Wang Zeng International Limited v Bing Bing Foods Limited & Ors

This is judgment on liability in a trade mark infringement claim.

The claimant Wang Zeng International Limited (“WZI”) and the first defendant Bing Bing Foods Limited (“BBF”) are both companies incorporated in England and Wales in the business of importing and supplying fruit and vegetables, particularly of Chinese and Asian origin. WZI was incorporated on 24 May 2016 and BBF was incorporated on 10 October 2022.

The second defendant Mr Bingtao Wang is the only director and sole shareholder of the First Defendant, and the third defendant Mr Navdeep Singh Sohi is the company secretary of the First Defendant.

WZI is the proprietor of the following UK registered trade marks (“C’s Marks”):

The following facts are agreed by the Parties:

WZI issued a claim on 18 December 2024 claiming trade mark infringement by BBF of Mark 1, Mark 2 and Mark 3 (but not Mark 4) under s.10(1), s 10(2) and s.10(3) Trade Marks Act 1994 (“TMA”) and passing off, and that Mr Bingtao Wang and Mr Sohi are joint tortfeasors with BBF. However at the case management conference before His Honour Judge Hacon on 7 July 2025 he held that the causes of action under s.10(2) and s.10(3) TMA and in passing off did not satisfy the cost-benefit test and so those matters did not survive to trial.

WZI seeks a declaration that the Defendants have infringed Mark 1, Mark 2 and Mark 3 pursuant to s.10(1) TMA; an injunction to restrain the Defendants from infringing Mark 1, Mark 2 and Mark 3; an order for delivery up/destruction of goods in the Defendants’ possession which would breach the injunction; an inquiry as to damages or an account of profits arising from the infringement found by the Court, at WZI’s election; dismissal of the Defendants’ application to the IPO for invalidity against the Mark 1 (Cancellation No. CA000508046); an order that the Defendants disseminate and publish this judgment; and costs.

In respect of infringement, the Defendants admit the acts complained of as set out above, but maintain a dispute about whether the Alleged Infringing Signs are liable to affect the essential functions of Mark 1, Mark 2 and Mark 3. They also defend pursuant to s11(2)(b) TMA on the basis that Mark 1, Mark 2 and Mark 3 are wholly descriptive names of pear varieties in the trade and their use is not in accordance with honest practices in industrial and commercial matters.

The Defendants counterclaim for invalidity and revocation of all of C’s Marks:

The Defendants also deny that Mr Bingtao Wang and Mr Sohi are liable as joint tortfeasors for any tortious acts of BBF that the Court may find.

The issues identified at the case management conference for determination at the trial on liability are set out at Annex 1 to this judgment.

At the trial WZI was represented by Mr Kashif Syed, trade mark attorney and Mr Bingtao Wang appeared as litigant in person for himself and for BBF as a director of BBF. Mr Sohi’s position is ad item with that of Mr Wang and although he was present he did not file any witness evidence for the trial, or participate himself in the trial but I understand he relies on Mr Wang’s submissions. He did file a witness statement in relation to an interim application which I will refer to later. I am grateful to both Mr Syed and Mr Wang for their written and oral submissions. I am also grateful to the two Chinese interpreters who were available remotely and provided their services to Mr Bingtao Wang and to Mr Zeng Wang of WZI.

WZI relies on the evidence of Mr Zeng Wang and Mr Sean Clare.

Mr Zeng Wang is the founder, sole director and shareholder of WZI, and since it was incorporated in May 2016 says he has been responsible for the general management of it. Mr Zeng Wang gave a witness statement dated 19 September 2025 and also signed WZI’s pleadings, which stand as evidence in IPEC. He attended court and was cross-examined and re-examined with the assistance of a Chinese interpreter. He was a cautious witness but I found him to be generally straightforward and I am satisfied that he came to Court to give his honest evidence to the best of his recollection.

Mr Zeng Wang says that part of his business includes the selling of Asian pears originating from his family farm in China and a number of other selected Chinese farmers. He said that WZI sells exclusively to businesses and not direct to consumers. His evidence is that he invented the name “Mountain Pear” and in 2019, to refer to and identify a range of Chinese pears being a variety commonly known as Gong Pear (or 贡梨) in China, and that he was the first to introduce this variety to the UK market in 2019.

Mr Zeng Wang said he carried out sampling promotional days in supermarkets of this variety of pear, which he later called “Mountain Pear”, beginning in Wing Yip’s Manchester supermarket on 23 November 2019, but he did so under the name “Sweet Crispy Pear”. He exhibits photographs of this event and in one can be seen a box of packaged pears clearly labelled “Sweet Crispy Pear” so I accept this evidence. In cross-examination he said that he also sold some of this product under the name “Sweet Crispy Pear” in 2019 and early 2020, but his first shipment of pears packaged under Mark 1 and Mark 2, and his first sales to customers of goods under Mark 1 and Mark 2, was in May 2020.

Mr Zeng Wang says that the goods shipped and supplied were pears of the variety known as Gong Pear, with Mark 1 and Mark 2 on the packaging each identified as registered trade marks by use of the ® symbol, together with WZI’s company branding. I have seen photographs of the packaging which conforms to his description of it. These first sales were to Wing Yip, SING KO Ltd, Barton & Redman Ltd, Graham Nicol & Dow Ltd and Total Produce Manchester, and he has exhibited the invoices from such sales dated 27 and 28 May 2020, so I accept his evidence of the timing of WZI’s first sales of goods under Mark 1 and Mark 2.

Mr Bingtao Wang in cross-examination challenged Mr Zeng Wang on an article disclosed by and relied on by WZI, published on 8 May 2020 on a specialist media platform for the fruit and vegetable fresh produce trade called “Fresh Plaza”. This is entitled “Mountain pear becoming a differentiated product in Europe” in which Mr Zeng Wang was quoted as saying “Mountain Pear is a brand that we have been using for our overseas business, which was successfully registered in 2019. Although it’s a new brand, it has won recognition in overseas markets thanks to our good corporate image and reliable product quality”. Mr Wang asked how “Mountain Pear” could have won recognition in overseas markets by 8 May 2020 if his first ever shipment of pears branded “Mountain Pear” with Mark 1 and Mark 2 on the packaging was in May 2020, and if no sales were made of such “Mountain Pear” products until 27 May 2020. Mr Zeng Wang found this question difficult to answer, but said that was because the product he was selling under Mark 1 and Mark 2 was Gong Pears, which he had already sold successfully in the UK as “Sweet Crispy Pear” before that article was written. I accept his response which is supported by the evidence in relation to “Sweet Crispy Pear” as described above. WZI relies on this article as an item of promotion of the “Mountain Pear” brand, and in my judgment it needs to be read as such, as a marketing piece to launch a new brand with an element of marketing puff about it. To the extent that it is not entirely accurate I do not consider that to be a matter which undermines Mr Zeng Wang’s credibility.

