Tsit Wing (Hong Kong) Co Ltd and Others v. Twg Tea Co Pte Ltd and Another
Read the full judgment text of HCA 2210/2011 on BabelCite. This High Court CFI judgment was delivered on 24 July 2013.
1. In these proceedings the plaintiffs (Tsit Wing) claim against the defendants (TWG Tea) in respect of an alleged trade mark infringement contrary to s 18(3) Trade Marks Ordinance Cap 559 (TMO), and the tort of passing off.
Cited by 1 case · Cites 3 cases
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HCA 2210/2011 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 2210 OF 2011 ____________
_______________ J U D G M E N T _______________ Introduction: 1.In these proceedings the plaintiffs (Tsit Wing) claim against the defendants (TWG Tea) in respect of an alleged trade mark infringement contrary to s 18(3) Trade Marks Ordinance Cap 559 (TMO), and the tort of passing off. 2.In simple terms, Tsit Wing says that they have a registered mark which includes the acronym “TWG”, and that by using that acronym on various marks in respect of its business, TWG Tea has infringed Tsit Wing’s mark by using a sign that is substantially identical or confusingly similar. 3.Tsit Wing says further that TWG Tea has, by using a sign containing the “TWG” acronym, passed off its business as Tsit Wing’s business. TWG Tea has done this, Tsit Wing says, by establishing and operating a restaurant and shop retailing food and beverage products using a sign containing the acronym “TWG” at Podium Level I, IFC Mall in Hong Kong. 4.TWG Tea’s defence to the trade mark infringement action was, at the commencement of the trial, twofold. First, it was contended that the mark and the sign are neither substantially identical nor confusingly similar, and that on the evidence there was an ample basis to distinguish the two. 5.Second, the defence available under s 19(3)(a) TMO; the use by a person of his own name in accordance with honest practices in commercial matters, was relied upon. 6.TWG Tea’s Hong Kong’s shop opened on 8 December 2011. The writ was issued on 23 December 2011, and an interlocutory injunction sought to prevent the use by TWG Tea of any sign containing the acronym TWG. An interlocutory injunction was issued on 30 January 2012. On 16 February 2012, the Court of Appeal discharged the interlocutory injunction upon TWG Tea’s undertaking not to expand its business in Hong Kong outside the IFC tea shop. 7.The registered marks relied upon by Tsit Wing are:
I will refer to these marks individually or collectively as “Tsit Wing’s marks”. 8.The signs sought to be used by TWG Tea are:
These logos contain, in the lower portion of the balloon, the expression; “TWG TEA”. The parties to the proceedings: 9.Tsit Wing originated as a family business in 1932, being a trader, wholesaler, coffee roaster and tea blender, and was incorporated under the name of the 3rd plaintiff, Tsit Wing Coffee Co Ltd. in 1956. In 1991, the 2nd plaintiff was established as a holding vehicle of various subsidiaries including the 3rd and 4th plaintiffs. In 2000, the 1st plaintiff was established, wholly owning the 2nd plaintiff, and was listed on the Main Board of the Singapore Exchange Ltd in December 2001. The present chairman and chief executive officer, Mr Peter Wong Tat Tong, is the grandson of the original founder of the business. 10.In 2011, the total gross sales by Tsit Wing were HK$393 million. The great bulk of those sales were in the food services area with some HK$114.6 million worth of coffee, and HK$111 million worth of tea. 11.The acronym TWG was introduced into Tsit Wing’s trade marks in 2006, in the form of the logos seen above. Collectively, the companies under the umbrella of the 1st plaintiff are known as the Tsit Wing Group. The acronym, TWG, derives from the first letters of Tsit Wing Group. It is Tsit Wing’s case that the acronym has been used extensively and continuously in various styles of mark since 2006. The whole of the sales of tea and coffee referred to in the previous paragraph carried a logo containing the acronym TWG (Mark 6 in §6 above). 12.The 1st defendant was incorporated as Sunbreeze Group Pte Ltd in Singapore in 2001. According to Mr Law, the company’s Chief Operating Officer the company was part of a group known as “The Wellness Group” which had developed business interests in Singapore, Shanghai, Mumbai and Dubai in the lifestyle industry, particularly the spa business, spa products, and, it is said, tea. In 2008, the company changed its name to that of the 1st defendant, the name being an acronym of the expression “The Wellness Group”. At that time The Wellness Group was operated by Mr Manoj Murjani. He had recently been joined by Mr Taha Bouqdib who had been employed by a very old established tea company in Paris, Marige Frères, for some 23 years. 13.Although Mr Murjani made a witness statement, he was not called to give evidence, it being explained that between the issue of the proceedings and the trial he had left the company. 14.Between July 2008 and December 2011, TWG Tea established four tea shops in Singapore, a retail counter in Harrods department store in London, two “retail boutiques” in Dean & DeLuca in New York, a tea boutique in Tokyo, and a retail outlet in Abu Dhabi airport terminal. Since the issue of the proceedings TWG Tea has opened tea shops in Kuala Lumpur and Bangkok. 15.In April 2011, a company known as OSIM International took a 35% shareholding in the 1st defendant, and a new company, OSIM-TWG Tea (North Asia) Pte Ltd (OSIM-TWG) was established with a view to expanding into the Asian markets of China, Hong Kong, Taiwan, and South Korea. The 2nd defendant is a wholly-owned subsidiary of OSIM-TWG, and was incorporated in Hong Kong as a vehicle to bring TWG Tea’s luxury tea products business to Hong Kong. 16.As well as supplying tea through the tea shops and its other outlets, the evidence was that TWG Tea supplied tea to the food services industry including airlines, particularly Singapore airlines, and upmarket hotels. 17.The evidence from Mr Law, Mr Bouqdib, the president of the company, and his wife, Ms Barnes, the director of business development and communications, emphasised the luxury nature of the products sold, the highly stylised presentation and layout of what they called “tea boutiques” or “tea salons”, and the care and attention that went into the many blends of tea. To demonstrate the luxury nature of the business, it was said that a first order must be to a minimum value of US$5,000, and subsequent orders a minimum of US$1,500. The trademark history: 18.A chronology of the relevant trade mark events, provided to me by Tsit Wing, is attached to this judgment as Annex A. The chronology, and the undisputed documents referred to, identifies three essential sets of facts. 19.First, the evidence establishes that since 8 June 2006, a mark including the acronym “TWG” has been held in Hong Kong by Tsit Wing. By November 2007, Tsit Wing had succeeded in registering its mark in Australia, the PRC, Hong Kong, Taiwan, Singapore, and the US. Between March 2010 and November 2010 registration was achieved in South Korea and the Philippines. 20.Prior to 2006, and even now, Tsit Wing used a number of different marks, usually incorporating the letters “TW”. The TWG mark was as a result of a branding consolidation undertaken in 2006. This consolidation included the acquisition by Tsit Wing of the domain names TWG.COM.HK and TWG.HK. The Hong Kong marks held by Tsit Wing, and set out in Annex A, are registered, (unless otherwise indicated), in class 30, which includes both coffee and tea. 21.The evidence is that a mark containing the “TWG” is found on all invoices issued by Tsit Wing, and on all of its corporate documents, as well as numerous products. 22.Second, the evidence establishes that, on 28 October 2008, having made application on 27 November 2007, the 2nd plaintiff registered, as a trade mark, the acronym “TWG”, with no other distinguishing details, in the US. 23.Third, the evidence establishes that on 24 February 2009, TWG-Tea applied to register its sign as a trade mark in the US. The documents demonstrate that on 18 May 2009, TWG-Tea’s US trademark lawyers were informed that registration was refused because of the likelihood of confusion with Tsit Wing’s trademark comprising the acronym “TWG” that had been sought in November 2007, and registered on 28 October 2008. The citation stated:
