Trade Marks - Wang Zeng International Ltd v Bing Bing Foods Ltd

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Melissa Clarke)  Wang Zeng International Ltd v Bing Bing Foods Ltd and others [2026] EWHC 360 (IPEC) (20 Feb 2026)

This was an action for trade mark infringement and a counterclaim for revocation or invalidation of the claimant's marks.  The action and counterclaim came on for trial before Her Honour Judge Melissa Clarke on 17 and 18 Nov 2025.  By para [122] of her judgment in Wang Zeng International Ltd v Bing Bing Foods Ltd and Others [2026] EWHC 360 (IPEC), which she handed down on 20 Feb 2026, the learned judge dismissed the counterclaim and found for the claimant on the claim.

The Parties

The claimant and first defendant were private companies incorporated in England and Wales with limited liability. In her judgment, Judge Melissa Clarke sometimes referred to the claimant as WZI ("Wang Zeng International Limited") and the first defendant as BBF ("Bing Bing Foods Limited").   Both companies imported and resold in the United Kingdom Chinese and other Asian fruit and vegetables.  The second defendant, Mr Bingtao Wang, was the only shareholder and director of the first defendant, and the third defendant, Mr Navdeep Singh Sohi, was its company secretary.

The Marks

The claimant was the registered proprietor of the following marks:

The Claim

The first defendant admitted that it had imported, exposed, offered for sale, put on the market and stocked for those purposes fruit products under and by reference to the following signs: 

• "Mountain Pear", 
• " ", and
• "Yulu Fragrant Pear" and "Yu Lu Fragrant Pear".

The first defendant had also used the "Mountain Pear", "" and "Yulu Fragrant Pear" signs in relation to fresh fruit and raw fruit without the claimant's consent. It had also used those signs on labelling, packaging and promotional materials for its products.

The Defence

The defendants denied infringement on the ground that their use of the above signs was likely to affect the essential functions of the claimant's marks. They relied on s.11 (2) (b) of the Trade Marks Act 1994 on the basis that the first defendant's signs were wholly descriptive names of pear varieties and that their use was in accordance with honest practices in industrial and commercial matters.  They counterclaimed for revocation of all the claimant's marks under s.46 (1) (c) of the Act because they were or had become generic.  Alternatively, they sought a declaration that the marks be declared invalid under s.47 (1) because they were unregistrable under s.3 (1) (b), (c) or (d) or had been registered in bad faith under s.3 (6). 

Procedural History

The claimant issued its claim form on 18 Dec 2024.  It alleged that the first defendant had infringed trade mark numbers UK3449222, UK3 449223 and UK3671862 under s.10 (1), (2) and (3) of the Trade Marks Act 1994 and passed off its goods as and for the claimants and that the second and third defendants were liable as joint tortfeasors.  It claimed declarations, injunctions, delivery up of infringing goods, an inquiry as to damages or an account of profits, publication of the judgment and costs.  At the case management conference on 7 July 2025,  HH Judge Hacon held that the claims under s.10 (2) and (3) and the action for passing off did not pass the cost-benefit test.   

Issues

He also approved the following list of issues to be tried:

"Validity

1. Whether at 5 December 2019 ("Relevant Date 1") or any other material time, Mark 1 and Mark 2 consisted exclusively of signs or indications which may have served in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods and services for which the said signs were registered
2. Whether at relevant date one or at any other material time, Mark 1 and Mark 2 were devoid of distinctive character for the goods for which the said signs were registered.
3. Whether at Relevant Date 1 or any other material time, Mark 1 and Mark 2 consisted exclusively of signs or indications which have become customary in the current language for the goods for which the said signs were registered.
4. Whether at 22 July 2021 ("Relevant Date 2") or at any other material time, Mark 3 and Mark 4 consisted exclusively of signs or indications which may have served in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods and services for which the said signs were registered.
5. Whether at Relevant Date 2 or any other material, time, Mark 3 and Mark 4 were devoid of distinctive character for the goods and services for which the said signs were registered.
6. Whether at Relevant Date 2 or any other material time, Mark 3 and Mark 4 consisted exclusively of signs or indications which have become customary in the current language for the goods and services for which the said signs were registered.
7. Accordingly, whether C's Marks or any of them were registered in breach of ss. 3(1)(b), (c) or (d) TMA.
8. If registered in breach of ss.3 (1) (b), (c) or (d) TMA, whether C's Marks in consequence of use which has been made of them, have after registration acquired a distinctive character for the goods and services registered.
9. Whether C's Marks, in consequence of acts or inactivity of WZI, have become the common name in the trade for the goods and services registered.
10. Whether the applications for the registrations of C's Marks were made in bad faith in breach of s.3 (6) TMA.
11. Accordingly, whether C's Marks are or were validly registered in accordance with s.47(1) and/or s.46 (1) (c) TMA.
    