Mr Zeng Wang’s evidence is that he chose the name “Mountain Pear” as it relates to WZI’s core brand messaging of natural products, purity and resilience. He said that to achieve his goal of supplying top quality, unique and exceptional fruit and vegetable products would be a long journey “like climbing a mountain”. He said he also chose it because the fruit he sells, from his family farm and other local farmers, grows in a special area on a mountain plateau in China where the conditions are suitable for growing pears, which is unusual as most of the world’s pears are grown in fertile, well- irrigated valleys.

Mr Bingtao Wang did not challenge in cross-examination, and so I accept, Mr Zeng Wang’s evidence:

In relation to Mark 3 and Mark 4, Mr Zeng Wang’s evidence was also that he came up with the name Yu Lu Fragrant Pear in 2020 to refer to and identify a range of Chinese pears. He was challenged that he had invented the name by Mr Bingtao Wang in cross-examination, who put it to him that WZI’s own website describes the “Yu Lu Fragrant Pear” as a hybrid cultivar. The website says it is “a new high-quality mid ripening pear cultivar bread by crossing Korla fragrant pear as female parent and Snow pear as male parent”. Mr Zeng Wang agreed that it was, saying “It is a hybrid pear, but Yu Lu Fragrant Pear is a brand, a registered trade mark, and we were the first importer who brought the variety into the UK” and confirmed that he did not produce the hybrid. It was then put to him that he did not invent the name, but transliterated into English the pre-existing variety name and he disagreed. He said that the varietal name in China was “Yu Lu Shan Li” and Mark 3 is “Yu Lu Fragrant Pear”. However he also agreed that Mark 4 is pronounced Yu Lu Shan Li, and it is a fact agreed by both parties (as set out in paragraph 5 above and recited in the CMC Order of 7 July 2025) that the translation of the 4-character Mark 4 is “Yu Lu Fragrant Pear”, so the distinction that he attempts to draw is a distinction without a difference, in my judgment. I am satisfied he did not invent the name “Yu Lu Fragrant Pear” in English or Chinese.

Mr Bingtao Wang did not challenge in cross-examination, and so I accept, Mr Zeng Wang’s evidence:

It was apparent from Mr Zeng Wang’s answers in cross-examination, and I find, that WZI has carried out very little marketing activity in relation to products sold under C’s Marks, save for the Fresh Plaza article which related only to Mark 1.

Mr Zeng Wang’s evidence is that when WZI had found other companies using C’s Marks, it had instructed its solicitors to enforce its rights by sending letters before claim. He said this had happened in respect of three companies, one of those being the use by BBF complained of in these proceedings. He also said that after he had discovered the use by BBF complained of, he sent communications to WZI’s customers to put them on notice of what WZI believes is BBF’s infringement of its rights, and he called some customers around the same time to discuss the situation. I accept this evidence which Mr Zeng Wang repeated, and in relation to which he was not challenged as to factual accuracy, in cross-examination.

Mr Sean Clare has been a supervisor and purchaser at the wholesale and retail supplier Wing Yip Ltd since February 2019 and was employed by that company since September 2018. Mr Clare describes Wing Yip as the UK’s leading supplier of Chinese and Oriental groceries, predominantly wholesale to trade customers, but also retail direct to customers from four supermarkets in Birmingham, Manchester, Cricklewood and Croydon and was not challenged on that evidence. He filed a witness statement dated 19 September 2025, attended court, and was cross-examined. I think he came to Court to assist it to the best of his ability and I found him to be both credible and reliable.

Mr Clare said in his witness statement that he has broad responsibility at Wing Yip for managing all fresh produce purchased and sold by the company including fruits and vegetables, and he describes himself as “having a good and long-standing knowledge of the fruit sector, particularly for the Oriental market”, but in cross-examination he accepted that he was not a fresh produce buyer for Wing Yip although he did reorder fresh produce.

Mr Clare said that he first met Mr Zeng Wang from WZI in November 2019 when he was seeking to persuade Wing Yip to take him on as a supplier of fruit, particularly pears. He says that Wing Yip made its first order of Mountain Pears of around 160 cases through WZI in May 2020 and has continued to order Mountain Pears regularly from WZI since then. He says that Wing Yip’s first order of Yu Lu Fragrant Pear through WZI was in November 2022. At the date of his witness statement in September 2025, he said Wing Yip’s total trade value for Mountain Pear has been £265,624 and for Yu Lu Fragrant Pear has been £23,440.

Mr Clare sought to address in his witness evidence the use of “Mountain Pear” (Mark 1) and “Yu Lu Fragrant Pear” (Mark 3) as marks of origin. In cross-examination he told the court that he did not speak Chinese and so cannot speak to Mark 2 or Mark 4. He says that before Wing Yip started ordering Mountain Pear from Mr Zeng Wang he had not been aware that anything like that was available in the UK, despite speaking to suppliers in the UK and abroad. He had also not seen it in competitor Asian and Chinese greengrocers that he had visited around Manchester. I remind myself that he is not a fresh produce buyer for Wing Yip, but he is a manager and carries out repeat ordering, and I accept his evidence that he does visit other supermarkets and go to trade shows in the UK and abroad. He said that Mr Zeng Wang had told him that Mountain Pear was grown on his family farm in the mountains of China, and shown him videos of the area. He said “To date I have never seen a competitor selling these products which do not originate from Wang Zeng when you look at the box. My understanding is that Wing Yip were among the first to ever have Mountain Pear in the UK. The first thing that comes to my mind when someone says Mountain Pear or Yu Lu Fragrant Pear is Wang Zeng because they are the first and only place I have bought the products from”. I accept that evidence which I consider is both supported by the unchallenged evidence of Mr Wang Zeng and was honestly given.

