not authority
for the proposition that dilution without confusion is
insufficient. In the present case, not only is there
confusion but there is deception. The author does not
suggest that dilution in the sense of erosion of the
distinctiveness of the goodwill is not properly to be
A/1/7-24
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regarded as damage.
95. DHCJ Saunders’ findings of damage are untouched by Ds’
undertaking or by Ds’ argument in their Case.
H. CONCLUSION
96. In the light of the above, Ps respectfully submit that the
present appeal should be dismissed with costs, with
certificate for three counsel.
Dated the 17th day of September 2015.
MARK PLATTS-MILLS Q.C.
WINNIE TAM S.C.
PHILIPS B. F. WONG
Counsel for the Respondents
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ANNEX
Photograph (1): Ds’ tin of tea bearing the balloon (HCA 2210/2011: F3/4363, F4/4373a; CACV 191/2013: E2/28/4587, I1/11/7758)
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Photograph (2): Brochure for D1’s tea (HCA 2210/2011: F4/4373b; CACV 191/2013: I1/11/7759)
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Photograph (3): Tea counters in Taiwan (HCA 2210/2011: F4/4371; CACV 191/2013: E2/29/4595)
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Photograph (4): Tea counters in Taiwan (HCA 2210/2011: F4/4373; CACV 191/2013: E2/29/4597)
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Photograph (5): Insert with Paris Singapore tea (See similar HCA 2210/2011: E11/3140; CACV 191/2013: D9/178/3202-3204)
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Photograph (6): Reverse of Photograph (5) (See similar HCA 2210/2011: E11/3141; CACV 191/2013: D9/178/3202-3204)
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Photograph (7): Top and base of tea tin (See similar, HCA 2210/2011: F3/4363, F4/4371-4373b; CACV 191/2013: E2/28-29/4587,4595,4597; I1/11/7758-7759)
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Photograph (8): Box in which D’s tin of tea was sold (same reference as Photograph (7))
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Photograph (9): Front of cardboard slip for box in which Ds’ tea was sold (same reference as Photograph (7))