Mokosoi Products (Fiji) Ltd v Pure Fiji Export Ltd [2008] FJHC 379; HBC0016.2007 (17 October 2008)

IN THE HIGH COURT OF FIJI
AT SUVA
CIVIL JURISDICTION

ACTION NO.: HBC0016 OF 2007

BETWEEN:

MOKOSOI PRODUCTS (FIJI) LIMITED
a duly incorporated company of Suva, Fiji.
(Plaintiff)

AND:

PURE FIJI EXPORT LIMITED
a duly incorporated company having its registered office
situated at 20 Beach Road, Suva Point, Suva, Fiji.
(First Defendant)

THE ADMINISTRATOR-GENERAL OF FIJI
(Second Defendant)

THE ATTORNEY GENERAL OF FIJI
(Third Defendant)

Counsel:
Mr. Nilesh Prasad for Plaintiff
Mr. Jon Apted for First Defendant
Ms Senileba Levaci for Second & Third Defendants

Date of Hearing: 7^th & 8^th October 2008
Date of Judgment: 17^th October 2008

JUDGMENT

BACKGROUND:

[1] The plaintiff and the first defendant are rivals in the business of selling beauty products. Both the companies are based in Suva. The action concerns the registration of a trade mark number 50/2006 by the first defendant with the Administrator General's Office. The trade mark was registered pursuant to the provisions of Part III of the Trade Marks Act. The registered trade mark included the words "Pure Fiji" coupled with a frangipani device.

Application and grounds:

[2] The plaintiff was unhappy with the second defendant's decision to register the trade mark and so filed this action seeking certain reliefs. The reliefs sought are contained in the amended originating summons. The three substantive reliefs sought are:

"(a) AN order that the decision of the Second Defendant the Administrator-General of Fiji ("the Administrator-General") whereby she approved the registration Trade Mark No. 50/2006 for PURE FIJI & Device in Fiji Class 48 ("Trade Mark No. 50/2006") under provisions of Part III of the Trade Marks Act ("the Act") for registration of United Kingdom Trade Mark No. 2373416 be expunged or cancelled or removed from the Register forthwith.

(b) AN order that the First Defendant to advertise the application for registration of Trade Nark No. 50/2006 under provisions and/or practices of Part III of the Act for registration of United Kingdom Trade Mark No. 2373416.

(c) AN order that the Plaintiff be subsequently given the opportunity to file its Notice of Opposition against the application for registration of Trade Mark No. 50/2006 under provisions of Part III of the Act for registration of United Kingdom Trade Mark No. 2373416 and that the matter be heard before Administrator-General or this Honourable Court in due course."

[3] The first order as drafted sought to expunge the decision of the second defendant approving registration of Trade Mark 50/2006. It is not seeking the expunging of the trade mark itself from the register. Doing my generous best I could say that the words "removed from the register forthwith" relate to the mark itself and the error was one of drafting the motion. The second order sought is self explanatory and I need say no more. The third order seeks two things:

(a) an opportunity to file notice of opposition under part III of the Act;

(b) a hearing before the Administrator General or this court.

The third order sought presumes that a notice of opposition can be filed under a Part III application for registration of trade mark.

[4] The amended originating summons gives three grounds in support of the application. These grounds verbatim are as follows:

"(i) THE Administrator-General erred in law and in fact in issuing the First Defendant the Certificate of Registration in respect of Trade Mark No. 50/2006 for registration of United Kingdom Trade Mark No. 2373416 in light of a pending Notice of Opposition in respect of an identical Trade Mark under the Application No. 143/2000 where, amongst other aspects, the distinctiveness required under Section 8 of the Act is in contention.

(ii) THE Administrator General wrongly held that Trade Mark No. 50/2006 was not identical to the Trade Mark in application No. 143/2000 and thereby wrongly failed to refuse registration under provisions of Section 18 and 19 of the Act

(iii) THE Administrator-General failed to comply with Rule 5 of the Trade Marks rules for the application to be advertised thereby depriving the Plaintiff the right to oppose the registration of Trade Mark No. 50/2006, which in totality is against the spirit of the Act."

