Every now and then a trade mark case captures the imagination, sometimes because of its particular facts, sometimes because of the law involved.  With Tsit Wing v TWG Tea, it’s a bit of both - plus the fact that the judgment gives an interesting insight into the mentality of the Hong Kong courts.  

The case involves a long established Hong Kong tea manufacturer, Tsit Wing, and the owner of luxury Singaporean tea brand TWG, created in 2008. The judgment applies established legal principles, but it also contains some useful wisdom for trade mark owners, and perhaps for all litigants. 

The story in brief

The Plaintiff companies belong to the Tsit Wing group, which has carried on business in Hong Kong since 1932, largely as wholesalers of coffee and tea products, but also, more recently, distributing branded tea and coffee machines and supplying instant beverage products to supermarkets.  In 2006, they registered these two trade marks in relation to coffee, tea and sugar:

Click here to view image.

Click here to view image.

Prior to 2006, a different mark had been used.  It included only the letters TW, not TWG.  And after 2006, although they continued using the registered marks, the Plaintiffs made perhaps more prominent use of another mark that included only the letters TW.

The Defendants are part of The Wellness Group, which was established in Singapore in 2008 with the aim of developing a top end, international luxury tea brand. The idea had arisen from a meeting between Manoj Mohan Murjani, a Singaporean based businessman, and Taha Bioqdib, a Frenchman of Moroccan descent, who at the time was working with the prestigious French tea house, Mariage Freres, in Paris. The company they established adopted a brand that featured prominently the letters TWG, as well as the year 1837 (see below). The reference to the year 1837 was included, according to a company spokesman, as a tribute to the year the Singapore Chamber of Commerce was founded.

Click here to view image.

The company expanded rapidly and in 2011 opened a tea salon in the prestigious IFC Mall in Hong Kong, after having sought, unsuccessfully, to register its TWG mark there.  Its trade mark application had been successfully opposed by Tsit Wing.   

Tsit Wing then brought trade mark infringement and passing-off proceedings, succeeding both at first instance, and again before the Court of Appeal.

At the time of writing, TWG does not appear to have lodged an appeal.

The decision

The Court of Appeal upheld the decision of the lower court, finding that the Judge had applied the correct principles of law in determining the similarity of the marks in question and the similarity of the goods in relation to which the Plaintiffs’ marks had been registered and the Defendants’ mark used.

It rejected the Defendants’ argument that, when determining the likelihood of confusion, account should be taken of the colour of the mark that had been actually used by the Plaintiff. “The exclusive right of the Plaintiff in respect of the mark embraces its use in whatever colour scheme the Plaintiff deems fit”.

The preliminary Judge’s award of damages on an indemnity basis was upheld.

Some do’s and don’ts for litigants

The judgments contain a number of important reminders for litigatants, including the following.

  1. Never be deceptive in running your case - always be open and honest with the Court.  Here, the first instance Court had awarded indemnity damages, finding that the Defendants “had challenged an old established firm with an impeccable business record … [and done so] in a deceitful manner by hiding … information that would have made it plain that their case bordered upon hopeless”.  The Court of Appeal saw no reason to interfere with the damages award.
  2. Where you are operating in more than one jurisdiction, it’s important to have a global strategy.  Make sure you are not arguing one thing in one jurisdiction and another in another jurisdiction.
  3. Where you rely on survey evidence make sure that appropriate standards are met.  Usually, this will involve appointing an expert in market research and undertaking an appropriate and sufficiently extensive survey. Here, the Defendant had relied on a survey conducted by two employees of its legal advisers. The Court was unable to accept the survey results as relevant evidence of confusion.