Lees Trading Company Ltd v Universal Printing Press Ltd [1992] FJHC 65; Hbc0547j.92s (24 December 1992)

IN THE HIGH COURT OF FIJI
(AT SUVA)
CIVIL JURISDICTION

ACTION NO. 547 OF 1992

BETWEEN:

LEES TRADING COMPANY LIMITED
Plaintiff

AND

UNIVERSAL PRINTING PRESS LIMITED,
SUNSHINE BAKERIES LIMITED AND
MORRIS HEDSTROM LIMITED
Defendants

Mr. H.K. Nagin: For the Plaintiff
Mr. S. Lateef: For the First and Third Defendants
Mr. S. Parshotam: For the Second Defendant

Date of Hearing: 22nd December 1992
Date of Interlocutory Judgment: 24th December 1992

INTERLOCUTORY JUDGMENT

On the 24th of December 1992 I gave short oral reasons for dismissing the Plaintiff's application for an Interim Injunction and stated that I would publish my detailed reasons later; I now do so.

This is an application for an Interlocutory Injunction in which the Plaintiff seeks to restrain the Defendants from printing, packaging or in any manner whatsoever using cake boxes described as M.H. Fruit Cake Boxes until further order. The reason why the injunction is sought is that the fruit cake boxes contain Christmas Cakes and the Plaintiff, which is a well known bakery company in Fiji, alleges that in or about 1983 it prepared certain artwork and design for its Christmas Cake Boxes and commissioned the First Defendant to print the said Christmas Cake Boxes. The First Defendant carries on business as Commercial Printers.

The Plaintiff claims that the artwork and design which it prepared contain a photograph of slices of fruit cake as a centre-piece of the Christmas Cake Boxes and that since 1983 the Plaintiff's Fruit Cakes marketed and packaged in its Christmas Cake Boxes enjoyed a leading market position and acquired considerable goodwill in the market for fruit cakes which are sold by most grocery shops and supermarkets. The Plaintiff claims that in early December 1992 the Third-named Defendant began selling M.H. Fruit Cake at its supermarkets of which I am told there are sixteen throughout Fiji. The Plaintiff alleges that the M.H. Fruit Cake is also packaged in a box and as its centre-piece also has a photograph of slices of Fruit Cake. The Plaintiff says that the photograph is an exact reproduction of the photograph used in the Plaintiff's Christmas Cake Boxes. The Plaintiff also claims that the M.H. Fruit Cake is baked and packaged by the Second Defendant and that the packaging boxes of the M.H. Fruit Cake have been printed by the First Defendant. The Plaintiff alleges that it was a term "actual and/or implied" of the Plaintiff's contract with the First Defendant that the artwork and design of the Plaintiff's Christmas Cake Boxes would not be reproduced without its consent and that the First Defendant has acted in breach of the contract and in breach of the Plaintiff's copyright by printing the M.H. Fruit Cake Boxes. The Plaintiff claims that the Defendants have conspired and breached the Plaintiff's copyright in printing and using the M.H. Fruit Cake Boxes and that the Defendants are wrongfully and without any colour of right passing off M.H. Fruit Cake as that of the Plaintiff.

On the 4th of December, 1992 the Plaintiff's solicitors wrote to the Second and Third Defendants protesting about the alleged unlawful passing off and requesting the Defendants to deliver to the Plaintiff's solicitors or their directions the whole of the Second and Third Defendants' present stocks of M.H. Fruit Cake labels; to advise the Plaintiff's solicitors in detail of any pending deliveries of further stocks of the cake labels and to supply original statements, invoices, bills and other papers together with details of all sales, wholesale and retail made of M.H. Fruit Cake.

The Second and Third Defendants then consulted their solicitors who replied to the Plaintiff's solicitors on the 8th of December 1992 denying the allegation of passing off and pointing out certain so called "glaring differences" in the packaging used to market the Plaintiff's cakes and those of the Second and Third Defendants. Numerous other differences were later alleged particularly by the Second Defendant and I shall set out most of these later in this judgment.

