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THE COURT OF FINAL APPEAL

Tsit Wing (Hong Kong) Co. Ltd. & Ors


v
TWG Tea Company Pte Ltd & Anor.
FACV No. 15 of 2015
TWG Tea Company Pte Ltd (1st Appellant); The Wellbeing Group (HK)
Company Limited (f.k.a. TWG Tea (HK) Company Limited) (2 nd
Appellant)
Respondents:
Tsit Wing (Hong Kong) Company Limited (1st Respondent); Tsit Wing
International Company Limited (2nd Respondent); Tsit Wing Coffee
Company, Limited (3rd Respondent); TW Caf Limited (4th Respondent)
Hearing Dates:
12 - 13 January 2016
Judges:
Chief Justice Ma, Mr Justice Ribeiro PJ, Mr Justice Tang PJ, Mr Justice
Fok PJ and Mr Justice Gummow NPJ
Counsel for the Appellants:
Mr Martin Howe QC, Mr Douglas Clark
Counsel for the Respondents: Mr Mark Platts-Mills QC, Ms Winnie Tam SC, Mr Philips B F Wong
Subject Matter:
Intellectual property action for infringement of trade marks and
passing off approach to assessment of similarity and likelihood of
confusion between plaintiffs registered marks and defendants signs
whether sufficient damage to sustain action for passing off
Appellants:

The Facts:
The Respondents are part of the Tsit Wing group of companies which has carried on business in Hong
Kong for many years, trading principally as a wholesaler in the supply of coffee and tea products. The 2nd
Respondent owns the Tsit Wing groups trade mark registrations which include, among others, two sets
of trade marks registered in 2006 (see diagram (a) below) which are valid in respect of coffee, tea and
sugar and involve the use of the letters TWG and three overlapping circles of different colours.
The 1st Appellant started operating a business in Singapore under the trade name The Wellness Group
and has been operating under its current name TWG Tea Company Pte Ltd since July 2008. The 2nd
Appellant has since December 2011 been operating a tea salon in Hong Kong at IFC Mall, Central. The
Appellants adopted two signs, a cartouche mark which involved the use of 1837 TWG TEA in the
middle and a balloon mark which involved the use of TWG TEAand PARIS SINGAPORE TEA (see
diagram (b) below).
Diagram (a)

Diagram (b)

Two sets of
registered trade
marks by the
Respondents in
2006

Two of the signs


adopted by the
Appellants

The Respondents brought an action against the Appellants for trade mark infringement contrary to
section 18(3) Trade Marks Ordinance Cap 559 (TMO), and the tort of passing off. The Court of First
Instance (DHCJ Saunders) found the Appellants liable for infringement of the Respondents registered
trademarks and for passing off. The Court of Appeal (Lam VP, Barma and McWalters JJA) dismissed the
Appellants appeal. The Appellants now appeal to the Court of Final Appeal.
The Issues:
This appeal raises six questions of law, as certified by the Appeal Committee in granting leave to appeal,
which relate to various aspects of trade mark law and the law of passing off.
In respect of the claims for trade mark infringement, the questions raised concern: the correct approach
to determining infringement of a registered trade mark under section 18(3) of the TMO; the approach to
determining questions of similarity and likelihood of confusion where the marks and signs comprise
letters of the alphabet and other elements; and the approach to the role of colour in relation to a trade
mark registered in a series including a black and white version of the mark.
In respect of the claim for passing off, the appeal raises the question of whether mere potential dilution
of a trade mark is sufficient damage to a plaintiff.
Decisions of the Lower Courts:
Court

Case Reference

Date of
Judgment

Order

24 July 2013

The
Respondents
trademark
infringement and passing off claims
succeeded.

Court of First Instance


HCA 2210/2011
(DHCJ Saunders)

30 August 2013

Various relief, including injunctions,


granted in the Respondents
favour.

Court of Appeal (Lam VP,


Barma and McWalters CACV 191/2013
JJA)

3 December 2014 Appellants appeal dismissed.

Court of Appeal (Lam VP,


Barma and McWalters CACV 191/2013
JJA)

20 January 2015

Application of extension of time for


leave to appeal refused.

Court of Final Appeal


(Ribeiro Ag CJ, Tang and FAMV 6/2015
Fok PJJ)

20 May 2015

Leave to appeal granted on the


ground of questions of great
general or public importance.

Court of First Instance


HCA 2210/2011
(DHCJ Saunders)

Ma CJ
Ribeiro PJ

Fok PJ

Judicial Bench

Tang PJ

Gummow NPJ