Hogan Lovells successfully obtains leave to appeal on high profile trade mark case
26 May 2015
Hong Kong, 26 May 2015 - Hogan Lovells won a significant victory in the Hong Kong Court of Final Appeal in the case of Tsit Wing (Hong Kong) Company Limited v TWG Tea Company Pte (FAMV 6/2015) in which the Appeal Committee granted TWG Tea Company Pte Ltd ("TWG Tea") leave to appeal two adverse decisions of the Court of First Instance and the Court of Appeal. This case will inevitably be important in clarifying the state of trade mark law in Hong Kong, and involves issues which should considerably clarify and simplify the application of the law.
Tsit Wing (Hong Kong) Company Limited ("Tsit Wing") registered two device marks in 2006 containing the letters "TWG" for goods including coffee and tea. TWG Tea adopted its name in 2008 and operates tea shops around the world. Its first tea shop opened in Hong Kong in December 2011 under signs also containing the letters "TWG". Tsit Wing alleges that TWG Tea's use of its signs infringe the registered trade marks and constitutes passing off. Tsit Wing was successful at first instance and on appeal to the Court of Appeal.
On 20 May, the Court of Final Appeal granted leave to appeal in relation to six questions, namely:
- Whether the test for infringement of marks under section 18(3) the Hong Kong Trade Marks Ordinance (which refers to the issues of similarity of marks and signs, goods and/or services separately from the issue of use likely to cause confusion) is the same as under Section 10(2)(b) of the UK Trade Marks Act (which, following European law, refers to the likelihood of confusion because of the similarity of marks and signs, goods and/or services).
- Whether similarities between marks and signs and the likelihood of confusion are to be judged of the basis of the "essence" or "dominant features" of the marks in issue or with respect to features which have "trade mark significance".
- Whether in assessing the distinctive and dominant components in a mark comprising letters and devices "words speak louder than devices".
- Whether marks registered in black and white are in effect registered in respect of all colours.
- Whether a colour mark may be registered in series with a monochrome mark even if the colours are expressly claimed as elements of the mark.
- Whether dilution of a trade mark may be claimed as a head of damage under the law of passing off.
The case is set for a full hearing before the full Court of Final Appeal in January 2016.
Hogan Lovells' team advising TWG Tea was led by Hong Kong IP partner Henry Wheare, supported by associates Serena Lim and Valerie Suen.
Martin Howe QC and Doug Clark, instructed by Hogan Lovells, appeared for TWG Tea.
Mark Platts-Mills QC, Winnie Tam SC and Philips Wong, instructed by Deacons, appeared for Tsit Wing.
Full Judgment of Tsit Wing (Hong Kong) Company Limited v TWG Tea Company Pte (FAMV 6/2015) can be read here.