Mark Platts-Mills QC instructed by Deacons and John Baldwin QC instructed by Clifford Chance recently appeared in the Hong Kong Court of Final Appeal on appeal from the court of First Instance in Tsit Wing (Hong Kong) Co Ltd & Ors. v TWG Tea Co PTE Ltd and Anor. [2013] HKCFI 1179; HCA2210/2011, Mark Platts-Mills QC acting for the claimants and John Baldwin QC acting for the defendants. The case concerned alleged trade mark infringement and passing off by the defendants through their use of the sign “TWG” both alone and as part of a figurative mark in relation to the sale of tea and tea related products. The claimants owned a number of figurative marks which incorporated the letters “TWG” registered inter alia for tea and coffee. The defendants sought to defend their use on the basis that the marks used were not identical or confusingly similar, and on the basis of an own name defence, however the own name defence was later abandoned during the course of the trial.
The judge rejected the evidence of the defendants that they were unaware of the claimants’ mark despite it having been cited against them in a trade mark application in the US, and was highly critical of the defendants’ witness Mr Law due to the contradictory statements he had made in various proceedings before different countries’ trademarks registries. Following Mark Platts-Mills QC’s cross examination of the witnesses, the judge was unwilling to place any weight on the defendants’ survey evidence or their evidence from witnesses as to non-confusion. However the judge declined to make any finding as to the dishonesty of the defendants’ actions in launching in Hong Kong.
The judge went on to hold that the marks were similar and that this would inevitably lead to confusion, and accordingly that the marks had been infringed by the defendants. He similarly held that all the necessary elements of passing off were met.
Ms Winnie Tam SC, a door tenant at 8 New Square, appeared with Mark Platts-Mills together with Mr Philips Wong of the Hong Kong Bar.