TWG TEA COMPANY PTE LTD & ANOTHER v. TSIT WING (HONG KONG) CO LTD & OTHER

FACV No. 15 of 2015

(ON APPEAL FROM CACV NO. 191 OF 2013)

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JUDGMENT ON COSTS

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The Court:

1.  On 29 January 2016, the Court unanimously dismissed the appeal[1] and made an order nisi that the respondents should have their costs, with liberty to the parties to lodge written submissions on costs.  The respondents seek a variation by way of a certificate for three counsel in this Court.  This is resisted by the appellants.

2.  The practice of the Court on such certificates is well-established, the earlier authorities having been reviewed in Moral Luck Finance Ltd v Law Kin Leung,[2] and HKSAR v Pang Hung Fai (No 2).[3] The following propositions are of present relevance: (i) the grant of such certificates is a matter of discretion; (ii) a certificate may be appropriate in cases involving issues of sufficient importance and complexity; and (iii) the grant of leave to appeal on the ground that the question involved is one of great general or public importance[4] is not in itself enough, a certificate for more than two counsel having to be justified by “something exceptional”.

3.  Certificates for three counsel were granted after trial at first instance[5] and in the Court of Appeal.[6]

4.  The respondents submit that this is a case of substantial importance and complexity and that it falls within the exceptional category.  We agree. 

5.  The argument concerning the test for and proper approach to trade mark infringement required consideration of the interaction amongst the Trade Mark Ordinance; the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights; the United Kingdom Trade Marks Acts 1938 and 1994; and the Directive of the Council of the European Communities of 21 December 1988 to “approximate the trade mark laws of Member States”.  This required an examination of how these instruments evolved as well as the jurisprudence of local, foreign and international courts bearing on them.  The argument had potentially far-reaching consequences and this was the first occasion when such issues reached this Court. Additionally, there were issues of significance regarding the legal effect of a “series registration” and of colour in relation to trade marks; as well as regarding the sufficiency of mere “dilution” of a trade mark as constituting damage for the purposes of passing-off.

6.  This was thus an appeal involving issues of sufficient importance and complexity to justify a certificate for three counsel.  The costs order is varied accordingly.