Earlier pending application 143/2000:

[5] Mr. Prasad's first submission was that the Administrator General erred in law when she issued a certificate of registration in respect of Trade Mark 50/2006 when there was pending before her the Trade Mark 143/2000. Application for registration of Trade Mark 143/2000 was made by Sandollars Fiji Ltd. Sandollars Fiji Ltd and the first defendant have ore common majority shareholder namely Gaetane Marie Austin who is also one of the Directors in both companies. She is also the Secretary for both companies. Both these companies have the same address for registered office.

[6] Trade Mark 143/2000 was an application under Part 2 of the Trade Marks Act. That application was advertised in the Fiji Government Gazette on 2^nd August 2002. It is not in dispute that the plaintiff filed a notice of opposition opposing the intended registration. That notice of opposition is annexure E in the affidavit of Kenneth Roberts. One of the grounds of opposition was that there was no separate distinctiveness of the mark. It is also not in dispute that there was a counter statement. The counter statement was amazingly filed by Pure Fiji Export Limited not Sandollars. It was signed by Gaetane Austin the director of Pure Fiji Export Limited. Pure Fiji Export Limited was trying to register itself as proprietor of the trade mark "Pure Fiji" even though the original application was by a different entity namely Sandollars. It is also not in dispute that a hearing was conducted before the Administrator General in 2003 but no decision has been arrived yet even till today.

[7] I was informed from the bar table that the officers who had heard the parties in Trade Mark 143/2000 are no longer with the Administrator General's Office so it is unlikely the decision would ever be delivered.

[8] After the hearing the parties continued their business as usual until the registration of Trade Mark 50/06 under part III followed by letter from first defendant's solicitors informing the plaintiff of the registration of the trade mark.

[9] The registered trade mark in 50/2006 is at annexure 1 in the affidavit of Kenneth Roberts. It is a combination of the words PURE FIJI with five frangipanis above it. The trade mark applied for in Trade Mark 143/2000 appears at annexure A of the affidavit of Geeta Reddy-Bridgeman sworn on 20^th June 2007 has three frangipanis but the words PURE FIJI are reflected like a mirror image. Therefore the two marks are not identical even though there may be similarities between them.

[10] Further Mr. Apted also submitted that since the counter statement was not that of Sandollars Fiji Limited but made by Pure Fiji Export Limited, properly considered the application is deemed abandoned under the provision of Section 13(3) which provides:

"The Registrar shall send a copy of such notice to the applicant and within the prescribed time after the receipt of such notice the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application and, if he does not do so, he shall be deemed to have abandoned his application."

Mr. Prasad however submitted that the above proposition cannot be correct as a hearing was conducted so the application could not have been deemed abandoned. Absent the actual records of the hearing, it is impossible for me to decide this issue one way or another nor will it affect my final judgment regardless of whichever view I would have upheld.

[11] There is one other factor which I believe is important. If the application was not deemed abandoned as Mr. Prasad submits, then how long is an applicant expected to wait for a decision. The world of commerce and genuine private enterprise does not move at the leisured pace of government bureaucracy. It moves at a far more efficient pace.

[12] Any delay can have serious economic or commercial implications. The primary objective of a trade mark is to guarantee the origin of goods not to inhibit trade or competition. If that function of the trade mark is to be protected, then a trade mark owner should be able to prevent unauthorized use of his trade mark to prevent confusion in the minds of the consumers that there is a commercial connection between the trade mark owner and the other entity. Pure Fiji could not be expected to wait indefinitely to having an end to the potential confusion, if any. Hence if the Administrator General was not moving then the first defendant had the right to explore more efficient ways of achieving its objective.

IS THERE A LEGAL REQUIREMENT TO ADVERTISE THE TRADE MARK UNDER PART III OF THE ACT?

[13] The plaintiff's position as clarified by Mr. Prasad was that the registrability of the trade mark was not in issue in this proceeding. The only core issue was that the trade mark should have been advertised. Therefore there is no need for the court to discuss the provisions of Section 8 of the Act which sets out which marks are registrable.