The Defendants' solicitors concluded their letter by saying that the Plaintiff's complaint related to a commodity namely Christmas Cake, that, generally speaking, looks the same wherever baked and for that reason no body could claim to have exclusive right to the appearance of a Christmas Cake.

It will be observed that the Plaintiff's solicitors in their letter made no claim to copyright of the cake box design on behalf of the Plaintiff. That claim was left to the Statement of Claim annexed to the Writ herein which was issued on the 17th of December 1992.

The Plaintiff alleges that during this Christmas period the Third Defendant in its supermarkets throughout Fiji is selling the Plaintiff's Fruit Cake together with its own M.H. Fruit Cake. The Plaintiff claims that as both the cakes are usually placed in close proximity to each other the new M.H. Fruit Cake is now being passed off as the well known Lees Fruit Cake and this is causing considerable loss and damage to the Plaintiff.

The above summary of the Plaintiff's claims is verified by an affidavit of Robert Lee a Director of the Plaintiff who says that the Plaintiff is "a very very substantial company and in a position to pay any damages if so ordered". Mr. Lee gives the usual undertaking as to damages in a matter such as this.

None of the Defendants dispute the Plaintiff's ability to pay any damages which might be awarded to them.

Each of the Defendants has filed an affidavit and I shall deal with them in sequence.

The First Defendant tenders an affidavit by Hari Punja who is a Director of Universal Printing Press Limited. Mr. Punja gives four reasons for denying that the packaging of the fruit cake printed by his company for the Third Defendant under instructions from the Second Defendant is in any similar to that of the Plaintiff's cakes:

(a) both packets are different in colour;

(b) there are more pieces of cake on the First Defendant's packet;

(c) UPP's packet has strawberries and grapes on it whereas the cake shown on the Plaintiff's packets has tinsel; and

(d) There are no Christmas decorations on UPP's packets in contrast to those of the Plaintiff which have numerous Christmas decorations surrounding them.

Mr. Punja states that in any event the layout and specification for the packaging of the M.H. fruit cake was provided to UPP by the Second Defendant and not the Plaintiff. Mr. Punja also says that he is not aware of any contract either actual or implied existing between the Plaintiff and UPP and he denies that the Plaintiff has any copyright in the photographs. He also denies that UPP has conspired with anyone in allegedly breaching the Plaintiff's copyright in printing and using the M.H. Fruit Cake Boxes and says that UPP is not attempting to pass off the same. He alleges glaring differences between the two boxes.

On behalf of the Second Defendant one of its Directors Bimla Wati Narayan has sworn an Affidavit in Reply. Miss Wati states that her company is very busy at the present time and that time and energy has been required to answer the Plaintiff's application at much expense and loss to the Second Defendant.

Miss Wati states that the Second Defendant has been in the business of baking and marketing Christmas cake and other bakery products since 1986 and that it has enjoyed and continues to enjoy a strong market position in this area. She says the Second Defendant for the last two years has entered into arrangements with the Third Defendant to supply to it Christmas Cakes with the special logo of that company on an exclusive basis.

She then says that the Second Defendant started to supply the cakes in issue here to the Third Defendant in or about mid November 1992 and that the Second Defendant had also supplied such cakes packaged exactly as those packaged in 1992 in December 1991 for exclusive sale by the Third Defendant and that the Plaintiff raised no objections to such sale in 1991.

Miss Wati denies the claim by the Plaintiff that the photograph of the slices in the fruit cake in the M.H. Fruit Cake packaging is an exact reproduction of the Lees Fruit Cake. For a number of reasons, most of which I adopt, these are:

(i) There are more slices of cake in the M.H. Fruit Cake packaging than in the Lees Fruit Cake packaging.

(ii) Sultanas and cherries appear more prominent in the M.H. packaging than in the Lees packaging, as to which I have some doubts.

