Flour Mills of Fiji Ltd v Visama Atta Mills Ltd [1993] FJHC 107; Hbc0559j.93s (18 November 1993)

IN THE HIGH COURT OF FIJI
CIVIL JURISDICTION

CIVIL ACTION NO. 559 OF 1993

Between:

FLOUR MILLS OF FIJI LIMITED
Plaintiff

- and -

VISAMA ATTA MILLS LIMITED
Defendant

Mr. H. Lateef for the Plaintiff
Mr. H. Nagin for the Defendant

INTERLOCUTORY JUDGMENT

This is an application for interlocutory injunction in a passing-off action. On the 1st November, 1993 counsel made oral submissions on behalf of their respective clients.

I would like to express my gratitude to counsel on both sides for their careful and helpful arguments.

The Plaintiff is asking for an interim injunction restraining the Defendant its servants or agents from marketing selling its "Semolina - Suji" product in the present packaging and for an Order that the Defendant remove its "Semolina - Suji" product from the shelves throughout all supermarkets, shops and other outlets in Fiji. The grounds on which the Plaintiff relies are set out in the affidavit sworn on the 23rd day of October, 1993 of SANJAY PUNJA (f/n Hari Punja) a director of Plaintiff company and filed herein.

The Defendant has through its Managing Director Raghubar Singh (f/n Ranjit Singh) filed an Affidavit in Reply sworn the 29th day of October, 1993 opposing the application.

The Plaintiff briefly argues, inter alia, as follows:-

(a) That it has been manufacturing "Semolina - Suji" product in Fiji for 18 years and the colour of the packet (yellow, blue and red) has remained same throughout this period.

(b) That in or about November 1992 the Defendant had manufactured and was putting out in the market a similar product in a very similar packet to that of the Plaintiff so much so as to lead to confusion in the minds of the public as to which product was made by which company.

(c) That the Defendant's attention was drawn to this fact in writing and the Defendant agreed to redesign its packets for future products.

(d) That despite some modification the defendant has retained the front of the packet with the same yellow blue and red colour of the Plaintiff's and in almost the exactly the same wordings used by the Plaintiff.

The similarities complained about are:-

"(1) that the colours on the packets are exactly the same.

(2) the colours and artwork are designed in such a manner that it could be easily confused with that of the Plaintiff's.

(3) the wordings on the packets are similar e.g. "highly nutritious" and "easily prepared family dish".

The Plaintiff says, inter alia, that the Defendant does not normally produce and market this product and is passing off its product as that of the Plaintiff and this it has and just prior to the Hindu Festival of Diwali during which period the sale of this product soars in Fiji. The Plaintiff says this act on the part of the Defendant in misrepresenting its products as that of the Plaintiff's is likely to create confusion in the minds of the purchasing public.

The Defendant company replied to the Plaintiff's affidavit, inter alia, as follows:-

(1) That it has been manufacturing and marketing Semolina - Suji since 1992.

(2) That the two packets are entirely different and denies marketing the product in a similar packet to that of the Plaintiff so as to lead to confusion in the minds of the public.

(3) That to avoid entering into unnecessary and expensive litigation with the Plaintiff it agreed to redesign its packets. It did redesign it and says that it is very different from the Plaintiff's packet. The manner in which it is different is fully set out in item 6 of the Affidavit in Reply.

(4) That apart from Diwali there are other Hindu Festivals like "Holi", "Ram Naumi" etc when Semolina-Suji product is also sold. The defendant says that this product is also sold throughout the year.

(5) That on the yellow colour on the packet it says it is "very dark and is almost orange colour" whereas the Plaintiff's "yellow is a very light yellow" (underlining mine).

The defendant denies that there is any likelihood of confusion being caused amongst the general public. It further says that that "hardly any Indian people are illiterate and not able to differentiate between the two packets".

I have to proceed to consider whether in the circumstances, this is a proper case for the grant of an interim injunction in the exercise of the court's discretion or whether the Plaintiff should be left to its remedy in damages.

That question has been argued having regard to the principles stated in the House of Lords in AMERICAN CYANAMID CO v ETHICON LTD [1975] UKHL 1; (1975) AC 396.

The House of Lords there decided that in all cases, the Court must determine the matter on a balance of convenience, there being no rule that an applicant must establish a prima facie case. The extent of the court's duty in considering an interlocutory injunction is to be satisfied that the claim is "not frivolous or vexatious;" in other words, "that there is a serious question to be tried".