Statutory provisions:

[14] Part II of the Act deals with trade marks which originate in Fiji and are registered in Fiji. Part III deals with United Kingdom trade marks which are subsequently registered in Fiji.

Part II Registrations:

[15] The process for registration of Part II application is contained in sections 11 to 17 of the Act. I shall not reproduce these sections but only paraphrase their intent and effect. Under Part II anyone claiming to be proprietor of a trade mark can apply to have his trade mark registered. The Registrar has a discretion either to refuse or approve or approve it with amendments: Section 11 of the Act. Upon acceptance he/she shall cause the application to be advertised. Advertisement is compulsory: Section 12. Notice of opposition to the registration can be filed by anyone affected within three months of the advertisement. If notice of opposition is filed, then the applicant must file a counter statement within the prescribed time (3 weeks) and if the applicant does not file a counter statement, the application is deemed abandoned: Section 13. If the applicant does file a counter statement, the registrar has to make a decision. The Registrar may or may not hear the parties in person before making the decision.

[16] Mr. Prasad submitted that since the Registrar was exercising a power, he must give the parties reasonable opportunity of being heard. He further argued that the need to advertise and to be heard extended to Part III applications as well. He relied principally on Rule 5 of the Trade Mark Rules and a letter written by the Administrator General on 20^th February 1996 being annexure L to the affidavit of Kenneth Roberts.

Registrar's power to make Rules:

[17] The Registrar's power to make rules comes from Section 52 of the Act. It provides:

"Subject to the provisions of this Act the Registrar may from time to time make such rules, prescribe such forms and generally do such things as he may think expedient -

(a) for regulating the practice under this Act;

(b) for classifying goods for the purposes of registration of trade-marks;

(c) for making or requiring duplicates of trade-marks and other documents;

(d) for securing and regulating the publishing and selling or distributing in such manner as the Registrar thinks fit of copies of trade-marks and other documents;

(e) generally for regulating the business of the office in relation to trade-marks and all things by this Act placed under the direction or control of the Registrar."

The opening words "subject to the provisions of this Act" are significant. The Registrar's rule making powers must be confined within the parameters of the Act.

[18] There exist Trade Mark rules which were originally made by the Chief Justice under the provisions of Section 14 of the Trade and Merchandise Marks Ordinance 1886 and continued in force by the Trade Marks Act. Rule 5 on which Mr. Prasad relies to argue that advertisement is compulsory for Part III registration as well provides:

"As soon as may be after the receipt of an application, the Administrator General shall require the applicant to advertise such application in the Gazette, and in such other newspaper as the Administrator General may, if he think necessary, direct, during such time, in such form, and generally in such manner as the Administrator General may determine."

[19] Rule 7 sets out time frames for objections and counter statement required to be filed under Part II.

Part III registrations:

[20] Section 55 to 59 provide for registration in Fiji of trade marks which have earlier been registered in the United Kingdom. A registered proprietor of trade mark registered in the United Kingdom can apply for its registration in Fiji. The application must be accompanied by a certified representation of the trade mark and certificate with full particulars of the registration of the trade mark in the United Kingdom.

[21] Section 57 states that "upon such application being lodged together with the documents mentioned in Section 56, the registrar shall issue a certificate of registration". The Registrar therefore has no discretion. He/she is mandated to issue a certificate provided he/she is satisfied about the authenticity of the accompanying documents. If the plaintiff is correct in its submissions then what is the purpose of advertisement and subsequent opposition. The purpose of advertisement and opposition is to allow a person to object and to prevail upon the Registrar to exercise his/her discretion and refuse registration. This runs counter to the clear language of Section 57.

[22] Rule 5 has to be read "subject to the provisions of the Act" and in conformity with and not in contradiction with the provisions of the substantive Act. Rule 5 is there to provide for manner of advertisement as required by Section 12 of the Act. Part III is different but a concurrent method of registration of trade marks. It is less complicated than Part 11 method.

