IN THE HIGH COURT OF FIJI
(SUVA)
CIVIL JURISDICTION

ACTION NO. 491 OF 1993

BETWEEN:

PACIFIC FISHING COMPANY LIMITED
PLAINTIFF

AND:

B. KUMAR (FIJI) LIMITED
FIRST DEFENDANT

AND:

J. SANTARAM (STORES) LIMITED
SECOND DEFENDANT

Mr. J. Howard for Plaintiff
Mr. Chandra for both Defendants

RULING

This is an application by the First Defendant/Respondent and the Second Defendant/Respondent for an Order of Dissolution of Restraining Order and an Injunction.

This case arises out of the sale by the Defendants/Respondents of canned fish in cans which are labelled in such a way as to make them (according to Plaintiff) "deceptively similar" to the Plaintiff's product. The First Defendant's product was sold under the "Sun Ben Tuna Flakes" label, and the Second Defendant's product under the "Reshma Tuna Flakes" label.

On 10 September, 1993, I granted the Plaintiff, on an ex-parte application two orders:

(1) an injunction pending further order restraining the Defendants from selling and distributing "Sun Ben Tuna Flakes" and "Reshma Brand Tuna Flakes";

(2) an Anton Piller order allowing the Plaintiff to uplift and hold in safe custody the then existing "Sun Ben" and "Reshma" cans of tuna flakes in the Defendant's possession, power and control.

The affidavits filed on behalf of the First and Second Defendants are virtually identical. Both affidavits also seek an Order that the Statement of Claim filed by the Plaintiff as the substantive action be dismissed by this Court.

The First Defendant submitted that the restraining order granted by this Court on 10th day of September, 1993 be dissolved and claim dismissed on the following grounds:-

(a) That the mark "Sun Ben" subject to Application No. 24911 is not confusing and deceptively similar to the mark "Sun Bell" which is registered by the Plaintiff and has restrictive right to protection under the Trade Mark Act.

(b) That the Registrar of Trade Mark on 4th of October, 1993 approved the said mark "Sun Ben" as the Approval No. 24911 given to the First Defendant without any conditions.

(c) That the First Defendant has not breached the protection of the mark as the Plaintiff does not have exclusive rights to the colour scheme of the mark. It is subject to reservations as shown in the Certificate of Registration.

(d) The marks "Sun Ben" and "Sun Bell" do not sound or look alike therefore there is no likelihood of deception or confusion.

(e) The name "Ben" in "Sun Ben" is the personal Christian name of the Managing Director of B. Kumar (Fiji) Ltd., therefore it should be allowed to use the said name on the mark.

(f) The whole colour scheme of the label is very distinctive and unique in comparison to the mark of "Sun Bell".

(g) The Plaintiff is under the wrong assumption and mistaken belief that its mark "Sun Bell" has been used by the First Defendant for gain of market of its own product.

Mr. Chandra further submitted for the First Defendant that "the fact that the two marks have common factors (prefix) and convey the same idea is not sufficient in itself to create deceptive resemblance between them." This principle was propounded in the case of Cooper Engineering Ltd v. Sigmund Pump Ltd (1952) 86 Cr. 536 from the High Court of Australia........... Parker, J. in Pionist Co. Ltd's application (1906) 23 RPC 774 at 777 held that the marks "Woodlife" and "Timberlife" are quite different in look and pronunciation. His Lordship further said that:

"You must take the two words. You must judge them both by their look and their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would likely to buy those goods. In fact you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. "

In Cooper Engineering (Supra) the similarity of the mark is just merely a factor to be taken into account in the overall assessment of the likelihood of deception.

The mark "Sun" is not a mark on its own registered by anyone and the mark "Ben" is a very distinguishable mark in the Supermarket world in Fiji. The product "Sun Ben" is mostly sold in Supermarket where the customers have the opportunity to choose the product and make an offer to buy after selecting it first. The First Defendant also sells both products "Sun Ben" and "Sun Bell" on the same shelf. There is no connection at all between "Ben" and "Bell".

The prefix "Sun" is common which prefix or its own word cannot be registered as a mark under the Trade Marks Act. The suffix is a completely different word with different meaning and different mark so as a whole according to Cooper Engineering (supra) the marks do not look alike or sound alike.

To further support this argument Mr Chandra referred to the case of Harry Reynolds v. Lappeatys Ltd (1958) RPC 387 Upjohn, J. (as he was then) had very similar Submission before him and his Lordship expounded thus:

" Then it is said if you cannot claim a broad protection for that idea but you can only acquire a monopoly in the particular way it is said, with a word which has this tinge of descriptiveness the Plaintiff, the registered proprietor, must be strictly circumscribed and the Court will not readily assume that confusion will result where there are differences."