    Infringement
    
    General & s.10 (1) TMA
    
    
12. Whether the use of the Alleged Infringing Signs by the Defendants is liable to affect the functions of C's Marks, including the origin and advertising functions.
    
    s.11(2) (b) TMA
    
    
13. Whether the use of the Alleged Infringing Signs by the Defendants is of signs or indications which are not distinctive or which concern the kind, quality, intended purpose, geographical origin and other characteristics of the goods used.
14. Whether the use of the Alleged Infringing Signs by the Defendants is in accordance with honest practices in industrial and commercial matters.
15. Accordingly, whether the defendants have a defence in accordance with s.11 (2) (b) TMA.
    
    Primary Infringement and Joint Tortfeasance
    
    
16. Whether Mr Bingtao Wang and Mr Sohi are primary infringers in relation to the alleged acts of trademark infringement.
17. Whether Mr Bingtao Wang and Mr Sohi acted in common design with and or directed, procured or authorised the acts of BBF.
18. Whether Mr Bingtao Wang and Mr Sohi had knowledge of the essential facts which make the acts done wrongful in accordance with Lifestyle Equities and Ahmed [2024] UKSC 17.
19. Accordingly, whether Mr Bingtao Wang and Mr Sohi are jointly and severally liable for the actions of BBF."

Trial

At trial, Judge Melissa Clarke discussed the witnesses, considered the relevant law and determined the abive issues.   She took the counterclaim first.   After finding that the claimant's marks were validly registered, she turned her attention to whether they had been infringed under s.10 (1) of the Trade Marks Act 1994.   On finding that they had been, she considered whether the second and third defendants were joint tortfeasors.  She held that the second defendant was liable but not the third.

The Relevant Law

Invalidity

The judge reviewed s.3 (1), s. 47 (1) and s.72 of the Trade Marks Act 1994.   She noted that s.72 provides:

"In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register), the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration."

She directed herself at para [52]:

"It follows from registration being prima facie evidence of validity pursuant to s.72 TMA, that the burden is on the Defendants to satisfy the court to the civil standard that a reason or reasons for a declaration of invalidity exist under any of these sections as at the relevant date for each registration, being the filing date for that registration. The burden then moves to WZI to satisfy the court to the same standard that each of C's Marks has acquired distinctive character either at the filing date per the proviso to s.3 (1) TMA, or by the date of issue of the invalidity claim (being in this case the date the Defendants' counterclaim date was initially filed, being 30 January 2025) by the proviso to s.47 (1)."

Distinctiveness and descriptiveness

Her Honour referred to her judgment in Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC) (4 Dec 2025), which I discussed in Trade Marks and Passing Off - Dryrobe Ltd v Caesr Group Ltd. on 31 Dec 2025.  That case dealt with with law relating to distinctiveness under s.3 (1) (b) and descriptiveness under s.3 (1) (c) with particular reference to Mr Justice Arnold's judgment in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2013] FSR 29, [2012] EWHC 3074 (Ch) upon which the claimant relied.  The claimant cited  para [18] of the judgment in Case C-104/00 P DKV Deutsche Krankenversicherung AG v OHIM and para [41] of the judgment in Case C-329/02 P SAT1 v OHIM to support the principle that a sign must be wholly devoid of distinctive character for a mark to be refused for the purposes of s.3 (1) (b):

"Registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings".

The claimant submitted that the test was not whether there was any element of imagination or artistic creativity in the sign, but whether it was "wholly" devoid of any distinctive character.

The claimant also relied on Mrs Justice Asplin's endorsement at para [259] of her judgment in British Sky Broadcasting v Microsoft [2013] EWHC 1826 (Ch) of the General Court's dicta in Lissotschenko v OHIM that arts 7 (1) (b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance) OJ L 78, 24.3.2009, pp. 1–42 will be satisfied only where there is a "sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics".

