TSIT WING (HONG KONG) CO LTD AND OTHERS v. TWG TEA CO PTE LTD AND ANOTHER

TSIT WING (HONG KONG) CO LTD AND OTHERS v. TWG TEA CO PTE LTD AND ANOTHER

The court granted comprehensive injunctive and ancillary relief tailored to Tsit Wing’s successful findings of trade mark infringement under s 18(3) TMO and passing off, limited the defendants' proposed broad formulations, fixed transitional periods (chiefly 60 days from 30 August 2013 for implementation, with 14 days to withdraw HK trade mark applications and 35 days for Norwich-style discovery), authorized plaintiffs to act if defendants fail to comply, permitted limited delivery up and required affidavits on oath, allowed specific discovery for assessment of profits/damages and release from implied undertaking for use abroad, and awarded indemnity costs because the defendants’...

Citation
TSIT WING (HONG KONG) CO LTD AND OTHERS v. TWG TEA CO PTE LTD AND ANOTHER
Parties
1st Plaintiff: Tsit Wing (Hong Kong) Company Limited; 2nd Plaintiff: Tsit Wing International Company Limited; 3rd Plaintiff: Tsit Wing Coffee Company Limited; 4th Plaintiff: TW Café Limited; 1st Defendant: TWG Tea Company Pte Ltd; 2nd Defendant: TWG Tea (HK) Company Ltd
Court
Court of First Instance
Jurisdiction
Hong Kong
Judgment Date
30 August 2013
Case Number
HCA2210/2011
Procedural Posture
Trademark Infringement and Passing Off (civil) / Post Trial Reserved Judgment on Relief and Costs (decision on Injunctions, Discovery and Costs)
Outcome
Judgment in favour of plaintiffs (Tsit Wing) on relief and costs; injunctions and ancillary orders granted; indemnity costs awarded to plaintiffs; certificate for three counsel granted
Legal Topics
Infringement Under S 18(3) Trade Marks Ordinance Cap 559, Passing Off Remedies, Scope and Wording of Injunctions, Delivery Up and Removal Orders, Norwich Pharmacal Discovery, Indemnity Costs, Account of Profits Vs Damages, Website Related Restraints
Source Language
EN
Trade Marks Passing Off Civil Litigation Costs Injunctions Discovery/norwich Pharmacal Infringement Under S 18(3) Trade Marks Ordinance Cap 559 Passing Off Remedies Scope and Wording of Injunctions +5 more

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Parties

Tsit Wing (Hong Kong) Company Limited

1st Plaintiff

Tsit Wing International Company Limited

2nd Plaintiff

Tsit Wing Coffee Company Limited

3rd Plaintiff

TW Café Limited

4th Plaintiff

TWG Tea Company Pte Ltd

1st Defendant

TWG Tea (HK) Company Ltd

2nd Defendant

Procedural Posture

Trademark Infringement and Passing Off (civil) / Post Trial Reserved Judgment on Relief and Costs (decision on Injunctions, Discovery and Costs)

Legal Issues

  1. 1 Proper scope and wording of injunction restraining defendant's use of marks
  2. 2 Extent of injunction against passing off and whether it should include similar signs
  3. 3 Appropriate delay before injunction takes effect

Ratio Decidendi

The court granted comprehensive injunctive and ancillary relief tailored to Tsit Wing’s successful findings of trade mark infringement under s 18(3) TMO and passing off, limited the defendants' proposed broad formulations, fixed transitional periods (chiefly 60 days from 30 August 2013 for implementation, with 14 days to withdraw HK trade mark applications and 35 days for Norwich-style discovery), authorized plaintiffs to act if defendants fail to comply, permitted limited delivery up and required affidavits on oath, allowed specific discovery for assessment of profits/damages and release from implied undertaking for use abroad, and awarded indemnity costs because the defendants’...

Court Disposition

Judgment in favour of plaintiffs (Tsit Wing) on relief and costs; injunctions and ancillary orders granted; indemnity costs awarded to plaintiffs; certificate for three counsel granted

Orders

  • Permanent injunction restraining defendants from using the marks found to infringe and from otherwise passing off in relation to plaintiffs’ relevant business, approved in wording in plaintiffs’ draft but excluding the phrase 'or any of them' and limited to confusingly similar signs as specified
  • Injunction to take effect 60 days from 30 August 2013 (transitional period granted to defendants)