TWG Tea appealed to the Court of Appeal but the appeal was dismissed subject to modification of the terms of the injunction restraining trade mark infringement. TWG Tea subsequently obtained leave to appeal to the Court of Final Appeal (the “CFA”). The CFA handed down its judgment on 29 January 2016, which dismissed the appeal.
Mere Dilution Insufficient to Constitute Passing-Off
Trade Mark Infringement
“A person infringes a registered trade mark if (a) he uses in the course of trade or business a sign which is similar to the trade mark in relation to goods or services which are identical or similar to those for which it is registered; and (b) the use of the sign in relation to those goods or services is likely to cause confusion on the part of the public.”
Dissimilarity of marks not at issue
“Essential” or “dominant” features against context
The CFA rejected this argument, because when applying section 18(3), it cannot be erroneous in assessing “similarity” to consider if there be any striking features of the mark or sign which appear “essential” or “dominant”, but doing so without disregarding the entirety of the mark or sign or stripping it of its context, including evidence of what happens in the particular trade. The Balloon signs had never been used on its own, so an average customer was only taught to place great significance on the “TWG” instead of the Balloon signs. On the other hand, the coloured versions of Tsit Wing’s registered marks were registered together with corresponding monochrome versions as a series of trade marks. This indicated that the presence of colours in Tsit Wing’s registered marks should be regarded as a matter of non-distinctive character which did not substantially affect the identity of the trade mark.
Visual comparison already made
In conclusion, the CFA held that the trial judge and the Court of Appeal did not make any error of law in their approaches to determine questions of similarity and likelihood of confusion. The appeal was dismissed.
On passing-off, the Judgment confirmed that the foreign concepts of “dilution” and “unfair competition” are irrelevant. On trade mark infringement, it implied that the higher court is unlikely to interfere with the lower court’s findings on the questions of similarity and likelihood of confusion, if the latter has considered: (1) striking features of the mark or sign which appear “essential” or “dominant”, and (2) the entirety of the mark or sign, without stripping the mark or sign of its context.
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 © 2016