Generic Signs

In relation to the counterclaim that the claimant's marks were invalid because they consisted exclusively of signs or indications that had become customary in the current language or in the bona fide and established practices of the trade within the meaning of s.3 (1) (d) of the Act, Judge Melissa Clarke directed herself that the court must carry out its assessment as at the date of filing of that trade mark.  She noted that the General Court had said in paras [49] to [52]  of its judgment in T-322/03 Telefon & Buch Verlagsgesellschaft GmbH v EUIPO that such an assessment must be carried out firstly by reference to the goods and services in respect of which the relevant mark was intended to be (or in the case of an invalidity counterclaim, was) registered, and secondly, on the basis of the target public's perception of the mark. Para [50] indicated that the latter must be assessed by "taking into account the expectations which the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is presumed to have in respect of the type of goods in question." 

The judge added that the perception of "the trade" was relevant in this context because the claimant's sales were made to businesses such as wholesalers and supermarkets, rather than directly to consumers.  The claimant relied on paras [23] to [25] of Case C-371/02  Björnekulla Fruktindustrier AB v Procordia Food AB where the Court of Justice replied to a request for a preliminary ruling as to who are "the relevant class or classes of persons for determining whether a trade mark has become the common name in the trade" in the following terms:

"[23] If the function of the trade mark as an indication of origin is of primary importance to the consumer or end user, it is also relevant to intermediaries who deal with the product commercially. As with consumers or end users, it will tend to influence their conduct in the market.
[24]  In general, the perception of consumers or end users will play a decisive role. The whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it.
[25] Accordingly, the relevant circles comprise principally consumers and end users. However, depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration."

Judge Melissa Clarke said that the Court of Justice had addressed what it called a "clear overlap" between descriptiveness and being customary in the trade in Case C-517/99 Merz & Krell at para [35]:

"It must first of all be observed that, although there is a clear overlap between the scope of Articles 3 (1)(c) and 3 (1) (d) of the Directive, marks covered by Article 3 (1) (d) are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered."

Acquired Distinctive Character

As she had discussed Société des Produits Nestlé SA v Cadbury UK [2017] EWCA Civ 358 and Case C-108/97 Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor Walter Huer & Franz Attenberger [1999] ECR I-2779, [2000] Ch 523, upon which the claimant relied, the learned judge cited the following paragraphs of her judgment in Dryrobe:

"[91] The Claimant relies on the guidance of Arnold J (as he then was) at [57] of Société des Produits Nestlé SA v Cadbury UK [2016] EWHC 50 (Ch), [2016] affirmed by the Court of Appeal at [16]-[22] and [52] of [2017] EWCA Civ 358, [2017] FSR 34. The Defendant cites Arnold J (as he still was) in Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch), [2019] ETMR 4 at [72]-[76]. These cases summarise in guidance to the court the law deriving from the authorities referred to within them, including, in particular, Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor Walter Huer & Franz Attenberger Case C-108/97 [1999] ECR I-2779, [2000] Ch 523 and Koninklijke Philips Electronics NV v Remington Consumer Products Limited Case C-299/99 [2002] ECR I-5475. That is that, in assessing whether a trade mark has acquired distinctive character, it must make an overall assessment of the relevant evidence which includes the nature of the mark itself (including that it does or does not contain an element descriptive of the goods or services for which it has been registered), but may include: (i) the market share held by goods bearing the mark; (ii) how intensive, geographically widespread and long-standing the use of the mark has been; (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor; (v) evidence from trade and professional associations (I pause to note there is none in this case); (vi) where the court has particular difficulty in assessing the distinctive character, an opinion poll (again, there is none in this case).
[92] The assessment is again made through the eyes of the average consumer.
[93] If on the basis of that assessment, the court finds that the relevant class of persons, or at least a significant proportion of them, identifies goods as originating from a particular undertaking because of the trade mark, (in other words that the trade mark itself is fulfilling the origin function) then it has acquired sufficient distinctiveness to meet the requirements of registration/defend against a finding of invalidity and an order for revocation."

She also mentioned Lord Justice Kitchin's guidance as to the requisite perception of a mark by consumers at [82] of his judgment in Nestlé:

"Perception by consumers that goods or services designated by the mark originate from a particular undertaking means they can rely upon the mark in making or confirming their transactional decisions. In this context, reliance is a behavioural consequence of perception."

Revocation of Registration

The judge referred to s.46 (1) (c) of the Trade Marks Act 1994 which provides:

"The registration of a trade mark may be revoked on any of the following grounds—
.........
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered ....."

She said that it covers a situation in which a previously distinctive trade mark which has functioned as an indication of origin, has developed into a generic name and so ceased to perform that function.  She added that Advocate General Léger had described this as "the converse situation" to one in which a sign has acquired a distinctive character which it did not originally have in para [48] of his opinion in Case C-371/02  Björnekulla Fruktindustrier ECLI:EU:C:2003:615.