(iii) The cakes in the M.H. packaging are slightly smaller in size than those in the Lees packaging, as to which again I am doubtful.

(iv) There is one slice of cake placed on the rear of the photo in the Lees packaging whereas no slice of cake appears in the M.H. packaging.

(v) Part of a slice of cake is overprinted with the words "Best Quality" in the shadow of an oval shaped yellow background on the M.H. packaging whereas no such overprinting appears in the Lees packaging.

(vi) The M.H. packaging has a black background whereas the Lees packaging has a gold background.

(vii) The M.H. packaging has grapes and strawberries placed with the cakes whereas the Lees packaging has tinsel.

(viii) The M.H. packaging has the cakes placed on a white plate with a red ring whereas the Lees packaging has the cakes placed on a plain white plate.

As to this particular allegation I would add my own observations that the sides of the plates used in the Lees packet are not unbrokenly round as in the M.H. packet but are slightly indented.

(ix) The M.H. packaging has more pieces of cake than the Lees packaging.

(x) The M.H. packaging has the words "Best Quality" and "Net 600g" on it whereas the Lees packaging has the words "Lees Quality Cake" and "Guaranteed 100% Pure Vegetable Shortening" on it.

(xi) There are two differences which can be observed namely that in the M.H. package the pieces of cake at the bottom of the picture is resting on the rim of the plate whereas on the Plaintiff's on the picture the bottom piece of the cake is resting completely on the plate proper.

I also note that in the M.H. package under the two front pieces of cake there appears to be another piece lying on the plate proper which does not appear in the Plaintiff's package.

(xii) I also observe that on each corner of the M.H. box the Company insignia appears in bold letters against a similar background to that on the main photograph. It is placed partly above what appears to be a small saucer containing most apparently the slice of an egg. No such decoration appears in the Plaintiff's package although on each corner of the Plaintiff's packets the Plaintiff's emblem or shield is displayed but not as prominently as that of the Third Defendant's.

I mention this only for the purpose of showing that it would seem to me most unlikely that any prospective purchaser of the competing products would be confused as to the source of their manufacture.

I would add three other distinctive differences in the packages namely (1) that the M.H. packet has the letters M.H. in large type on a white background on various corners of the packet together with what are acknowledged by the parties before me to be the Third Defendant's well known colour identification consisting of three parallel different colours, red, light brown or orange and yellow.

There is another difference also although this is at the back of each cake packet. By contrast with the letters M.H. on the Third-named Defendant's packets the Plaintiff's packets contain a similar and perhaps a more demure representation of a shield containing the words "Lees Quality Cake".

The other difference admittedly is not on the front of each packets but is also on the back of each of them. In the case of the Plaintiff's packets this consists of a photograph of a fruit cake surrounded by various ingredients, presumably those contained in each cake, resting on a wooden board, set in a pale cream background with the words in block red type "Golden Fruit Cake".

The various ingredients in each cake are then set out.

In contrast the back of the Third Defendant's boxes consists of a form of shield with a sprig of Christmas Holly and a gift ribbon with a sample gift card over the ribbon and Holly.

Advice on storage of the cake is given together with a list of different ingredients under which there appears the words "Baked by Sunshine Bakery Limited".

The Second Defendant alleges that the Plaintiff has not and cannot claim any property in the photograph on its boxes as it is not registered as a trade mark of the Plaintiff and is of a common commodity namely Christmas Cake.

It says that the picture of the slices of Christmas cake which appears on the M.H. fruit cake packaging is merely descriptive of the cake contained in the packets and is in no way intended to deceive the public that the cakes are being passed off as those of the Plaintiff and that the photograph of the slices of the Christmas cake which the Plaintiff alleges have been used by the Second Defendant are not distinctive of the Plaintiff. The Second Defendant also says that the Plaintiff cannot claim to have any exclusive right to the use of the photograph of Christmas cake which might be legitimately used by the Second Defendant.

