|
|
Home
| Databases
| WorldLII
| Search
| Feedback
National Court of Papua New Guinea |
PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]
OS 2 OF 2008
BETWEEN:
BRITISH AMERICAN TOBACCO (PNG)
LIMITED for itself and on behalf of
BRITISH AMERICAN TOBACCO
AUSTRALIA SERVICES LIMITED
Plaintiff
AND:
TST 4 MILE LTD
Defendant
Waigani: Hartshorn J.
2012: 17th October
2013: 2nd May
Trial – declaratory and injunctive relief sought – whether breach of s.53(1) Trade Marks Act – counterfeit cigarettes located in a container imported from China – whether defendant in possession of container or its contents
Facts:
The plaintiff seeks declaratory and injunctive relief against the defendant in relation to counterfeit "Pall Mall" cigarettes that were seized by Papua New Guinea Customs in September 2007. The substantive relief sought is a declaration that the defendant is in breach of s. 53 (1) Trade Marks Act by virtue of its use of the counterfeit cigarettes that were located in a container which the defendant had imported from China. The defendant denies that it imported the counterfeit cigarettes into Papua New Guinea and used the counterfeit cigarettes as alleged. It opposes the relief sought and seeks that the plaintiff's further amended originating summons be dismissed.
Held:
1. It has not been proved on the balance of probabilities that the defendant was in possession of the container or the cigarettes in the container.
2. The relief is dismissed with costs.
Cases cited:
Papua New Guinea Cases
Wassey v. Police (2005) N2922
Overseas Cases
Queen v. Boyce [1976] 15 SASR 40
Counsel:
Mr. D. Wood, for the Plaintiff
Mr. D. H. Katter and Mr. J. Brooks, for the Defendant
2nd May, 2013
1. HARTSHORN J: The plaintiff British American Tobacco (PNG) Ltd for itself and on behalf of British American Tobacco Australia Services Ltd (collectively referred to as BAT) seeks declaratory and injunctive relief against the defendant TST 4 Mile Ltd (TST) in relation to counterfeit "Pall Mall" cigarettes that were seized by Papua New Guinea Customs in September 2007.
2. The substantive relief sought is a declaration that TST is in breach of s. 53 (1) Trade Marks Act by virtue of its use of the counterfeit cigarettes that were located in a container which TST had imported from China.
3. TST denies that it imported the counterfeit cigarettes into Papua New Guinea and used the counterfeit cigarettes as alleged or at all. It opposes the relief sought and seeks that BAT's further amended originating summons be dismissed.
4. Section 53 (1) Trade Marks Act is as follows:
"53. INFRINGEMENT OF TRADE MARKS.
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to the trade mark, in the course of trade, in relation to goods in respect of which the trade mark is registered."
5. BAT submits that in order to demonstrate that TST infringed s. 53 (1) Trade Marks Act, this court needs to be satisfied of the following issues on the balance of probabilities:
a) BAT is the registered proprietor in Papua New Guinea of the "Pall Mall" trade mark;
b) the cigarettes found in the container are counterfeit cigarettes packaged with the "Pall Mall" trade mark;
c) TST was in possession of the cigarettes; and
d) TST's possession of the counterfeit cigarettes, constitutes an unauthorised use and infringement of BAT's "Pall Mall" trade mark.
6. It is not disputed by TST that BAT is the registered proprietor in Papua New Guinea of the "Pall Mall" trade mark and that the cigarettes found in the container are similar to the cigarette products produced by BAT.
Whether TST was in possession of the counterfeit cigarettes
7. BAT submits that:
a) TST had possession and control of all goods in the container by virtue of the definition of "owner" in s. 1 Customs Act which is as follows:
" "owner", in relation to goods, includes any person (other than an officer of Customs acting in an official capacity) being or holding himself out to be the owner, importer, exporter, consignee, agent or person possessed of, beneficially interested in, or having any control of, or a power of disposition over, the goods;"
b) on the evidence of Benjamin Sine, the Director of Customs Intelligence, it is clear that members of TST and representatives of TST's agent were present when the container was opened. In addition, the notice of assessment addressed to TST and TST's actions in complying with the regulatory process by the completion of customs forms, confirms TST's acknowledgement that it was the owner of the goods in the container.
c) the 1993 New Shorter Oxford English Dictionary definition of possession includes: ".... the action or fact of possessing something; the holding or having something as one's own or in one's control....", and submits that it follows that TST was the consignee of the container and was in possession of all the goods in the container.
d) for the purpose of an infringement under s. 53 (1) Trade Marks Act, it is not necessary to prove that TST "knowingly" imported the cigarettes. Notwithstanding this, BAT submits that from the evidence as to Mr. Neville Seeto's conduct and from what was said by Messrs Tan and Ang to Mr. Penrose, it can be inferred that Mr. Seeto knowingly himself or on behalf of TST, arranged for the shipment of cigarettes to Port Moresby.
