Wang Zeng International Limited v Bing Bing Foods Limited & Ors

Registered trade marks are prima facie valid, so a party seeking invalidity or revocation bears the evidential burden. Descriptiveness and genericism must be assessed at the relevant statutory date through the perception of the relevant public. Later trade usage does not establish that a mark was descriptive or customary at an earlier filing date. A finding of genericism requires cogent evidence, including evidence that the mark has become a common name and, for revocation under Trade Marks Act 1994, that this resulted from the proprietor’s acts or inactivity. For joint tortfeasor liability, an accessory must know the essential facts making the conduct wrongful. A director who controls the infringing business may be jointly liable; an officer performing only administrative and logistical functions, without control over the infringement, may not be.

Wang Zeng International Limited owned four UK trade marks for the signs “Mountain Pear”, its Chinese equivalent, “Yu Lu Fragrant Pear” and its Chinese equivalent, covering fruit and related retail services. Bing Bing Foods Limited imported and supplied fruit using signs identical to three of those marks. The company, its sole director Bingtao Wang and company secretary Navdeep Singh Sohi challenged the marks’ validity and relied on the descriptive-use defence under section 11(2)(b) of the Trade Marks Act 1994. Wang and Sohi also denied joint tortfeasor liability.

The court had to determine validity, genericism, bad faith, infringement, the section 11(2)(b) defence and the personal liability of the two individual defendants.

1. Validity. The registrations were prima facie valid under section 72 of the Trade Marks Act 1994, placing the burden on the defendants. The evidence did not show that “Mountain Pear” or its Chinese equivalent was descriptive, devoid of distinctive character or customary at 5 December 2019. Nor did it show that “Yu Lu Fragrant Pear” or its Chinese equivalent was descriptive, devoid of distinctive character or customary at 22 July 2021. The relevant public was the general public buying everyday fruit and related services. Evidence arising after those dates could not establish the position at the filing dates.
2. Genericism and bad faith. The defendants failed to provide cogent evidence that any mark had become a common name in the trade by 30 January 2025, or that any genericism resulted from WZI’s acts or inactivity. The bad-faith counterclaim also failed. “Mountain Pear” had been invented as a brand name, and there was no evidence that WZI intended to obtain an illegitimate monopoly over generic pear varieties.
3. Infringement. BBF had admitted use, in the course of trade and without consent, of signs identical to Marks 1, 2 and 3 in relation to identical goods. That use was liable to affect the essential functions of the marks. The section 11(2)(b) defence was dismissed because it had not been pleaded, particularised or pursued at trial.
4. Joint tortfeasance. Applying Lifestyle Equities CV v Ahmed [2024] UKSC 17, the accessory must know the essential facts making the acts wrongful. Wang, as BBF’s sole director, shareholder and controlling mind, knew of the marks and objections and directed, procured and authorised the infringement. Sohi knew of the dispute but exercised only administrative and logistical functions and lacked control over BBF’s conduct.
5. The court declared infringement by BBF, found Wang jointly and severally liable, granted an injunction against BBF and Wang, dismissed the claim against Sohi and dismissed the counterclaim. Consequential matters were reserved.

First-instance liability judgment. The judgment records that a case management conference before His Honour Judge Hacon on 7 July 2025 removed the section 10(2), section 10(3) and passing-off claims from the trial.