In CYANAMID (supra) at page 406 Lord Diplock stated the object of the interlocutory injunction as follows:

".... to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial; but the plaintiff's need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated under the plaintiff's undertaking in damages if the uncertainty were resolved in the defendant's favour at the trial. The court must weigh one need against another and determine where "the balance of convenience" lies".

A similar view was expressed by McCARTHY P while delivering the judgment of the Court of Appeal in NORTHERN DRIVERS UNION v KAWAU ISLAND FERRIES LTD (1974) 2 NZLR 61) when he said:

"The purpose of an interim injunction is to preserve the status quo until the dispute has been disposed of on a full hearing. That being the position, it is not necessary that the Court should have to find a case which would entitle the applicant to relief in all events: it is quite sufficient if it finds one which shows that there is a substantial question to be investigated and that matters ought to be preserved in status quo until the essential dispute can be finally resolved..." (ibid, 620)

"It is always a matter of discretion, and ... the Court will take into consideration the balance of convenience to the parties and the nature of the injury which the defendant, on the one hand, would suffer if the injunction was granted ... and that which the plaintiff, on the other hand, might sustain if the injunction was refused ..." (ibid, 621).

A very useful summary of the principles stated in the Cyanamid case were considered by the Court of Appeal in FELLOWES & SON v FISHER (1976) QB 122 and has been summarized by BROWNE L.J. It will not be out of place to set it out hereunder and which is as follows:

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

"1 As to that [ie 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 as 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 All ER 829, 840-841).

As I have already said, this application is made in a passing-off action. It is an actionable wrong for a trader so to conduct his business as to lead to the belief that his goods or business are the goods or business of another. This wrong is known as "passing-off". It is immaterial whether the fatal representation, as to goods or business, involved in passing-off, is made expressly by words, or impliedly, by the use or imitation of a mark, trade name or get-up with which the goods of another are associated in the minds of the public "(CLERK & LINDSELL ON TORTS, 11th Ed. p.990 para. 1698).

In the case before me there is no doubt that there is a question for determination between the parties. Further both the Plaintiff and the Defendant say that they are each able to pay any damages which may be awarded against them. In such circumstances the 7th item of the said summary is to be taken into consideration.

I have given careful consideration to the very useful submissions of counsel and to the cases referred to by them. In considering this matter I have not lost sight of the following passage from the Footnote to the SUPREME COURT PRACTICE 1979 29/1/11) pertaining to the grant of interlocutory injunction:

"the grant of an interlocutory injunction is a remedy that is both temporary and discretionary, and in exercising its discretion whether or not to grant such an injunction, the Court is not justified in embarking upon anything resembling a trial of the action upon inflicting affidavits in order to evaluate the strength of either party's case".

I shall therefore not delve into all the details of the submissions but will confine myself to matters relevant to the granting of an injunction.

The defendant has set out in detail in item 6 of its affidavit as to in what respect its package is different from that of the Plaintiff. I am not here at this stage required to go into the merits of the arguments put forward by it on the differences in the package. However, leaving aside for the moment everything else, in my view, if one were to look at the respective package of the Plaintiff and the defendant one would at first sight be struck by the stark similarity of the yellow colour with the white background on each package. These are the colours which have been used by the Plaintiff for eighteen years in its package. The use of that "get-up" by others could, in my view, amount to passing-off-and thus cause confusion in the minds of the purchasing public.

On "get-up" in CLERK & LINDSELL (supra p. 996 para 1708) it is stated:

"It is possible for the "get-up" of goods - the shape, - colour and decoration of the goods or the wrapping in which they are sold - to become well enough known as indicating the goods of a particular trader, for use of that get-up by others to amount to passing-off." (underlining mine).

In the LAW OF TORTS by SALMOND & HEUSTON 20th Ed. at p.397 on "imitating the get-up or appearance" of the plaintiff's goods so as to deceive the public it is stated:

"when there is anything as characteristic in the get-up or appearance of the plaintiff's goods that it identified these goods as the merchandise of the plaintiff, any deceptive adoption or imitation of that get-up or appearance is subject to the same rules as the deceptive adoption or imitation of his trade name or trade mark."

The action of passing-off is essentially a cause of action arising out of confusion.

How to establish confusion and the law relating to it is set out in HALSBURY 4th Ed. VOL. 48 para 163 et seq. In para. 163 (ibid) it is stated:

"In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to (a) the nature and extent of the reputation relied upon, (b) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business, (c) the similarity of the mark, name etc. used by the defendant to that of the plaintiff, (d) the manner in which the defendant makes use of the name, mark etc. complained of and collateral factors, and (e) the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances".

