In the first ever trade mark infringement case before the Hong Kong Court of Final Appeal, Martin Howe QC appeared for the appellants (defendants) leading Doug Clark of the Hong Kong Bar, instructed by Hogan Lovells Hong Kong. Mark Platts-Mills QC appeared for the respondents (plaintiffs) leading Winnie Tam SC (a door tenant of 8 New Square) and Phillips Wong of the Hong Kong Bar, instructed by Deacons.
The claim was for passing off and for trade mark infringement under the Trade Marks Ordinance (Cap. 559), which is largely based on the UK Trade Marks Act 1994. The plaintiffs carried on business of supplying (inter alia) tea and coffee products and owned Hong Kong registered trade marks covering tea and coffee consisting of a device including the letters “TWG”. The defendants, a Singapore group, operated a series of high quality tea salons and boutiques using a series of device marks including the phrase “TWG Tea”, and opened one in Hong Kong which led to the litigation.
The plaintiffs succeeded before the High Court ([2013] HKCFI 1179; HCA2210/2011) and the Court of Appeal. The Court of Final Appeal dismissed the defendants’ further appeal, the leading judgment being given by Gummow NPJ (a retired Justice of the High Court of Australia). Under section 18(3) of the Ordinance, the requirements of “similarity” and “likelihood of confusion” are two separate issues which should be considered separately, unlike under section 10(2) of the UK Act which is worded differently. However, there is a causal connection between “similarity” and “likelihood of confusion”.
The emphasis in some older cases (under the UK Trade Marks Act 1938) on aural (as distinct from visual) comparison of marks reflects “retailing methods of a past age” and may not therefore be applicable in modern days. However, the concurrent findings below of the High Court and the Court of Appeal on likelihood of confusion should be upheld and the appeal dismissed.