Déjà vu? You look familiar
The Defendants are TWG companies. TWG stands for “The Wellness Group” and is a group headquartered in Singapore with business operations in the spa business, tea and spa products. The 1st Defendant TWG Tea Company Limited characterises itself as an international luxury tea company operating tea boutiques/counters and salons at various cities. Both the Plaintiffs and the Defendants have business operations overseas, and the marks of both groups coexist in the People’s Republic of China, Taiwan and Singapore.
The trademark dispute began in Hong Kong when the Defendants expanded into Hong Kong in late 2011. They opened their first tea salon in Hong Kong at the International Finance Centre (“IFC”) displaying their marks. The Plaintiffs’ marks consist of “TWG” within an oval device with “1837” and “Tea” written above and under it respectively, and certain French and English descriptions in smaller print surrounding the oval device. The Defendants filed their application to register their trade marks with the Registry in late 2011. One of the classes of goods they applied for was Class 30 in relation to tea beverages and various assortments of desserts, which the Plaintiffs have also registered their “TWG” marks for.
Once the Plaintiffs discovered that the Defendants were planning to enter the Hong Kong market, they commenced a High Court action against the Defendants for trademark infringement and/or passing off and sought an interlocutory injunction against the Defendants restraining them from using the marks on the basis that they are similar to the Plaintiffs’ marks which also contained the acronym TWG. In addition, they filed an application in the Registry to oppose the Plaintiffs’ application. On the other hand, the Defendants have also filed revocation proceedings in the Registry against the Plaintiffs’ registrations.
The battle begins
For passing off, the Plaintiffs have to prove there was goodwill or reputation in Hong Kong in their business and that the Defendants, by adopting their marks, had made a misrepresentation which would mislead the public into thinking that the Defendants’ goods or services were the Plaintiff’s, which results in damage or likely damage to the Plaintiffs. Generally speaking, it is more difficult to make out a case of passing-off when compared to trade mark infringement since it is not sufficient to merely point to similarity between the marks. The Plaintiffs have to further establish their goodwill and actual or likely damage suffered.
The thorny issues
The Defendants sought to resist the Plaintiffs’ interlocutory injunction application (and subsequently, to appeal against the interlocutory injunction granted) in the following ways. Firstly, they disputed the Plaintiffs’ claims that their reputation vested in the name “TWG” as opposed to the names “Tsit Wing” and “TW”. The Defendants adduced evidence of non-use of the TWG marks in the Plaintiffs’ business operations after 2010. The Defendants asserted that they operated in a different sphere when compared to the Plaintiffs and portrayed themselves as a luxury tea business with plans of global expansion to dispute likelihood of confusion with the Plaintiffs. Further, the Defendants adduced Hong Kong newspaper reports on their tea business before the launch of their IFC tea salon to establish that they had acquired goodwill and reputation internationally which had a spill-over effect in Hong Kong as well.
Please come back for our next issue for the result of this brewing battle.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2013