The Second Defendant claims that the M.H. Fruit Cakes are being sold without any reference to the Plaintiff's cake or its packaging and in fact are sold on the goodwill of the "M.H. name" which the Third Defendant holds in its own right. The Second Defendant also claims that the M.H. Fruit Cakes are also being sold on the goodwill held by the Second Defendant in its own right as a product of good quality and that the M.H. Fruit Cakes are only being sold by the Third Defendant in its chain of supermarkets in Fiji.

The Second Defendant then states that if the Plaintiff was correct in its claim that the Second and Third Defendants are trying to pass off the Plaintiff's cakes then the Third Defendant would not also sell the Plaintiff's cakes in addition to its own cakes. This is because it is said, the Lees Fruit Cake has its own place in the market.

The Second Defendant claims that the Plaintiff's action in seeking an injunction at this time of the year has caused the Second Defendant considerable inconvenience and that it has incurred much expense in despatching the cakes to the various retail outlets of the Third Defendant which are scattered all over Fiji. The Second Defendant states that if the Court were to grant the injunction requested by the Plaintiff this would cause irreparable harm and damage to the Second Defendant as the commodity in issue here, namely Christmas cakes, is a perishable commodity sellable only during the Christmas period. The Second Defendant then states that if the Plaintiff is found to have suffered loss or damages on the substantive hearing of this action, then this can be quantified by an award of damages to the Plaintiff which would be sufficient redress to it.

The last affidavit before me is filed on behalf of the Third Defendant through its General Manager, David Ferguson. Mr. Ferguson denies for reasons given by the other Defendants any similarity between the Christmas Fruit Cakes being retailed by the Third Defendant to those manufactured and sold by the Plaintiff. He also deposes to a meeting with Robert Lee at M.H. Head Office on the 3rd of December 1992 which was also attended by other representatives of Lees and M.H. wherein Mr. Lee expressed his concern about the packaging and Morris Hedstrom's selling of the cakes. He alleges that Robert Lee informed the meeting that the action then to be taken by Lees was aimed at the Second Defendant. He further says that any order restraining the Third Defendant from selling its cakes would mean drastic economic loss for the company considering the close proximity of Christmas; he therefore prayed that no injunction be granted.

The tort alleged by the Plaintiff against the Defendants is that which is known as passing off one's own goods as the goods of another. It is sufficient both for the Plaintiff to succeed on the substantive issue and on any application for an injunction to show that the Defendant's practice was likely to mislead the public and involved an appreciable risk of detriment to the Plaintiff whether in diversion of its sales or in impairment of its credit or commercial repute. The test for determining whether deception was probable is the likely impression on the casual and unwary customer - Singer Manufacturing Co. v. Loog (1882) 8 APP. Cas. 15, 18, and it is no answer that an observant person making a careful examination would not have been misled. As Lord MacNaghten remarked in Montgomery v. Thompson [1891] UKLawRpAC 15; (1891) A.C. 217 at 225 "Thirsty folk want beer not explanations". The appropriate standard is that of a typical customer for the goods in question. In this case the Plaintiff must satisfy the court that the photograph appearing on the packets of the Defendants is the Plaintiff's exclusive property and that the goods being sold by the Second and Third Defendants have been misrepresented by their conduct as those of the Plaintiff. In this case the Plaintiff submits, repeating the claim made in the Statement of Claim, that the photograph belonging to the Plaintiff has been reproduced by the Defendants, who it is said have added a bunch of grapes, some strawberries and another piece of cake. Counsel submits that the Defendants have stolen the photograph belonging to the Plaintiff and whose copyright rests in the Plaintiff. He refers me to Halsbury's Laws of England, Fourth Edition, Volume 48, paragraph 274 where the author states that where in an action for passing off or infringement of a registered trademark the Plaintiff alleges that the Defendant's mark is confusingly similar to his own, the question of whether damages are an adequate remedy to the Plaintiff will depend largely upon the Court's assessment of whether there will be significant confusion pending trial, and this is a key question in assessing liability itself. Further, says Halsbury, it seems likely, at least in trademark and passing off cases that in the absence of a serious conflict of evidence relating to primary facts the Court will pay greater attention to the Plaintiff's prospects of success than it might otherwise pay.