However in cross-examination Mr Clare accepted that:

I accept his evidence on all of these points save that I do not consider that Mr Clare can properly give evidence on point iv) above. He cannot put himself in the mind of the individual customer to know whether, when they ask for “Mountain Pear” for example, they are using it as a mark of origin because they know it is a trade mark for WZI’s Gong Pear product, or generically.

The Defendants rely on witness statements from Mr Bingtao Wang and Mr Yiyang Xu.

Mr Bingtao Wang is the founder and director of BBF. He made a witness statement dated 19 September 2025 and a witness statement in reply dated 26 September 2025. He also signed the Defendants’ pleadings which stand as evidence in IPEC. He attended Court and gave his evidence through a remote interpreter and was cross-examined. I did not find him a very satisfactory witness for a number of reasons. I found some of his accounts to be contradictory of each other, he misrepresented what some of the evidence he put before the Court in his witness evidence showed, I found him at times to be evasive and seeking to avoid providing clear answers and he had a tendency to make assertions as fact which were not supported with credible or reliable evidence. I treat his evidence with caution.

Mr Bingtao Wang told the Court that he came to the UK in 2021 and incorporated BBF in 2022. In his first witness statement Mr Bingtao Wang said that BBF had since at least 2023 communicated with customers using the terms Mountain Pear and Yu Lu Fragrant Pear to describe pear varieties imported from China, and it did so as product identification, not branding. I have seen photographs of BBF’s packaging of these products which he says show BBF’s own logo and branding as the indicator of commercial source, with “Mountain Pear” () and “Yu Lu Fragrant Pear” () appearing separately as the varietal name of the fruit. His evidence is that in his dealings with customer enquiries or orders, they have only used these terms as product types or varieties, as they would “Fuji apple” or “Ya pear”, and that he had not encountered the situation where a customer treated these terms as denoting a particular supplier.

In cross-examination Mr Bingtao Wang was taken to the packaging of BBF’s “Mountain Pear” product upon which is seen, under the BBF logo and “Bing Bing Foods”, the words “Mountain Pear” in large size. Underneath and prominently, but slightly smaller, are the Chinese characters “(贡梨)” He accepted that these were the Chinese characters for “Mountain Pear (Gong Pear)”, but denied when it was put to him that the “(贡梨)” was there to explain the previous term “”. He said, “No. Both of them are alternative names of the same variety.”. When asked why, then, “(贡梨)” was placed in brackets, he said “This was possibly created by the manufacturer in China. I did not participate in the manufacture of the product. I just imported the goods”. This was a surprising statement given his evidence previously in cross-examination, that as sole shareholder and director of BBF he knew everything that was going on in the company.

Mr Syed cross-examined Mr Bingtao Wang on his evidence that “Mountain Pear” (and Gong Pear) and “Yu Lu Fragrant Pear” were varietal names of pears and not brand names of WZI. His evidence was, in my view, confusing and contradictory as to what knowledge he had and when he had obtained it. One clear statement he made in cross-examination was that “the first time I saw these terms [“Mountain Pear” and “Yu Lu Fragrant Pear”] was in an email from Dole to me stating they would like to procure Mountain Pear and Yu Lu Fragrant Pear”. BBF relies on two communications from Dole, the global fresh produce provider, in these proceedings. The first is an email dated 2 March 2023 from a commercial manager in Dole UK to a Mr Aaron Zhang, asking “do you export the following varieties of pears?” and explaining that he was “gathering quotes as we may start to add these to our range”. The pears listed included “Yulu Fragrant Pear” and “Mountain Pear”. In cross-examination Mr Bingtao Wang said that Aaron Zhang worked for another Chinese company, but not BBF, and that BBF had not been sent this email, but it appears that nevertheless he received a copy of it. If Mr Zhang responded to Dole that email has not been disclosed. The second communication with Dole is described in Mr Bingtao Wang’s second witness statement, in which he said that Dole contacted BBF in 2025 asking if it had “Mountain Pear” available for sale. The date and contents suggest that it is the earlier communication which provided the first time Mr Wang ever heard the names of “Mountain Pear” and “Yu Lu Fragrant Pear”. Assuming that his evidence is correct, then that puts that knowledge at 2 March 2023.

As mentioned, Mr Bingtao Wang did not come to the UK from China until 2021 and it was put to him that he could not, therefore, have knowledge of the UK fresh fruit market before that date, and in particular not at Relevant Date 1 for Mark 1 and Mark 2, of 5 December 2019. He said “I was in China in 2019, I only came in 2021 to the UK… even when I was in still in China I recognised names of Mountain Pear and Yu Lu Fragrant Pear as product names. I did know very well about the UK market since 2018 I was exporting from China… I am a professional with rich experience” (my emphasis).

Mr Wang’s evidence that he recognised the names of Mountain Pear and Yu Lu Fragrant Pear as product or varietal names even when he was still in China is contradictory of his earlier evidence that he only heard of them for the first time in a communication from Dole of 2 March 2023, by which time he had been in the UK for 2 years. This contradiction was put to him by Mr Syed and he sought to say that that the Dole communication was the first time that he had seen those names written down in a formal communication, but I found this explanation unconvincing and I do not accept it.

Returning to the question of whether Mountain Pear is a varietal name of a pear variety also known as Gong Pear, I do not think it likely that his evidence on this is likely to be correct. I think it is more likely than not that he did have control of the packaging of his products, and “(贡梨)” was placed on the packaging to explain to Chinese speakers that the contents of the packaged goods sold under the Allegedly Infringing Sign “” was pears of the variety Gong Pear, and that he did so because he knew that was the variety. It follows that I am satisfied that he knew that “Mountain Pear” was not a varietal name. I consider that his evidence that he had never heard of Mountain Pear or Yu Lu Fragrant Pear until he saw that 2 March 2023 email from Dole is likely to be correct. For that reason I do not accept any evidence that he gives purportedly from his own knowledge about use of the terms “Mountain Pear” () and “Yu Lu Fragrant Pear” () before 2 March 2023, because I am satisfied he has no such evidence to give.

