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National Court of Papua New Guinea |
Unreported National Court Decisions
PAPUA NEW GUINEA
[NATIONAL COURT OF JUSTICE]
W.S. NO. 810 OF 1994
BETWEEN
BRINKS INCORPORATED - FIRST PLAINTIFF
BRINKS AIR COURIER AUSTRALIA PTY LTD - SECOND PLAINTIFF
AND
BRINKS PTY LTD - FIRST DEFENDANT
AND
BARRY TAN - SECOND DEFENDANT
AND
HERMAN LUCAS - THIRD DEFENDANT
Waigani
Injia J
9 May 1997
PASSING-OFF - Foreign Companies not based in the country carrying on business in the country using resident sub-contractor - Security service business using name “Brinks’” - Local security service company using “Brinks” as part of its corporate and business name - Whether Local company guilty of passing-off foreign company’s business.
UNDERLYING LAW - Common law and equity - Passing-off action - Principles considered appropriate and applicable to circumstances of country - Adopted and applied - Constitution, Sch. 2.2.
The First Plaintiff, a security service company based in Connecticut, USA owned a group of Companies throughout the world including the Second Plaintiff which was based in Sydney, Australia. All thespanies used the nahe name “Brinks” or Brink’s” as part of their corporate name or business name. Taintiarried on the busineusiness of transporting valuables such as currency and gold in PNGn PNG using a resident sub-contractor, PNGured. The First Plaintiff had ae agreement with PNG Armoured but did very little or n or no business directly with PNG Armoured. The Second Plaintiff had agreement with several resident Companies to transport valuables into and out of PNG. Although the d Plaintiff diff did not have an agreement with PNG Armoured, all business for the Second Plaintiff was carried out by PNG Armou#160; The Plaintiffs did not obtain incorporation, registration or certification as a foreiforeign enterprise under the existing laws of PNG. The Second Defend160; was was at one time employed by PNG Armoured as it’s Managing Director and did some work for the Second Plaintiff. he left his employment annt and with the financial assistance of the Third Defendant, incorporated the First Defendant company and registered two other business names known as “Brink’s Armoured” and “Brinks Security Services” and went into various businesses, one of which was similar to that provided by the Plaintiffs through PNG Armoured. In a passif action by the the Plaintiffs, they sought permanent injunctind damagdamages) to stop the Defendants from carrying on business using the name “Brink”, “Brinks” or “Brink’s”.
1. &ـ A6Pa A Pa A Passinassing-off action is an action in equity which is enforceable by an injuction and a party seeking equitable remedy of a permanent injunction must come with clean hands. The Plffs in carrying on b on business in the country without obtaining registration as a foreign enterprise under Part XII Division 3 of the Companies Act (Ch. 146) ertification under the Investment Promotion Act 1992 were cere committing criminal offences for which they stood liable to be prosecuted whereas the defendants had not broken any laws because they had obtained incorporation of the company and registered their business names under the Companies Act and Business Names Act (Ch. No. 145) and were entitled to carry on business under their registered corporate or business names. The action should beissed ssed because the plaintiffs had not come with clean hands.
2. ҈ The First Plaintiffntiff had not acquired a reputation or goodwill in the country whiccould protect by a passing-sing-off action because it had not carried on any or sufficient business in the country to establish a reputation or goodwill; that the defendants had not misrepresented to the public in the country including the First Plaintiff’s customers or potential customers that their business was that of the First Plaintiff, and that no damages were actually suffered or likely to be suffered by the Plaintiffs as a result of the defendant’s use of the name “Brinks”. The action of the Filaintiaintiff should be dismissed.
3. & The Second Plfintiff had ahad acquired a reputation odwill in the country in the use of the name “Brinks” or “Brink’ss” as attaching to the provision oh quasecurervices, in partiparticularcular, the, the provision of armoured car security services in the transportation of valuables, but because the defendants had not misrepresented to the public in PNG or the Plaintiffs’ customers or potential customers that the services they were providing was that of the Second Plaintiff or in anyway associated with the Second Plaintiff, and because the Second Plaintiff had not actually suffered any damage or likely to suffer any damage as a result of the use of the name “Brink’s” or “Brinks”, the action should be dismissed.
Cases Referred to in the Judgement
Scott v Brown Doering McNab & Co. [1892] UKLawRpKQB 170; [1892] 2 QB 724
Reddaway v Bonham [1895] ALL ER 133
Inland Revenue Commissioner v Muller & Co.’s Margarine Ltd [1901] UKLawRpAC 20; [1901] AC 217
Panhard v Panhard [1901] UKLawRpCh 130; [1901] 2 Ch 513
Gibson Battle & Co Ltd v James King & Sons [1915] SASR 15
AG Spalding & Bros v AW Gamage Ltd (1915) 84 LJ (Ch. 449)
Poiret v Jules Poiret Ld and AF Nash [1920] 37 RPC 177
Concrete Engineering and Contracting Company Limited v Hardie Trading Propriety Limited [1928] SAStRp 35; [1928] SASR 132
Snell v Unity Finance Ltd [1963] 3 ALL ER 50
Sheraton Corp. of America v Sheraton Motels Ltd [1964] RPC 202
Suhner & Co. AG v Suhner Ltd [1967] RPC 336
The Crazy Horse Case [1967] RPC 581
Alain Bernadin et Compagnie v Pavilion Properties Limited
Globelegance BV v Sarkissian [1974] RPC 603
Baskin Robbins Ice Cream Co. and Another v Gutman and Another [1977] FSR 545
Star Industrial Company Limited v Yap Kwee Kor (trading as New Industrial Company) [1976] FSR 256
HP Bulmer Ltd v Bollinger SA [1978] RPS 79
Erven Warnink B and Others v J Townend & Sons (Hull) Ltd and Others [1979] 2 ALL ER 927
Habib Bank Ltd v Habib Bank AG Zurich [1981] 2 ALL ER 650
Reckitt & Colman Products Ltd v Borden Inc. and Others [1990] UKHL 12; [1990] 1 ALL ER 873
Taittinger and Others v Allbeu Ltd and Others [1994] 4 ALL ER 75
Counsel
CR Hudson for the Plaintiffs
D Hill for the Defendants
9 May 1997
INJIA J: The Plaintiffs’ action is based on the common law tort of passing-off. The Plaintifek permanent ient injunctions and damages. The case involves th of thof the name “Brink”, “Brinks” or “Brink’s”.
1. BACKGROUND OF THE CASE
The essence of the Plff’s claim is this. The FPlaintiff is a co a co a company incorporated, registered and based in Connecticut, USA. The Second Plaintiff is an Australian company incorporated, registered and based in Sydney. The Secondntiff is wholly olly owned by the First Plaintiff and regarded as a “subsidiary” of the First Plaintiff. The First tiff claims that that it haried on business using the name “Brinks” in USAn USA since 1865 in the business of providing security services throughoutand in a large number of countries throughout the world undd under the name “Brinks”. The First Plaintiff claims it has a series of companies registered throughout the world of which the Second Plaintiff is one. Both plaintiffs claim thay have carried on business in Papua New Guinea (PNG) continuously since 1988. They cley claim that ehougthough they are not incated and/or registered in PNG, they have carried on business using their PNG agent or sub-csub-contractor, namely PNG Armoured. They hat as part of their international reputation or goodwill, ill, by conducting business in PNG through PNG Armoured, they have acquired a reputation or goodwill in PNG in the name “Brinks”. They claim that the SeDefe Defendant was at one time a Managing Director of PNG Armoured and was performing the services required by the plaintiffs on behalf of PNG Armoured. Ht theany in 1994 and he u he used his business knowledge ofge of the plaintiff to set up the First Defendant company and registered tsiness names “Brinks Armoured” and “Brinks Security Services”. Fina Financial backing for the business was provided by the Third Defendant. The plaintiffs say the defendants are carrying on business similar to that of their own and this is creating confusion in the minds of the public in PNG, among their existing and potential customers throughout PNG. They claim that the defendants are misrepresenting to the public in PNG that the services they are providing are that of the Plaintiffs or are associated with the plaintiffs. They claim that as a t, tht, the plaintiffs are likely to suffer damages to their business in PNG unless the defendants are permanently restrained from using the name by this court.
The defendant’s de in essence is that they adey admit that they have incorporated the First Defendant company and registered the said two (2) business names and are carrying on business in PNG of providing security services, some of which are similar to those of the Plaintiffs. They say the Plaintiffs have no reputation or goodwill in PNG which is capable of being protected by a passing-off action. They deny any misrepresentation involved and any likelihood of damages. They say that they aritleditled to conduct business in PNG under their corporate name and style and under their two (2) registered business names because they have complied with thevant laws of PNG as to incorporation and registration.  The the plaintiffs do not not have any right to carry on business in PNG because they have failed to comply with relevant laws of PNG requiring registration of foreign companies, registration ofness names, etc.
p>2. LAW ON PASSING-OFF
Before I deal with the issues relating to the pleadings, some objections taken by the defendants taken as to the competency of the proceedings and the evidence, it is necessary to set out the principles relating to the tort. There is no statutory law governing the tort of passing-off. There is also no case precedent on the tort in PNG. Both partiree that the prie principles of common law and equity in England as adopted under Sche2.2 o Constitution shon should be adopted and applied. As there is generasensus bsus betwebetween the parties as to what those principles are, I set out those principles.
Generally speaking, “passing-off” means a misrepresentation made by one trahich is calculated to give give that trader the business benefit of another trader’s goodwill or reputation. Passing-off actionable tole tort.
The development of this tort in the equity courts of England goes back to the mid 19th century.lthough there have been many cases with different pronouncement of the principles, the basi basic principles developed in the earlier decisions have remained essentially unchanged to this day. I would prefer the description of the action of passing-off given by Buckley LJ in HP Bulmer Ltd v Bollinger SA [1978] RPS 79 at p. 93-95:
“To succeed on this part of the appealrespondents must establish that the appellants have committmmitted the tort of passing-off, a form of civil actionable wrong which does not depend upon any legislation but it recognised as an actionable wrong by the general law of the land. A man who engan commercialrcial activities may acquire a valuable reputation in respect of the goods in which he deals, or of the services whi performs, or of his business as an entity. The law regards suceputatiutation as an i an incorporeal piece of property, the integrity of which the owner is entitled to protect. This does notcourse, mean mean that he is entitled to protection againsttimate competition in the mthe market. If A’s goods have acquired a reputation on the market connected with a particular mark or get-up, A cannot cnot complain if the value of that reputation is depreciated by B coming on to the market with similar goodch acquire a reputation whin which owes nothing to the name, mark or get-up associated with A’s goods. A can, however, con if B if B in the course of his operation uses in connection with his goods the name, mark or get-up associated with A’s or one so closely resembling it as to be likely to lead to confusion on the market betweentween the goods of A and those of B. By so doing B wrongfully appropriates to himself part of the reputation belonging to A and so infringes the integrity of A’s property in that reputation. This proprietary right recognised by the law as to a right in the name, mark or get-up is the badge or vehicle: Singer v Loog ([1880] 18 Ch.D395 at 12), per Lord Justice James; ([1882] 8 App. Cas 15 at 26-27, 38-39), per Lhancellor Selborne; Lord Ward Watson; Burberrys v Cording ([1909] 26 RPC 693 at 701), per Parker, J; AG Spalding Bros v AW Gamage Ltd. ([1915] 84 LJ Ch. 449 at 450) per Lord Parker. Upon analit seems to me tome to be clear that in principle this must be so. If B has made use of a name, mark or get-up which has become distinctive of A’s goods, B does not damage or interwith A’s right or abir ability to use that name, mark or get-up but he does or may be likely to damage A in respect of his trade, that is to say, in respect of his, A’s enjoyment of an exclusive right to make use of the market of the reputation of his goods. What is damaged or lito beto be damaged is that reputation. It is this which A is end tled to have protected. If B goods which are not not A’s goods in such a way as to give the impression that they are A’s goods, A may be id in ct of his trade in either or both in two ways.s. He may loses of his own gown good goods which he might otherwise have made, and the reputation which his goods enjoy may be depreciated by the confusion of B’s goods with his so that A’s compve position in the market mket may be weakened. Moreover the exvity of thef the association of the name, mark or get-up with A’s business might, perhaps, be shown to be itself a valuable asset as a powerful means of bringing A’s goods to the n of the public, thus maintaaintaining and promoting A’s competitive position on the market. It has not, however, been suggested that modern advertising techniques have made it possible for a name to acquire an intrinsic value of it’s own as anrtising asset. Such a suggestio feasible ible at all in any case) would have to be sube supported by evidence of a kind which is wholly absent from and would seem to me most unlikely to be available in, the present case. Irdingly proceed upon the the established basis (see the cases just cited) that a claim to relief against passing-off cannot be based upon an alleged right of pty in a name, nor in the mark or get-up. It is injurynjury, or ikellikelihood of injury, to the reputation of A’s goods or business, that is to say his goodwill, that founds the cause of action. If B’s conduct ot thot the effect of damagor being likely to damage Aage A in respect of his trade, B is not guilty of the tort of passing-off. [He then referred to auth and continued:] Goodwill is undoubta form form of prof property. I in my judgement, againstainst infraction of this incoal property that the law will protect a plaintiff in a passing-off action. So I think in thin the present case one should keep prominentlyind the question whether wher what the plaintiff’s have done (for, having regard to the form of the present action, the roles of the plaintiffs and the defendants are the reverse of what is usual) has injured or is likely to injure the defendants in their trade as maker of Champagne.”