His Lordship held that the principle developed in Cooper Engineering (supra) was clearly established that the presence of the common idea between two marks is not solely determinature of the likelihood of deception or confusion between them and that if the common idea describes or refers to some character or attribute of the relevant goods then quite small differences may suffice to distinguish between the mark and to avoid the likelihood of confusion.

Mr Chandra contended that Plaintiff is not legally entitled to protection as a mark of the whole colour scheme as portrayed on the label.

The only relevant registered Trade Mark in question is T.M. No. 8657 which only gives a limited right of protection to the Plaintiff of the mark "Sun Bell". The whole colour scheme is not protected under the Trade Mark Act. The Plaintiff has no legal right to rely on the whole colour scheme of the "Sun Bell" label, therefore not entitled to maintain an injunction against the First Defendant. The First Defendant has not breached any legal rights of the Plaintiff under the Trade Mark Act. The Certificate of Registration of Plaintiff's Trade Mark No. 8657 clearly specifies at the bottom of the certificate that:-

"Registration of this Trade Mark shall give no right to the exclusive use of all descriptive matter including the device of fish."

The Court has the discretion depending on the circumstances of the case whether the interim injunction should remain with or without qualification or should the Plaintiff be left to its remedy in damages.

The principles have been clearly laid down by the House of Lords in American Cyanamid Co v. Ethicon Ltd (1975) A.C 396. In that case the Court decided that the matter of this nature are determined on the balance of convenience and if damages are an adequate remedy sought in the Writ the interim injunction shall not be sustained.

The summing up of the principles stated in the American Cyanamid (supra) were considered by the Court of Appeal in Fellows & Son v. Fisher (1976) Q.B. 122 and has been summarised by Brown, J. as follows:-

Lord Diplock then laid down a series of principles on which the discretion should be exercised:

"(1)As to that (i.e. the balance of convenience) the governing principle is that the Court should first consider whether if the Plaintiff succeeds at the trial, he would be adequately compensated by damages for any loss caused by the refusal to grant an interlocutory injunction. If damages-------would be adequate remedy and the Defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the Plaintiff's claim appeared to be at that stage.

(2) If, on the other hand damages would not be an adequate remedy, the Court should then consider whether, if the injunction were granted, the Defendant would be adequately compensated under the Plaintiff's undertaking as to damages. "

If damages in the measure recoverable under such an undertaking would be an adequate remedy and the Plaintiff would be in a financial position to pay them, there would be no reason on this ground to refuse an interlocutory injunction.

"(3) It is where there is doubt as to the adequacy of the respective remedies in damages----------- that the question of balance of convenience arises. It would be unwise to attempt even to list all the various matters which may need to be taken into consideration in deciding where the balance lies, let alone to suggest the relative weight, to be attached to them. These will vary from case to case.

(4) Where other factors appear to be evenly balanced it is a counsel of prudence to take such measures as are calculated to preserve the status quo.

(5) The extent to which the disadvantages to each party would be incapable of being compensated in damages in the event of his succeeding at the trial is always a significant factor in assessing where the balance of convenience lies.

(6) -------- if the extent of the uncompensatable disadvantage to each party would not differ widely, it may not be improper to take into account in tipping the balance the relative strength of each party's case is revealed by the affidavit evidence adduced on the hearing of the application. This, however, should be done only when it is apparent on the facts disclosed by evidence as to which there is no credible dispute that the strength of one party's case is disproportionate to that of the other party.

(7) -------- in addition to (the factors) to which I have referred, there may be many other special factors to be taken into consideration in the particular circumstances of individual cases." (1975) 2 AER 829, 840-841.

Mr Chandra also submitted that other special factors that could be taken into account in favour of the First Defendant are:

(a) That it is in a position to pay damages, if any that may be awarded against it;
and

(b) That First Defendant is also promoting and selling the product "Sun Bell" in its own Supermarket.

He urged this Court to allow the First Defendant to sell the products with the same mark until the stock is exhausted, as it is unreasonable for the Plaintiff to hold on to the product until this case is disposed of, while the First Defendant is suffering huge losses to the sale of "Sun Ben" products.

Since the affidavits filed on behalf of both Defendants are virtually identical the arguments advanced on behalf the First Defendant are adopted by the Second Defendant, except that the Second Defendant's product is "Reshma Tuna Flakes".

Both Defendants submit that they have raised a number of triable issues to this Court. The First Defendant argues that it is entitled to the Registration of the Trade Mark "Sun Ben" by law, The Second Defendant maintains that it has not breached the Plaintiff's Trade Mark "Sun Bell" as its mark "Reshma" is registered. Both Defendants urged the Court that the injunction it granted in favour of Plaintiff be dissolved and the action filed herein against them be dismissed.