Much of Mr Bingtao Wang’s second witness statement is made up of submissions or commentary on documents rather than evidence. However in it, he denied WZI’s assertion that the terms “Mountain Pear” () and “Yu Lu Fragrant Pear” () had been coined by Mr Zeng Wang and were exclusively associated with their business.

On the latter point, the Defendants rely on invoices of WZI which show the use of “Mountain Pear” and “Yu Lu Fragrant Pear” in the product description fields. He also relies on an email that Mr Bingtao Wang himself had sent to the Purchasing Director of Wing Yip in which he listed for BBF “Yu Lu Fragrant Pear” and “Korean Pear” as product types along with “Korean Pear” as variety names. They also rely on the Dole communications of the 2 March 2023 email and contact in 2025 to BBF as evidence that Dole, as a major buyer of fruit worldwide, viewed these terms as product descriptors and not as a brand or mark of origin. I will also come back to those.

For convenience I will also mention here that the Defendants also rely on 15 documents described in and exhibited to the Defence and Counterclaim to support its case on invalidity:

In relation to joint tortfeasorship, the Defendants have provided limited evidence. Mr Bingtao Wang in his first witness statement said that neither he nor Mr Sohi have conducted business in their personal capacity, but this is not the test in relation to joint tortfeasorship. He accepted in cross-examination that he was the sole shareholder and sole director and knew everything about BBF’s business. He accepted that he had received the letter before action sent to BBF on 21 November 2024 by WZI’s solicitors, and that he knew that WZI objected to the use of the Allegedly Infringing Signs complained of, and that he discussed that letter with Mr Sohi. He accepted that this letter came after WeChat messaging between him and Mr Zeng Wang in which he was asked to desist from use of the Allegedly Infringing Signs.

Mr Bingtao Wang said that Mr Sohi’s role has been administrative and logistical only, and Mr Sohi said the same in a witness statement that he filed in support of his and Mr Wang’s application to strike out the claims against them. That application was dismissed by HHJ Hacon before trial but I think it is fair to take Mr Sohi’s witness statement into account, as it is in the trial bundle. In that witness statement he said that he deals with matters such as coordinating transport, warehousing, and deliveries and does not make commercial, marketing or sales decisions and has not personally been involved in, nor has he had knowledge of, labelling, branding or packaging of the goods referred to by the Claimant. In closing submissions, Mr Bingtao Wang described the claim against Mr Sohi as “ridiculous” because “he was only a part time employee earning £600 per month and he doesn’t even know what the two products are”. This submission is unsupported by evidence. He agreed that Mr Sohi has never participated in selling or procurement, confirming that he was not fully involved in the business of BBF and only assisted with logistics and administration.

Mr Yiyang Xu made a witness statement dated 19 September 2025, attended court and was cross-examined. Mr Xu described himself in his witness statement as the shareholder and general manager of SeeWoo Chinatown Limited, which he said was established in 1975 and operates Chinese supermarkets and wholesale businesses in London and, previously, Glasgow. He said that since September 2020 he has served as a director of SeeWoo, with responsibility for imports, purchasing and store operations. Before confirming the content of his witness statement he said that 100% of the shares in SeeWoo Chinatown Limited had recently been transferred into the name of his wife who was now also the sole director.

In the course of cross-examination it became apparent that there were a number of SeeWoo companies (including SeeWoo UK Limited (in liquidation), SeeWoo Group Limited (in liquidation) and SeeWoo Chinatown Limited) which were utilised in what he described as the SeeWoo family business, and that he had been a director and/or shareholder of some of those companies at different times, but he admitted that he had never been a director of SeeWoo Chinatown Limited. He also accepted that SeeWoo Chinatown Limited had not been in business since 1975 as it was only incorporated in June 2017. He was difficult to pin down to clear answers in relation to these questions.

More concerning was his statement in his written evidence that “Apart from a general industry interest, I have no direct financial stake in the outcome. For transparency, I note that both the Claimant and the Defendants have, at different times, been suppliers to my business” and his failure to mention the fact that WZI was a supplier that SeeWoo Chinatown Limited had failed to pay, such that WZI had obtained a default judgment against it on 8 September 2025 for the sum of £13,453.72. Mr Xu sought to suggest that he recalled that the dispute was about the quality of goods supplied by WZI, but WZI has disclosed a transcript of a long exchange of messages between Mr Xu and Mr Wang Zeng over WeChat from the end of May 2025 to the end of June 2025 relating to the debt. In those messages Mr Wang Zeng repeatedly asked for payment, and Mr Xu made a number of promises to pay by various dates, all of which were missed, but did not raise any issue in relation to the quality of the goods supplied pursuant to the outstanding invoice. Mr Xu can then be seen, in my judgment, making a number of implausible excuses to Mr Wang Zeng about why he was unable to speak to him about the sums due, and eventually simply failed to respond to Mr Wang Zeng’s later messages.

In cross-examination Mr Xu accepted that SeeWoo did not defend the claim that WZI then brought, but blamed that on a postal error and said that the company would apply to set the judgment aside. I did not find him convincing on this point. Be that as it may, it does seem to me that Mr Xu in explicitly stating that both parties were customers of SeeWoo and he had no financial interest in the case, was painting a picture of himself as a disinterested, independent witness with equal relationships with both parties, when this was not, in fact, the case.

Mr Xu in cross-examination said that he had never met Mr Zeng Wang, had no personal relationship with him, had no personal grudge against him and had not come to court to take sides or lie, but Mr Syed for WZI submits that his evidence lacks credibility such that I should not rely on it. I have thought about this carefully. I note that his witness statement was written shortly after WZI obtained its default judgment. I note that WeChat does show a personal interaction in which Mr Wang Zeng made clear his perception of Mr Xu’s conduct as poor and unprofessional. In my judgment Mr Xu’s credibility has been irreparably damaged by the matters I have discussed above. I cannot be satisfied that he came to court to give his honest evidence rather seeking to sabotage WZI because of personal animus towards Mr Zeng Wang. For those reasons, I do not take his evidence into account. I also note that the evidence that Mr Xu gives amounts to professional opinion on matters central to the issues in this case and is contradicted almost entirely by the evidence given by Mr Clare who I have found to be both credible and reliable, so even if I did take Mr Xu’s evidence into account but treat it with extreme caution, I would prefer Mr Clare’s evidence and that would, in my judgment, lead to effectively the same result.