I accept as the law that the primary act of infringement of the copyright in any protected work is "reproduction" of the work or a substantial part of it and that to constitute reproduction there must be both an objective similarity between the two works and some causal connection between them such as would make it proper to infer derivation of the one from the other - see Clerk & Lindsell on Torts, 15th Edition, paragraph 27-32. I also accept that the copyright in photographs belongs originally to the owner of the material on which the photograph is taken unless, it was taken in pursuance of a commission.

It is also true that the Court may grant interim interlocutory or final injunctions concerning unauthorised present or future use of a work or other matter in which copyright subsists. The Plaintiff in this case claims precisely that - that it does have the copyright in the photographs in question.

The Plaintiff concedes that it does not deny the right of the Second and Third Defendants to bake and sell fruit cakes, which is hardly a very magnanimous concession, but says that it would have no objection to the Second and Third Defendants placing the cakes produced and sold by them in any other form of package or packets obviously different from that in which they presently appear. The Plaintiff says that having the copyright in the photograph on its own package, it is entitled to an injunction even if the Court were to think that the claim of passing off had not been made out. The Plaintiff says that the main issue for the Court at the moment is whether there is prima facie evidence that the photograph belonging to the Plaintiff has been used without its consent. Counsel for the Plaintiff refers me to paragraph 4 of Hari Punja's affidavit of the 21st December 1992 and submits that in that paragraph Mr. Punja does not deny that the First Defendant used the Plaintiff's photograph. The fact is that Mr. Punja does not even refer to the use of the photograph so I do not consider that this helps the Plaintiff.

Counsel then points out that in paragraph 6 of his affidavit Mr. Punja deposes that he is not aware of any contract existing (actual or implied) between the Plaintiff and UPP and says that the mere fact that in the next phrase Mr. Punja denies the allegations made in paragraph 14 of the Plaintiff's affidavit does not assist any of the Defendants. I do not construe paragraph 6 of Mr. Punja's affidavit in this way. It seems to me that Mr. Punja is really denying the Plaintiff's claim that under its contract with the First Defendant the artwork and design of the Plaintiff's Christmas Cake Box would not be reproduced without its consent and that this amounts to a denial of a relevant fact on which the First Defendant is putting the Plaintiff to proof. Likewise in my view it is clear that Mr. Punja denies that the Plaintiff has any copyright in the photographs. If there were any doubt this in paragraph 6 of Mr. Punja's affidavit, in my view paragraph 7 makes the First Defendant's position abundantly clear because there Mr. Punja denies that the Plaintiff has any copyright in the photographs. This in my view raises a clear issue of fact which can only be resolved at the trial.

In short the Plaintiff contends that the centre-piece in the photographs are identical and this suffices to justify the granting of the injunction. When the matter was orally argued before me, Counsel for the Plaintiff did not refer to a letter the Plaintiff received from Mr. John Katz a Barrister of Auckland, New Zealand. When I received Mr. Nagin's copy extracts from text books and law reports on 23rd December there was included a faxed copy of this letter from Mr. Katz and I wish to make some comments on it.