The above principles were re-affirmed by the Court of Appeal in Taittinger and Others v Allbev Ltd and Others [1994] 4 All ER 75 at 92-93, per Sir Thomas Birmingham MR. Sir Bm went further to expo expound on the misrepresentation element of passing-off as follows:
“Although there have, since his judgment, been other sums of the ingredients of the cause of action in passing-off,-off, notably in the speeches of Lord Diplock and Lord Fraser in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] 2 All ER 927 at 932-933, 943-944, [1979] AC 731 at 742, 755-756, the ruling of Buckley LJ has ever to my knowledge been criticised, varied or superseded. But it is now, understand,tand, clear that a defendant need not, to be liable, misrepresent his goods to be those of the plaintiff if he misrepresents his goods or his businesbeing in some way connected or associated with the plaintifintiffs.”
In the Erven Warnink’s case, the House of Lords discussed at length the elements that need to be proved by the plaintiff in a passing-off action in terms of five (5) elements. Lord Diplock identifiede eose elements at p. 932-933 as follows:
“My Lords, AG Spalding and Bros v AW Gamage Ltd and the later cases make it possible to identify five (5) characteristics which must be present in order to create a valid cause of action of passing-off: (1) a misrepresentation; (2) made by a trader in the course of trade; (3) to prospective customers of his or ultimate consumers of goods or services supplied by him; (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”
Lord Fraser at p. 943 put it this way:
“But the decision [the Champagne’s Case] is in my opinion, secondly based on the principles underlying the earlier passing-off actions, which I take to be that the plaintiff is entitled to protect his right of property in the goodwill attached to a name which is distinctive of a product or class of products sold by him in the course of his business. It is tial for the plaintiaintiff in a passing-off action to how at least the following facts: (1) That his business consists if, or includes, selling in England a class of goods to which the particular trade name applies; (2) That the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods; (3) That because of the reputation of the goods, there is goodwill attached to the name; (4) That he, the Plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value; (5) That he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the Defendants selling goods which are falsely described by the trade name to which the goodwill is attached.”
In the more recent case of the House of Lords in Reckitt & Colman Products Ltd v Borden Inc. and Others [1990] UKHL 12; [1990] 1 All ER 873, the court discussed the elements that need to be proved. Halsbury&#s Laws of Englanngland, 18th volume. Fourth Edition, (Butterworths, London, 1995) summarises the elements discussed in Reckitt’s case as there beingly three (3) essential elements requiring proof. They They are:
&160; that lai piff&t8217;s good goods or services have acquired a goodwill or reputation (both of which mean the same thing) in the market and are known by distshingure; <#160;;ټ #160; Tha; That thet tisre is a is a mi a misrepresentation by the defendant (whether or not international) leading or likely to lead the public to believe that goods or services offered by the defendants are goods or services of the plaintiff; and3. & That the plai tiff has sufs suffered or is likely to suffer damages as a result of the erroneous belief engendered by the Defendant’s misrepresentation.
I would agree with both counsels in this present case that there are essentially these three (3) elements in passing-off. It is now nery to set out out in some detail what each of these three elements involve insofar as those principles relate to the facts of the present case.
(a) Reputation or goodwill
Of thee (3) elements, the first erst element has attracted much diversity of judicial opinion as to what it is really meant to protect. This is more so where the reputation or goodwill is built around or attached to a business name, trade mark or get-up. Theseroversies were settleettled by the House of Lords in two cases. In Erven Warnink’s case, at p. 94 the House of Lords Fraser LJ, quoted with approval the following passage of Lord Fraser in AG Spalding and Brnd Bros v AW Gamage Ltd [1915] RPC 84:
#8220;There appears to be considerable diversity of opinioninion as to the nature of the right, the invasion of which is the subject of what are now known as passing-off actions. The more genopinion appearppears to be that the right is a right of property. The view naturally demands an answer to the question - property in what? Some authorities saperty irty in the marke or get-up improperly used used by the defendant. Others say, property i buse business or goodwill likely to be injured by misrepretion. Lord Herchell in Reddaway v Banham expressly dily dissents. Fhe former view; and if thif the right invaded is a rig property at all, there aree are, I think strong reasons for preferring in later view.”Lord Parker’s statement was alsted with approval by the Hohe House of Lords in star Industrial Co. Ltd v Yap Kwee Kor (trading as New Industrial Co.) [1976] 1 FSR 256 of 269 where Lord Diplock said:
“Whatever doubts there may have previously been as to the legal nature of the rights which were entitled to protection by an action ‘for passing-off’ in courts of law or equity, they were laid to rest more than 60 years ago by the speech of Lord Parker of Waddington in AG Spalding & Bros v AW Gamage Ltd. with which the other members of the House of Lords agreed. A passing-offon is a remedremedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made ssing-off one person’8217;s goods as the goods of another.”
It is clear from these principles that a mere complaint by the plaintiff that his name is being used by the defendant will not be sufficient. Thintiff must also establitablish the goodwill or reputation associated with the use of that name. And reputation or goodwill is:
“It is the be and advantage of the good name, reputation and connection tion of a business. It is the attractive whic which brings in custo It e one thing which distidistinguishes an old estabestablished business from a new business at it’s first start. oodwi a bus must emanate fate from a particular centreentre or source. Ho, widely exty extended oded or defused it’s influencee, goodwill is worth nothing unless it has power of attraction sufficient to bring customertomers home to the source from which it ems.” (Inland Revd Revenue ssionssioner v Muller & Co. Margarine Ltd. [1901] UKLawRpAC 20; [1901] AC 217 at p. 223 and 224, per Lord McNaghtern).
Where a foreign company is seeking to protect it’s reputation or goodwill in another country the question arises as to what the plaintiff has to prove. There has been diverof judf judicial opinion in English courts on this issue. This parent from the decisdecisions in Panhard v Panhard [1901] UKLawRpCh 130; [1901] 2 Ch. 513; Poiret v Jules Poiret Led and AF Nash [1920] 37 RPC 1heratrp. of America v ca v Sheraton Motels Ltd [1964] RPC 202; Suhner v Suhner [1967] RPC 336; A36; Alain Bernardin et Compagnie v Pauilion Properties Limited (The Crazy Horse) case [1967] PRC 581; Baskin - Robbins Ice Cream Co. and Another v Gutman and Another [1977] FSR 545 and Globelegance BV v Sarkissian [1974] RPC 603.
From reading all these cases together, the Globelegance case appeal to me to be sound and appropriate to the circumstances of this country: Constitution, Sch. 2.2. That is, the princihat whet where a foreign company relies on the use of a business name, mark or get-up, it must show that the name, mark or get-u become a “user” in this country which is distinctive of the Plaintiff’s 17;s goods or services so that the provision of goods or services of the kind dealt with by the plaintiff of that name will be understood by the trade and public in that country as meaning that the services are that of the plaintiff. “User” refers to the business activities of the foreign trader in the country using that name, mark or get-up. This principle was first enunciated by Pennyquick J in Thzy Horse case. Pennyquick J. expounde e “use0;user” principles at p. 548 in these words:
“The statein the judgement of Jenkins LJ [in Oerli AG v Bowman (LondoLondon) Ltd [1957] RPC 388 397) which I have just read unequivoically requires user to be this country. Tt seems to me is what onet one would expect: that a trader cannot acquire goodwill in this country without some sort of user in this country. His user may take forms anms and in certain cases very slight activities have been held to suffice. On the other, I do not thit think that the mere sending in to this country by a foreign trader of adverents advertising establishmlishment abroad could fairly be treated as user in this country. No authoto that effect hast has been cited. If that were so, the range of the action of passing off would be extended far beyond anything which has hitherto been ed in it’s proper scope. That observation applies I ts I think particularly to such establishments as hotels and even more to restaurants. It may well be thatowner oner of a foreign hotel or restaurant acquires in this country a reputation for the name of his hotel or restaurant in the wide sense, that the travel agents or other persons to whom he sends advertisements know of his establishment. Again he may ac a reputatiutation in a wide sense in the sense of returning travellers speaking highly of that establishment, but it seems to me that those matters, although they may represent reputation in some wide sense, fall far short of user in this country and are not sufficient to establish reputation in the sense material for the purpose of a passing off action. It is very clear that in cuch circumstances the foreign trader has not acquired anything which in law could be described as goodwill in this country.”
The “user” principle in my view is another term for carrying on business in the country sufficient to establish a reputation or goodwill in that country. It is those bus activitiesities in that country which gives a foreign company the goodwill or reputation, a property right, which gives title in the plaintiff to bring an actor passing-off. As Templeman J in Globelegbelegance cnce case at p. 612-613:
“The user in this country, on the present evidence, consists of the activities of selling patterns to Debenham and Freebody, and they in turn making dresses from patterns on which the name of ‘Valentino’ is put on the label, and in selling ties to the establishments I have mentioned. There were two (2) other activities where I know not whether business was actually done, but certainly in 1966 and 1968 one finds fashion shows, although, the last one is in 1968. They alittle on the lines ines of Poiret. In my judgement, adding these things together and having regard to the fact that when it comes to deciding whether a Plaintiff can get his case off thund ave anything to prto protect what he has to do is to show some user in this country, those tose three (3) users establish title in the plaintiffs to bring an action for passing off if the necessary conditions are fulfilled, namely if they can show that the defendants are in fact, innocently maybe, passing off.”
(b) Misrepresentation
Misrepresentation in the context of a passing-off action is defined as to represent the goods or services of another as that of his and thereby deceive the customer into thinking that the goods and services he is receiving is that of the other. Where thintiff complains oins of the use of a name, mark or get-up, the plaintiff must not only show that the defendant used the name, mark or get-up but also prove thadoing so the Defendant was putting off the goods or servicervices as that of the plaintiff. Lorscheel in Reddaway v Bo v Bonham [1895] All ER Rep. 133 at 140 expressed the meaning of misrepresentation in the context of the use of a name to identify one business in following terms:
“The name of a pf a person, or words forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification by another manufacture would deceive a purchaser into the belief that he was getting the goods of A when he was really getting the goods of B. In a case of description tion the mere proof by the plaintiff that the defendant was using the name, word, or device which he had adopted to distinguish his goods would not entitle him to any relief. could only obtain it by proy proving further that the defendant was using it under such circumstances or in such manner as to put off his goods as the goods of the plaintiff. If he could succn proving ving this I think he would, on well-established principles, be entitled to an injunction.”