24.No steps were taken by TWG Tea following the citation of Tsit Wing’s US mark. The application by TWG Tea was subsequently marked “dead” by the US authorities. TWG Tea’s knowledge of Tsit Wing’s marks: 25.It is clear that in October 2007, when 1st defendant changed its name to a name containing the acronym “TWG”, Tsit Wing’s registration of marks containing that acronym was internationally extensive. Marks including the acronym had been successfully registered in Australia, Hong Kong, the PRC, Taiwan, and Singapore. 26.Considerable effort was taken by TWG Tea in respect of the sign proposed to be used on its goods and for its business generally. It was to be a very important aspect of the “brand” that was to be established. As TWG Tea sought to enter the luxury, albeit “achievable luxury”, goods market with its tea, an elegant and highly recognisable sign was important. 27.A French designer was employed and great care was taken to ensure that an appropriate sign, suitably reflective of the high degree of luxury proposed by TWG Tea for the business was achieved. Although Mr Bouqdib and Ms Barnes were reluctant to concede the point, I have no doubt at all that the use of the French language to describe the quality of the goods on offer, and the particular words chosen, were intended to add to the aura of old world luxury of the brand, and intended to be reflected by the cartouche style of the chosen sign. Equally[1] the inclusion of the date “1837” in the sign was plainly intended to convey a sense of long establishment. 28.It would have been a simple matter, at the time the company name was chosen, for Mr Manoj, Mr Bouqdib and Ms Barnes, well knowing the importance of any sign chosen, to have undertaken an international trademark search to ascertain whether or not the acronym TWG might already be in use by someone in respect of tea. They appear not to have taken that step, or if they did, they have chosen not to tell the court. 29.Mr Law appears to have been principally responsible for the process of registration of the sign as a trade mark, once it was designed. Initially, TWG Tea employed a well-known boutique law firm of Singaporean trademark attorneys, K L Tan & Associates, to deal with the applications. The extent of the trademark work being undertaken by TWG Tea, and its importance, is demonstrated by the fact that after some time K L Tan & Associates were placed on a retainer to TWG Tea in respect of trademarks. Mr Law inappropriately characterised Ms Tan of that firm as their “in-house” trademark lawyer. 30.Mr Law, Mr Bouqdib and Ms Barnes each said that they did not know of the citation of Tsit Wing’s US mark preventing TWG Tea’s own registration in the US. I reject that evidence. 31.I have no doubt at all, as Mr Platts-Mills submitted, that it is simply inconceivable that a careful and professional trademark lawyer, as Ms Tan no doubt is, would not have immediately, upon the citation of Tsit Wing’s US mark against TWG Tea’s proposed registration, informed TWG Tea’s directors of that fact. It is equally inconceivable that she would not have shown them the mark that stood in their way. There is no suggestion that the US trademark lawyers were not instructed on TWG Tea’s behalf by K L Tan & Associates. Just as Ms Tan would have immediately informed TWG Tea of the citation in the US, so equally the US trademark lawyers would have informed Ms Tan. 32.In his first witness statement, without any supporting evidence, Mr Law asserted that TWG Tea had total sales, in 2008, in the US of US$12 million. Bearing in mind that his evidence was that sales in America commenced in December 2008, that was an extraordinary success. That sum is very close to Tsit Wing’s total tea sales in 2011. Mr Bouqdib considered that a market in which there were sales of US$500,000 was an “interesting market”. Consequently, it is clear that in 2009, when TWG Tea’s application for the sign was prevented by the citation of Tsit Wing’s US mark, the failure to achieve registration would have been a significant setback to TWG Tea. Sales the previous year of US$12 million, 24 times larger than an “interesting market”, undoubtedly meant that the US market was a very substantial market for TWG Tea. Mr Bouqdib accepted that, as a European it was second nature for him to register a trademark for the protection of his brand. 33.It is simply beyond belief, having regard to those facts, that the directors of TWG Tea would not then have been aware of the refusal of the US authorities to register their sign. It was a refusal which potentially had a considerable impact on a very substantial business apparently being undertaken by TWG Tea in the US. 34.The existence of Tsit Wing’s mark as a bar to the registration of TWG Tea’s sign was reinforced in June 2010, when TWG Tea sought to obtain registration of its sign in Australia. Again, Tsit Wing’s mark was cited against the application for registration on the ground that TWG Tea’s sign was substantially identical with, or deceptively similar to, Tsit Wing’s prior registration. The South Korean coexistence agreement: 35.In March 2010, Tsit Wing had succeeded in obtaining registration of its mark in South Korea. In June 2010, TWG Tea applied to register its sign in South Korea. Once again, Tsit Wing’s prior registration was cited against TWG Tea’s application. The marks were similar, the citation said, because the acronym TWG was identified as one of the dominant portions of the proposed sign, which was “identical with or similar – in sound – with” Tsit Wing’s mark. 36.TWG Tea wished to enter the South Korean market. On 14 March 2011, Ms Tan, by email, sought instructions from Mr Law in respect of the steps she should take to protect TWG Tea’s trademark rights in South Korea. She pointed out that Tsit Wing’s application was filed before TWG Tea’s application and:
Ms Tan reminded Mr Law that a coexistence agreement was critical. 37.There had already been discussions between Tsit Wing and TWG Tea in respect of a coexistence agreement in respect of the marks in South Korea. Now, Mr Law engaged in a series of emails with Tsit Wing with a view to achieving the coexistence agreement. After some negotiation, some of which took place in person between the parties in Hong Kong, and some by email, terms of a coexistence agreement, limited to South Korea, were reached and a formal document signed. The opposition in Australia: 38.On 12 March 2010, Tsit Wing, already holding registration of the mark shown at §6(8) & (9), applied for registration of the mark shown at §6(3) & (4) in Australia. On the same date, TWG Tea applied to register its sign in Australia. Tsit Wing’s Mark was cited against TWG Tea’s application for registration. 39.Mr Law gave instructions to Ms Tan to oppose Tsit Wing’s application. Mr Law said that he was not a trademark expert, nor was he a lawyer, and so knew little of the formal basis upon which a mark might be opposed. In cross examination however he was obliged to acknowledge that the grounds of opposition lodged by Ms Tan on TWG Tea’s behalf were precisely what he expected Ms Tan to do on his instructions. Mr Law expected Ms Tan to oppose Tsit Wing’s marks upon grounds that they were substantially identical with, or deceptively similar to, marks used by TWG Tea. That acknowledgement was contrary to the position he had asserted in his witness statement, when he said he had given instructions to oppose Tsit Wing’s marks on the grounds of non-use. 40.The grounds on which TWG Tea had relied in reality are instructive. It was contended by TWG Tea that Tsit Wing’s mark was substantially identical with or deceptively similar to marks used by TWG Tea in Australia. The notice of opposition was dated 6 December 2011, shortly before the issue of the writ, but after TWG Tea had received a cease-and-desist letter from Tsit Wing’s solicitors. 41.The statement of claim was filed on 16 January 2012. It contained a specific allegation[2] that TWG Tea had infringed Tsit Wing’s TWG mark by using signs which were similar to the registered TWG mark, in relation to goods and services which were identical or similar to the goods and services for which the mark was registered. The defence was filed on 23 February 2012. The allegation that TWG Tea’s signs were similar to the registered TWG mark was denied and Tsit Wing was put to strict proof thereof[3]. There was a specific assertion that TWG Tea’s marks were not confusingly similar to any of Tsit Wing’s marks. 42.On 2 November 2012, a supplemental witness statement by Keith Wu, the Executive Director, General Manager (Corporate Services) and Financial Controller of Tsit Wing was filed and served. At that stage of the proceedings TWG Tea was yet to make available by way of discovery documentation in relation to letters of objection or citations, based upon Tsit Wing’s trade mark applications, issued pre-writ by overseas trademark registries against TWG Tea’s trademark applications. The witness statement contained a brief reference to Mr Wu having been advised by a Macau attorney that TWG Tea had, in grounds of opposition to Tsit Wing’s trade mark applications, relied upon similarities between the parties trade marks to argue that there would be confusion. 