She mentioned Richard Arnold QC's guidance in Hormel Foods v Antilles [2005] EWHC 13 (Ch), [2005] ETMR 54 that: 

(i) it is sufficient if a mark has become a common name in the trade. It does not have to be the common name in the trade; 

(ii) the proprietor's acts or inaction need not be the sole cause of the mark becoming generic, it is sufficient to show that they are a cause; and 

(iii) a proprietor who registers a highly descriptive trade mark "bears a heavier burden to take steps to prevent it becoming a common name than one who registers an inherently distinctive mark".

She directed herself at para [64] of her judgment that whether or not a trade mark has become truly generic, and whether a cause is the acts or inactivity of the proprietor of the mark, are matters of fact to be determined in every case.  Referring to para [85] of Mr Justice Warren's judgment in Rousselon Freres et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch), [2008] RPC 30, she added that the evidence must be cogent.

Average Consumer

The judge noted that it was necessary to identify the average consumer, from whose perspective the assessment of distinctive character or whether a sign consists exclusively of indications of characteristics of the goods must be assessed for the purposes of s.3 (1) (b) and s.3 (1) (d) of the Trade Marks Act 1994.  She found that the average consumer is just a member of the public who buys everyday goods and services at para [65].

Issue 1: Whether at 5 December 2019 (Relevant Date 1) or at any other material time, Signs 1 and 2 consisted exclusively of signs or indications which may have served, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods for which Signs 1 and 2 were registered

Signs 1 and 2 were identical to Marks 1 and 2, which are identified below.   "Relevant Date 1"  was the date on which the claimant applied to register  Marks 1 and 2.   Although she did not mention s.72 of the Trade Marks Act 1994 or para [52] of her judgment in this context, the judge clearly had them in mind in saying that the burden was on the defendants in relation to this issue.  She found that the defendants were unable to discharge that burden.

Issue 2: Whether at Relevant Date 1 or any other material time, Mark 1 and Mark 2 were devoid of distinctive character for the goods for which the said signs were registered

Marks 1 and 2 were trade mark numbers UK3449222 and UK3449223.    The judge concluded that the s.3 (1) (b) defence was not being pursued by the defendants in relation to any of the claimant's marks on any different basis to the arguments relied on in relation to Issue 1, and so the answer to Issue 2 was 'No'.

Issue 3: Whether at Relevant Date 1 or any other material time, Mark 1 and Mark 2 consisted exclusively of signs or indications which have become customary in the current language for the goods for which the said signs were registered

According to the judge, there was no credible evidence before her that at 5 Dec 2019 or at any time before that date, MOUNTAIN PEAR and "山梨" were customary in the language for fresh fruit.

Issue 4: Whether at 22 July 2021 ("Relevant Date 2") or at any other material time, Mark 3 and Mark 4 consisted exclusively of signs or indications which may have served in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods and services for which the said signs were registered

Marks 3 and 4 were trade mark numbers UK3671862 and UK3671882 respectively, and "Relevant Date 2" was the date on which the claimant applied to register those marks.   

The Defendants submitted that "YU LU FRAGRANT PEAR" and "" were generic or descriptive names of a Chinese pear variety and, as such, indicated the kind of goods and services for which Mark 3 and Mark 4 had been registered. They relied on various publications, but none pre-dated Relevant Date 2.  

The judge accepted the claimant's submission that it was for the defendants to satisfy the court that it was reasonable to believe that the average consumer would recognise "YU LU FRAGRANT PEAR" and ""at Relevant Date 2 as a description of the kind of goods and services for which those marks are registered or that there was a sufficiently direct and specific relationship between those marks and the goods in question to enable the average consumer "immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics".  The claimant submitted that the defendants could not do that because YU and LU are a transliteration of the words "jade" and "weather", which have nothing to do with pear varieties.   

The judge accepted the claimant's submission and held that the answer to Issue 4 was "No".

Issue 5: Whether at Relevant Date 1 or any other material time, Mark 3 and Mark 4 were devoid of distinctive character for the goods for which the said signs were registered

The defendants made no submissions in relation to the distinctive character of any of the claimant's marks other than on the question of descriptiveness, so the answer to Issue 5 was 'No

Issue 6: Whether at Relevant Date 2 or any other material time, Mark 3 and Mark 4 consisted exclusively of signs or indications which have become customary in the current language for the goods and services for which the said signs were registered

The judge found no evidence that "YU LU FRAGRANT PEAR" and "" were customary in the language for the specified goods before 22 July 2021.  The answer was therefore "No".