Misrepresentations made to the public about one’s goods or services as dct from those of another coer competitor in a free market or capital economy is permissible. Stnts which are untrue made made by a trader in a free market place may also be permitted and may not be the basis of an action for passing-off even if they lead eceiver of the statement to suffer damages. As Lord Dord DiplocErven Wven Warnink’s case at p. 933 said:
“In an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons w should have been the policpolicy of the common law not to run the risk of hampering competition by providing civil remedies to everyone competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the n tion of passing-off originated was no place for the mealy mouthed: advertisements are not on affidavit; exaggerated claims by a trader about the quality of hies, assertions that they are better than those of his rivalrivals, even though he knows this to be untrue, have been permitted by the common law as venial ‘puffing’ which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result.”
Lord Fraser at p. 944 said:
“Of course, any established trader is liable to have his goodwill damaged by fair competition, and it is not every falsehood told by a competitor that will give him a right of action. But where the falsehood mi a misrepresentation that the competitor’s goods are goods of definite class with a valuable reputation, and where the misrepresentation is likely to cause damage to established trader own goodwill in relation tion to that class of goods, business morality seems to require that they should be entitled to protect their goodwill.”
(c) Damages
The plaintiff must prove that he has suffered damages or likely to suffer damage as a result of the misrepresentation made by the defendant. Where the defendant has not yet commenced business, the plaintiff must prove that it is likely to suffer damage such as likely loss of existing business customers or potential customers, conf in the market place leading to customer’s or potentitential customers being driven away over to the Defendant or some other competitors, etc. This is a e more difficulticult to prove as the plaintiff will have or provide evidence of the unforseen. The court will allow the plaintiff to succeed here so long as the damages are reasonably foreseeable or in the words of Lord Fraser in Erven Warnink’s case, where the Plaintiff is “really likely to suffer” damage.
Where the defendants have been carrying on business using the name, mark or get-up for some time, the courts will expect the plaintiff to produce some evidence of actual loss to render weight to it’s claim. In certain circumstances, mere speculative evidence of likely loss or damage alone may not suffice. The standard of proof tualctual damage or likely damage is higher here than in a situation where the defendant has not yet commenced business. In Habnk Ltd v Habib Bank Bank AG Zurich [1981] 2 ALL ER 650 at 6160; for instance, Lord Olid Oliver described the standard of proof as follows:
“But here there really was no evidence o damage of any significancecance over the whole period since nationalisation. The witnesses caly the Plae Plaintiffs to establish the probability of confusion seem, judging from the transcripts, from the plaintiffs point of view to have been disappointinggue. It has to be remembered that these two bank̵’s had been trading together in London for three and a half years before the issue of the writ and nearly six years at the date of the hearing. Yet there was not oom of e of evidence of any customer who had opened an account at one in mistake for the other, apart from one case in which a gentleman who had opened an accounh the Defendants had subsequently closed it and transferrederred his business to the Plaintiffs. Since he had previously transferred part of the moneys in his account with the Defendants to an account opened with the Plaintiffs before finally closing his nt with the Defendants, this may import dissatisfaction but it hardly looks like a case of e of confusion. All the other eviden confuconfusion related to a decreasing amount of postal confusion (much of which was accounted for by carelessness on the part e Post Office), telex confession by junior banking staff, and a decreasing quantity of cred credits or debits to the wrong banks, which were swiftly rectified without loss, although this may have caused some slight administrative inconvenience on both sides. But the evidence did indicate that errors of this sort did occur, though much less frequently, even with other banks.”
I am of the view that these principles of common law on the tort of passing-off are appropriate and applicable to the circumstances of this country. I o reason why the tort shrt should not be recognised and enforced in our jurisdiction as part of the underlying law. PNG is a member of the Commonwealth of nations, a democratic country and a member of the free market economy countries of the world such as Australia, USA, and Europe. In bsence of any Statutoryutory provision which defines, modifies or restricts the tort of passing-off in this country, I see no reason for not recognizing and applying the tort and the principleociated with the tort as I as I have outlined above.
3. PRELIMINARY OBJECTIONS AS TO JURISDICTION AND COMPETENCY OF PROCEEDINGS
It is clear from the evidence, and this is not disputed by the plaintiffs, that both plaintiffs were not incorporated in PNG under provisions of the Companies Act Ch. No. 146 and in particular registered as a foreign Company under Part XII, Div. 3 of that Act. It isdisputed that the plae plaintiffs have never registered the name “BRINK,” “BRINKS” or “BRINK’S” under the Business Names Act Ch. No. 145. It is also isputed that that the name “BRINK,” “BRINKS” or “BRINK’S” with it’s associated trade mark has never been registender the Trade Marks Act Ch. No. 385. Finally, it is t is not desputed that the plaintiffs never obtained certification as a foreign enterprise carrying on business in PNG under provisions of the Investment Promotion Act 1992 (abbreviated IPA Act).
(a) Plaintiffs’ Locus Standi to Sue in PNG
It is submitted for the plaintiffs that it is not a pre-condition to the commencement of an action for passing-off in this country that they be based in this country in terms of complying with this country&#s laws relating to registration etc of foreign companies.&#es. submit the tort of passingssing-off is based on the reputation or goodwill acquired by the Plaintiffs in PNG through conducting business in PNG.
In my view, the standing of a foreign co to sue in another jurisdicisdiction is a matter for the legislature to provide for by statutory legislation. In the absence ofstatutoryutory provision, the principles of the common law and equity will apply.
In PNG the Companies Act and other pert commercial legislation’s in PNG do not provide for locus standi of foreign companiesanies or enterprises not registered or incorporated in PNG but conducting business in PNG, to sue in PNG. This is different from some other countries of the free market economies such as Australia where for instance, the Companies Act 1892 of South Australia prevents a foreign company not rered in the jurisdiction (in South Australia) under Part VIIt VIII of the Companies Act from maintaining an action. Section 201 f that Act prot provides:
“If any foreign company shall carry on business contrary to that Act, the validity of anyracts, dealings or transactions in relation to such business shall not be affected by this this part of the Act, but such company shall not be entitled to bring or maintain any action, set-off, counter-claim or legal proceedings in respect of any such contracts, dealing or transaction until it shall have complied with this part of Act.” (underg is mine).
S
See Gibson Battle & Co. Ltd v James King & Sons [1915] SASR 15 and Concrete Engineering and Contracting Company Limited v Hardieing Propriety Limited [1928] 5 ASR 132.
The principlnciples of common law and equity on passing-off clearly gives locus standi to a foreign company conducting business in PNG to sue a resident company or person in a country in which the Foreign Company carries on business without first being registered, incorporated or based in that country. is the whole essence of a of a passing-off action - a foreign company’s ability to sue in any country of the market economy to protect it’s reputati goodwill.
In the absence of any statutory provisionision in this country equivalent to that of South Australia, I see no reason why the plaintiffs should not be allowed to sue in PNG in a passing-off action.
(b) Illegality
(i) Pleadings
The defendants never pleaded illegality as a special defence to the plaintiff’s claim as required by Order 8, Rule 14 of the National Court Rules. At the commencement o hear hearing, there was an attempt made by the Defendants to amend the defence to plead illegality but this was not pursued to finality even though I left it open for the Defendants to seek tnd the defence at any time time of the proceedings. Also at theing, despite obte objections from the Plaintiffs, I allowed the Defendants to cross-examine the Plaintiffs’ witnesses as to the legality of their business activities in PNG in terms of cance with the Companies Acts Act, IPA Act, Business Names Registration Act, Income Tax Act Companies Act, etc. The Plaintiffs&# witnessesesses did make some admissions in respect of non-compliance with some of these laws. e end of the evidence er, er, the Defendants did not pursue their application to amend the defence to conform with thth the answers adduced in cross-examinatio>
In their submissions, the Defendants go at length to a to address on the illegality of the Plaintiffs’ business in this jurisdiction and submit that the Court should not allow the Plaintiffs to succeed on their claim because they failed to comply with the relevant laws. They say the Court has a discretion to refuse a Plaintiff the remedies sought if it failed to comply with the relevant laws of the country in which they carry on business. In support, they rely on t statement from C. Waldem, The Law of Passing-off at p. 289-390 which says:
“The Plaintiff in a passing-off action cannot claim the protection of rt of justice for whatever is illegal, fraudulent or decepteceptive. As the property protected by a passing-off action is the goodwill the Plaintiff has in his business, the rule applies where the relevant class of the Plaintiff’s business is illegaa fraud upon the public.”
The Defendants also also rely on the following passage of Lord Mansfield in Holman v Johnson [1775] Cowp 343:
“The principle of public policy is that; ex dolo malo non oritur actio. No Court will it’s a7;s aid to a man who founds his cause of action upon an immoral or an illegal act. rom the Plaintiff̵wn s1wn standing or otherwise, the cause of action appears to arise ex turpi causa, or the transtransgression of a positive law of this co, then the Court says he has no right to be assisted. #160; It in that ground thed the Court does, not for the sake of the Defendant, but because they will not lend their aid to such a Plaintiff. So if the Plaintiff and Defendant were to change sides the Defendant was to bringbring his action against the Plaintiff, the latter would then have the advantage of it; for where both arelly in fault, potior ost conditio defendants.”
The by the English Court Defendants further rely on a statement of principle of Lindley, LJ in Scott v Brown Doering McNab and Co. [1892] UKLawRpKQB 170; [1892] 2 QB 724 at 728 which followed the principles of Lord Mansfield in Holman v Johnson, ante. Lindley, LJ’s statement was subsequently quoted with approval Appeal in Snell v Unity Finance Ltd [1963] 3 ALL ER 50. Lindley, LJ in Scott’s case said:
“No Court ought to enforce an illegal contract or allow itself to be made the instrument of enforcing obligations alleged to arise out of a contract or transaction whicillegal, if the illegality lity is duly brought to the notice of the Court, and if the person involving the aid of the Court is himself implicated in the illegality. It matters not whether the Defendant has pleaded the illegality or whether he has not. If the evidence adduced by the plaintiff proves the illegality, the Court ought not to assist him. If authority is wanted for this promotion, it will be found in the well know judgment of Lord Mansfield in Holman v Johnson [1775] EngR 58; [1775], 1 Cowp. 341.”
efendants submit that even if the defence of illegality is not pleaded, the Court still hasl has a discretion to consider the evidence and if satisfied that the Plaintiff has not complied with the relevant laws, refuse the remedy sought.
