Twg Tea Company Pte Ltd and Another v. Tsit Wing (Hong Kong) Co Ltd and Others

FAMV No. 6 of 2015

IN THE COURT OF FINAL APPEAL OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

MISCELLANEOUS PROCEEDINGS NO. 6 OF 2015 (CIVIL)

(ON APPLICATION FOR LEAVE TO APPEAL FROM
CACV NO. 191 OF 2013)

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Between:

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DETERMINATION

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Mr Justice Ribeiro Ag CJ:

1.We are satisfied that leave to appeal should be granted under section 22(1)(b) of the Court’s statute on the basis that the following questions of the requisite importance ought to be submitted to the Court for decision, namely:

Question 1: Whether it is correct in law to interpret Section 18(3) of the Trade Marks Ordinance Cap 559 as equivalent in all respects to Section 10(2)(b) of the UK Trade Marks Act 1994, which follows Article 5(1)(b) of European Directive 89/104, and if not, what is the proper approach for determining infringement of a registered trade mark under Section 18(3) of the Ordinance.

Question 2: Whether, in adopting either a global appreciation or step-by-step approach and, in the absence of any finding that the device elements in the marks and signs are negligible or insignificant, the questions of similarities and likelihood of confusion are correctly to be determined, in the case of marks and signs comprising letters of the alphabet and other elements, on the basis that the letters of the alphabet are (as held by the Judge) the “essence” of the marks or (as held by the Court of Appeal) only “at least one dominant feature of the marks” and the only features in the marks and signs “which have trade mark significance”.  (see paragraphs 35, 37, 78 and 83-90 of the Appeal Judgment and paragraphs 114 and 122 of the First Instance Judgment).

Question 3: Whether, in view of the requirement that visual, aural and conceptual similarities of marks and signs be assessed by reference to the overall impression they create, it is correct in law to place any reliance on the adage that “in assessing the distinctive and dominant components in a composite mark, generally speaking words “speak louder” than devices” where the “words” are in fact three letters of the alphabet (and in the case of the Defendants’ signs the additional word “TEA”) and the devices in question are not negligible or insignificant and are visually and conceptually (and in so far as they can be described orally) completely different.  (see paragraphs 30(a) and 78-90 of the Appeal Judgment).

Question 4: Whether it is still correct in law to hold that a “mark registered in black and white is registered in respect of all colours” other than those in which it has been predominantly used.

Question 5: In determining the scope of a registration for the purposes of infringement, where a mark expressly claims specific colours as an element of that mark and is registered in series with the corresponding monochrome version of the mark, does it inevitably follow, or is the Court entitled to hold otherwise, that the expressly claimed colour scheme is “a matter of non-distinctive character which does not substantially affect the identity of the trade mark”. (see paragraph 49 of the Appeal Judgment).

Question 6: Whether mere potential dilution of a trade mark is sufficient damage to a plaintiff under the law of passing off.

2.We refuse leave on Question 7 and on Questions 8 and 9 advanced on the “or otherwise” basis.

3.The appeal will be heard on 12 and 13 January 2016.

Mr Mark Platts-Mills QC, Ms Winnie Tam SC and Mr Philips B.F. Wong, instructed by Deacons, for the Plaintiffs (Respondents)

Mr Martin Howe QC and Mr Douglas Clark, instructed by Hogan Lovells, for the Defendants (Applicants)