Issue 7: Accordingly, whether C's Marks or any of them were registered in breach of ss. 3 (1) (b), (c) or (d) TMA

Because of Her Honour's answers to the first 6 issues, the answer to the seventh was "No".

Issue 8: If registered in breach of 3 (1) (b) (c) or (d) TMA, whether C's Marks in consequence of use which has been made of them, have after registration acquired a distinctive character for the goods and services registered

In view of the judge's answers to the previous issues, Issue 7 fell away.

Issue 9: Whether C's Marks, in consequence of acts or inactivity of WZI, have become the common name in the trade for the goods and services registered

The judge held that the date for determining whether the claimant's marks had become the common name of the trade was the date of the counterclaim, namely, the 30 Jan 2025.  She also said that the assessment had to be carried out from the point of view of the general public and that the burden was on the defendants.   

They submitted that the claimant's marks had been "used for years by importers, wholesalers, retailers and consumers as product descriptions for those varieties", and they relied on various materials to make good that submission.  

These were considered by the judge.   She concluded that there was no cogent evidence, as required by Rousselon v Horwood, to support the defendants' case on the issue. In her view, the defendants had not come close to satisfying her that any of the claimant's marks had become generic by 30 Jan 2025. Accordingly, she did not need to carry out the next step of the analysis to consider whether a cause of any such genericism had been the acts or inactivity of the claimant.   The answer to Issue 9 was "No".

Issue 10: Whether the applications for the registrations of C's Marks were made in bad faith in breach of s.3 (6) TMA

Judge Melissa Clarke noted that s.3 (6) of the Trade Marks Act 1994 provides an absolute ground for refusal of registration "if or to the extent that the application is made in bad faith".   She added that the court may invalidate a registration if satisfied that the application for registration was made in bad faith. Once again, because the claimant's marks had been registered, they were presumed valid unless proven otherwise.  As the defendants sought to invalidate them on the ground that the application had been made in bad faith, the burden was on them. The relevant time for determining bad faith was the filing date for registration. In the case of UK3449222 and UK3449223, that was  5 Dec 2019, and in the case of UK3671862 and UK3671882, it was 22 July 2021.

The judge said that the leading authority on s.3 (6) was the Supreme Court's judgment in Skykick UK Ltd and Another v Sky Ltd and Others [2024] UKSC 36, and that paras [153] to [156] of the judgment of Lord Kitchen were instructive on the point. She noted that the motive or intention of the applicant was of key relevance, and bad faith would be made out if the intention of the applicant was "to engage in conduct that departed from accepted principles of ethical behaviour or honest commercial practices", or "not... engaging fairly in competition but [to] undermin[e], in a manner inconsistent with honest practices, the interests of third parties"; or to "obtain[...], without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin...". That was not an exclusive list, but it gave a useful flavour of the type of intentionality required.

The defendants had pleaded that the claimant had applied for its marks "in order to establish an illegitimate monopoly over the import of generic varieties into the United Kingdom, which is part of a pattern of behaviour of applying for trade marks of generic varieties of fruits". They set out several trade mark applications that they relied on, at para 37 (c) of their counterclaim. 

The judge considered the defendants' allegations but rejected them.  The Defendants put forward no evidence of the claimant's intention, but appeared to ask the court to infer it from the fact of the trade mark applications relied on. The claimant's director said in his witness statement: "I did not consider that they would be perceived as generic varieties of pear or any other fruit in the UK".   This evidence was not challenged in cross-examination, and there was no other evidence to gainsay it.  Accordingly, the judge accepted it. That was fatal to the defendants' case on the issue because it was inconsistent with the intentionality required to make out bad faith.

As the defendants failed to satisfy the judge that the applications for the claimant's marks had been made in bad faith, the answer to issue 10 was "No."

Issue 11: Accordingly, whether the registrations are or were validly registered in accordance with s.47 (1) TMA and or 46 (1) (c) TMA

The judge replied that she was satisfied that the claimant's marks had been validly registered.