The Plaintiffs strenuously object to the Defendants’ relying on the defence of illegality. They say because illegality was never pleaded and leave was never sought to amend the defence to plead illegality at any stage of the proceedings, the Defendants are preluded from relying on that defence. The Plaintiffs rely on various provisions of the National Court Rules including Order 8 Rule 14 which provide:
“In a defence or subsequent pleading the party pleading shall plead specifically any matter, forple, performance, release, ase, any statute of limitation, fraud, or any fact showing illegality:
(a) & which he alleges makes anes any claim, defence or other case of the opposite party not maintainable;
(b) ټ&#whichnot pd specifically, may take the opposite party by surprise; or
(c)&>(c) #160; ҈ whicheseisesers ot s ot not arising out of the preceding pleadings.” The Plaintiffs furtheurther subr submit that as there was no pleadings ashe de of ility and leave not having been sought bght by they
the defe defendants, the court should not entertain any evidence of illegality adduced by the defendants and written submissions
on the point by the Defendants. Generally speaking, under Order 8 Rule 14, the court may cannot allow a defendant to raise a defence to a claim which he has not pleaded
because the Court and in particular the plaintiff would be caught by surprise. However, thet has a discreiscretion to waive or dispense
with the requirements of this rule in appropriate cases: Order 1 Rule 7. Where theer sought to be r be raised in defence to the
claim is one legality, the court may ally allow the defendant to raise the defence at the end of the evidence even if he has not
pleaded it. matte legality in term term terms of compliance with statutory laws of the country are matters the court ought to know
about. Inot ely up to parties to s to prevent the court from knowing about matters of legality by p by pleading or otherwise. It
is on basis I previousliously allowed the defendants to raise the issue by adducing evidence in c in cross examination. For the
same ns, Iw the plhe plaintiffs to raise illegality as a defence to the plaintiff’s claim laim at the end of the evidence. Thendants rely on the illegality of the plaintiffs business in two respects: (1) that in the the exercise of the court’s discretion,
the court should refuse the remedy sought on equitable grounds. (2) that the plaintiff’s did not acquire a reputation or goodwill
in PNG because by doing business in PNG illegally, they demonstrated that they were not reputable companies. dingly, the first element
ment of passing-off has not been made out and the whole action should be dismissed. The first poequirreful conl consideration on
it’s own whereas the second point may be considered ered when I consider the reputation or goo element of passing-off. The action of passing-off is founded in equity and is enforenforceable by an injunction, interim, permanent or mandatory. A plaf
seeking this equitaquitable remedy must come with clean hands. If the plaintiff is guilty of violating a country’s internal
laws designed to protect trade within it’s territorial jurisdiction, depending on howous those violations are, the court may
refuse the remedy sought. The question is whes whether the plaintiffs are guilty of committing breaches of the relevant commercial
laws of this country of such magnitude and severity that they should be denied the r sought by an action for passing-off. In order
to deto determins this issue, it is necessary to examine the laws alleged to have been breached by the plaintiffs. The Companies Act, Part VIII, Division 3 deals with foreign companies. It providr a s of registraistration tion of foreign companies
carrying on business in PNG. Section 358 (I) provides that a: Rreign company must within one month after it establishes a place of business or commence toce to carry on business within PNG,
lodge with the Registrar for registration: (a) ـ certicertified cied copy of the certificate of it’s incorporation or registration of business, it’s place
of incorporation or origin, or a document of similar; and (b);ټ a60; a cert certified copy of it’s charter, statute, memorandum, memorandum and articles or other instrument constituting
or defining it’s constitution; and (c) ;ټ a list,list, in thin the prescribed form, of it’s directors, containing similar particulars with respect to it’s
directors as are required by this Act to be contained in tgistethe directors, mas, managernagers and secretaries of a company incorporated
under this Act; and (d) here the list includes ddes directors resident in PNG who are members of the local board of directors, a memorandum duly
executeor onlf offoreimpany stating the powers of the local directors; and ( (e)e) < &160; ; a aemor of appf appointmenntment or power of attorney under the seal of the foreign company or executed on
it’s behalf in such manner as to be binon thpany erifi statutory declaration in then the pres prescribecribed mand manner,
(other then foreign companies) resident in PNG and authorized to accept on it’s behalf service of process and any notice required
to be served on it; and (f) ټ n ticehen the prescprescribed form of the situation of it’s registered office in PNG and, unless the office is
open anessib the c for at least five hours between 10a.m. and 4 p.m. of each day (Saturdaturdays, ays, SundaSundays and public holidays
excepted), the days and hours during which it is open and accessible to the public; and (g) ;ټ a statustatutory dory declaration, in the prescribed form, made by the agent of the company, and the Registrar shall
register the company under this Din by tration of the documents.” Section 3ion 355 (155 (1) defines “carrying on business” as including “managing or otherwise dealing with property
situated in the country as an agent, personal representative or trustee, whether by servants or agents or otherwise.” Section 355 (2) however provides: “(2) Notwithstanding Subsectio, (1), a foreign company shall not be regarded as carrying on business within Papua New Guinea
for the reason only thathin New a, it: (a) &##160;r b oomescomes a para party trty to an o an actioaction or suit or an administrative or arbitration proceeding, or effects
settlement of an action, suit or proceeding or of a claim or dispute; or (b) lds meetings of its dirs directors or shareholders or carries on other activities concerning its internal affairs; or (c);ټ&##160;tains a bank account; or (d) < 160; effeceffa ts a sale tale through an independent contractor; or (e) ҈ solicitlicits or procuresran order that becomes a binding contract only if the order ieptedide PNew Guinea; or > (f)&#(f) reates evidence of a deba debt or creates a es a charge on property; or (g) secures or coslect oanyts its debts or enforces its rights in regard to any securities relating to any such debts; or (h)&##160;;ټ cts anated transaction that is completed within a period riod of 31of 31 days days, not, not bein being one of
a number of similar transactions repeated from time to time; or (i) ;ټ investsvests any oany of its funds or holds any property.” The requirement is S. 358 is one of many requirements which a foreign company must comply with. Upon regiion, egistssues aues a Cert
Certificaificate of Registration: S. 358 (9). Failo comply with any of t of these requirements is a criminal ce punishable by a
specific fine or where no fine is expressly provided, a fine of K20.00: .00: S. 367. A body corporate regis and incorporated in PNG acNG acquires corporate status - it can sue and be sued in the country of it’s
registration and incorporation, it can hold property in it’s corporate name, etc. A body corporate registerdd and incorporated
in another country receives corporate status in that country and this corporate status is recognized in PNG only if it is registered
in PNG Part XII, Division 3. It’rporate status inus inus in it’s own country of incorporation and registration alone
is not sufficient to give it all the attributes of a corporate entity in PNG unless it is expressly provided for by statute. That
is through a system otem of registration under Part XII, Division 3. Section 37, for example, enables a company registered i to
hold land in PNG. PNG is part of democratic nations of the world with a free mare market economy. As such, it appearme the ithe intention of the Companies
Act is to provide fode for a system of incorporation and registration of Companies to enable to participate in modern commerce.
The primary focus of the Act is targeted at personsrsons or companies who are based in PNG and who are desirous of carrying on business
in PNG as a corporate entity. The provisions in Part Div, Division 3 permits fo companies to carry on busi business in PNG provided
they comply with the requirements of Part XII, Division 3 for no foreign companyany right to carry on business in PNG as do persons
or corp corporate entities registered and incorporated in PNG. Unless they egistered unde under Part VII, Division 3 and comply
with other requirements of Part XII, Division 3, their activities may be cored contrary to law or illegal. The plaintiffs plead in their statement of claim tham that since 1988, they have “continuously carried on the business of providing
security services throughout PNG” by reference to the name “Brinks.” (para. 8 and 9 of stateof t of claim). In my view, in failing to register the plaintiffs under Part XII, Division 3 of the Companies Act at any time since 1988, both plaintiffs
committed various criminal offences under the Companies Act for which they stood to be prosecuted in a court of law. The plaintiffs submit that they were not carrying on business within PNG and that therefore, pursuant to S. 356, Division 3 of Part
XII does not apply to them and they cannot be in breach of it’s requirement. Section 356 provides that Division 3 of Part XII: “applies to a foreign company only if it has a place of business or is carrying on business, within Papua New Guinea.” They also rely on the saving provisions of S. 355 (2). They submit that their activities are saved under S. 355 (2)(a), (d), (e), (f) and (g) because: “Their business involves coming to PNG to try and get orders which are accepted in Australia and for the portions of their contracts
within PNG they always effect those sales through an independent contractor and they invoice the client and collect the debts.” In my view, this argument is not open to the plaintiffs because the very basis of their action as pleaded in paragraph 8 and 9 of
the statement of claim is that they have continuously carried on business of providing security services throughout PNG since 1988.
And “carrying on business” as pleaded ought to mean it’s statutory definition as per S. 355 (2) of the Companies
Act. Further, the plaintif part particular the Second Plaintiff has commenced businesPNG directly by entering inng into agreements
with PNG based companies and the part-performance of those contracts are handled by theG “Sub-ContractorRr” namely,
PNG Armoured. They imply not involved ined in obtaining orders and effecting sales through an “independent contractor.” The other important legislation is the IPA Act 1992 which replaces the f National Investment and Dend Development Act Ch. No. 120.
The se of this Act is to & to “provide for the promotion of investment in the interest of national, social and economic development.”
(see preamble of ct).  Section 1 ds the purpof thof the Act tAct to be: “(a) to pr and facilitate invesinvestment in the country by citiand fn investors; and (b) &##160; to provide fore for the grant of t of a certificate to a foreign enterprise
(d) ټ tv profode foegistegister of foreign investment opportunities; and
(e) to0;romope investments whis which will materiallefit ountr it’s people and which:
(i
(i)) & contribute to economicth; wth; or
#160;;ټ create eate emploemploymentyment; or
(iii) ; utidomestic reic resourceources and in particular, renewable resource
v)҈ 160; assisassn skills acqu acquisition; or(v) 160; increasevthe e lum vand value of exports; or
#160;; develop remote aof t e coue country; or
(vii) f60; facilitate increaseerownership of invet by ens; >
(viii) promoportmreplacement; or<; or
(ix) ټ #160; are are are likely to effect any combination of tms sped inaragraphs (i) to (viii); and
(e) ـ to monihor the ithe ithe impactmpact of i of investment and the activities of enterprise>
(f) ;&1600; to0; to estabestablish the Investment Promotion Authority to assist the State in achieving the purposes specified is Se.”
The Act provides for a system of, inter alia, certification of a of a foreiforeign enterprise or company (“foreign enterprise” includes a corporation: See S. 1) try on business in PNG in G in specified areas not reserved for PNG. hrase “carrying on b on business” is widely defined in S. 1 to include “administering, renting, manaor otse de with pith properroperty as an owner, agent, legal personal representative or trustee whethwhether by a servant or agent or otherwise,” or maintaining an agent, employee or officer for the purpose of Soliciting or procuring or entering into order, arrangement, agreement or contracts (whether conditional or not) whether or not the agent, employ a officer who is continuously resident in the country,” or “marking an office, or agency or branch (however described) whether or not the office, agency or branch is wholly used for one of those purposes by another enterprise.” A foreignrprise shall or m or must not carry on business in PNG unless a certificate has been granted under Part IV: S. 25 (2). A certiforeign enterprise rise shalmust comply with any law applying to it and such complianceiance is deemed to be a condition precedent to every certificate: S. 25 (460; A certificate under the Act does not relieve the foreigoreign enterprise from compliance with any other law: e.g. Part XII, Division 3 of the Companies Act. A foreign enterprise or an officer or owner which carries on business without a certificate under the Act; or carries on business in an activity reserved for a citizen or a national enterprise is guilty of a criminal offennishable by a fine not exce exceeding K100: S. 41. A cont agreement or undersnderstanding entered into between a foreign enterprise and another enterprise and the foreign enterprise which is not certified at the time the contract was entered into madeclanlawful and void void by thby the court on application by another enterprise or the Investment Promotion Authority: S. 41 A. A gn enterprise which fail fails to comply with any other provision of the Act is guilty of an offence and is liable to punishment fine not exceeding K25,000.00 or imprisonment of a term not exceeding two (2) years or botr both: S. 41 B.
The IPA Act contains the clearest statement of the purposes of the Act pertinent to public policy consideration prevailing in PNG today - that foreign enterprises or companies, irrespective of their international standing or business reputation have no right, as citizens have, to carry on business in PNG. If they wish to do so, then they must comply with the requirements of this Act and the Companies Act or any other relevant Act. Their international repun tion or standing in PNG in a free market economy must stath compliance with this cous country’s laws as to registration and incorporation or certification. If they fail to do so, will not be seen with favo favour by the Court when it comes to the exercise of the Court’s equitable discretion.
It isr from the pleadings that the plaintiffs were “carrying on business” continuallnually in PNG since 1988 (statement of claim, para. 8 & 9). Thatg what they say, I accI accept their statement on it’s face value. I take their assertion#822“carrying on business” as having the same meaning as the statutory definition of “carrying on businessRs per S. 355 of the Companies Act and S. 1 of the IPA Act.
It is clear that they wery were carrying on business in PNG in breach of the Companies Act and the IPA Act. In other words, tere carrycarrying on business illegally in PNG. The issue whethe particulaicular business dealings, etc, were unlawful and void is not before me and I am not in a position to decide the .wever, I am clearclear in my mind that they were carrying on business in PNG, without regisregistering their foreign companies under Part XII, Division 3 of the Companies Act and without obtaining certification under the IPA Act. They were committing crimonal offences in doing so.
