A company claimed that another is selling counterfeit products and is misleading the public and that this is also breaching its registered trademark. Thus, the company demanded compensation under both the Trademark Ordinance and the tort of passing off.
The Court held that sale of a product bearing the name of the protected trademark not by the producing company constitutes an infringement of the trademark. It also constitutes a tort of passing off. In order to prove the tort, the existence of a reputation of the product must be proven and also one must show that there is reasonable concern that the public will be misled. However, a condition for compensation for trademark infringement is proof of the existence of damage. Because the plaintiff failed to prove the existence of significant damage and did not bring forth any consumer testimonies that distinguish between the two products (the original and the forged), the Court accepted the claim but ordered a relatively low compensation.