In the alternative the Court could allow the sale of the products labelled "Sun Ben" and "Reshma" until the stocks imported are exhausted and they would undertake not to import the products with the same marks until the determination of this action.

The Plaintiff in its affidavit submits that the test for determining the grant of the injunction is the one propounded by the House of Lords in American Cyanamid (Supra):

(a) is there a serious question to be tried;

(b) if so, where does the balance of convenience lie.

SERIOUS QUESTION TO BE TRIED

Plaintiff submitted that serious triable issues are raised on the Defendants own material.

By reference to the affidavit of Mr Baleivanualala filed on behalf of the Plaintiff, the Plaintiff says in effect:

(a) That it has sold "Sun Bell" Tuna Flakes since 1978.

(b) This brand-name product has been produced in large quantities and sold throughout the South Pacific, particularly in Fiji.

(c) That, since its launch, the brand-name "Sun Bell" and the logo and packaging design used with it have attained a high degree of market recognition and acceptance.

(d) That in 1980, the Plaintiff obtained registration of its "Sun Bell" marks and logos, and in particular the "Sun Bell Tuna Flakes" brand, and that these logos have acquired a distinctive reputation.

Against these background facts, the Plaintiff submits that the First Defendant in distributing the "Sun Ben Tuna Flakes" and the Second Defendant in distributing the "Reshma Brand Tuna Flakes" have rendered themselves under each of the Plaintiff's causes of action:

(a) Breach of Trade Mark;

(b) Breach of Sections 54 and 56 of the Fair Trading Decree;

(c) Passing off.

Plaintiff further submits that:

(i) the pictorial layouts on the "Sun Ben" and "Reshma" cans are so similar to the Plaintiff's registered trademarks as to constitute a breach of the trademark;

(ii) in distributing the cans which, in colour and design, are so similar to the Plaintiff's, the Defendants have engaged in conduct which is misleading and deceptive or likely to mislead and deceive, and therefore in breach of Section 54 of the Fair Trading Decree;

(iii) in distributing the subject cans, the Defendants have attempted to associate their products with the good-will and market reputation of the Plaintiff's product, i.e. have attempted to "pass off" their products as the Plaintiffs.

The Defendants in their material in this application deny the market reputation of the Plaintiff's product, and the similarities between the labels on their products and the Plaintiffs. By putting these matters in issue, the Defendants themselves have raised serious triable issues as to two matters which are central to the Plaintiff's three causes of action.

The Plaintiff therefore submits that the only matter which need to be considered is in whose favour does the balance of convenience lie?

It is evident from the material contained in the affidavits filed on behalf of the Plaintiff and Defendants that there are serious issues to be tried. There is no dispute on that at all and I agree that both parties have raised serious triable issues.

I agree with the Plaintiff that the only matter which needs to be considered is in whose favour does the balance of convenience lie?

The Plaintiff and both Defendants are all substantial business holdings, and any loss which they may suffer either as a consequence of the awarding of injunction or its dissolution could be adequately compensated for in damages.

I my view the risk of damage to the Plaintiff and Defendants are evenly matched in this case. I am therefore persuaded to rely on the final paragraph of Lord Diplock's speech quoted above:

"Where other factors appear to be evenly balanced it is counsel of prudence to take such measures as are calculated to preserve the status quo. If the Defendant is enjoined temporarily from doing something that he has not done before, the only effect of the interlocutory injunction in the event of his succeeding at the trial is to postpone the date at which he has not previously found it necessary to undertake; whereas to interrupt him in the conduct of an established enterprise would cause much greater inconvenience to him since he would have to start again to establish it in the event of his succeeding at the trial."

In all the circumstances of this case and the material put forward by the Plaintiff and Defendants in their affidavits, I find that the balance of convenience favours the Plaintiff. At the same time I have some sympathy for the Defendants regarding their stocks in the custody of the Plaintiff. I therefore make the following Orders which I believe will be to the convenience of both Plaintiff and Defendants to some extent.

(a) The application to dissolve the injunction I made in favour of Plaintiff on 10 September, 1993 is dismissed.

(b) Both First Defendant and Second Defendant are allowed the sale of their products labelled "Sun Ben Tuna Flakes" and "Reshma Brand Tuna Flakes" respectively until their stocks imported are exhausted. Both Defendants undertake not to import their products with same mark until the determination of the action.

In view of the above, I will make no order as regards the Defendant's application for dismissal of the Plaintiff's claim.

I make no order as to cost.

S W Kepa
JUDGE

27th September, 1994
HBE0491D.93S