43.This led those advising TWG Tea to appreciate, apparently for the first time, that the position being adopted by TWG Tea in the litigation, namely that there was neither similarity nor likelihood of confusion, between the two marks, was in direct contradistinction to the position being adopted by TWG Tea in the process of international trade mark registration and opposition. 44.On 27 November 2012, TWG Tea’s Australian trade mark attorneys wrote to the Registrar of Trade Marks in Australia advising that TWG Tea no longer intended to rely upon the ground of opposition that the trademark sought by Tsit Wing was substantially identical with or deceptively similar to marks used in Australia by TWG Tea. 45.A similar position had arisen in respect of the PRC. There, again, trade mark attorneys acting on behalf of TWG Tea had adopted a position in relation to Tsit Wing’s marks that they were substantially identical with, or deceptively similar to, signs used by TWG Tea in the PRC. Again, steps were taken to reverse the situation, once the position had become known to TWG Tea. 46.In the interlocutory steps being taken in preparation for this trial the solicitors for Tsit Wing had been pressing the solicitors for TWG Tea to make discovery of TWG Tea’s other trade mark applications and citations against those applications. 47.On 1 March 2013, after a vigourously resisted application for specific discovery, documents including letters or citation of objections issued by Hong Kong and overseas registries against TWG Tea’s trade mark applications based upon Tsit Wing’s trade mark applications were made available. Now, those advising Tsit Wing learnt of the full extent of the positions adopted by TWG Tea, arguing to various trade mark registries that Tsit Wing’s marks were substantially identical with, or deceptively similar to, signs used by TWG Tea. 48.On 29 August 2012, Mr Law had filed a statutory declaration[4] in Australia in support of the opposition by TWG Tea to Tsit Wing’s application in respect of Tsit Wing’s TWG mark. In that statutory declaration he asserted the following:
49.On 3 December 2012, shortly after his Australian trademark attorneys had notified the Registrar in Australia that TWG Tea no longer relied on the arguments of “substantially identical with or deceptively similar to”, Mr Law filed a new statutory declaration, with the cited paragraph excised. Mr Law offered no explanation to the Australian authorities of the reason for the abandonment of the position previously adopted. 50.In his affirmation dated 13 January 2012, in opposition to the application for an interlocutory injunction, Mr Law referred to the fact[5] that a citation had been raised against TWG Tea’s trademark in Singapore, and said that:
In cross-examination he was obliged to concede that the expression “at least” was misleading and that he had not corrected that expression at any stage. He was unable to state any other jurisdictions in which the registrations co-existed. He was obliged to acknowledge that he had not referred to the existence of citations against TWG Tea’s proposed mark in the US, Australia, Singapore, the Philippines, and Hong Kong. The failure to refer to the existence of those citations must have been deliberate. Mr Law had to acknowledge that he could not include those citations because to do so was directly contrary to the argument then being mounted that the marks were clearly distinguishable. When it was put to him that he intended to deceive the court his response was evasive[6]. 51.I regret to say that Mr Law collapsed in confusion in his efforts to explain the various and contradictory assertions that he had made in affidavits and witness statements in these proceedings and in trademark proceedings in various jurisdictions. His concession in cross examination that he expected opposition to be filed on the basis that TWG Tea’s marks were substantially identical with or deceptively similar to Tsit Wing’s marks directly contradicted the assertion contained in his witness statement dated 5 March 2013. That witness statement was made after the conflicting positions had been discovered. Now, he said that his instructions to Ms Tan were to oppose Tsit Wing’s marks on the basis of non-use where ever possible. 52.Mr Law endeavoured to explain the position in that witness statement by saying that he had not looked at the grounds of opposition submitted by the local filing agents until the issue was raised in the proceedings. He sought to say that the statutory declarations filed in Australia were not documents he had read, nor had he properly read his affidavits or witness statements filed in these proceedings, because, he said, he relied upon his lawyers. 53.If that is the case then I cannot rely upon anything that he has said in those documents. Having regard to the confusion he found himself in, in cross-examination, I cannot rely upon anything he said in evidence where it conflicts with the evidence from Tsit Wing, unless it is contrary to his interests. It is plain that Mr Law is a man who will say or swear to whatever suits his position at any time. Was Tsit Wing informed of TWG Tea’s intention to start up in Hong Kong: 54.Both Mr Law and Mr Bouqdib said that in March 2011, when in Hong Kong, in the discussions leading to the South Korean coexistence agreement, they had informed Mr Peter Wong and Mr Samuel Chan, Tsit Wing’s group trading business director, of TWG Tea’s intention to open a retail outlet in the IFC Mall in Hong Kong. They said that at the meeting comments were made by Mr Wong and Mr Chan as to the high rents that would have to be paid. 55.Mr Wong said that he could not recall any discussion about such plans at the March meeting. In his second affirmation in the interlocutory proceedings he reminded the court that the matter was not mentioned once in correspondence between March 2011 and October 2011. 56.The 2nd defendant company was incorporated in Hong Kong on 28 June 2011. On 20 July 2011, TWG Tea entered into a confirmation of sublease with the IFC Mall, and some time after that began the renovation of the premises in preparation for the ultimate opening of the tea salon which occurred on 8 December 2011. It necessarily follows that the decision by TWG Tea to move into the Hong Kong market had been made some time well prior to July 2011. I have no doubt that it had been made prior to the meetings in March 2011, for it was in April 2011 that OSIM-TWG, the parent of the 2nd defendant, was formed with a view to expanding into, inter alia, Hong Kong. 57.But it is one thing to have made the decision to move into Hong Kong, it is another thing for TWG Tea to inform Tsit Wing of that decision. 58.When the decision was made by TWG Tea to seek the coexistence agreement with Tsit Wing in South Korea, Ms Tan advised Mr Law to seek a global coexistence agreement, rather than one that was confined to South Korea. In an effort to appease Tsit Wing, in drafting the proposed coexistence agreement, Ms Tan included a provision that TWG Tea agreed that they would always include “1837” and “TWG Tea” in their trademark, the document recording that that was in order to differentiate TWG Tea’s trade mark from the trade marks of Tsit Wing. 59.An email exchange followed in which Mr Law pressed for the global agreement. Mr Chan made it plain that Tsit Wing wished to resolve the Korean issue before proceeding further. By the end of March 2011, agreement was reached on the coexistence agreement which Mr Chan said was confined to South Korea only. The document ultimately signed specifically limited the coexistence to South Korea. 60.On 1 April 2011, after the South Korean document had been signed, Mr Law emailed Mr Chan pointing out that there was now no time pressure, and sought a global agreement. He reminded Mr Chan that TWG Tea had a pending Malaysian trade mark application which would shortly be published for opposition. He enquired about a coexistence agreement in respect of Malaysia. He did not suggest that any coexistence agreement might be required in respect of Hong Kong. 61.On 8 April 2011, Mr Law emailed Mr Chan seeking a coexistence agreement in respect of the US. Again there was no suggestion in respect of Hong Kong. 62.In a later email on the same day he told Mr Chan that TWG Tea had registration in over 30 countries, including the entire Middle East, and were willing to look at coexistence in respect of those countries as well. Again there was no suggestion that there should be a coexistence agreement in Hong Kong. 63.On 11 April 2011, he emailed Mr Chan suggesting that he and Mr Bouqdib should come to Hong Kong for a face-to-face meeting in respect of the US trademark position. Mr Chan responded that day in the following terms:
64.The only way Mr Chan could have made a clearer statement that Tsit Wing would not agree to coexistence in Hong Kong would have been if he had been responding to a specific request for coexistence in Hong Kong. No such request had been made. However, it must have been abundantly clear to Mr Law from the terms of the email that a coexistence agreement in Hong Kong was simply not possible. 65.According to the emails discovered, the next correspondence was on 7 October 2011. Now, Mr Law sought to tempt Mr Chan to agree to global coexistence by offering Tsit Wing the opportunity of what might be extensive business in Singapore. The email read as follows:
There was no mention that the opening of the retail outlet in Hong Kong was only a little over two months away. There was no specific request for a coexistence agreement in Hong Kong. In the event there was no meeting. 66.It is quite extraordinary that at no time during this correspondence was there any suggestion that TWG Tea was about to open a retail outlet in Hong Kong. It was patently obvious to Mr Law and Mr Bouqdib that they would require a coexistence agreement in Hong Kong in order to avoid trade mark litigation. Tsit Wing, through Mr Chan’s email correspondence had made it perfectly plain that Tsit Wing would not enter into a global coexistence agreement. Nothing had been done on the part of Tsit Wing which might indicate to TWG Tea that the use of TWG Tea’s mark in Hong Kong would be tolerated by Tsit Wing. The contrary was obvious. 67.If, as Mr Law and Mr Bouqdib said, they had raised the opening of the Hong Kong premises in the March meeting there was no reason at all not to mention the obvious need of a coexistence agreement in respect of Hong Kong in the long series of emails. On TWG Tea’s case, both Mr Wong and Mr Chan were aware of the position and must have been expecting a request for a coexistence agreement. If that was the case there was no reason for TWG Tea not to specifically request coexistence in Hong Kong in the correspondence. 68.I have no hesitation in rejecting the assertion of Mr Law and Mr Bouqdib that the matter was raised in the March meeting. I am satisfied that both intended to keep the Hong Kong opening by TWG Tea a secret from Tsit Wing until the last possible opportunity. TWG Tea would then be able to present Tsit Wing with a fait accompli. They would have a virtually finished shop, ready to open, with Tsit Wing’s only options being to agree to a coexistence agreement or to enter into expensive litigation. 69.I accept the evidence of Mr Wong that Tsit Wing learned of the opening of the shop only in mid-October. It is right that Mr Wong said that he “could not recall” any discussions concerning the matter, and, as Mr Baldwin submitted, that expression carries with it the implication that there may have been discussions. I am satisfied that by using that expression Mr Wong was simply being careful to be scrupulously honest, as his recollection was not such that he was in a position to deny such a conversation. 70.I have no doubt at all that if the matter had been raised as suggested by Mr Law and Mr Bouqdib, it would have been mentioned in the continuing email correspondence. Numerous other jurisdictions were mentioned and there is no reason at all why Hong Kong should have been excluded if it was a subject matter that had already been raised with Tsit Wing. 71.In the light of the conduct of Mr Law and Mr Bouqdib in that respect, and the contrary position taken by TWG Tea in respect of this litigation and its opposition to trademark registration in numerous jurisdictions until such time as that contrary position came to light, it is not at all surprising that the “own name in accordance with honest practices” defence should have been abandoned. 72.Tsit Wing pleaded in §49 of the re-amended statement of claim:
That paragraph was initially “not admitted”, but in the re-amended defence was denied in the following terms:
73.I am satisfied on the evidence that §49 of the re-amended statement of claim has been duly proved. But that does not entitle Mr Platts-Mills to say that TWG Tea was dishonest in so acting. An allegation of dishonesty is an allegation which ought to be specifically made and not left to be drawn by way of inference from a paragraph such as §49. It may well be that the law is that where dishonesty is not pleaded, but evidence to that effect has been admitted without protest, it would be open to a judge to find a dishonest intention notwithstanding the absence of an express plea: see H P Bulmer Ltd & Anor v J Bollinger SA & Anor [1978] RPC79, at 107 & 121. But there is a further bar to Mr Platts-Mills contention. 74.Whether or not an allegation of dishonesty is pleaded or is left to be drawn from inference from such a paragraph, the allegation must always be specifically put to the witnesses in terms. It cannot be left to be argued as an inference to be drawn from the evidence, without giving the witnesses the opportunity to specifically respond to the allegation. 75.Mr Platts-Mills laid appropriate foundation to put the allegation directly to the witnesses, but did not do so. In those circumstances it is not now open to him to contend that TWG Tea’s actions in opening in Hong Kong with the knowledge they had was dishonest. As far as he can go is as far as I have found, that is to conclude that TWG Tea took a deliberate risk in opening in Hong Kong in the circumstances it did. It is not necessarily dishonest to take a risk. 76.While I was in the course of writing this judgment the solicitors for Tsit Wing sent to me two authorities relevant to this point, and drawing my attention to specific references in those authorities. That was met with a complaint from those advising TWG Tea that it was “highly unusual and inappropriate” to submit further authorities to the court three days after the trial had concluded. It was suggested that I should refuse to give consideration to those materials. 77.It may be unusual, but it is never inappropriate to bring to the attention of a judge new authorities. Rather, it is of great assistance to the court if relevant authority which has been overlooked is subsequently drawn to the courts attention. If counsel wishes to be further heard on the authorities they may always ask to be heard. It is much better to reopen the matter in that way in order that the court is fully and properly informed, than to have to proceed subsequently to a Barrell application: see Re Barrell Enterprises [1972] 3 All ER 518. 78.At the end of the day, having regard to the conclusion reached in §75 above, I doubt that further submissions are necessary. “1837”: 79.The explanation offered by Mr Bouqdib and Ms Barnes for the use of the date “1837” in the sign for a company which originated in 2008, was that the date was the year in which the Chamber of Commerce was established in Singapore, an important tea trading hub in Asia after the East India Company had lost its monopoly on tea trading. By including the date in the sign TWG Tea was said to be “celebrating” that commercial landmark. 80.It is right that a date contained in a logo indicating the year of commencement or establishment of a commercial enterprise will often contain words such as “since”, “from”, “established”, “est.” or “dupuis”. The cartouche logo used by Marige Frères contains the expression “Maison Fondêe en 1854”[7]. But I am sure that even without such words, an ordinary member of the public seeing a sign containing a date will initially assume the date to indicate the year of establishment of the enterprise. 81.There is no doubt that the existence of the date 1837 in TWG Tea’s sign has led people to believe that the company was established at that time. Bloomberg BusinessWeek, a well-known financial Internet site published a snapshot of TWG Tea on 31 October 2011. Under the heading “Company Overview” Bloomberg recorded that the company was founded in 1837 and was based in Singapore. 82.There is a second reference to the company being founded in 1837. At an interlocutory stage the matter came before the Master in Hong Kong. This exchange occurred:
83.Mr Platts-Mills put these situations to Mr Bouqdib and Ms Barnes. Both were quite disingenuous in their responses. Each carefully avoided the real point of the question, namely, why would a person with no prior knowledge of TWG Tea, upon looking at its sign, think that the company was formed in 1837. Instead both responded by saying that they were careful whenever they had any contact with the press, and in the presentation of the company, to point out that the date “1837” was a “celebration” of the establishment of the Singapore Chamber of Commerce. 84.Neither was willing to concede that the existence of the date in the sign might mislead a person into thinking that the company had been formed in that year. Ms Barnes was right to be embarrassed when she was unable to explain why there is no reference to 1837 as being the date upon which the Singapore Chamber of Commerce was established in the “Tea Book”, given to customers to enable them to choose their teas in the tea shops. 85.I note too, that on 16 June 2009, the US Patent and Trade Mark Office refused to register a mark sought by TWG Tea containing the words; “TWG TEA 1837”. Included in the reasons given for the refusal to register the mark is the following statement:
86.I am satisfied that TWG Tea selected the date “1837” to go in the sign, knowing that it was the year in which the Singapore Chamber of Commerce was founded, and would be explained on that basis. The real intention of the choice of date was in fact to give an impression that the company had existed since that time. The only way a person might discover the “real” reason for the date, being a celebration of the founding of the Singapore Chamber of Commerce is to be told by someone from TWG Tea, or to find the appropriate reference on TWG Tea’s website. A customer reading the Tea Book while having tea in the tea shop would not learn this obscure background fact. Evidence of confusion: 87.The question of similarity between a registered mark and an allegedly offending sign is closely related to the question of the likelihood of confusion. Counsel dealt with the two issues separately, and cited substantially the same authorities in respect of the two issues. 88.The law is clear as to the assessment of the likelihood of confusion. It is set out in the following passage from the judgment of the Court of Appeal, and delivered by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 19 at §87:
89.The assessment of the likelihood of confusion is a matter for the court. The leading textbook, Kerly’s Law of Trade Marks and Trade Names, Sweet & Maxwell, 15th edn, 2012, (Kerly), contains the following passage at 21-005:
90.It was undoubtedly with that passage in mind that Mr Baldwin put before the court survey evidence intended to establish that confusion between the two signs was not likely. Also put before the court by Mr Baldwin for this purpose was the evidence of seven witnesses whom Mr Platts-Mills elected not to cross examine. 91.The guidelines for undertaking surveys in trade mark cases were recently considered in detail by the Court of Appeal in England in Interflora Inc v Marks & Spencer Plc [2013] FSR 21. Is not necessary for me to set out these guidelines or to detail Mr Platts-Mills extensive criticism of them. It is sufficient if I say that the surveys adduced by TWG Tea fell a long way short of the necessary standard to give them any value in evidence. 92.The survey evidence was undertaken by two employees of Clifford Chance. Mr Platts-Mills was right to suggest that very great sympathy should be accorded to both those witnesses. They were put into a position which was wholly unfair, unjustified, and unjustifiable. The basis upon which they carried out the surveys, (and they could not possibly have known that this was so), fell so far short of meeting the appropriate standards as to render such evidence of no assistance to me. Consequently it was necessary for Mr Platts-Mills to subject these witnesses to what must have been, for them, an extremely embarrassing cross examination. In the circumstances, Mr Platts-Mills was quite entitled to undertake that cross examination. Mr Platts-Mills criticised this evidence extensively, and he was right to do so. I place no weight on that evidence at all. 93.Evidence from seven witnesses as to non-confusion was called by TWG Tea. Three were senior solicitors or employees at Clifford chance, who are acting in this litigation for TWG Tea. The other four worked in the private sector and were apparently acquaintances of a Clifford Chance employee, Helen Wang. Her role in Clifford Chance, or this litigation, was not explained, neither was there any evidence as to how these four people came to be invited to give evidence, or what they were told. 94.There was no evidence to suggest that any of the seven had any awareness of the use of the acronym TWG by Tsit Wing. In those circumstances, it is hardly surprising in that they would give evidence that they were not confused. Their lack of that awareness of the fact, fundamental as it is to being deceived or confused, renders their evidence quite without any weight at all. Mr Platts-Mills was quite right to say that such evidence was irrelevant. I place no weight at all on that evidence. Evidence from trademark registries: 95.The mere fact that two trade marks exist as entries on the Register of Trade Marks, without objection from the Registrar, is at most evidence of the opinion of the Registrar, and in the absence of evidence as to his reasons is irrelevant: see Neutrogena Corporation & Anor v Golden Ltd & Anor [1996] RPC 473, at 502-503. But evidence as to the citation of a mark by a trade mark registry, in opposition to another mark or sign sought to be registered, with reasons, must be powerful evidence of potential confusion. 96.On 18 May 2009, the US Patent and Trademark Office refused TWG Tea registration of its mark giving the following reason:
Another application was refused by the same office on 16 June 2009. Now, TWG Tea sought to register as a mark, the whole of the words, both English and French, as contained in the large cartouche logo, prefaced by the words: “TWG TEA 1837”, but without the cartouche design. Here the reasons for refusal were[8]:
97.The Australian Registrar of Trade Marks refused TWG Tea’s application for the large cartouche logo on 17 June 2010. The reason given was:
98.On 25 April 2011, the South Korean Intellectual Property Office cited Tsit Wing’s mark in opposition to registration by TWG Tea of the large cartouche logo. The reason given was:
99.On 3 June 2011, the Intellectual Property Philippines Bureau of Trademarks cited Tsit Wing’s mark in opposition to registration by TWG Tea of the large cartouche logo. The reason given was:
100.On 17 October 2011, the Intellectual Property Department of the Hong Kong Government cited a number of Tsit Wing’s TWG marks against application for registration by TWG Tea of the large cartouche logo in respect of classes 21, 30 and 43. The reason given was:
On 23 August 2012, the refusal was continued, on the same grounds, following submissions made by TWG Tea’s Hong Kong trade mark solicitors on 12 July 2012. On 18 March 2013, a refusal was continued in respect of the balloon marks, following submissions that had been made by the same solicitors on 3 January 2013. The original refusal does not appear to be part of the evidence. 101.The various expressions of the grounds for refusal by the international trademark registries are precisely those reflected by Mr Law in his affidavit filed in opposition in Australia, (see §48 above). 102.The picture presented is consistently one of numerous independent international trade mark registries each reaching the same conclusion. They are universally of the view that the signs used by TWG Tea are similar, by reason of the similarity of the dominant expression, “TWG” in both the trademarks and the sign. I am satisfied that it is proper for me to take this evidence into account in my assessment of the likelihood of confusion. The assessment of similarity: 103.Under s 18(3)(a) TMO, a sign, if similar to a registered mark, infringes if it is used “in relation to goods or services which are similar to those for which the mark is registered”. 104.Mr Platts-Mills relied upon the following principles, drawn from authority, to determine how a registered mark should be compared with an allegedly infringing sign, (I adopt Mr Platts-Mills language from his opening):
105.I did not understand Mr Baldwin to take any exception to these statements of principle. However he drew my attention to the line of authority leading to O2 Holdings Ltd v Hutchinson 3G Ltd [2008] RPC 33 CA. The Court of Appeal had referred three questions to the Court of Justice of the European Union (CJEU). That court said:
106.I apply these principles in assessing whether or not TWG Tea’s sign is similar to Tsit Wing’s registered marks. Discussion of similarity: 107.The dominant feature of Tsit Wing’s marks, and TWG Tea’s cartouche mark is undoubtedly the acronym TWG. An English-speaking person seeing Tsit Wing’s marks, each of which contains the acronym TWG would undoubtedly refer to the manufacturer/vendors/proprietor of goods contained or reflected by the mark as TWG. It is right that the context of TWG Tea’s mark is that of an elaborate cartouche with other English and French words in straplines. But those words are merely descriptive of the product being sold, and do not in any way identify the seller of the product. 108.A Chinese speaking person seeing Tsit Wing’s mark without the Chinese characters is likely to recognise the English acronym, but would probably use Chinese to refer to the manufacturer etc. of the goods. In my view it matters not that a Chinese speaking person would use Chinese to orally describe the goods because he would have done so after recognising the English acronym. The English and French words as part of the context of the cartouche surrounding the acronym in TWG Tea’s sign would be simply meaningless to a person who did not speak either of those languages. They not provide any form of distinction from the central, dominant, and obvious acronym, TWG. 109.Even without a command of English many people in Hong Kong are capable of recognising an English acronym, or a word made of English letters, and even using the English style of speech to refer to the entity using the acronym, or the word. And obvious example is the universal reference, in the English style of speech, to the Sogo department store at its prominent location in Causeway Bay. The corner is universally recognised as the “Sogo” corner, and the word “Sogo” said as it reads in English, even by a Chinese speaker. 110.Orally and aurally, the competing logos are referred to, and heard, identically. I have no doubt at all that nobody would refer to TWG Tea’s tea shop by reference to the expression; “the finest teas of the world”, or the various French statements. They would refer to it as the “TWG tea shop”, or perhaps make an arrangement to meet at “TWG at IFC”. Whether the word “tea” is added or not, (with or without a capital “T”, which in any event cannot be identified in speech), makes no difference to the identical oral and aural nature of the acronym contained in the mark and the sign. 111.Ms Barnes sought to say that throughout the “Tea Book”, they had been scrupulous to refer always to “TWG Tea”, and not merely “TWG”, and that the addition of the word “Tea” would distinguish between the two sides. 112.But it takes little examination of virtually every page of the Tea Book to see that that is not the case. For example, on pages 12 and 13 of the Tea Book the acronym TWG appears in the text 13 times. On only one of those 13 occasions does it appear as “TWG Tea”. The context of the remaining 12 entries are; “sets this TWG tea apart”; “a wonderful TWG tea”; “this TWG harvest”, (twice); “this TWG Orange Pekoe”; “this highly aromatic TWG Ceylon”; “this TWG green tea”, (six times). 113.When used in the latter context the defendant company is in fact describing itself as TWG, a name that is visually, orally, and aurally identical to the acronym used by the Tsit Wing in its registered marks. 114.I accept Mr Platts-Mills’ submission that:
Having accepted that submission the inevitable conclusion is that the dominant feature of the mark and the sign, the acronym TWG, are, in the present context, similar. The assessment of the likelihood of confusion: 115.The general legal principles on assessing similar marks for likelihood of confusion under s.18(3) have been conveniently summarized by Deputy High Court Judge Horace Wong S.C. in Guccio Gucci SpA v Gucci [2009] 5 HKLRD 28, at §79 (applying Julius Sämann Ltd. v Tetrosyl Ltd. [2006] FSR 42, at §51):
116.Added to this summary may be the following citation from Decon Laboratories Ltd v TWG Tea Baker Scientific Ltd [2001] RPC 293 at 299, per Pumfrey J (as he then was):
117.I did not understand either counsel to take exception to the summary by the Deputy Judge, or Pumfrey J’s statement. 118.The likelihood of association may arise, Mr Platts-Mill submitted, in three circumstances. I adopt his description of those three circumstances. They are:
It is only the first two types of association, i.e. those which give rise to a likelihood of either direct or indirect confusion, that are sufficient for the purposes of infringement under s 18(3) TMO. 119.It is not necessary for the claimant to prove actual confusion or deception if the mark is in the opinion of the court likely to confuse or deceive. Evidence of actual confusion or deception will comprise very strong evidence that the resemblance between the mark and the sign is so close as to be likely to confuse or deceive. Such evidence consequently will always be relevant, and may be decisive, but the absence of such evidence is rarely decisive. 120.Five witnesses were called who said that they had believed, when they saw the TWG Tea shop in IFC that it had been opened by Tsit Wing. Two were long-time friends of Mr Peter Wong and contacted him about the new shop. It is irrelevant that they are long-time friends of Mr Peter Wong. What is relevant is that, with knowledge of the TWG logo used by Tsit Wing, they were confused by the acronym TWG into believing that the shop had been opened by Tsit Wing. The third was one of Tsit Wing’s bankers who was equally confused, but made no contact with Tsit Wing about the fact at the time. Nothing in the cross-examination of those witnesses leads me to doubt that the confusion described was genuine. 121.The other two were clients of Tsit Wing, one who took supplies of coffee from Tsit Wing, the other who designed and made accessories and promotional items for Tsit Wing. Both knew of the TWG mark, and both believed the new shop in IFC had been opened by Tsit Wing. Their connection with Tsit Wing does not detract from the evidence, but in fact enhances it, demonstrating that confusion can arise in a person familiar with Tsit Wing’s registered mark. 122.Whether or not there is confusion is a matter for the court. Viewing the matter globally, as I am required to do, I am satisfied that the essence of the registered mark is the acronym TWG, and that the use by TWG Tea of that very same acronym as the dominant feature of its sign will inevitably lead to confusion. 123.Mr Baldwin sought to categorise Tsit Wing’s TWG mark as being a coffee mark. It is right that Tsit Wing supplies coffee and TWG Tea does not. It I also right that Tsit Wing supplies a little more coffee than tea. But neither of these facts are sufficient to justify the limitation of Tsit Wing’s TWG mark to a relationship only to coffee. 124.It seems to me that it must be irrelevant that Tsit Wing happens to supply coffee as well as tea. I do not understand the law to be that the holder of a registered mark, if he uses that mark on two different types of goods, somehow loses his rights in respect of one of those types of goods. Equally, that Tsit Wing uses other marks as well as the marks set out in §6 above, should in any way detract from the rights Tsit Wing has in respect of the marks in §6. No authority was cited to say that the use of other marks in addition to the registered mark, the subject of the complaint, meant that the complaint about the use by another of a similar and confusing sign could not be upheld. That is particularly so when the mark, the subject of the complaint, is used as extensively as the evidence established this mark was used. 125.It may well be that TWG Tea uses an elaborately and meticulously sewn teabag, which may be differentiated from the usual types of less expensive paper teabags in use. I do not think that helps TWG Tea. That distinction would not be seen until one opened the box containing the teabags. In respect of tea made with a teabag in, in both cases, one would simply see a cup of tea with the tag of a tea bag hanging from it. It would not be until the drinker withdrew the teabag from the cup, and found the tea bag in question that any difference might be seen. 126.Whether the symbol above the letters TWG in Tsit Wing’s mark are “several simple overlapping oval shapes”, the view adopted by TWG Tea’s PRC trademark attorney, and sought to be advanced in evidence by Mr Wong, or highly stylised coffee beans as some of Tsit Wing’s publicity said, does not matter. I accept Mr Platts-Mills’ submission that they are not a distinctive part of the mark and that the mark would not be remembered for those symbols, but rather for the acronym TWG. The different “get-ups” of the mark and the sign, while being different, are not the matter for which either would be remembered by somebody, when both cases the logo would be orally referred to as TWG. Those different “get-ups” are not sufficient to prevent confusion. 