e) that possession in criminal cases, which this is not, is a question of fact. Reference is made to the case of Queen v. Boyce [1976] 15 SASR 40 in which Bright J. stated:
"Possession is a question of fact and I adopt what Walters J said so aptly in Twining v Samuels: "It seems to me that in determining whether the appellant was in possession of the alleged drug, one must look at the whole of the circumstances, as a matter of practical common sense. The circumstances to be taken into account in this process of reasoning include all the facts and matters which were found by the learned Special Magistrate [to] form constituent facts or ingredients of the transaction itself or [to] explain or make intelligible the course of conduct pursued by the appellant. In the present case the facts all seem to be one way"
8. TST submits that:
a) there is no evidence at all that TST attempted to import cigarettes into Papua New Guinea. All of the evidence is that TST sought to import disposable nappies.
b) there is no evidence at all that anybody connected with TST was in any way associated with the counterfeit cigarettes.
c) TST had a container consigned to it for nappies. The container arrived in Port Moresby containing nappies, but also containing cigarettes.
d) TST never took possession of the container from the wharf at Port Moresby. Rather, the container was opened by Customs officials before TST had the container delivered to its yard.
e) TST is no more responsible for the container arriving with nappies in it, than it would be if it had ordered a taxi and the taxi that arrived had an illegal substance in the boot. Moreover, in this matter TST never even met with the "taxi" in that hypothetical, before it was stopped by Police.
f) BAT and/or Customs have subsequently checked TST supermarkets for counterfeit cigarettes and none were found
g) the evidence is that the container Security Seal was changed en-route between China, Singapore, Lae (where it remained for 7 days) and Port Moresby.
h) the container was opened at Port Moresby by officers from Customs Papua New Guinea. At the time it was opened the container had a Security Seal numbered 39142B. The Bill of Lading for the same container states that the Security Seal when it was loaded in Dalian, China was a different number, 257385. The inference is that the Security Seal on the container was changed between the time the container had its original Security Seal attached and was loaded onto the ship in China and at some point when the container was on route from Dalian China, to Singapore, then to Lae (where the container remained for 7 days) and then ultimately to Port Moresby. The container could have been opened and re-sealed at any of several ports on its voyage.
i) TST does not know how the cigarettes came to be in the container, and TST had nothing to do with the cigarettes at all.
9. As to possession at law TST submits that where an act is illegal, such as the importation of cigarettes that are counterfeit, liability would not accrue to a corporate entity unless the illegal actions were within the actual authority of the authorised representatives, agents and/or servants. If such actions were not within the actual authority of such authorised representatives, then other authorised representatives must have acquiesced or waived the illegality subsequently. Neither of those hypothetical factual circumstances has been pleaded. Further, there is no evidence from BAT such as to establish those facts. There was no evidence at all that TST attempted to import purportedly counterfeit cigarettes.
Discussion
10. As to the definition of "owner" in the Customs Act, I am not satisfied that it assists BAT. The definition is for the purpose of the Customs Act and although it includes amongst others, a person possessed of or having any control of or over goods, I fail to see how by virtue of the definition it can be said that TST had possession and control of all the goods in the container as submitted by BAT.
11. As to TST's actions in complying with the regulatory process confirming that it was the owner of the goods, the evidence is that the requisite forms that were completed related to nappies. The inference is that TST was the owner of the nappies in the container. There was no reference to any cigarettes. Further, the presence of representatives of TST when the container was opened is indicative of no more than that they were expecting the container, and for it to contain nappies that had been ordered.
12. The evidence of Mr. Benjamin Sine as to what occurred in Lae when the container arrived and including that he directed his officers in Lae to keep watch on the container but not to inspect it, in my view is to be considered with caution, given that Mr. Sine stated in cross-examination that he did not travel to Lae at that time. Further, his evidence concerning the vessel upon which the container was shipped from Singapore to Lae is at variance with that of Mr. John Matthew. Mr. Matthew's evidence is amongst others, that the container was shipped from Singapore to Lae on board the "Pacific Adventurer" and not the "Tasman Commander" as deposed to by Mr. Sine. Mr. Matthew's evidence is based upon the cargo manifest that was printed from Steamships Shipping computer system. The cargo manifest was generated through the Port of Singapore for the subject container.
13. Further, as to the evidence of Mr. Michael Aldan, who was the National Security Manager for BAT at the relevant time, his evidence that the container could not possibly be tampered with while in transit, is based upon his belief that given the amount of cigarettes that he saw in the container, it would have involved amongst others, some hours, a lot of people, a large truck and the removal of the container from other containers to enable the cigarettes to be loaded. In cross-examination, Mr. Aldan conceded that he did not know that the container had remained in Lae for 7 days and that he was not in Dalian, China, Singapore or Lae when the container was at those ports. Similarly, in my view, his evidence should be treated with caution.