The action of passing-off is maintained in the equity courts in England. They have now sought uitable remedy of an injunction against the defendants. But thee not complied wied wied with this country’s statutory laws. The defendants on the other hand complied with all the statutory laws of this country as a national company as to incorion under the Companies Acts Act, and registration under the Business Names Act. They are not in bref any sany statutory law. They ntitled by statutory tory law to carry on business in PNG under their corporate name and style and under their registered bss na#160; If the plaintiffs are suggesting that Mr. LMr. Lucas acted improperly in using the sphe special knowledge of the plaintiff’s business whilst he was with PNG Armoured, to set up his own business, then I know of no principle of law which forbids him from doing so after he has left the company. Even if his co were impropmproper, the illegality of the plaintiff’s business in PNG far outweighs Mr Lucas’ purported improper conduct.
There are other statutes the defendants rely on su the Business Names Act, Trt, Trade Marks Act and Taxation Act to show that the plaintiffs were conducting business in PNG illegally. However, it is not necessory to go into those legislation. For our purposes, it is sufficient that the plaintiffs were carrying on business in PNG in breach of the Companies Act and the IPA Act.
In my view, the court could not possibly grantequitable relief sought in these circumstances. I wouI would di the plaintlaintiff’s action on these basis alone.
In arriving at this conclusion, I am aware of provisions in the IPA Act and the Companies Act which say that the contracts or des of foreign companies are are not invalid merely because they have failed to comply with the requirements of the Companies Act and IPA Act as to registration or certification respectively. er, these proceedings do n do not involve challenges to the validity of the transactions between the plaintiffs and their PNG resident agents or customers and therefore they do not arise for ceration. I am only coly concernth tith the legality of their presence in PNG.
If I were to be wrong in dismissing the plaintiffs’ action on the foregoing basis, I need to consider whether each of the plaintiffs have proven their claim of passing-off. I will consider each et ofnt of passing-off separately.
4. THE EVIDENCE
(a) Summary of Plaintiffs’ Evidence
The plaintiff produced oral and documentary evidence. The oral evidenceists of e of eleven (11) witnesses. These witnesses had also filed affidavits and they were tendered in Court subject to objections and cross examination e defence. They are:
1. ;#1600;  Timothckwlal - lirector anor and Company Secretary of the Second Plaintiff based in Sydney, Australia. (Affidavit sworn 30/9/94 (Exhibit “PP”))
2. ҈&&#Herbeeerbeennerginergional onal MarkeMarketing ting Director of the Second Plaintiff based in Sydney. Three (3) affidavits sworn on 30/9/94 (Exhibit R#8221/10/94 (Exhibit “B”) and 7/11/95 (Exh (Exhibit ibit “C”).
3. ټ W60; Will Jamaeson - Geneaal Manager, PNG Armoured based in Port Moresby. (Affidavit swo11/95 (ExhibExhibit “CCC”).
ـ҈& Dic Zandee - Mana Managingaging Director of Placer Niugini Ltd bLtd based ased in Poin Port Moresby. (Affidavit sworn 3/11/95 bit &;LL”).5. ټ R60; Robert Mark Pembertop - Ope- Operations Manager of Metal Regaining Operation (“MRO”) based in Port Moresby (Affidavit sworn 1/11/95 (Exhibit “FF”).
6. ҈& Ian ford Brrd Brooks ooks - Man- Manager (Security Development and Training), Air Niugini based at Jacksons Airport, Port Moresby. davitn on 95 (Et“KK&0;KK”).
7. < 160; TrevoTrearr P Lourensurensz - Manager of Coca-Cmtil (PNG) Pty Ltd based in Port Moresby. (Affidavit sworn on0/95 (E95 (Exhibit ̶“GG”).
8. &##1616ianip Barp Bartholomholomaelomaeus - us - MangeManger Administration and Finance) CRA Minerals (PNG) Pty Ltd based in Port Moresby. (Exhibit “BBB&;).9. & A60; Alexanderander Fran Frank Cusin - Managing Director of Mobil Oil New Guinea Ltd based in Portsby.& (Affidavit sworn on 31/10/95(Exhibit “FF”).
10. < m; Jaefs Jeffrey Schulzchulz - Administrator (Human Resources). Cheviugini Ltd based in Poin Port Moresby. (Affidavit sworn 3/11/95ibExhibit “NN”).
11.ـ҈ e Tova - Sea- Search Crch Clerk, Gadens Ridgeway Lawyers, Port Moresby. (avit sworn 3orn 3/11/95 (/95 (Exhibit “OO”).
The plaintiff’s case is as follows.  evidence of the plaintiff&tiff’s corporate structure and their activities throughout the world including Australia and PNG was given by Mr. Blackwell and Mr. Brenner. Their evidence cod is as f as follows. The Firstntiff is a companompany first incorporated in around 1859 in the United States of America (USA). It’s Headquarters is based in Thorndal Circle,en, Cticut, USA. #160; It conducts it̵uss business unde under the name “Brinks” and “Brink’s.”  core of it’s business is in armoured trucks and secu security transportation services. It hasidiary companies usis using the name “Brinks” and “Brink’s” throughout USA and in about forty four (44) countries which are spreadughout Africa, Asia/Pacific Rim, The Carribean, Europe, Mid, Middle East/Asia Minor, North America and South America/Central Americas. Australia and PNG come uther the Asia/Pacific Rim. Ther some sixty (60) compacompanies which comprise of and are defined as the Brinks Incorporated Group of Companies out of which fifty three (53) companies include the name “BRINKS” or20;BRINK’S” in ; in their corporate or business title. There are some 8,000 armoured trucks and over 32,000 personnel employed by Brinks world-wide. It is the oldest and largest security transportation company in the world. Having d in exces130 yearsyears, the First Plaintiff has acquired ired a reputation in the international business and financial market placeprovia valuable and rend reputable service in a wide range of security service businesses. #160; A maomponent of the pthe plaintiff’s business reputation is founded on:
(a) ـhe expe expertisertise acquired by the plaintiffs oversaid period;
(b) ; the cthe corp rate and find financial back-up throughout the worldwhich is provided e plafs by Brinks Inco Incorporarporated Group of Companies;
(c) ـ the inserance covercoverage which the plaintiffs have throughout the world; and
(d) ـhe repe reputatiotation for security and excellence of delivery of services the tiffs acquircquired byed by way way of their history of performance of security services throughout the world (Blackwell’s affidavit, Exhibit “PP” p. 26).
The evidence on the set up of the First Plaintiff and it’s subsidiary or partner Companies throughout the world is not clear. There is no evidence the Fthe First Plaintiff directly, such as from the Managing Director or Company Secretary, of how it sets up business in other countries. Some evidence neverts was was given by Mr. Blal. Mackwell, is , is a Directirector and Company Secretary of the Second Plaintiff (hereinafter abbreviated PL/2). He is a dir of sl Companiepanies in the Asia/Pacific Rim regm region. He is a dor of Brinksrinksrinks - BKS Ltd based in Singapore, Brink&;s Japan Ltd based in Japan, Brink’s Security Transport Singapore Pte Ltd based in Siin Singapore, Brink’s Taiwan Ltd bas Taiwan Brink’s Ayra Ayra (India) Pty Ltd based in India and Brink’s Pakistan (Put) Ltd based in Pakistan. As such the Senior Executxecutive Manager of the Asia-Pacific region of Brinks Inc. Group of Companies world-wide. He reports regy dir to Mr.o Mr. Michael Thomas Dan who is the President and Chief Executive Officer of thof the First Plaintiff. He travels tnectit least oast once a year to see Mr Dan. The Piston Company owns of0% of the shar shares in the First Plaintiff. The Plaintiff certain shan shares in Brinks Companies throughout the world. irectorectors of the FirstFirst Plaintiff also hold dirshiptions in these otse other companies. e.g. Mr Dan is a director of the Second Plaintifintiff.
It appears from Mr. Blackwe217;s evidence that for ther the First Plaintiff to conduct business in another country, it may get a resident agent in that country rm a propriety company.. Aner way of doing this apps appears to be the purchase of a shelf-company which later converts it’s name to a company using the name Brinks or Brink’s. The names of most of the companies of the Brinks Inc. Group of Companies listed world-wide in an international company listings (Exhibit “TB1” of Mr. Blackwell’s affidavitibit “PP”) shows that they are companies incorpncorporated under the relevant company laws of that country. Sharelo in these companiesanies appears to vary but the First Plaintiff and it’s partners appears to hold the entire shares or a portion of the shares. Dependi the shareholding, ing, they’re entitled to hold hold directorship position, subject of course to the Articles and Memorandum of Association. The First Piff may hold shld shares directly or indirectly through it’s holding companies.
In the case of the Second Plaintiff it was first incorporated in New South Wales, Australia on 28thember 1989. It was inas initialrchasedhased as a shelf company known as Rinkala Pty Ltd. It lahanged it’s nams name to the Second Plaintiff. It’sent directors arrs are Mr. Blackwell (who is also it’s company secretary), Jeffrey Hekson of Connecticut, USA (who is the Senior Vice President dent of the First Plaintiff) and Michael Thomas Dan of Connecticut, USA. 217;s first director from from 9/12/88 - 15/7/94 were James Buniham of Connecticut, USA, Reginald Harold Ball of NSW, Australia ray Garton of Connecticut, USA. It’s current shareholder is Brinks Security Inty International Inc. of Connecticut, USA. Ultimate holding company is Piston Company Inc. of USA.
The First Plaintiff conducts business in Australia through econd Plaintiff.
Prip>Prior to the incorporation of the Second Plaintiff in Australia (28/9/89), the First Plaintiff conducted business in PNG through PNG Armoured since 1988. There is an aent between teen the First Plaintiff and PNG Armoured executed on 28/4/89 for the provision of security services in respect of transportation of valuables by PNG Armoured for the First Plaintirenner’s affidavit ofit of 7/11/95 Annexure H61. There isention of the Seco Second Plaintiff in that agreement. However,e is very little etle evidence of correspondences between the two parties showing actual performance of the contract directtweenFirst Plaintiff aiff and PNG Armoured. The only available evidef e of correspondencesences between the two parties are as follows:
(i) ـ L tter From First Plaintifintiff to PNG Armoured dated 28/4/89 regarding waiver ofrance in excess of amount cunt covered by the Warsaw Convention and PNG Armoured not to place in excess of K25 million. on any one conveyance.
(ii) usriovoiins iseued by the the First Plaintiff to the Commonwealth Bank of Australia and National Australia Bank for deliveries of currencies between 10/1/89 - 27/6/89, in particular to PNGBC, Port Moresby; Niugini Lyods Bank, Lae; Bank of South Pacific, Port Moresby and Westpac Bank, Port Moresby. Paymente directed to be mabe made to Brinks Australia Pty Ltd but queries regarding the invoice were to be sent to either Brinks Australia Pty Ltd or in some cases the Second Plaintiff. The inv bearFirst Plaintifintiffs iffs address where correspondences are to be addressed to.
Upon incorporation of the Second Plainti 28 September 1989, all business of the First Plaintiff in PNG were conducted on their beha behalf by their 100% owned subsidiary, the Second Plaintiff. One pif evidence here is a is a covering letter dated 30th May 1989 from “Brinks Australia Pty Ltd” with Brinks Australia trade mark and also bearing address of the First Plaintiff which was sent to PNG Armoured enclosing copies of letters from the Second Plaintiff to PNG Armoured of 28/4/89 and copy of contract dated 28/4/89. But no mention ie of the Sthe Second Plaintiff in that letter.
Neither plaintiffs have any office or registered office PNG. They ar incoted in PNG.G. They have not tered “#8220;Brinks” as a business nams name in PNG. They have also not rered their “Brinks” trade mark in PNG.
The Second Plaintiff conducts busi business in PNG as follows. In Mr. Brenn217;sdavit of t of 7/11/95, para. 6, (Annexure HB3), he has annexed a bundle of agreements ents he says were entered into between Seclaintiff and it’s customers. They are:
1. &##160;;&160; Ag0; Agreement betwank of k of America and Brinks Air Courier Pty Ltd dated 31/1/90.