The relevant test as to confusion is not "whether many intelligent and discerning people would avoid confusion but whether a substantial section of the public is likely to be deceived: (compare TREASURE COT COMPANY LTD v HAMLEY BROS LTD ( 1950) 67 RPC 89 at 91, lines 1 - 4 per Harman J)" (MY KINDA TOWN LTD v SOLL AND ANOTHER 1983 NO. 2 RPA p.15 at p.42). Also in considering whether deception is probable, account is to be taken, not of the expert purchaser, but of the ordinary ignorant and unwary member of the public (RECKITT & COLEMAN PROPERTIES LTD v BOREDON INC. [1990] UKHL 12; (1990) WLR 491).

In the case before me, without in anyway deciding, which I am not required to do at this stage, whether the public would be confused or misled by the defendant's package into thinking that its product was the Plaintiff's as one would have to do in the trial of the action, there is ample material before me to suggest that such confusion is likely to occur. In the exercise of my discretion I am of the view, on the affidavit evidence before me that the normal casual and unwary customer is likely to be confused as to the manufacturer of the product in the respective packages.

In my view, an ordinary shopper would not be able to see the difference between the two packages.

What in actual fact would give rise to the confusion is the identical 'yellow colour with white' background even after making allowance for the 'light' and 'dark' shades of the yellow colour as stated by the Defendant. The immediate questions that come to one's mind are, firstly, why does the Defendant use the similar "yellow and white background" colours which had been used by the Plaintiff for eighteen years as compared to the defendant emerging on the market with the same product in a similar colour package about twelve months ago? AND secondly, what is there to prevent the Defendant from using some other colour other than the yellow in the package? Whether or not the Defendant is infringing the rights of the plaintiff is a matter to be determined in the trial of the action.

In a similar action in CADBURY LIMITED & 2 others v MAGAN LAL JIWA & SONS LIMITED & ANOR (C.A. 256/80 Sup Ct (WEST.DIV) where the defendant was using wrappers which were so similar to those of the Plaintiff, the defendant discontinued using them and gave an undertaking not to use it again. But the injunction was refused in regard to the "other wrapper" where similarity was not so obvious.

Also, in LEES TRADING COMPANY LIMITED v UNIVERSAL PRINTING PRESS LIMITED, & 2 others (C.A. 547/92) Byrne J. had to deal with a somewhat similar situation as the one before me, But for the reasons he gave in the circumstances and facts of that case he refused to grant an injunction stating, inter alia, that:

"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 or the Third Defendant."

In the case before me I have expressed my views hereabove. Therefore after analyzing the affidavit evidence before me in this case and applying the principles stated by Lord Diplock, I am of the opinion that damages as a remedy was insufficient to determine the matter. It would indeed be difficult to compensate the Plaintiff by award of damages in this type of situation with the continuation of the alleged passing off. I make similar comment with regard to the Defendant.

In these circumstances I now come to deal with "balance of convenience".

In this case, after the Plaintiff complained to the defendant about the alleged passing off as soon as it noticed it, the defendant redesigned the package but the get up did not come up to expectation thus resulting in this action. The defendant went ahead, so to say, with its eyes open by printing the package the way it did with the result that the Plaintiff thinks that it had the right to complain.

Bearing in mind the circumstances of this case I consider that this is a proper case to grant an interlocutory injunction and to maintain the status quo. I adopt the view of ORR L.J. in HUBBARD v PITT (1976) Ch 142 at p.190 in which he said "... if the relevant factors were evenly balanced ..." it was appropriate:

"... to grant an interlocutory injunction which would maintain the status quo that being in the context of this case the situation which existed prior to the commencement, very shortly before the issue of the writ, of the activities complained of"

I am also of the view that since the defendant only began to market its new product in 1992 compared to that of the Plaintiff some 18 years ago, although they both trade in and are manufacturers of similar products, and in all the circumstances of this case, considerations in favour of maintaining what was until then the status quo are quite strong.

This is not in my view a case where the balance of convenience dictates that relief sought, albeit partially, should be refused.

For the reasons given hereabove I grant the Plaintiff a limited form of injunction. There will be an order granting an interim injunction against the Defendant, its servants or agents from marketing selling its "Semolina - Suji" product in the present packaging. To allay any doubts about the Order, the effect of this Order will be that no further supplies of the product in the present package be put out on the market by the defendant for sale. The product already delivered for sale by the defendant are not affected by this order and these can be sold until exhausted. The Plaintiff is ordered to give the usual undertaking as to damages.

I order the Defendant to pay the costs of this application which are to be taxed if not agreed.

D. Pathik
Acting Puisne Judge

At Suva
18th November, 1993

HBC0559J.93S