Issue 12: Whether the use of the Alleged Infringing Signs by the Defendants is liable to affect the functions of C's Marks, including the origin and advertising functions

Her Honour did not understand why this remained an issue in the case in view of the defendant's admission that they had used, in the manner complained of, without the claimant's consent, identical marks in relation to identical goods, in the course of trade. It seems inevitable that such use will be liable to affect the essential functions of the claimant's marks. She referred to the Court of Justice's judgment in  Case C-245/02 Anheuser-Busch v Budejovicky Budvar Narodni Podnik in which the court confirmed that use made is in the course of trade and in relation to goods then "it follows... that, in the event of identity of the sign and the trade mark and of the goods and services, the protection conferred by art.5 (1) (a) of Directive 89/104 is absolute".

The answer to Issue 12 was therefore "Yes".

Issue 13: Whether the use of the Alleged Infringing Signs by the Defendants is of signs or indications which are not distinctive or which concern the kind, quality, intended purpose, geographical origin and other characteristics of the goods used
Issue 14: Whether the use of the Alleged Infringing Signs by the Defendants is in accordance with honest practices in industrial and commercial matters
Issue 15: Accordingly, whether the defendants have a defence in accordance with s.11 (2) (b) TMA

The learned judge took the above three issues together and concluded that the defendants had not made out their defence.

Issue 16: Whether Mr Bingtao Wang and Mr Sohi are primary infringers in relation to the alleged acts of trade mark infringement
Issue 17: Whether Mr Bingtao Wang and Mr Sohi acted in common design with and or directed, procured or authorised the acts of BBF
Issue 18: Whether Mr Bingtao Wang and Mr Sohi had knowledge of the essential facts which make the acts done wrongful in accordance with Lifestyle Equities and Ahmed [2024] UKSC 17

The judge took the last three issues together.   She noted that the Supreme Court had clarified the law on joint tortfeasorship in Lifestyle Equities CV v Ahmed [2024] UKSC 17.  For persons to be held jointly liable with a tortfeasor for a tort, they must have knowledge of the essential facts which make the acts wrongful, whether or not the primary tort in question (such as trade mark infringement as it was in that case) is a strict liability offence, and whether or not the accessory liability arises from procuring a tort or by a common design. She referred to para [137] of Lord Leggatt's judgment, with which the other Justices agreed:

"[137]. Although procuring a tort and assisting another to commit a tort pursuant to a common design are distinct bases for imposing accessory liability, they must operate consistently with each other and such that the law of accessory liability in tort is coherent. Considerations of principle, authority and analogy with principles of accessory liability in other areas of private law all support the conclusion that knowledge of the essential features of the tort is necessary to justify imposing joint liability on someone who has not actually committed the tort. This is so even where, as in the case of infringement of intellectual property rights, the tort does not itself require such knowledge."

After considering the evidence of the second and third defendants' knowledge and participation in the first defendant's activities, Her Honour concluded at para [120] of her judgment:

"I accept Mr Bingtao Wang's evidence that Mr Sohi only had a well-defined and relatively minor administrative role in BBF, although he was an officer of it. In my judgment, although I am satisfied and find that Mr Sohi had the requisite knowledge of C's Marks and WZI's complaints about BBF's use by 24 November 2024 or shortly thereafter, I find that he was carrying out his defined administrative and logistical functions and did not, on the balance of probabilities, direct, procure or authorise the infringing acts, or act with common design with BBF in the infringing acts. I do not believe he had any control over BBF's actions. In my judgment it is Mr Bingtao Wang who knows everything about the business of BBF, who is the sole director and sole shareholder of it, and who makes all the key decisions as the sole controlling mind of BBF. I am satisfied and I find that he had the requisite knowledge from at least 12 November 2024. In my judgment he directed, procured and authorised the infringing acts of BBF."

Issue 19: Accordingly, whether Mr Bingtao Wang and Mr Sohi are jointly and severally liable for the actions of BBF?

Judge Melissa Clarke found that Mr the second defendant was jointly and severally liable for the actions of the first defendant as a joint tortfeasor, but the third defendant was not a joint tortfeasor and was without liability.

Comment

This was another tightly reasoned and thoroughly documented judgment from Judge Melissa Clarke.  The key to her decision is that s.72 of the Trade Marks Act 1994 imposes the burden of proving that a registration should be declared invalid or that it should be revoked squarely upon the defendants, which must have been particularly difficult for a party without legal representation to discharge.   Its failure to make out its case under s.3 (1), s.3 (6) and s.46 (1) (c) resulted in the dismissal of its counterclaim.  With no counterclaim, the first and second defendants had no defence to the claim.

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Further Reading

Jane Lambert  Trade Marks and Passing Off - Dryrobe Ltd v Caesr Group Ltd.  31 Dec 2025   NIPC Law