Ramu Sugar Ltd v WX Investment Ltd [2009] PGNC 20; N3652 (6 April 2009)

N3652

PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]

OS 530 OF 2007

BETWEEN:

RAMU SUGAR LIMITED
Plaintiff

AND:

W. X. INVESTMENT LIMITED
First Defendant

AND:

RH TRADING LIMITED
Second Defendant

Waigani: Hartshorn J.
2009: 16th March,
: 6th April

TRADE MARKS - Infringement of Trade Mark – Section 53 Trade Marks Act – the mark Fine Sugar and its sugar cane device deceptively similar to the registered trade mark Ramu Sugar and its sugar cane device - Defendants’ sale of Fine Sugar an infringement of Ramu's registered trade – Orders for injunctive relief granted

Cases cited:

Papua New Guinea cases:

Nil

Overseas Cases:

Television Food Network, G. P. v. Food Channel Network Pty Ltd (No. 2) [2009] FCA 271

Counsel:

Mr. R. Diweni, for the Plaintiff
Mr. L. Tabie, for the Second Defendant

6 April, 2009

1. HARTSHORN J: Ramu Sugar Limited (Ramu) has a registered trademark that it uses on its sugar product that is manufactured under the ‘RAMU SUGAR’ label (Ramu Sugar).

2. R. H. Trading Limited (RH Trading) sold a sugar product labeled ‘FINE SUGAR’ (Fine Sugar) which it obtained from W. X. Investment Limited (WX Investment). Ramu contends that Fine Sugar is identical or deceptively similar to Ramu Sugar and breaches the Trade Marks Act. In addition, Ramu contends that RH Trading and WX Investment are passing off Fine Sugar as Ramu Sugar.

3. Ramu commenced this proceeding seeking amongst others, declaratory and injunctive relief. On 19th September 2007, Ramu obtained interlocutory orders against RH Trading and subsequently was given leave to add WX Investment as a defendant. Since being named as a defendant, WX Investment has not entered an appearance in the proceeding although I am satisfied on the evidence that WX Investment has been properly served and was notified that the hearing before me was to take place. The hearing before me proceeded in the absence of representation on behalf of WX Investment.

Trade Marks Act

4. Section 53 Trade Marks Act relevantly provides that a registered trade mark is infringed by a person who:

".... uses a mark which is substantially identical with, or deceptively similar to the trade mark, in the course of trade, in relation to goods in respect of which the trade mark is registered."

5. Section 1(3) Trade Marks Act provides that:

"For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion."

6. Section 56 Trade Marks Act provides that:

"The relief which a Court may grant in an action or proceeding for infringement of a registered trade mark includes an injunction, subject to such terms (if any) as the Court thinks fit, and, at the option of the plaintiff, either damages or an account of profits."

Deceptively similar

7. The words ‘deceptively similar’ are used in the same context in trade mark legislation in numerous jurisdictions. They have been extensively considered by the Australian Courts. Our Trade Marks Act is based upon trade mark legislation in Australia and Australian Court decisions are persuasive in this jurisdiction.

8. The guiding principles as to deceptive similarity were recently referred to in the Federal Court of Australia case of Television Food Network, G. P. v. Food Channel Network Pty Ltd (No. 2) [2009] FCA 271 and include:

a) the marks are not to be looked at side by side - the issue is one of deceptive similarity, not abstract similarity

b) the comparison is between the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have and impressions that such persons would get from the defendant's mark. It is the imperfect recollection which forms the basis of any deception prompted by the infringing mark.

c) there will be a deceptive similarity where there is a ‘real tangible danger’ that a number of persons will be caused to wonder whether the respective goods and services under the 2 marks come from the same source.

d) one trade mark may be deceptively similar to another even without using the whole of it. If use is made of one or more of the essential features of a mark there can be deceptive similarity.

e) deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trademark.

9. Ramu relies upon amongst others, the affidavit evidence of its sales and marketing manager, Mr. Greg Baker. Mr. Baker deposes amongst others that;

a) Ramu has a registered Trade Mark no. A64,631 which was registered on 28th January 2003. It uses the trade mark on its Ramu Sugar product packaged in poly pack and sold in 500g and 250g packets.

b) the Ramu Sugar product is marketed and sold throughout Papua New Guinea and commands about 97% of the market.

c) Fine Sugar is sold in 500g and 250g packets that are identical to those of Ramu Sugar.

d) the 2 products are very similar in their general packaging and get-up and in his view the Fine Sugar product can easily be confused with the Ramu Sugar product by consumers and the public generally.

e) RH Trading was selling Fine Sugar.

10. I am satisfied from the evidence and from a perusal of the subject products that the mark Fine Sugar and its sugar cane device can be categorised as being deceptively similar to the registered trade mark Ramu Sugar and its sugar cane device, when the guiding principles referred to in the Television Food case (supra) are considered.

11. I am also satisfied on the evidence of the invoices and purchase orders that RH Trading obtained Fine Sugar from WX Investment and sold Fine Sugar from its premises. I note in this regard the concession by counsel for RH Trading that RH Trading was involved in only one transaction with WX Investment concerning Fine Sugar.

12. Consequently, I am satisfied that the Defendants’ sale of Fine Sugar is an infringement of Ramu's registered trade mark as it is a use of a mark that is deceptively similar to Ramu's trade mark. Given this, it is not necessary for me to consider the submissions concerning passing off.

Orders

13. The court hereby declares that:

a) the packaging and get-up of the "FINE SUGAR" that is imported and/or produced or packed, stocked and distributed by the First Defendant is substantially identical with or deceptively similar to the Plaintiff's trademark, get-up and other intellectual property in the Plaintiff's product "RAMU SUGAR", and is in breach of Section 53(1) of the Trade Marks Act Chapter No. 385.

b) the packaging and get-up of the "FINE SUGAR" stocked, sold, distributed and supplied by the Second Defendant is substantially identical with or deceptively similar to the Plaintiff's trade mark, get-up and other intellectual property in the Plaintiff's product "RAMU SUGAR", and is in breach of Section 53(1) of the Trade Marks Act Chapter No. 385.

14. The court hereby orders:

a) that a permanent injunction shall issue against the First Defendant and the Second Defendant and any other person or trader from importing, or producing, stocking (including for sale or distribution), distributing, supplying, selling (including offering for sale), displaying (for sale or otherwise), marketing or dealing in any way with the product "FINE SUGAR" in the current packaging and get-up or any other products in any such other form or get up that is or may be identical with or similar to the Plaintiff's trade marks, get up and/or products bearing those trademarks, namely RAMU SUGAR, RAMU BEEF, RAMU CASHEW and RAMU OIL PALM.

b) that the Defendants shall forthwith deliver up to the Plaintiff all remaining stocks of the "FINE SUGAR" product and all unused packaging of that product which are within the custody, possession or control of the First Defendant and the Second Defendants, respectively.

c) that a permanent injunction shall issue against the First Defendant from producing, printing and distributing the labels and packaging that is the same or similar to the current packaging of the "FINE SUGAR".

d) the costs of and incidental to this proceeding shall be paid by the Defendants to the Plaintiff.

_____________________________________________

Blake Dawson Lawyers: Lawyers for the Plaintiff
RH Trading Limited: Lawyers for the Second Defendant