S.3 TMA provides, so far as is relevant, as follows:

S.47(1) TMA provides as follows:

S.72 TMA provides that:

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 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).

I dealt very recently with the law relating to distinctiveness (s.3(1)(b) TMA) and descriptiveness (s.3(1)(c) TMA) in Dryrobe Limited v Caesr Group Limited (trading as D-Robe Outdoors) [2025] EWHC 3167 (IPEC) at [77] – [81], with particular reference to the judgment of Arnold J (as he then was) in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch) which WZI also relies on in this case. I will not repeat what I said there. WZI also cites a number of authorities 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). See for example the CJEU in DKV Deutsche Krankenversicherung AG v OHIM Case C-104/00 P at [18], and the CJEU in SAT1 v OHIM Case C-329/02 P, where it said at [41]:

“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 good or services protected thereby and to distinguish them from those of other undertakings”.

WZI submits that the test is therefore not whether there is any element of imagination or artistic creativity in the sign, but whether it is “wholly” devoid of any distinctive character. I accept this submission.

WZI also relies on the approval of Asplin J (as she then was) in British Sky Broadcasting v Microsoft [2013] EWHC 1826 (Ch) at [259] of the statement made by the General Court in Lissotschenko v OHIM, namely that Articles 7(1)(b) and (c) of the Regulation (equivalent to s.3(1)(b) and s. 3(1)(c) TMA) 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”.

In relation to the counterclaim in invalidity on the grounds that C’s Marks “… consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” (s.3(1)(d) TMA), the Court must carry out its assessment as at the filing date of that trade mark. The General Court in T-322/03 Telefon & Buch Verlagsgesellschaft GmbH v EUIPO at [49]-[52] made clear that such an assessment must be carried out firstly by reference to the goods and services in respect of which the relevant mark is intended to be (or in the case of an invalidity counterclaim, is) registered, and secondly, on the basis of the target public’s perception of the mark. 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.” (at [50]).

The perception of “the trade” is relevant in this case where the sale by WZI of products under C’s Marks are sales to businesses such as wholesalers and supermarkets, not to consumers directly. WZI relies on the guidance of the CJEU in Björnekulla Fruktindustrier AB v Procordia Food AB (Case C-371/02) at [23-25], where it was answered a case for a preliminary ruling regarding 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.”

The CJEU in Merz & Krell Case C-517/99 addressed what it called a “clear overlap” between descriptiveness and being customary in the trade, at [35], relied on by WZI:

“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.”

Again, I dealt with the law relating to acquired distinctive character at [89] to [93] of Dryrobe, and I do not understand the parties to have made any submissions which conflict with that summary. WZI relies on the authorities of Société des Produits NestléSA v CadburyUK [2017] EWCA Civ 358 and the CJEU judgment in Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor Walter Huer & Franz Attenberger Case C-108/97 and both are covered in that summary. I said at [91] – [93] of Dryrobe:

“[91] The Claimant relies on the guidance of Arnold J (as he then was) at [57] of Société des Produits NestléSA 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.”

As in Dryrobe, in this case there is no evidence from trade or professional associations or survey evidence or an opinion poll. WZI draws my attention to the guidance given by Kitchin LJ (as he then was) as to the requisite perception of the mark by consumers at [82] of the Court of Appeal’s decision in Nestlé, that:

“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.”

S.46(1)(c) TMA provides that the registration of a trade mark may be revoked on the ground that “in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or services for which it is registered.”. 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 (see Björnekulla Fruktindustrier where Advocate General Léger in his Opinion at [48] described this as “the converse situation” to one in which a sign has acquired a distinctive character which it did not originally have).

WZI relies on Hormel Foods v Antilles [2005] EWHC 13 (Ch), [2005] ETMR 54, in which Richard Arnold QC (as he then was) provided a summary of the law at [165], [167] and [170]-[172]. This includes guidance 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”. However, he noted it was not necessarily the case that use of a trade mark (in that case ‘SPAM’) by the public as a household name meant that the trade mark had become truly generic, “still less that this is due to the acts or inactivity of [the proprietor of the registered trade mark].”.

WZI submits that commentators, including the editors of Kerly’s Law of Trade Marks and Trade Names 17^th Ed. at 12-153, argue in relation to (ii) above that this wording may underestimate the importance of the proprietor and his acts or inactivity which ought to be the main or major cause and is the focus of the provision, separating it from s.3(1)(d). I think there is an interesting discussion to be had about this, but as will become clear later in this judgment, nothing turns on the point in this case. I will leave that question for another case, preferably one in which both sides are legally represented.

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, and per Rousselon Freres et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch), [2008] RPC 30 at [85], that must be “cogent evidence”.

It is 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) TMA and s.3(1)(d) TMA. WZI submits that the average consumer in this case is the average consuming member of the public of fruit and corresponding retail services, which are everyday goods and services for all consumers. The Defendants do not make any submissions on the point but did not take issue with WZI’s position which is set out clearly at para 20 of Mr Syed’s skeleton argument for WZI. In particular the Defendants did not submit that the average consumer in this case is Chinese-speaking and they were right not to do so, in my judgment. I find that the average consumer is just a member of the public who buys everyday goods and services.

The burden is on the Defendants in relation to this issue. They submit that Mark 1 and Mark 2 are descriptive as they are names of Chinese pear varieties and so designate the kind of goods for which Mark 1 and Mark 2 were registered. However:

WZI made a number of submissions in relation to this issue, seeking to anticipate arguments that might be made for the Defendants, but those arguments were not made by the Defendants, despite Mr Syed fairly and clearly setting them out in his skeleton argument for WZI, making it easy for the Defendants to have addressed those submissions had they wished to do so. For example, WZI submits that the word “Mountain”, being a geographical descriptor, has no clear relation with pears or fruit more generally; that the combination of the word “mountain” with “pear” is unusual, unexpected and imaginative, and the average consumer when taking the mark as a whole would pause and reflect on its meaning when used for fruit, including pears; that Mr Zeng Wang’s evidence was that it was unusual for pears to grow on mountains; and that the average consumer would not understand the mark “MOUNTAIN PEAR”, whether in English as Mark 1 or Chinese as Mark 2, to have a sufficiently direct and specific relationship with the goods in question to be descriptive of them. However, Mr Bingtao Wang did not address these submissions or make any submissions for the Defendants in his opening or closing arguments beyond his submission that Mark1 and Mark 2 are descriptive as they are a variety of pear.