2. &##160; Agreement between Peen Placer (PNG) Pt and s Ausa Pty Ltd datd dated 2ted 27/8/90.
3. ـ Agreemeneement between Misn Misima Mines Pty Ltd and Brinks Airier td da5/12/93.
.4
4.. ـ A6reement between Seen Supplementary agreement between Misima Mines Pty Ltd and Brinks Air Courier Pty Ltd dated 15/12/94.
5. &ـ A60; Agreemereement between Pogera Joint Venture and Brinks Air Courier Pty Ltd dated 1/5/94.
6. &##160; Agreement between Meen Metal Refining Operations Pty Ltd and Brinks Air Courier Pty Lted 21/11/94.
The Sehe Second Plaintiff also has business contacts with various other companies in PNG such as Quantas Airways, Air Express International, Air Niugini, PNG-BC, Securimax and Guard Trans. Are HB4 of Brenner’s217;s affidavit of 7/11/95 contains contact reports of Second Plaintiff and customers in PNG including PNG Armoured.
PNG Armoured is a sub-contractor of the Seclaintiff. The Second cond Plainhas nhas no written agreement with PNG Armoured. All physical g handling wong work in PNG is done by PNG Armoured. Invoices fok done by SeconSecond Plaintiff are rendered from Sydney, in Australia Dollars. The S Plaintiff PNG Armourrmoured for their services at agreed reed rates. Ann “D” of Bref Brenner’s affidavit of 7/11/ntains samples of invoices.
The operating procedure of PNG Armoured and the Second Pond Plaintiff is as follows: For mov of vles out of PNGf PNG, tNG, the Second Plaintiff contacts PNG Armoured advising of shipments from various customers in PNG coming rt Moresby. PNG Armoured picks up and and ensures that they are placed on an aircrafrcraft destined for overseas. In the casenrefined gold oold ore, PNG Armoured collects them from the Jackson’s Airport and takes them to the MRO base at Waigani foining. The refined gold is thenedicked up from MRO and delivered to Jackson’s A7;s Airport to be shipped out of PNG. Forments of currencies coms coming into PNG, the Second Plaintiff contacts PNG Armoured about expected shipments. PNG Armourelects from Jack Jackson’s Airport and delivers them to their destination.
The >The Second Plaintiff uses two types of ba PNG. There is a big hessiac bak marked with just the letter “B” in blue blue and white print: Court Exhibit “DD”. The other one is a ic bag bag which has Brinks Australia trade mark on it with the name Brinks printed in blue.
There are 3 letterheads used by the Second Plaintiff to conduct it’s business in PNG:
1. ҈ Letterhead containitaining the Second Plaintiff’s address on the top right hand corner with Brinks Australia trade mag. Coxhibi220;E1; (Pl.).
2. ;ټ LetteLetteLetterheterheadrhead cont containinaining the same trade mark used by the Second Plaintiff appears on the top right hand side but beside it appears the First Plaintiff’s address. On the top left hand corner appears the name “Brinks Australia” and it’s trade mark. This is used by ̶nknk’s Australia&# of “BRINK’S INTERNATIONAL”, e.g. Annexure HB2 of Brenner’s affidavfidavit of 7/11/95.
3. &ـetteretterhead cead containing the same trade mare mark used by the Second Plaintiff but with the First Plaintiff’s as appg on the top right hand corner and on the top left hand corner, appears the same same tradetrade mark used by BRINKS AUSTRALIA but without the word Australia. appears to be used by the the First Plaintiff: e.g. see Annexure HB2 of Brenner’s affidavit.
It is to be noted that the same trade mark used by the First Plaintiff appears on the plastic bag used in Papua New Guinea. The trade mark used by trs First Plaintiff and Second Plaintiff besides their addresses appears to be imprinted on the hessian bag. All these trade mare regisregistered throughout the world where Brinks Inc. Group of Companies carries on business except PNG.
The Second Plaintiff’s customers in PNG know or have known and are aware of the Second Plaintiff as “Brinks” or “Brink’s” since 1988. Mrnner was appointed to hito his position in November 1992. His pessor is Mr. Michael hael Hallan. Mr. Brenner made various trips to PNG and he’s sure his predecessor did too.& He hed the name BrinkBrinks in his conversations, dealings and correspondences, with their cust customers, etc in PNG. Regular conts madween vari various empl employers of their customers. Those cust know the name Bame Brinks. Bus in PNG since 198 valuevalued at $Aus. 2,020.70 in 1988. This wr work done for the the Commonwealth Bank.&ank. It has now incd to businessinesth $A56, 394.97 in then the year ending 1994.
The Second cond Plaintiff maintained regular contacts within PNG in the course of conducti’s business between 1989 - 1995. PNG Armoured ared appeariton it’s confidential list of business contacts. Also inconfidential list oist of business contacts, Mr. Lucas is listed as Managing Director (from 25/1/93 - 19/4/94) and Mark Soianageom 25/5/95) of PNof PNG Armoured.
Whilst with PNG Armoured, Mr Lucas was personally ally involved in the handling of valuables for the Second Plaintiff. There are in evidence copies of numerous correspondences exchanged between the Second Plaintiff and PNG Armoured under Mr Lucas’s authorship. The letterued by Mr Lucas ucas and his predecessor Mr Kiatro Abisinit not strictly confined to o to or addressed to the Second Plaintiff by it’s corporate name. Soe addressed to “s 20;s Australia Pty Ltd” 221; using the same postal address of the Second Plaintiff shown on the Second Plaintiff’s letterhea60; Others are addressed to “Brinks Australia.”8221; Those letters are regarded to or are understood by PNG Armoured and Mr Lucas to be meant for the Second Plaintiff and are responded to by the Second Plaintiff: See Brenner’s Affi of 7/11/95, Annexure “HB2”.
Until 6/5/96/5/94, Mr Lucas was the Managing Director of PNG Armoured. Unknown e Seclaintiff, he , he had resigned from his job. On 25/5/94, Mr Lucd a meet meeting ting with Mr Brenner at the Islander Hotelaigani where by Mr Lucas advised Mr. Brenner that he had started a company under the name Bame Brinks Pty Ltd, Brinks Armoured and BrSecurity Services with the the financial backing of an Asian businessman. He was going to compith anth and provide better services than PNG Armoured and asked for a quote from him. He said rmoured was in badn bad debts and not profitable. Mr er objectethe use of thof the name Brinks and told Mr LucasLucas he had to obtain permission from the plaintiffs to do that. Mras an Asianterparerpart,part, the Third Defendant, went on to set up the First Defendant companympany’s operations. He introdunsignaring signssigns with the name Brinks printed on it. He advertior business ness ness in the business community in Port Mor Thie to the knowledge of t of the Second Plaintiff. As a result, tcond Plnd Plnd Plaintiff complained of damages to it&#s repon in PNG and cond confusion in the market place.
The plaintiff has produced a copy copy of a letter written by Mr Lucas undererhead of Brinks Security Sity Service offering his company’s services to the manager of Proclean Pty Ltd of Port Moresby. He says the services offered in the letter are similar to those provided by the Second Plaintiff of which Mr Lucas is aware of because of his employment with PNG Armoured: See Court Exhibit20;JJRJ”.
The plaintiffs have called various other witnesses to prove that there has been confusion in the market place in PNG among their customers and the general business coty and damaged it’s r7;s reputation.
Mr Jamaeson is the general manager of PNG Armoured. His company provides sub-aontracting work for a number of years for the Second Plaintiff whom who he calls “Brinks Australia.” The secuservif valuables iles is confidential. He has known “Brinks” as an Americmerica company of international standing aleader in the world for providing armoured car security transport. I4, he becameecame aware oare of the Port Moresby Brinks (thendants) providing armouredoured vehicles with the name “Brinks Armoured” written in large black letters. If he hadlearnat the Port Port MoresMoresby Brinks was different from Brinks America or Brinks Australia, he would have thought that they wereciated. There is a strong possiy tity that confusion will arise whereby cargo intendetended for the Second Plaintiff maybe collected by the Port Moresby Brinks. As long as the defendants are allowed to use the name “Brinks”, there is potential for confusion in the market place even with the best of their efforts to prevent the confusion from occurring.
Mr Zandes Placer (PNG) Ltd is a cusa customer of the Second Plaintiff. ys he has worked with the the Placer Company in North America, and South East Asia since 1969 and now with Placer (PNG) Ltd since 1993. He is familiar with the &#me “Brinks”orth America and Asia and oand other parts of the world as providing high quality security services including high quality armoured crvices. He has seen “BrinmouArmoured” veh; vehicles in Port Moresby. He thought thre part of Brof Brinks America or Brinks Australia. Now, having explained the the difference, he knows the difference. Brinksralia has provideurideurity services to Placer (PNG) Ltd over several years.  Such servicesvital to Plac Placer’s Operations. It is essenthat there not not be a confusion or mistake in the securitcurity operations with the use of the name Brinks because it would risk thety ouable cargo.  He sees a potl for confusinfusion as long as the Port Moresby BrinkBrinks continue to use that name. If the rence had not been been explained to him, if he obtained services from the Port Moresby Brinks, he would have thought that he waaining the services of Brinks America or Brinks Australia. If tfference was not not not explained to him, he would have thought that Brinks America or Brinks Australia were inefficient when he saw a Post Courier newspaper report on 28/3/95 of a Brinks Aed vehicle being held up inup in Port Moresby. If Placer suffery loss or s or damage or a result of confusion in the market place, this would damage Brink’s Australia’s reputation.
Mr Pemberton of MRO says MRO is a customer of the Seconintiff. He is aware oare of the Brme Brinks Australia and it’s services throughout Australia and in PNG through MRO’s business directly and through PNG Armoured. Now with the Poresby BrinkBrinks, it is confusing because it is providing services similar to those provided by the Second Plaintiff. There is sibility that a mt a mistake could be made by staff of eithO or PNG Armoured or Air Niir Niugini where despite his supervision, gold and bullion movements from MRO’s premises in Port Mor intended for the Second Plnd Plaintiff to be collected by PNG Armoured could be collected by Port Moresby Brinks. This could sly damage the the existing relationships between MRO and Brinks Australia.
Mr Brooks has been the manager of Security Dement and Training for Air Niugini at Jackson’s Airport in Port Moresby since 1988.. H worked in the security sity service industry in Australia and PNG since 1969. He is familiar whe name &#me “Brinks” as being associated with s America and Brinks Brambles of Australia. He has knas known it to so associated with the provision of armoured car security ses whilst he was working inng in Australia.
He has had regular contacts with PNG Armoured over the services provides by the SePlaintiff. He has hads had contwith Mith Mr. Lucas on matters relating to the Second Plaintiff. Due to the sensitivity of security services, he is concerned about disclosure of information.
He learned of Port Moresby Brinks in early 1994. Heght Poresby Brinks had shad set up a business in association with Brinks Australia or AmeriAmerica. ater he found out thatasn&tasn’t. The Port Moresby Brinksgemnagement contacted Air Niugini Management Staf Staff in early 1995. They were told PNG Armouasd has had it’s insurance withdrawn and wend were about to close business. Those were laound to be fabe false.
one stage, a person rang him from Gerehu, Port Moresby, saying he was the Managing Directorector of Brinks, Port Moresby. He athat n if he was from from the real Brinks Australia or fror from Brinks Gerehu. He said he was fromks Gere Gerehu. He re to deal wim and inst instructed Air Niugini Staff not to confuse Port Moresby Brinks with with Brinks Australia.He foresees sibilhat Brinks Australia cargo not collected by PNG APNG Armoured may be collected by Port More Moresby Brinks. That would be damag#160; I60; It would lead to litigation against Air Niugini.
A company name like “Air Niugini” is vital to it&;s business success and reputation. Had he not been aware of the difference between teen the two Brinks, he would have assumed that the Port Moresby Brinks had the backing of Brinks America or Brinks Australia.
