15 February, 2016
Hong Kong’s Court of Final Appeal has unanimously found in favour of Tsit Wing (Hong Kong) Company Limited (Tsit Wing) in its long-running and hard-fought dispute with TWG Tea Company Pte Ltd (TWG Tea).
Deacons has continuously acted for Tsit Wing, the largest coffee and tea distributor in Hong Kong, throughout the proceedings. Since 2011, Tsit Wing has been involved in proceedings against TWG Tea, a brand of tea and tea salons which was established in Singapore in 2008, regarding their use of various TWG trade marks in Hong Kong. The case was hard fought throughout and both parties engaged well known IP Queens Counsel from the UK. It remains one of very few IP cases that has reached the Court of Final Appeal in Hong Kong.
Initially, Deacons secured success for Tsit Wing at trial at the Court of First Instance in July 2013 and was successful in both trade mark infringement and passing-off action and secured a rare indemnity costs order against TWG Tea. This matter won “Hong Kong IP Case of the Year 2013,” by respected intellectual property publication, Managing IP.
The case then went to the Court of Appeal in October 2014 where Deacons was again successful in the Appeal. The Defendants then obtained leave to appeal to the Court of Final Appeal on the basis that the case involves fundamental issues that will clarify the state of trade mark law and passing off in Hong Kong. The case was heard by the Court of Final Appeal on 12th and 13th January 2016 and, in a decision handed down on 29th January 2016, the Court unanimously found in our client, Tsit Wing’s, favour and dismissed the appeal.
The Court of Final Appeal was comprised of Chief Justice Ma and Justices Ribeiro, Tang and Fok as well as Justice Gummow, a well-known intellectual property judge formerly of the High Court of Australia (the most senior court in Australia). The landmark decision written by Justice Gummow and endorsed by the remaining judges, considers the development of dilution as a ground of damage in passing off as well as the interpretation of the infringement test of the Trade Marks Ordinance in light of Hong Kong’s international obligations pursuant to TRIPS. The judgment also discusses the weight to be attributed to the aural features of a trade mark in circumstances where other figurative and coloured elements are also present. Overall the Court held that the appeal should be dismissed and ordered costs in Tsit Wing’s favour.
The Deacons team acting throughout was led by intellectual property co-head, partner Charmaine Koo. The team also included senior associate Nina Fitzgerald and associate Theresa Luk.
Charmaine Koo commented: “This is an incredibly positive outcome after years of hard fought litigation. The case clearly demonstrates the importance of a coordinated global strategy both when adopting a trademark as well as in relation to disputes of IP rights, which are increasing global and complex.”
