facv 15/2015 tsit wing (hong kong) co. ltd. & ors

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IP\NFITZG\ .. \08098586.doc

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

2


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

17


(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-

21


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

22


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)).

23


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


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


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


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


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


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


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


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


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


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


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


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


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

36


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


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


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


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


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


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).

http://login.westlaw.com.hk/maf/wlhk/app/document?src=doc&linktype=ref&&context=5&crumb-action=replace&docguid=IC7A6E7C0E42811DA8FC2A0F0355337E9

42


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


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


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

45


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

46


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)

47


Photograph (2): Brochure for D1’s tea (HCA 2210/2011: F4/4373b; CACV 191/2013: I1/11/7759)

48


Photograph (3): Tea counters in Taiwan (HCA 2210/2011: F4/4371; CACV 191/2013: E2/29/4595)

49


Photograph (4): Tea counters in Taiwan (HCA 2210/2011: F4/4373; CACV 191/2013: E2/29/4597)

50


Photograph (5): Insert with Paris Singapore tea (See similar HCA 2210/2011: E11/3140; CACV 191/2013: D9/178/3202-3204)

51


Photograph (6): Reverse of Photograph (5) (See similar HCA 2210/2011: E11/3141; CACV 191/2013: D9/178/3202-3204)

52


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))

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Photograph (10): Back of cardboard slip for box in which Ds’ tea was sold (same reference as Photograph (7))

facv 15/2015 tsit wing (hong kong) co. ltd. & ors

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