As the burden is on the Defendants on this issue, I do not need to address WZI’s submissions anticipating arguments that the Defendants could have made, but did not make. For those reasons, the answer to Issue 1 is ‘No’.

The Defendants have made very few submissions on this point save a bare assertion that C’s Marks are not distinctive, perhaps because in the Defence, their skeleton argument and closing submissions by Mr Bingtao Wang they state that it is for WZI to prove distinctiveness, and criticise it for not providing evidence to do so. As I and Mr Syed both informed Mr Bingtao Wang at trial, and as I have already set out in my section on the law above, the effect of registration of C’s Marks and s.72 TMA is that the burden of proving the Defendants’ pleaded case that they are wholly devoid of distinctive character for the purposes of s.3(1)(b) TMA is on the Defendants.

When reminded of this by me in the course of his closing submissions, Mr Bingtao Wang made no further submissions on distinctiveness. It seems, therefore, that the s.3(1)(b) defence is not being pursued by the Defendants in relation to any of C’s Marks on any different basis to the arguments relied on in relation to Issue 1, and so the answer to Issue 2 is ‘No’.

The Defendants submit that Mark 1 and Mark 2 have been “used for years by importers, wholesalers, retailers and consumers as product descriptions for those varieties”, as evidenced by Mr Xu’s witness statement (which I do not accept), Mr Bingtao Wang (but I have found that he did not even hear the name “Mountain Pear” until 2023, after Relevant Date 1) and the fact that:

However, I remind myself that Relevant Date 1 is 5 December 2019 which pre-dates WZI’s first sale of goods to which Mark 1 and Mark 2 were applied (and first invoices) in May 2020. Accordingly all of this evidence post-dates Relevant Date 1. I will return to consider it in relation to Issue 9 (s.46(1)(c) TMA).

In my judgment there is no credible evidence before me that at 5 December 2019 or at any time before that date, “Mountain Pear” and “山梨”were customary in the language for the goods for which they were registered, i.e. fresh fruit. That is not surprising given I have accepted Mr Zeng Wang’s evidence that WZI did not import any fruit into the UK under Mark 1 or Mark 2 until May 2020 and did not sell any goods under these signs until 27 May 2020, and his evidence that he invented the name “Mountain Pear” and “山梨” as a brand name under which to sell a variety of pear known as Gong Pear. As set out in paragraph 41 above, none of the Defendant’s exhibited screenshots show any use of “Mountain Pear” or “山梨”in the UK at or before Relevant Date 1.

For those reasons the answer to Issue 3 is “No”.

The Defendants submit that “Yu Lu Fragrant Pear” and “” in Chinese are generic or descriptive names of a Chinese pear variety and as such indicate the kind of goods and services for which Mark 3 and Mark 4 were registered.

They seek to rely on the evidence of Mr Xu but I do not take it into account. They seek to rely on various publications and documents discussed at paragraph 41 above, but for the reasons given there are none which pre-date Relevant Date 2 which I can take into account.

They rely on the acceptance by Mr Zeng Wang in cross-examination that “” is a Chinese pear variety and the agreed fact that “Yu Lu Fragrant Pear” is the translation of that 4-character sign.

WZI submits that per Agencja Wydawnicza at [50] quoted by Arnold J in Starbucks at [91] (as set out earlier in my judgment) the Defendants must satisfy the Court that it is reasonable to believe that the average consumer would recognise Mark 3 and Mark 4 at Relevant Date 2 as a description of the kind of goods and services for which the marks are registered or, per Lissotschenko v OHIM, that there is a sufficiently direct and specific relationship between Mark 3 and Mark 4 and the goods or services 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”. It submits that would not, because:

I am with WZI. I have found that the average consumer is a member of the UK public who buys everyday goods and services. The average consumer is reasonably well informed, reasonably observant and circumspect. However, I have found that WZI did not start selling products under Mark 3 and Mark 4 in the UK until November 2021, after Relevant Date 2. There is no evidence before me of sales before Relevant Date 2 of any variety of pear sold under the name “Yu Lu Fragrant Pear” in the UK, which would cause the average consumer to recognise “Yu Lu Fragrant Pear” or “” as a kind of pear variety from previous knowledge of the market. The fact that the average consumer is reasonably well informed does not, in my judgment, extend to recognising recent Chinese pear hybrid varieties that are not on the market in the UK at Relevant Date 2.

I also accept WZI’s submissions at paragraph 78 (i) and (ii) above.

For those reasons the answer to Issue 4 is “No”.

As explained under Issue 2, the Defendants made no submissions in relation to distinctive character of any of the C’s Marks separate from the question of descriptiveness. Accordingly, the answer to Issue 5 is ‘No’.

The Defendants submit that Mark 3 and Mark 4 have been used for years by importers, wholesalers, retailers and consumers as product descriptions for the Yu Lu Fragrant Pear variety, as evidenced by Mr Xu (whose evidence I do not accept), Mr Bingtao Wang (but I have found that he did not even hear the name “Yu Lu Fragrant Pear” until 2023, after Relevant Date 2), and the fact that:

Once again, this evidence post-dates Relevant Date 2 of 22 July 2021. I will return to consider this evidence in relation to Issue 9 (s.46(1)(c) TMA).

I have found that WZI sold its first goods under Mark 3 and Mark 4 in November 2021 after Relevant Date 2. As set out in paragraph 41 above, none of the Defendants’ exhibited screenshots show any use of “Yu Lu Fragrant Pear” and “” in the UK at or before Relevant Date 2.

Accordingly, there is no evidence before me that at 22 July 2021 or at any time before that date, “Yu Lu Fragrant Pear” and “” were customary in the language for the goods and services for which they were registered in the UK.

For those reasons the answer to Issue 6 is “No”.

The answer to Issue 7 is “No”.