Practice of Advertisement by Administrator General:

[23]. Consonant with Rule 5, the plaintiff submits, there is a practice of advertising applications under Part III. It relies upon annexure L to the affidavit of Kenneth Roberts to bolster its arguments. Annexure L is a letter written by Mr. Archibald, the Registrar of Trade Marks. It is dated 20^th February 1996 which I believe ought to be 1995 as it is a response to letter dated 5^th February 1995. It is addressed to Mitchell Keil & Associates solicitors. Mr. Archibald states that his position is that applications for registration lodged under Part III are to be advertised prior to issue of certificate of registration. The Registrar was of the view that the provisions of Section 57 (mistakenly called Section 67) are directory rather than mandatory. He also later goes on to state that in case of Part III application, unlike Part II no examination is required by the Registrar.

[24] He further correctly points out that applications are not contestable before the Registrar. Further he pointed out that the form of advertisement under Section 56 "merely needs to display the mark, notify the conditions relating to its registration in the United Kingdom and the date thereof together with the fact that such registration has been extended to Fiji". The Registrar also drew attention to the fact that Section 61 permitted any person whose interests have been prejudicially affected by registration under Part III to apply to the High Court.

[25] The purpose of advertisement under Part III is to inform the public that a certificate has been registered. It is not for the purpose of inviting opposition. The plaintiff's case falls down on this. It is seeking orders to advertise and then seeks an opportunity for hearing before the Administrator General, a view which is not even shared by the Administrator General himself.

[26] Additionally Mr. Prasad relied on Annexure C in the affidavit of Geeta Reddy-Bridgeman sworn on 20^th June 2007 to show practice of advertising applications. Altogether there are eight applications under Part III in this annexure. Two of these invited objections to the applications, the rest did not. I note that on two occasions solicitors for the plaintiff advertised Part III applications without reference for objections while solicitors for the first defendant on one occasion informed that objections were to be lodged with the Administrator General. There appears to be no uniform practice as to the content of Part III advertisements.

SCHEME OF PART III:

[27] However, the overall scheme of Part III is that the advertisement is done to inform the public of the application. Any one adversely affected has no right of hearing before the Registrar but may apply to High Court for relief under Section 61. Unlike the three months period for objection under Part II, there is no time limit. Section 61 provides:

"The court shall have power upon the application of any person who alleges that his interests have been prejudicially affected by the issue of a certificate of registration to declare that the exclusive privileges and rights conferred by such certificate have not been acquired on any of the grounds upon which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom."

In case of Part III registrations, the plaintiff has no right to object to the Registrar or have a hearing before the Registrar. If aggrieved, it should apply to the High Court for relief. The plaintiff's amended originating summons therefore fails.

Submissions of State:

The position taken by the second and third defendants changed between the filing of the affidavit and its submissions. In their affidavit in reply the Administrator General stated at paragraph 4 that the powers to register the first defendant's trade mark was correctly exercised. However, in her submissions the Administrator General submitted that the trade mark should not have been registered. The submissions are difficult to follow as they do not address issues raised by the originating summons. The submissions fundamentally seek a legislative change and asking the court to pronounce that the Part II provisions should also apply to applications under Part III. It was a matter not addressed by plaintiff and fleetingly by the first defendant. Whether various international conventions applied to Fiji or not was not an issue before the court. If there is need for legislative change, the second defendant should put its concerns before the Parliament when it next sits.

One of the reasons advanced by the third defendant was the automatic registration of UK trade marks compromises the sovereignty of Fiji. This argument is difficult to accept. Firstly, it is our Parliament which in exercise of its sovereignty has passed the legislation. Secondly we have examples of other foreign legislation still being applied in Fiji like the UK Army Act. Often given our limited resources overseas legislation is closely followed and at times copied verbatim; for example, the Consumer Credit Act, and the Land Transfer Act to name just two. This is not surrender of our sovereignty.

Conclusion:

Under Part III of Trade Marks Act, once the Registrar receives the application, he has to register it. There is no need to advertise the application so others can file opposition to it and seek a hearing before the Registrar. Their recourse is before the High Court. Accordingly the Registrar correctly registered the Trade Mark 50/2006.

Final Order:

The plaintiffs originating summons is therefore dismissed with costs.

[JITEN SINGH]
JUDGE

At Suva
17^th October 2008