127.Mr Baldwin sought to suggest that the colour element in Tsit Wing’s logos was sufficient to ensure that there would be no confusion. The submission overlooks the fact that Tsit Wing has registered the logo in monochrome, (see§6(2), (4), (5) & (10) above). In those circumstances the notional and fair use by Tsit Wing of its registered mark against the use of offending signs by TWG Tea, covers all colours including no colour. 128.It is no answer for TWG Tea to attempt to rely upon the highly elaborate and elegant “get-up” of its tea shops and advertising. The contention that TWG Tea dealt in a completely “different market segment”, as was sought to be portrayed with the emphasis in the evidence upon the luxury nature of the goods, simply did not stand up. The evidence established that TWG Tea had supplied its tea, with the offending sign, to a very modest pizzeria, “Mist”, in Tai Hang, and an apparently middle range, semi-open-air, restaurant in Singapore, “CM-PB” with an estimated price range for a meal per person of S$21-S$30, (HK$130-HK$190). Although both could be described as “accessible” neither could be described as “luxurious”, not even “accessibly luxurious”. 129.Whilst it is plain that TWG Tea wishes to market its goods in an apparently luxurious manner, and no doubt at an appropriate price, I have no doubt that they are equally perfectly happy to supply to whoever wishes to buy the goods. Having regard to the nature of the two establishments referred to above I very much doubt that either would have been required to have purchased US$5,000 worth of goods as an initial purchase. In any event, there is simply no way that TWG Tea can control the use put by a purchaser of a modest amount of its product. It is highly likely that the owners of “Mist” simply bought a container of tea from the IFC salon and then proceeded to use it in their shop. That they purchased the tea at a retail and not wholesale price is irrelevant. It is only relevant because it shows that TWG Tea, like any retailer, is quite unable to control how its product might be used following sale. 130.TWG Tea has been perfectly happy to supply tea on a retail basis, whether or not they knew the end use, i.e. personal use or commercial use. TWG Tea are quite unable to control the subsequent use of retail sales. Consequently, it cannot be said that the teas will only be available in upmarket establishments. 131.The submission that TWG Tea’s products will not be available for sale in ordinary supermarkets, but only in TWG Tea’s own salons or carefully selected high-end gourmet shops, is simply without any foundation at all. I have no doubt at all that if they were free to do so in Hong Kong, TWG Tea would be perfectly happy to supply its teas to supermarkets in Hong Kong such as Great or CitySuper, where specialty teas can be found. The evidence established that TWG Tea products are sold in CitySuper in Taiwan. 132.None of the foregoing matters were, in my view, sufficient to establish that there was no likelihood of confusion between the two similar marks. Conclusion as to infringement: 133.For the foregoing reasons I am satisfied that TWG Tea has used, in the course of trade or business, a sign which is similar to Tsit Wing’s trademark in relation to goods or services which are similar to those for which it is registered. I am further satisfied that TWG Tea’s use of the sign in relation to those goods or services is likely to cause confusion on the part of the public. 134.I am accordingly satisfied that TWG Tea has infringed Tsit Wing’s registered trade marks shown in §6 above, contrary to the provisions of s 18(3) TMO. Passing off; the elements: 135.The right in respect of passing off is a common law right, deriving from the existence of protectable goodwill based on the use of a mark in business. The elements of the tort comprise goodwill, misrepresentation, and damage to the goodwill. 136.The leading authority establishing the elements of the tort is the Jif case; Reckitt & Colman Products Ltd v Borden [1990] RPC 341 HL. There the elements were described by Lord Oliver at 406:
Goodwill: 137.There can be no doubt at all that Tsit Wing has a very substantial business in which it has extensively used marks including the logo “TWG”. The mark has been used on every invoice issued by Tsit Wing since the rebranding in 2006. There must inevitably have been many thousands of invoices having regard to the very substantial sales achieved by Tsit Wing of both coffee and tea. 138.The TWG logo has been used extensively in documentation such as the Tsit Wing Group annual reports each year since the rebranding. In this respect it is significant to note that the annual reports will have been required by the Singapore Stock Exchange, the 1st plaintiff being a listed company, with those annual reports also going to all shareholders of the company. I have already indicated the extent to which the logo has been placed on tea and coffee supplied by Tsit Wing in 2011, see §§9-10 above. The figures for the previous years are shown to be equally significant and steadily building to the 2011 level. 139.It does not in any way detract from the use of the TWG logos that in various places the company is described in either English or Chinese as “Tsit Wing” or the “Tsit Wing Group”. I accept Mr Platts-Mills submission that the comprehensive use of the logo on food services products, the great bulk of Tsit Wing’s products, is more than sufficient to establish goodwill amongst those classes of the population in Hong Kong who have had cause to purchase Tsit Wing’s goods and to deal with them. 140.The exposure of the logo extends beyond the food services area into fast-moving consumer goods and, to the general public, at events such as trade fairs. 141.Mr Baldwin submitted that the very wide range of different marks, (Tsit Wing has at least 12 other registered marks, usually comprising prominently the acronym “TW”), meant that no goodwill could attach to any of the marks. I reject that submission. The evidence establishes consistent use of the acronym TWG in corporate documentation and on a very substantial proportion of Tsit Wing’s products. It could not be said that Tsit Wing has abandoned the mark. Goodwill will have attached by this continued use, not only to the TWG marks but also to the TW marks. 142.It is right that Tsit Wing began historically as a coffee company, and uses the word “Coffee” within the name of one of the plaintiff companies. It is right too that a significant effort was made by Tsit Wing in marketing coffee through a television series, and that the TWG logo was not present in that series. But none of that detracts from the fact that a very substantial proportion of Tsit Wing’s market is in respect of tea. Its advertising refers to both coffee and tea. 143.I am accordingly satisfied that the first element of the tort of passing off has been established. Tsit Wing has established a goodwill and reputation attached to the goods and services which it supplies in the mind of the purchasing public by association with the identifying TWG acronym. The great bulk of Tsit Wing’s goods and services are offered to the public with that logo and I am satisfied that it would be recognised by the public as distinctive specifically of Tsit Wing’s goods and services. 144.It is not suggested that Tsit Wing did not hold this goodwill at the time TWG Tea opened its retail tea shop in the IFC Mall. That is the relevant time at which the goodwill must be tested: see Cadbury-Schweppes Pty Ltd v The Pub Squash Company Ltd [1981] RPC 429. A misrepresentation: 145.It is beyond argument that TWG Tea represents its goods and services to the public by way of the cartouche logos. Sensibly, neither Mr Bouqdib nor Ms Barnes sought to say that those logos were not important. Indeed, they are the very central identity of TWG Tea’s business. The issue is whether or not that representation constitutes a misrepresentation, whether intentionally or not, if the public are led to believe that the goods and services offered by TWG Tea come from Tsit Wing or a commercially connected entity to Tsit Wing. 146.It is sometimes said that the public must be “deceived” by the representation. The misrepresentation need not be made fraudulently or with any intention to deceive: see The Law of Passing-Off, Wadlow, Sweet & Maxwell, 4th edn., at 5-009. There it is pointed out that when Lord Diplock used the expression “calculated” in Erven Warnik BV [1979] AC 731, (the Advocaat case), he meant likely rather than intended. 