This issue falls away given my answer to Issue 7.

As a preliminary point, WZI submits that the relevant date for the purposes of carrying out a s.46(1)(c) assessment is the date of commencement of the proceedings, namely 18 December 2024, extrapolating that from Hormel Foods. The Defendants make no submissions on the point. However, in Hormel Foods there were cross-applications by both parties each seeking revocation of the others’ mark pursuant to s46(1)(c) TMA and so two relevant dates. With respect to Mr Syed, I am not convinced that the extrapolation is correctly made to the facts of this case, where it is only the Defendants seeking revocation of C’s Marks. The relevant date is in my judgment the date of the invalidity application, i.e. the counterclaim, being 30 January 2025. The assessment must be carried out from the point of view of the relevant public. In this case, that is the general public. Once again, the burden is on the Defendants who seek revocation of C’s Marks.

As I have set out above, the Defendants submit that C’s Marks “have been used for years by importers, wholesalers, retailers and consumers as product descriptions for those varieties”, and relies on the following evidence to make good that submission:

In relation to (i), the first thing to be said is that Mr Bingtao Wang relies on photographs that he took in a Wing Yip Store on 15 March 2025, which is after the relevant date of 30 January 2025. However, Mr Clare also gave evidence on the point. To the extent that it was suggested to me by Mr Bingtao Wang in closing that Mr Clare’s acceptance in cross-examination that “Wing Yip had used Mountain Pear and Yu Lu Fragrant Pear on shelf labels in the same way as other pear varietal names” amounted to an acceptance that Mountain Pear was a varietal name, I do not accept that to be an accurate representation of Mr Clare’s evidence, as can be seen from my previous summary of it. The most his evidence tells me, in my judgment, is that on shelf labels, store displays etc Wing Yip does not add the ® symbol to the words “Mountain Pear” and “Yu Lu Fragrant Pear”. There are tens of thousands of brands on supermarket and retailers’ shelves and it is not common, in my experience, to see the ® symbol on a shelf label or in-store display or receipt even when the product is being referred to by a brand name which is registered as a trade mark. I do not consider that the general public expect to see the ® symbol attached to references to such brands in that context, or that the general public would understand that any product name without the ® symbol attached to it is a reference to a generic product instead of a brand. As Mr Syed submits for WZI, goods are sold by product name, but that product name may also be a registered trade mark and I am satisfied that the general public understand that.

Mr Zeng Wang was asked about this in cross-examination, and criticised by Mr Bingtao Wang for not telling Wing Yip that he wanted the ® symbol to appear on all shelf labels. He responded that all of WZI’s products are sold with packaging that makes clear that each of the C’s Marks are registered trade marks, by application of the ® symbol wherever they are used. I agree this is of high importance as it is the goods themselves that the general public will primarily focus on when considering or making a purchase, not a shelf label or instore display. Of course when they have a receipt in hand they have already purchased the branded goods. If there is doubt as to whether C’s Marks are an indication of origin or a generic description of a product, a glance at the packaged product will tell them it is the former, and I remind myself that the assessment of whether C’s Marks function as an indication of origin must be carried out firstly by reference to the goods and services in respect of which they are registered, and secondly on the target public’s perception of the marks.

In relation to (ii), the second communication with Dole relied on is after the relevant date and so I do not take it into account. In relation to the March 2023 email, although this may be an example of Dole using “Mountain Pear” generically it may also be an example of Dole seeking product which it understands is WZI branded product from an alternative supplier rather than WZI directly. I cannot know from the email alone and so it takes me no further.

In relation to (iii), this is no evidence of generic use at all, in my judgment. The invoices have a single product description field into which a product can be described by a brand name or a generic description and there is no reason for to consider that WZI’s use of “Mountain Pear” or “Yu Lu Fragrant Pear” on their own invoices is not use of their registered trade marks, particularly as WZI are invoicing supply of branded products, on all of the packaging of which are C’s Marks to which the ® symbol is attached.

In relation to (iv), this is evidence of the acts of BBF complained of by WZI, and cannot assist me with the question of genericism at the relevant date.

In relation to (v), the Defendants have shown in their Reply to Defence that the screenshot on the khego.co.uk is in fact of WZI’s own Mountain Pear product, having found a wider shot on the same website which shows the WZI branding. I accept that it is. They submit that the two screenshots from myexoticfruit.com and one from Hengxin.com are also likely WZI’s own product, despite the Defendants’ description of them as unbranded. It certainly looks as though they could be. The zing-asia.co.uk screenshot, described by the Defendants as showing Mountain Pears, refers to “fresh Chinese Pear”. In my judgment none of these are reliable evidence of generic use.

WZI submits that not only is there is no evidence to show that C’s Marks were generic at the relevant date or any other material time, there is no evidence at all to show that a cause of any such generic use was due to WZI’s acts or inactivity. It relies on the evidence of Mr Zeng Wang, upon which he was not challenged in cross-examination, that when WZI had found other companies using C’s marks, it had instructed its solicitors to enforce its rights by sending letters before claim. Mr Zeng Wang was not challenged on his evidence that he had only found three companies using C’s Marks without consent in the UK, of which BBF was one.

In my judgment there is no cogent evidence, as required by Rousselon v Horwood, to support the Defendants’ case on this issue and the Defendants have not come close to satisfying me that any of C’s Marks had become generic by 30 January 2025. Accordingly I do not need to carry out the next step of the analysis to consider whether a cause of any such genericism is the acts or inactivity of WZI.

For all those reasons the answer to Issue 9 is “No”.

S.3(6) TMA provides an absolute ground for refusal of a registration “if or to the extent that the application is made in bad faith” and the court may invalidate a registration if it is satisfied that the application was made in bad faith. Once again, because C’s Marks have been registered, they are presumed to be valid unless proven otherwise, and as the Defendants seek to invalidate them on this basis, the burden is on them. The relevant time to determine bad faith is at the filing date for the relevant registration, in this case Relevant Date 1 for Mark 1 and Mark 2 and Relevant Date 2 for Mark 2 and Mark 3.

