Intellectual property – trade marks – infringement – plaintiffs’ registered marks and defendants’ signs included letters “TWG” – assessment of similarity and likelihood of confusion – contextual analysis of defendants’ use of infringing marks applied – high degree of similarity – infringement established
Ps were part of the Tsit Wing Group whose principal business, carried on in Hong Kong for a long time, was as a wholesaler of coffee and tea products. It had also expanded to include, inter alia, coffee shops. In 2006, P2 obtained the registration of two trade marks (“Ps’ Marks”) which involved the use of “TWG” and three overlapping circles of different colours (representing coffee beans), and were valid in respect of coffee, tea and sugar. D1–2 were part of The Wellness Group and D1 established itself as a tea shop operator in Singapore and other cities. In 2011, with full knowledge of Ps’ Marks, Ds began operating a tea salon in Hong Kong (the “Tea Salon”). Ds adopted two marks (“Ds’ 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 TEA” and “PARIS SINGAPORE TEA”. Ps brought a successful action against Ds for infringement of trade marks under ss.19(1) and (3) of the Trade Marks Ordinance (Cap.559) and passing off in which the Judge granted an injunction in their favour.Ds appealed.
Held, dismissing the appeal, that:
- In assessing the distinctive and dominant components in a composite mark, generally speaking words “spoke louder” than devices. If the device in a composite mark was too simple to evoke any particular concept for the average consumer, it could not be regarded as the dominant element in the composite mark.
- Subject to the rider of applying a contextual approach, useful guidelines for assessing the likelihood of confusion included:
(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who was deemed to be reasonably well informed, circumspect and observant, but who rarely had the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he kept in his mind, and whose attention varied according to the category of goods or services in question;
(c) the average consumer normally perceived a mark as a whole and did not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by them bearing in mind their distinctive and dominant components, but it was only when all other components of a complex mark were negligible that it was permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark might, in certain circumstances, be dominated by one or more of its components;
(f) beyond the usual case, where the overall impression created by a mark depended heavily on its dominant features, it was possible that an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) if the association between the marks caused the public to wrongly believe that the respective goods or services came from the same or economically-linked undertakings, there was a likelihood of confusion.
- The registration of a mark gave the proprietor the exclusive right to use it as he saw fit. In assessing the likelihood of confusion, the relevant context was the circumstances in which the defendant used its sign. The actual use by the plaintiff of its marks could be a paradigm use of the mark but that was as far as one could go. Thus here, the Court rejected Ds’ submission that although Ps’ Marks were registered without any colour limitation, it should take into account the distinctive colour combination Ps’ Marks had always used. While the similarity in the actual colour of a plaintiff’s mark and the defendant’s signs could be taken into account on the basis of the relevance of enhanced distinctiveness, a difference in colours could not be relied on by the defendant to contend that there was no likelihood of confusion despite the presence of other similarities. Ps’ exclusive right to use the mark was not limited to a particular colour.
- From the viewpoint of an average customer, there was a high degree of similarity between Ps’ Marks and Ds’ Signs at the Tea Salon and between the goods for which Ps’ Marks were registered and the goods and services offered by Ds in using D’s Signs.