14. It is not disputed that the Security Seal on the container when it was opened by Customs officials in Port Moresby was 39142B but that the Security Seal for the same container on the requisite bill of lading for the container's shipment from Dalian, China was 257385. The evidence of Mr. John Matthew, the National Sales and Marketing Manager for Steamships Shipping, who has more than 25 years experience in the shipping industry, primarily in relation to liner container and agency services is amongst others, that:
"... 257385 is the seal number on the container. The seal is placed on a container by the shipper or their appointed contractor for security reasons. The seal is either a metal band strip seal or a bolt seal that goes through the locking mechanism on the container.
If the seal is intact at the point of destination the consignee knows the container has not been tampered with in transit."
15. Given that the Security Seal number at the point of destination, Port Moresby, is not the same as the Security Seal number given on the bill of lading for the container when it was loaded in Dilian, China, the consignee TST, and indeed, this court, cannot know that the container has not been tampered with in transit.
16. There is no evidence that explains amongst others, why the Security Seal number is different, whether the Security Seal was changed, whether the bills of lading and the cargo manifest all incorrectly record the Security Seal number and if so why. Counsel for BAT submits that there is a mistake, but there is no evidence of this.
17. There is no evidence that TST or any one on its behalf had access to the container after it was loaded onto the vessel the "Viking Merlin" in Dalian, China and until it arrived on the vessel the "Morobe Coast" in Port Moresby. When it arrived in Port Moresby, the container was opened by Customs officials. TST or anyone on its behalf had not had access to the container before then.
18. When regard is had to the definition of possession relied upon by BAT, on the evidence, I am not satisfied that TST actually or factually possessed, or held or had as its own or in its control the cigarettes that were in the container. There is no evidence that TST ordered the cigarettes, or knew that they were in the container, or had access to the container at all, or had control of the container or cigarettes before or after the container left Dalian, China. There is an inference that the Security Seal on the container was changed and that the container could have been opened and resealed at any of several Ports on the container's voyage.
19. In Wassey v. Police (2005) N2922, Cannings J. considered the definition of possession. His Honour stated that:
""Possession" of something means:
The notion of de facto possession..... ties in with the normal and natural meaning of the word, which when used as a noun means "the state of possessing something - visible power or control, as distinct from lawful ownership (Concise Oxford English Dictionary, Oxford University Press, 2004.)"
20. Constructive possession not being relevant here, on the evidence in this case, I am not satisfied that TST had physical custody or visible power or control over the container or the cigarettes. As to the submission that from the evidence concerning Mr. Neville Seeto's conduct, it can be inferred that he arranged for the shipment of cigarettes to Port Moresby, notwithstanding that his conduct may be considered to be irregular or that his actions did not constitute what may be considered as good business practice, to my mind there is nothing in the evidence upon which the inference can be made that Mr. Seeto arranged a shipment of cigarettes. Further, as to the words allegedly spoken to Mr. Penrose, the evidence is that the words that were allegedly said by Messrs Tan and Ang were said after the cigarettes had been discovered. In my view, they at best constitute the suspicions or beliefs of Messrs Tan and Ang. At the time that these words are alleged to have been said, officers and employees of TST would have only recently realised the possible ramifications for TST of the discovery of the cigarettes and would be attempting to explain the discovery. In such an environment, suspicions and beliefs concerning the cause of a matter are more likely to be made without factual basis. I therefore do not place much weight on the words allegedly spoken.
21. For the above reasons I am not satisfied that it has been proved on the balance of probabilities that TST was in possession of the container or the cigarettes in the container.
22. As the possession issue is one of four issues in respect of which BAT submits that this court needs to be satisfied before it can find that TST infringed s. 53(1) Trade Marks Act, BAT has failed to meet its own requirements by not satisfying the court on all four of these issues. Consequently it is not necessary for me to consider the remaining issue of unauthorised use or the other submissions of counsel. The relief sought should be dismissed with costs. As to the certification of costs of overseas counsel, sought by TST, I am not satisfied that a case has been made out for such certification.
Orders
23. The Orders of the Court are that:
a) the further amended originating summons of the plaintiff filed 29th March 2011 is dismissed.
b) the costs of and incidental to the hearing of the further amended originating summons are to be paid by the plaintiff to the defendant to be taxed if not agreed.
___________________________________________________________
Ashurst Lawyers: Lawyers for the Plaintiff
Gadens Lawyers: Lawyers for the Defendant
PacLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.paclii.org/pg/cases/PGNC/2013/67.html