Mr Lourensz of Coca Cola Amtil (PNG) ays his company is not a cu a customer of the Second Plaintiff. But he is aware of the name “Brinks” which is prevalent in the security business and in American movies. He associthe name “B220;Brinks” with a United States Sec Company of international reputation that primarily provideovides armoured car transport services. H seen PNG Armoured carng arng the name Brinks in Port Port Moresby. He has also received a business proposal from the Port Moresby Brinks. When he red the pro he wase was under the impression that they were were of the America Brinks but later found out it wasn’t. He&#s awa the tance once once of and the value of a trade name to a company and considers it part ofrt of a company’s and goodwill as iscase with “Coca Cola.”
Mr Barthomaens is the manager of Administration aion and Finance with CRA Minerals (PNG) Pty Ltd since 1992. His comps not a customer omer of the Second Plaintiff but a potential customer. He is familiar with the Brme Brinks and associates it with as USA security company of international reputation. When h armoured cars operaoperatethe Port Moresby Brinks, he thought they were connected with the “International BrinkBrinks”. But now he knows theiference.
Mr Cusin of Mobil Oil (New Guinea) Ltd says says his company is not a customer of the Second Plaintiff. But havorkedustralia beforbefore coming up to PNG in 1988, he was familiar with the name Brinks inks in Australia from his work with Mobil anerally having seen video clips of Brinks Australia and Brinks America. On 20/1/95, h95, he sawst Post Courier newspaper report entitled “Dye to save the goodies” showing an Australia designed security device being demonstrated by “Austrand PNG Security distributor Brinks Security.” 160; Upon g the article, hle, he assumed the Brinks referred to in the article as being associated with Brinks America or Brinks Australia. But later, he found out it wasn’t. On 28/3/9 saw anothst Cour Courier rier report showing an armed hold up of a Port Moresby Brinks Security vault in Port Moresby where a gang r the s Security personnel of K5,000.00 and escaped.d. He thought s America or Auor Aust Australia was involved. He knew that Brimerica or a or Australia provided high quality security services and if his company had obtained Port Moresby Brinks Servicthouting their differefference, he would have expected their services to be of the same standardndard. He knows that his company now uses the services of Port Moresby Brinks. The decision to engart Mort Moresby Brinks by his company was made at mid-manag level. Like the name Mobil, he considers the name Brinks to be essential to a companompany’s reputation and business.
The evidence of Marere Tova relates to discos made in the process of a of a company search conducted at the office of the Registrar of Companies in Port Moresby on 22/9/95. Her findings are:
1. &##160; O60; On 24/1/#5, &;B220ks inks Armoured Cars” was registered as a business name under provisions of the Business Names Act Ch. No. 145. The business name is owned by the First Defendant. ItRplaceusine Lots. 13 . 13 &a13 & 1mp; 14, Sec. 357, Hohola, PO Box 280, Gerehu. The type of business is listed as “Transport of valuables.”
2. ҈& O60; On 24/1 24/1/95, “Brinks Snks Security Services” was also regid as a business name. Other details are the sa ( as ( as (1) above except the type of business is listed as “Security Services.Rp>
3. &160; On/13/9“Brinks Pty LPty Ltd” (formerly Patu No. 5 Pty Ltd) was incorporated. On 2/5/94, Patu No. 5 Pd cLtd changed it’s name to the First Defendant. The dire are Mr. Lucas ands and Gary Tan. The shareholders arn Yap Tan (51 shares) and Herman Lucas (49.)
This is a summary of the evidence for tfor the plaintiff.
(b) Summary of De Evi
The evideevidence for the defence was given by Mr Barry James Tan, Ms Silyvia TsukuTsukula and Mr Lucas who was the principal witness. The evidence of n is that that he is a businessman (Asian) with substantial business interest in PNG. He was aphed by Mr Lucas icas in 1994 for financial assistance to help him set up a security company known as Brinks Armoured and Brinks ity Services. Mr Lucas selectedname R “Brinks”. This name meant eant nothing to Mr Tan. He was not really conc witd with the business name. H never heard of the name name in PNG Brinks before or in Australia where he had visiteasion He 51% of the shares in t in the First Dest Defendant. through his uncle Danny Tan Tan whilst Mr Lucas hold 49% shares. He Mr Lus a Managing DirecDirector of PNG Armoured which was involved in the security service vice industry and knew the business Mr Lucoposed was to be in competition with PNG Armoured.
Slyvia Tsukula is a Search Clerk lerk with AC & Fox Associates (Search and Service Agents) of Port Moresby. She was called to givdencedence on a telephone survey or poll she conducted among various business people in PNG as to their familiarity with the name “Brinks”. Her evi was sought to be t be tendby the defence as expert evrt evidence. The plaintiffs objected to such evidence. I upheld the plai’s 17;s objectio ruled that her evidence was inadmissible because she was nwas not a qualified and competent expert witness. She had been merelloyed Search Clerk andk and this survey was her first ever poll poll conducted in her career.
The evidence of Mr. Lucas is as follo160; He was born of Dutch parents (Holland) in Australia. His ps came to PNG in G in G in 1966 from Australia. His father wento become a me a citizen of PNG. Mr Lucas has continually lived in PNG and travelled to Holland. The first time nt toand was when he w he was 13 years old where he went to spend his holiday with his grandfathdfather. That ere he heard the R ̶nks” which hich in Holland refers to a grassy area with trees in the centre of the tohe town around the main church. As aager,ad also seen a mo a movie called the “Brinks Jobs Job” which involved the robbery of an armoured car in either Ameri Italy and assumed the name to be a fictitious company.
On 1st April 1991, he commenommenced employment with PNG Armoured initially as a Branch Manager and later became it’s Managing Director. As Managing Direche was reas responsible for running the business. PNG Armoured nvolved in prin providing security services in Port Moresby including armoured cars and armcorts.
PNG Armoured did work for the Second Plaintifintiff. Tstem of work was that fort for shipments of valuables coming to PNG, the Second Plaintiff advised by fax of a shipment of currency being flown in. A copy of thway bill was awas also faxe60; PNG Armoured arranged fged for customs clearance of the airways bill. When the plane arrived, PNG Armoured attended at Jack8217;s Airport, Port Moresby in an armoured car, loaded thed the shipment into an armoured car and took it to it’s nominated ba160; The operation was carried out with maximum secrecy.y. Fluables being shipped outd out of PNG, in particular bullion gold, the Second Plaintiff informed PNG Armoured of the shipment arriving from the Second Plaintiff’s customers around PNG.&#PNG Armoured then attended nded at Jackson’s Airport and loaded the bullion gold onto it’s armoured vehicle and loaded it on to flights leaving PNG. For unrefined gold ore, PNG Armoured would take the gold ore to MRO, Port Moresby and when it was refined, pick it up and take it to Jackson’s Airport and load it on the flight. In hi, Mr. Lucas had regulregulatacts with the management oent of the Second Plaintiff including Mr. Brenner.
In 1992, whilst Mr Lucas was employed by PNG Arm, he held discussions with Mr. Reg Ball of the Second PlainPlaintiff to set up a company to provide services similar to PNG Armoured. He was unsuccessful in coivincing the Second Plaintiff. Subsequent discussions followed between Mr Lucas and Mr. Brenner in 1993 regarding the quality of services provided by PNG Armoured to the Second Plaintiff’s customers in PNG as well as new business such as transportation of gold ore from the Pogera Gold Mine. But nothing material uateduated from these discussions.
Whilst he was with PNG Armoured, all the work that PNG Armoured did for the Second Plaintiff was the transfer of currend travellers cheques from Jackson’s Airport to PNG-BPNG-BC, and Bank of South Pacific, Port Moresby and the reverse, transfer of gold dore for Pogera Gold Mine from Jackson’s Airport to MRO, Port Moresby, and transfer of refined gold from MRO to Jackson’s Airport to be shipped out of PNG. PNG Armourver picked up goup gold dore from the Misima Mine.
PNG Armoured did not do any work for the First Plaintiff and in fact, never heard of it when he was there.
Mr Lucas left his joh PNG Armoured in April 199l 1994 after holding discussions with Mr Tan. He set up his own secuserv service company with the financial backing of Mr Barry Tan. He decided to use the name “Brinks”. He conductedarch at the Cohe CompaOffice in Port Moresby and ascertained that the name “#8220;Brinks” was not a registered business name and that there was mpany a corporate name name having the name “Brinks”8221; in PNG. So he decided to use tme Bame Brinks. He arranged forrporation oion of the First Defendant Company and registration of “Brinks Armoured” and “Brinks Security ces&# as business names. He decided shield ield witd with the name Brinks on it and gave iave it PNG flavour by including the PNG flag colours with red bird of paradise. He printed logos, badges,ouniforms, letterheads, etc. Hehased an armoured car loar locally and imported another one. Hethem printed with thehe name20;Brinks Armoured.d.” At the timehe trthe First Defendafendant employed 36 nationals, had 4 armouarmoured cars, 4 other cars and in excess of 50 clients. When he was doin thesngs the plaintiffntiffs were aware of it and did not complain.
Sometimes in 1994 he 4 he held discussions with Mr Brenner to gme business from him. Mr Brennended favourable tble to his business proposal.
>
His business claimed no connection with the plaintiffs. His business not conflict lict with the business of the Second Plaintiff. B is unknown to the publicublic in PNG. In his 30 years PNG, he tows that the PNG public do not know of the name Brinks.
He never saw the Brinks pl and hessian bags in evidence when he was with PNG Armouredoured.
There is no confusion in the security service business in PNG. He did not use the plaintiffs’ name when advertising for business. He did not represes busineusiness to be that of the plaintiffs. No one has told hat in conn considering his company for business, they were relying on the Plaintiff’s and reputation and expected his service to be of internatirnational standard.
His company has been trading in Port Moresby for 18 months and it is well known in Port Moresby. It is a localany. Hi0; His customers deal with him because they know him and his reputation or are dissatisfied with their present customers. They do not deal with him because of the name ̶nks&# or because of anof any association his company has with thth the plaintiffs.
That is a summary of the defence evidence.
<5.0 FINDINGS OF FACT AND CONCLUSIONS5.1 First Prst Plaintiff’s claim
5.1.1 Reputation or goodwill
The First Plaintiff’s claim is that the First Plaintiff has a reputation or goodwill in PNG, having carried on business in PNG and it’s services are associated with the name “Brinks”. It say220;Brinks” is1; is not descriptive of the services it provides but the name “Brinks” is known for or associaith with it’s high qu security service in transportation of valuables worldwide.wide. It ed on business in PNG cPNG continually since 1988 and is kny that name by the PNG business community. To prove tove this, the FPrst Plaintiff refers to the Agreement between it and PNG Aed dated 28/4/89 and variouarious invoices issued by the First Plaintiff to the Commonwealth Bank of Australia between 10/1/89 - 27/6/p>
The plaintiffs submisubmits that they carried on sufficient business in PNG to have a reputation or goodwill which is capable of being protected by a passing-off action.
The defendants submit the First Plaintiff did not carry on business on it’s own in PNG and therefore had no reputation or goodwill.
The First Plaintiff relies on it’s reputation or goodwill attached to the name “Brinks”. The issue ither the First irst Plaintiff carried on business activities in PNG sufficient to establish a goodwill or reputation in PNG which was attached to the name “Brinks” as distinctive oh quality security service vice in the transportation of valuables using armoured cars.
It is clear to me from the authorities that a passing-off action is not simply about protection of business names, the trade mark or get-up alone. It is about rtion or goodwgoodwill “attached to a name which is distinctive of a product (or service) assclass of products”service) sold by him in the course of his business. And so in this cif the name name name “Brink”, or “s”, ’s&17;s” is attached to high quality lity security services generally and armoured car security services provid the Plaintiff world-orld-wide and extending to PNG, then the plaintiff can maintain an action tion based on the use of that name.