147.It does not matter that there may be little or no public awareness of the identity of the proprietor of the brand name: see the Jif case at 406, cited with approval in Re Ping An Securities Ltd (2009) 12 HKCFAR 808 at §17. Consequently, it matters not that Tsit Wing’s logo may be more widely known amongst trade professionals in the food services industry or the fast moving consumer goods industry then amongst the general public. The very substantial nature of Tsit Wing’s business, demonstrated by the annual turnover achieved makes it clear that there will be very substantial trade awareness of Tsit Wing’s marks. 148.Although it is not necessary to show that the plaintiff and the defendant have a common field of activity: see Irvine v Talksport [2002] FSR 60, I am satisfied that in the present case both Tsit Wing and TWG Tea have a common field of activity. Although Tsit Wing does not presently operate cafes they will be able to do so in the future and have done so in the past. TWG Tea operates cafes extensively. Both sell tea for sale at a retail level. It makes no difference that TWG Tea on occasion chooses to sell its tea and a retail basis through boutiques within other premises, such as Harrods, or Dean and Deluca. Whether tea is being sold through such a boutique or from a shelf, it is still retailing of tea. 149.As with the issue of similarity, when considering infringement, the court is not confined to the evidence of witnesses called the trial, but is able to give effect to its own opinion when determining whether or not there has been, or is likely to be deception: Neutrogena at 495-496. 150.In the present case it is no answer for TWG Tea to say that they operate at the “top end” of the market, in luxury goods, whereas Tsit Wing is in a broader, less expensive, part of the retail market. First, it is plain that TWG Tea does not confine itself to the luxury market, as is demonstrated in §§128-131 above. There is no reason at all to say that TWG Tea will not expand into other markets in Hong Kong if free to do so. Indeed, the evidence of Mr Law was that they planned to trade in Hong Kong in the same manner as they do in Singapore, and that the target market in Hong Kong would be quite similar to the target market in Singapore. 151.TWG Tea supplies restaurants in Singapore which Mr Platts-Mills correctly described as a “perfectly decent but not of five-star quality”. That this is so may be seen from the price range of the menus and the getups of both PS Café and Café Hacienda. 152.Emails established that TWG Tea was ready to supply what was described as a “residential clubhouse restaurant” in Wong Tai Sin. It is plain from the emails that if they had been able to do so, TWG Tea would have happily supplied that restaurant. Wong Tai Sin is hardly an area which could be said to be a luxury residential area in Hong Kong. There is nothing to suggest that the residential clubhouse would be of a luxury nature. Had the undertaking not been in place I am sure that TWG Tea would have supplied that establishment. 153.The evidence of actual deception, see §§120-121 above, demonstrates that people who are aware of Tsit Wing’s use of a logo containing the acronym TWG may be deceived into believing that the use by TWG Tea of that acronym constitutes a business operation undertaken by Tsit Wing. The mere fact that the oral and aural description of both entities is by use of the acronym TWG renders confusion and deception inevitable. 154.I am accordingly satisfied that the second element of the tort of passing off, that of a likelihood of deception, has been established. Damage: 155.Although TWG Tea does not presently operate extensively in the food services industry, any operation they might undertake in that industry, whether by boutiques within stores such as Great or CitySuper, or by retail sales by way of the shelf in such stores, diversion of business from Tsit Wing to TWG Tea becomes inevitable. I have already noted that at the present time TWG Tea’s product is made available to CitySuper in Taiwan. There is no reason to suspect that if allowed into Hong Kong, TWG Tea would not supply CitySuper in Hong Kong. 156.With the tort of passing off, the damage may be direct or tangible, as described in the previous paragraph, but also intangible by way of dilution of goodwill: see Dawnay Day v Cantor Fitzgerald [2000] RPC 669, and Och-Ziff Management v OCH Capital [2011] FSR 11. This intangible dilution was described in these terms by Lloyd J in Dawnay Day at 705-706:
157.It is no answer for TWG Tea to say that, unlike a securities company, a vendor and blender of tea is highly unlikely to act reprehensibly. That is particularly so in the present case, having regard to the conduct of TWG Tea in coming to Hong Kong as it did, with an apparently complete disregard for Tsit Wing’s rights, and what Mr Platts-Mills was entitled to describe as the charade surrounding the use of the date 1837. Mr Platts-Mills’ description of TWG Tea’s business as being “not operated on the highest moral level” was, in the circumstances, justified. 158.Tsit Wing has developed its goodwill over a period of 80 years, through three generations of the same family. I accept Mr Platts-Mills’ submission that Tsit Wing should not be subjected to the risks of being associated with a business such as TWG Tea. 159.If TWG Tea is allowed to continue with the use of the acronym TWG in its business there will be dilution of Tsit Wing’s goodwill. 160.I am accordingly satisfied that the said element of the tort of passing off, namely that of damage has been established. 161.TWG Tea are accordingly liable to Tsit Wing in respect of the tort of passing off. Relief: 162.Extensive relief was sought including an injunction restraining TWG Tea from using its marks containing the acronym TWG[12], and passing off it’s business as Tsit Wing’s business; a declaration that TWG Tea has infringed Tsit Wing’s marks, an enquiry into damages and other orders giving effect to those orders. 163.Mr Platts-Mills addressed me briefly on the relief at the conclusion of the submissions. Mr Baldwin asked that TWG Tea be heard on the question of relief if liability was found. I will hear counsel on the relief to be granted in Court at 10 AM on Monday 29 July 2013. 164.The obligation to abide by the undertaking given to the Court of Appeal by TWG Tea will continue until further order of the Court. Costs: 165.Tsit Wing has succeeded in establishing both causes of action. There will be an order nisi that Tsit Wing will have its costs in the action, including all reserved costs, to be taxed on a party and party basis. There will be a certificate for three counsel. If exception is to be taken to that order, I will hear counsel on costs at the same time as I hear any submissions that may be made in respect of relief. 166.I express my gratitude to all counsel, particularly leading counsel, for the very great assistance they afforded me during this trial.
Mr Mark Platts-Mills QC, Ms Winnie Tam SC and Mr Phillips B F Wong, instructed by Deacons, for the plaintiffs Mr John Baldwin QC, and Mr Colin Shipp, instructed by Clifford Chance, for the defendants ANNEX A - CHRONOLOGY OF TRADE MARKS EVENTS
[1] See further §§78-85 below. [2] See Statement of Claim §38. [3] See Defence §31. [4] Ex D5. [5] Bundle D1, p 698, §75. [6] See Transcript, Day 9, p137.21-138.7. [7] “House founded in 1854”. [8] Bundle F7, 4953. [9] International Registration Designating Australia [10] Identical in all relevant respects to s 18(3) TMO. [11] British Sugar Plc v Tsit Wing Robertson & Sons Ltd [1996] RPC 281 [12] A claim that the injunction should extend to the acronym “TW” was abandoned by Tsit Wing. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
, (2)
,
(3)
, (4)
,
(5) 
(6)
,
(7) 
,
(8)
, (9)
.
(2)
.
(4) 
, (the balloon logos). 
” in Classes 29 & 30 (not including tea) in PRC (5337774 & 5337775).
” in Classes 29 & 30 (not including tea) in PRC (5344974 & 5344975).
” in Classes 29 and 30 (not including tea) in PRC (5409037 & 5409038).
” in Class 30 (not including tea) in PRC (5414435).
” on the ground that it is similar to D1’s mark “
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