Mr. Katz says there can be little doubt but that the photograph on M.H. packaging and on the Sharma's packaging reproduces the photographs on the relevant packets of the Lees Golden Fruit Cakes. I do not understand the reference to Sharma's but, as far as the Plaintiff is concerned, I respectfully disagree with Mr. Katz. It must be remembered that the Plaintiff is at pains to emphasise that the photograph on the M.H. package is an exact reproduction of the photograph used on the Plaintiff's packets. For reasons based on the catalogue of differences in the two photographs which I have endeavoured to give earlier in my view this claim by the Plaintiff can not be supported. Furthermore it seems to me Mr. Katz in his letter pre-supposes that there is no issue as to the copyright of the photograph. He says in the penultimate paragraph on the first page of his letter: "There is abundant case law both in England and in New Zealand to the effect that in copyright infringement differences are irrelevant and highlighting differences does not avoid a finding of infringement. What is relevant is to determine whether or not the infringing product reproduces as to the whole or as to a substantial part the protected work, in this case being a photograph." This statement is supported by Clerk & Lindsell in the paragraph I have cited above but I note that Clerk & Lindsell in the same paragraph then say that to constitute reproduction there must be both sufficient objective similarity between the two works and some causal connection between them.

On the evidence before me I am not satisfied because of the differences I have enumerated in the photographs that there is a sufficient objective similarity between them nor some causal connection between them such as to make it proper for me at this stage to infer derivation from one to the other. Mr. Katz states that the cake and cake slices have been reproduced in their entirety but I do not agree with this statement for the simple reason that on the M.H. photograph there are at least five and possibly six slices of cake shown and not merely four as appear in the Plaintiff's photograph. In the light of the denial of copyright in the Plaintiff by the First and Second Defendants I am satisfied that this raises a triable issue and that it would be wrong for me to grant an injunction in these circumstances. The differences in the two photographs satisfy me, at least at this stage, that the normal casual and unwary customer in any of the Third Defendant's stores would not be likely to be confused as to the manufacturer of the cakes in the respective packets. In my opinion the differences both in the photographs and in the general design and colour of the two packets would not lead the ordinary person shopping in any of the Third Defendant's supermarkets to conclude that they were other than what they claim to be, namely produced either by the Plaintiff or by the Second Defendant for the Third Defendant.

This leads to the final consideration whether in all the circumstances it would be proper to grant an injunction to the Plaintiff. Naturally the parties have again referred me the landmark decision of the House of Lords in American Cyanamid Co. v. Ethicon Ltd. [1975] UKHL 1; (1975) A.C. 396. There the House of Lords stated four tests which a Court should normally apply in deciding whether or not to grant an injunction.

(i) Is there a serious issue to be tried?

(ii) Are damages an adequate remedy?

(iii) Where does the "balance of convenience" lie?

(iv) Are there any "special factors"?

I will now endeavour to answer these questions. I have no doubt that there are serious issues of fact to be tried in this case, namely whether there has been any passing off by the Defendants in respect of the Plaintiff's cake boxes and whether the Plaintiff does hold copyright to the photograph. As to the next question whether damages are an adequate remedy, I consider they are.

Counsel for the Second Defendant was good enough to send me a copy of some passages from the decision of the English Court of Appeal in Aljose Fashions Ltd. (trading as Fiona Dresses) v. Alfred Young & Company Ltd (1978) F.S.R. 364. In that case Lord Denning M.R. at p.365 said:

"The defendants then put in an affidavit. It is plain that they completely controvert the allegation which is made by the plaintiffs."

Later at p.366 he went on:

"In those circumstances, as both concerns are amply provided with finance, it seems plain to me that this is not a case for stopping the trade of the defendants but it is a matter which can properly be dealt with in damages. After all, the defendants have to take the risk: if they have been copying the plaintiffs' dresses, if they are copying them and continue to copy them, there will no doubt be very substantial damages which they will have to pay. That is the proper remedy, it seems to me, for the plaintiffs in this case. In view of the big contest on the affidavits I do not think now at this stage it is a proper matter for an injunction."

Lawton L.J. at p.367 said:

"I agree entirely that the balance of convenience is that these parties should fight it out for a money stake. The court should not help either of them by granting an injunction."