I accept WZI’s submission that there is no definition of bad faith under the TMA, but there are numerous authorities that have provided guidance. The leading authority is the Supreme Court’s judgment in Skykick UK Ltd and Anor v Sky Ltd and Ors [2024] UKSC 36, and [153]-[156] of the judgment of Lord Kitchen are instructive on the point. The motive or intention of the applicant is of key relevance, and bad faith will 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…”. This is not an exclusive list but it gives a useful flavour of the type of intentionality required.

The Defendants’ pleaded case at paragraph 37 of the Counterclaim is that WZI applied for C’s 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”. It sets out a number of trade mark applications of WZI that it relies on, at paragraph 37 (c) of the Counterclaim. This includes two applications which were successfully registered, for SNOW PEAR UK00003672292 (application dated 22 July 2021) and RED FRAGRANCE UK00003863770 (application dated 1 January 2023), and two applications which were refused, for CENTURY PEAR UK00003944396 (application dated 10 August 2023) and YA PEAR UK00003944401 (10 August 2023).

It then pleads at paragraph 37(e) that WZI applied for C’s Marks “…not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, including the Defendants, including, without limitation, preventing the Defendants from using the names of the generic varieties of pears when importing said pears, and to deliberately divert trade away from the Defendants.”.

There are two points to make about the pleaded case.

Firstly, I have found that Mark 1 and Mark 2 were invented by Mr Zeng Wang and are not the name of a pear variety, so cannot be relevant to the Defendants’ pleaded case that the bad faith is to establish an illegitimate monopoly over the import of generic varieties of fruits or preventing third parties from using the names of generic varieties of pears. I am satisfied that s.3(6) Counterclaim cannot succeed against Mark 1 and Mark 2.

Secondly, SNOW PEAR and RED FRAGRANCE were registered by the UKIPO and so are presumed valid and so cannot be used as evidence of a pattern of seeking to establish an illegitimate monopoly, in my judgment.

In terms of the evidence the Defendants rely on, they put forward no evidence of WZI or Mr Zeng Wang’s intention, but appear to ask the Court to infer it from the fact of the trade mark applications relied on. However, Mr Zeng Wang’s evidence in his witness statement was that when the applications for C’s Marks and these other marks were made, “I did not consider that they would be perceived as generic varieties of pear or any other fruit in the UK”, and this evidence was not challenged in cross-examination and there is no other evidence to gainsay it. Accordingly I accept it. That is fatal to the Defendants’ case on this issue, in my judgment, as this evidence is inconsistent with the intentionality required to make out bad faith as pleaded.

For completeness, I also note that the Defendants exhibited documentation to support their case that the applications for other trade marks were for marks which were varieties of pear, being a single printout from a website for each application. For example, an undated article about a “20^th Century Pear” was relied on to support their case on CENTURY PEAR. However, none of this documentation was put to Mr Zeng Wang in cross-examination. He was not, in fact, asked any questions at all about these applications for other trade marks or the pleaded case on bad faith and Mr Bingtao Wang did not address bad faith in closing submissions. It seems that the Defendants abandoned it.

In any event, for the reasons I have set out, the Defendants have not satisfied me that the applications for C’s Marks were made in bad faith and so the answer to issue 10 is “No”. The Counterclaim under s.3(6) TMA will be dismissed.

It follows that I am satisfied that the registrations of C’s Marks are validly registered in accordance with s.47(1) TMA and s.46(1)(c) TMA

I do not really understand why this remains an issue in the case, given that the Defendants have admitted that they have used, in the manner complained of, without WZI’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 C’s Marks, and there is authority from the CJEU in Anheuser-Busch v Budejovicky Budvar Narodni Podnik Case C-245/02 to this effect. It held that where the court confirms 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 is ‘Yes”.

Mr Syed for WZI has made extensive and learned submissions in writing and orally in relation to this issue. He has been careful to highlight the nuanced distinctions between this defence and that under s.3(1)(c), the requirement that use is in accordance with honest practices, and to take me through the authorities that he relies on, including Anheuser-Busch and Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch), before seeking to anticipate the arguments that the Defendants may make and answer them. I am grateful to him for his efforts.

However, the Defendants simply did not pursue this defence at trial. There is nothing in their skeleton argument about it save two lines noting that s.11(2)(b) is an issue to determine, and Mr Bingtao Wang did not address this defence in his opening or closing submissions. The Defendants pleading is nothing more than a recital of the statutory provision and it is not particularised. It is for the Defendants to plead, particularise and argue their defence and they have not done so. For those reasons I dismiss it without further consideration.

The Supreme Court in Lifestyle Equities CV v Ahmed [2024] UKSC 17 clarified the law on joint tortfeasorship, holding that in order 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. As Lord Leggatt (giving the leading judgment and with whom the other members of the Court agreed) explained at [137]:

“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.”

WZI pleads that Mr Bingtao Wang and Mr Sohi acted in common design with BBF and directed, procured, and authorised the acts of BBF complained of such that they are jointly and severally liable with BBF.

WZI submits that :

As I have stated in my summary of the evidence, the Defendants submit that Mr Bingtao Wang and Mr Sohi did not carry out any of the infringing acts personally and that Mr Sohi only had a minor role in the company carrying out administrative and logistics work and was not a director of BBF, although he is an officer of it as company secretary.

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.

I find that Mr Bingtao Wang is jointly and severally liable for the actions of BBF as a joint tortfeasor but Mr Sohi is not a joint tortfeasor and is without liability.

The result is that:

I will hear submissions on interests, costs, and any consequential orders (including delivery up/destruction, dissemination and publication and directions for a quantum trial) at the handing down of this judgment.

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

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.

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.

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.

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.

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.

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

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.

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.

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

Accordingly, whether C’s Marks are or were validly registered in accordance with s.47(1) and/or s.46(1)(c) TMA.

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.

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.

Whether the use of the Alleged Infringing Signs by the Defendants is in accordance with honest practices in industrial and commercial matters.

Accordingly, whether the defendants have a defence in accordance with s.11(2)(b) TMA.

Whether Mr Bingtao Wang and Mr Sohi are primary infringers in relation to the alleged acts of trademark infringement.

Whether Mr Bingtao Wang and Mr Sohi acted in common design with and or directed, procured or authorised the acts of BBF.

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.

Accordingly, whether Mr Bingtao Wang and Mr Sohi are jointly and severally liable for the actions of BBF.