On the evidence before me, I find that the name “Brinks” or “Brink’s” is a name associated with the First Plaintiff and the “Brinks Inc. Group of Companies” world-wide including the Second Defendant and used by the First Plaintiff to distinguish it’s high quality security service world-wide. Theroverwhelming evidence ence produced by the plaintiff to demonstrate this fact. But I find that ame “#8220;Brink” is not used by the First Plain
There is evidence adduced by the defendants to show show that some companies in Australia have been registered with the name 0;Brink” and have no e no association whatever with the plaintiffs and the plaintiffs took no action to stop them from using that name e.g. Brink & Co. Pty Ltd, Brink Holdings Pty Ltd, Ad, Brink Holdings Pty Ltd, Brink Mining Pty Ltd, Brink Nominees Pty Ltd, Brink Project Management PNG Ltd, Ban Brink Elade & Co. Pty Ltd and Van Den Brink Pty Ltd. (Court Exhibit RA”#8221;). Some of these cies have beve been registered as late as 02 - 27th June 1995. Hr, I am not refero any cony company with the name “Brinks” or “Brink’s” in Australitralia or any other country, which has no conne whatsoever with the Plaintiffs. Be that as it may, Iay, I have already found that the name “Brink” is not used by the Plaintiffs. Therefore, the f the name name “Brink” in Australia is of no consequence.
I also find the name “Brinks”#8221; or “Brink’s” is associated with the provision of high quality security services using armoured cars and involved in the transportation of valuables such as currency, gold etc. in the international business community.
The only question is whether the First Plaintiffs carried on sufficient business in PNG to establish a reputation or goodwill in PNG capable of protection by a passing-off action. In other words is there evidence of “user” in this country of the First Plaintiff’s service sufficient to establish a reputation or goodwill to give title to First Plainto maintain an action of passing-off?
In the pleadingadings, the First Plaintiff pleads that it has carried on business continually since 1988. The evides that, there is e is an agreement between First Plaintiff and PNG Armoured entered into on 28th April 1989. From the invoices idence ince issued by the First Plaintiff between 10/1/89 - 27/6/98, the First Plaintiff appearhave invoiced for seor services performed well before the date of the agreement. These invoicesot show how how the First tiff conducted such business in PNG. e.g. which sub-contractor they used in PNG.  The invoices d after the athe agreedo not reveal the total circumstances in which the First Plst Plaintiff performed those services in PNG - whether they were done using a Pbased sub-contractor such as PNG Armoured.
There is e is very little evidence of business transactions and correspondences directly between the First Plaintiff and PNG Armoured. Also tidence of Mr. Blackwlackwell is conflicting. He says initially oss exam examination that the First Plaintiff issued invoices for commercial activities in PNG in 1988 and 1989. But is noiceswork dork dork done in 1988. He says after 1989, all bull business was carried oied out by the Second Plaintiff. He said the Plaintiff haff has not issued invoices for business since 1989. The invoicnvoices however show that the First Plaintiff wsuing invoices for work done in 1989.
All in all, the only evidence of some presencesence of the First Plaintiff in PNG is theement dated 28 April 1989. Thate is not sufficieficieficient. merely an agreement to doto do business in PNG. On the evidencfind that that the First Plaintiff, did not carry on sufficient business in PNG sufficient to establish a reputation odwilit’s own inwn in PNG.
5.1.2 Misrepresentation
On the evidence, Ice, I am unable to conclude that the defen misrepresented to the publ public in PNG that the services they were providing were that of the First Plaintiff because little was known of the First Plaintiff in the business community in PNG. All the plaintiffs’ witness who gave evidence as customers or potential customers or members of the business community in PNG gave evidence of knowing the First Plaintiff as an Ameriompany. They’ve had no exnceience in dealing wing with the First Plaintiff. For those wies representinenting existing customers of the Second Plaintiff, they have not said if their companies chose to do business with the Second Plaintiff because ofreputation of the First Plaintiff and it’s grou group of nies throughroughout the world. These witnesses only complain about the potential for misrepresentation by the defendants. Therno evidence of the defe defendants actually having misrepred to the public in PNG that that the services they were providing were that of the First Plaintiff or that they were part of orciateany way with theh the the First Plaintiff.
On the contrary, the evidence from the defendants is that they have identifiemselves as a local company using the name Brinks and that they are not in any way associateciated with the First Plaintiff. Anddefendants having regisregistered their business name and incorporated their company under that name in accordance with the lawshis country are entitled to conduct business in this manner.
It is true that the defe defendants have chosen to use the name “Brinks” which so used by the PlainPlaintiffs but mere use of another’s business name, mark or get up is not sufficient in law. The plais must prove that that the defendants were putting off their services as those of the plaintiffs. The plaintiff has failed to prove that in this case.
5.1.3 Damages
As for damages, there is no evidence that the First Plaintiff on it’s own has suffered any damages or is likely to suffer any damages as a result of any misrepresentation. The evidence is atmost spet speculative. Furthermthey have no businbusiness of their own in PNG which stands to suffer from the use of the name Brinks. The First Plaintiff is aepindependent legal corporate entity and there must be someence of actual or likely daly damage. The Second Plaintiff is a separate legal corporate entity. Thages the Second Piff suff suffers or might sufferuffer is not necessarily that of the First Plaintiff. The loss of existing or titential customers inof thond Plaintiff is f is different from the loss of dividend iend income due to the First Plaintiff through it’s shareholding in tcond Plaintiff.
For these reasons, I dismiss the Fire First Plaintiff’s claim.
5.2 Second Plaintiff’s claim
5.2.1 Reputation or goodwill
The defendants concede that the Second Plaintiff has a business reputation or goodwill in PNG. Thereforfind that the Seco Second Plaintiff carried on business in PNG since 1989 of sufficient magnitude to establish a reputation or goodwill as evidenced by in the use of the name “Brinks” in PNG. Indeed, the Second tiff waff was known in PNG among it’s customers and potential customers with whom it had business contacts by the name rinks” and more commonly known as “Brinks Australia”, even though it did did not have any office in PNG. It&;s customers including ding it’s sub-contractor, PNG Armoured, knew the Second Plaintiff by several names - Brinks Australrinks Australia Pty Ltd and Brinks Air Courier Pty Ltd. Mr. Luc his term as Mana Mana Managing Director of PNG Armoured also came to know the Second Plaintiff by these names. The common elemn all thesethese name was the name “Brinks”. find that the Second PlainPlaintiffs customersor potential customers knew Brinks Australia to be a company associated with the widerrnational security servicesvices industry under the name “Brinks” in the transportation of valuables between Australia and PNG. They relied on the d PlainPlaintiff services to transport valuable cargo in the form of currencies and gold. PNG Aed being their resideesident sub-contractor or agent was also known to be a reliable agent associated with the Second Plaintiff.
5.2.2 Misrepresentation
The Second Plaintiff submits that the evidence proe provided for the plaintiffs support the conclusion that the defendants had misrepresented their services as the services of the Second Plaintiff and they only discovered the falsity after it was explained to them the difference between the Port Moresby Brinks and the international “Brinks”. The defendants subhat in u in using the name Brinks, they are not misrepresenting the First Defendant’s business as the business of the Second Plaintiff or claiming any association with it.
On the evidence, there is no or insufficient evidence that the defendants misrepresented to the PNG public that the services they were providing were of the plaintiffs or in any way associated with the plaintiffs. The defendants rered theirtheir company and business name under the prevailing law of this country and felt, and rightly so, that they were entitled to use the name “Brinks”. They in no way thems out aout as being assg associated with the international Brinks of which the Second Plaintiff was a part of. None of the mers cheated.&ted. In fact the evides that that they all came to know the Port Moresboresby Brinks was in no way associated wit Second Plaintiff. It was on the str of theirtheir own registered corporate name and and style and business name that the defendants went about advertising for business. In the advertisement, thai claimed no association with the Second Plaintiff.
It is true that Mr Lucas had prior and special knowledge of the source of the name “Brinks” as being associated with thentiffs whilst working for Pfor PNG Armoured. I do not accept Mrs’8217;s evidence that he heard of the name “Brinks” during his holiday in Holland in his teenage days. But tre adoption of the nahe name is of no consequence because i not been shown that the dehe defendants actually misrepresented to the PNG public that they were providing security services providethe plaintiff through theirtheir resident agent, PNG Armoured. ere is any representation tion to the PNG public that they were in direct competition with the Australian or American Brinks in the same service industry, then such misrepresentation is permis in the free market economyonomy.
There is little or no dispute that some of the services the defendants are providing are similar to the services provided by the Second Plaintiff through it’s resident agent, PNG Armoured. Customers or potential customers of the Second Plaintiff in PNG would know or associate Mr Lucas with these kind of services because of his former employment with PNG Armoured as it’s senior management staff. Mr. Lucas would no doubt have developed a reputation for providing quality services of the kind for his employer, PNG Armoured. With this special knowledge and experience and standin has left PNG Armoured to start his own business using the the business knowledge, skills and experience gained whilst with PNG Armo The name “Brinks” has no doubt been acqu acquired by him whilst he was with PNG Armoured. But is he wrong in doino? I do not think so. eas hrepresented the publipublic into thinking that the services his company is providing it of the Second Plaintiff when it is actually not? That I do not think so0; T60; Ther There is no evidence he has. He is entitled in a farketarket economy to engage in fair competition. He could provxactly the sahe same service as those provided by the d Plaf in PNG through ough it’s resident agent, PNG Armoured. He wonly be held held liab liable if he misrepresented to the puthat his services are thosethose of the Second Plaintiff or in any way associated with the Second Plaintiff when it is actually not.
The evidence too is that that Mr Lucas’ business is involved in a wide range of security services businesses and the transportation of currency and gold, some of which services are provided by PNG Armoured on behalf of the Second Plaintiff. But thdence is that, that that is only a small portion of his business. All these services have been advertised to potential cuss in PNG. The services provided by him which are similar to those provided by Second cond Plaintiff through PNG Armoured have nen singled out and given special attention so as to misreprsrepresent it to his potential customers.
5.2.3 Damages
The plaintiffs must show that they have suffered damages or likely to suffer damages. Proof mages or likely dama damage is the essence of the claim of passing-off. The evidence is that thendefendants commenced business on or about 24th or 22nd Ma4, (date of change of name for Patu No. (5) Pty Ltd to Brin Brinks Pty Ltd). The writ in these proces wngs was filed on 10th Oc 1994. The trial comm commenced on 6th November 1995 and concluded on 22nd November 1995. Thereforeat the date of trof trit was some 18 months the defendant was in business using ting that name.
This is not purely a case where the defendant’s havt only started. They have been siness for for 18 mon8 months before the trial and it was only appropriate that the Second Plaintiff provided some evidence of actual confusion in the market place or loss of existing or potential customers resulting in actual damage.
Although there is some evidence of likelihood of confusion among the plaintiff’s customers in PNG, there is no evidence that there has actually been some confusion. Tis very little or no evid evidence that valuable cargo intended for PNG Armoured on behalf of the Second Plaintiff was mistakenly picked up by the Defendants. is no evidence to shot thot the Second Plaintiff̵’s customers had switched from the Second Plaintiff and moved over to the defendants because of the dants’ use of name “Brinks”. Any arny argument potentiaential customers in PNG will engage in business with the defendant instead of the Second Plaintiff because of the defendant’s use of the name “Brinks” is highly speive. Indeed, the Seco Second Plaintiff provides highly specialised services in selected areas which attract special customers in PNG and those customers or potential customers would know, through the normal course of business contacts with the Second Plaintiff, that the defendants are not associated with them and they will not deal with the Second Defendant’s if they chose not to. A good example of this i ethe experience encountered by Air Niugini staff. Therefore, ature damage isge is not reasonably foreseeable.
6. BOTH PLAINTIFFS COMBINED
To the extent that the First Plaintiff rely on the activities o Second Plaintiff in PNG, accepting that the First Plaintifintiff acquired reputation or goodwill in PNG through the activities of the Second Plaintiff, I would still dismiss their claims on the grounds that both plaintiffs have not proven misrepresentation and damage.
For these reasons, I dismiss the plaintiff’s action with costs to the defendants.
Lawyer for the Plaintiffs: Gadens Ridgeway
Lawyer for the Defendants: Allens Arthur Robinson
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