The Plaintiff contends that damages are inadequate because of the long-term likely effect on the Plaintiff if an injunction is refused. The Plaintiff says that this is likely to occur because of cake purchasers mistakenly thinking they have been eating Lees Cakes. As Mr. Nagin puts it, "If they do not like it the Plaintiff will suffer damages; if they do like it then this will only erode Lees sales in the original packaging." The Plaintiff says the effect of such an alleged mistake does not depend on the number of cakes the Plaintiff sells this year or even next year.

Mr. Nagin also submitted that in any breach of copyright damages are an inadequate remedy. This is much too broad a statement and whilst it may be conceivably true in many cases, but certainly not all, the problem I have in the instant case is whether there is a reasonable prospect of the Plaintiff establishing a breach of copyright at this stage. In my view, the First Defendant particularly and to a lesser extent the Second Defendant have raised this as a triable issue on which I consider it would be imprudent at this stage to disturb the status quo.

This leads me to consider the third question recommended by American Cyanamid. In later years the phrase, "Where does the balance of convenience lie?" has been criticised, first by Sir Robert Megarry V.-C. at first instance and then by May L.J. approving Sir Robert in Cayne v. Global Natural Resources plc (1984) 1 All E.R. 225 at 237H: where he said:

"The balance of the risk of doing an injustice better describes the process involved."

Similar views were expressed in the same year by Sir John Donaldson M.R. in Francome v. Mirror Group Newspapers (1984) 1 W.L.R. 892 at 898E:

"I stress once again, that we are not at this stage concerned to determine the final rights of the parties. Our duty is to make such orders, if any, as are appropriate pending the trial of the action. It is sometimes said that this involves a weighing of the balance of convenience. This is an unfortunate expression. Our business is justice, not convenience. We can and must disregard fanciful claims by either party. Subject to that, we must contemplate the possibility that either party may succeed and must do our best to ensure that nothing occurs pending the trial which will prejudice his rights. Since the parties are usually asserting wholly inconsistent claims, this is difficult, but we have to do our best. In so doing we are seeking a balance of justice, not convenience."

In my judgment in this case it would be unwise to disturb the status quo on the material presently before me.

I now turn to the final recommended question of American Cyanamid namely: "Are there any special factors?"

It is said by the Plaintiff that if the Court refuses to grant an injunction it is likely to suffer loss of goodwill. This seems to overlook the probability, as I see it, that the Defendants, particularly the Third Defendant, may also suffer a loss of goodwill if I grant an injunction to the Plaintiff. The Third Defendant is entitled to some pride in the fact that it has been established in this country for over 100 years. It now has established a well known logo, company colours, and a very large turnover by the standard of Pacific Island countries. It seems to me fair for the Third Defendant to claim that its cake boxes have their own aesthetic appeal and that it is a combination of the Third Defendant's obvious leadership in the retail trade of this country and the matters I have just mentioned which may be said to be the cause of the Third Defendant selling its own packaged cakes on the assumption, correct in my view, that the buying public respect the M.H. goodwill. I think there is considerable force in Mr. Parshotam's statement that it is distinctiveness, not descriptiveness, which sells products, in this case, Christmas cakes.

For these reasons I dismiss the Plaintiff's application for an injunction and order it to pay the costs of the Defendants.

Before leaving the matter however I should make brief comment on an objection taken by the Defendants to the present application, namely that they were all short served. This applies particularly to the Third Defendant who was not served until a day before the hearing before me began. This was perhaps technically permissible under the rules relating to applications for injunctions which, of course, can be made ex-parte, but I consider the Defendants do have cause to complain. I have no doubt the Plaintiff's action in bringing this application has caused all the Defendants, but probably the Second and Third Defendants particularly, much inconvenience. However it seems to me their solicitors have responded most professionally to the sudden demand made on them and I do not therefore consider that the Defendants have suffered any real damage from their possible inability to present their cases adequately.

JOHN E. BYRNE
J U D G E

HBC0547J.92S