Paradise Foods Ltd v Paradise Supermarket Ltd [2018] PGNC 530; N7671 (5 December 2018)

N7671

PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]

OS 434 of 2017

BETWEEN:
PARADISE FOODS
LIMITED
Plaintiff

AND:
PARADISE SUPERMARKET
LIMITED
Defendant

Waigani: Hartshorn J.
2018: 5^th December

Trial

Cases Cited:
Papua New Guinea Cases

Ramu Sugar Ltd v. WX Investment Ltd (2009) N3652

Overseas Cases

Southern Cross Refrigerating Co v. Toowoomba Foundry Ltd (1954) 91 CLR 592 Shell Co of Australia Ltd v. Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 Television Food Network, G. P. v. Food Channel Network Pty Ltd (No. 2) [2009] FCA 271

Counsel:

Mr. J. Brooks, for the Plaintiff
Mr. N. Kera, for the Defendant
5^th December, 2018

1. HARTSHORN J: Paradise Foods Ltd (PFL) is the registered proprietor of Papua New Guinea Trade Mark no. 70107 (TM 70107). TM 70107 is registered in the Papua New Guinea Trade Mark Register until 22^nd December 2021. TM 70107 is a composite word and logo/device type mark with the words PARADISE BEVERAGES on a blue background with a red bird of Paradise entwined through those words. The goods for which TM 70107 is registered are, “beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.”

2. Paradise Supermarket Ltd (Paradise Supermarket) has been importing cans of Pepsi into Papua New Guinea. The cans of Pepsi have on them the writing, “IMPORTED & DISTRIBUTED IN PNG BY PARADISE BEVERAGES”.

3. PFL claims that Paradise Supermarket has infringed PFL’s trademark “Paradise Beverages” registered as TM 70107 and seeks a declaration to that effect pursuant to s. 53(1) Trade Marks Act. Permanent injunctive relief, and seizure and disposal of the subject cans of Pepsi are also sought.

4. PFL submits that the relief it seeks should be granted as Paradise Supermarket has:

a) used the mark, “PARADISE BEVERAGES”;

b) used that mark in the course of trade;

c) used that mark in relation to goods in respect of which PFL’s trademark is registered and used it without the permission of PFL;

d) used a mark that is deceptively similar to PFL’s trademark such that it would cause confusion to a reasonable consumer as to the source of the goods in question in that it would be assumed that the goods were connected to PFL.

5. Further, PFL submits that the circumstances of the use by Paradise Supermarket are irrelevant, Paradise Supermarket previously infringed PFL’s trademark in December 2016 and gave an undertaking not to do so again. This further infringement cannot be considered an innocent infringement and in any event, intention is only relevant when remedy is considered.

6. Paradise Supermarket submits that the relief sought by PFL should not be granted as amongst others:

a) the plain text words, “Paradise Beverages” as used in, “Imported & Distributed in PNG by Paradise Beverages” do not fall within the definition of a trademark that is capable of registration;

b) TM 70107 is not sufficiently wide to extend to the plain text words, “Paradise Beverages”;

c) “Paradise Beverages” as used on the subject cans is not substantially identical or deceptively similar to TM 7107;

d) the use of, “Paradise Beverages” on the subject cans is not a “use” in relation to goods for which TM 70107 is registered;

e) Paradise Supermarket has engaged in the parallel importation of a product that is genuine and lawfully available in markets in Malaysia and Singapore.

Consideration

7. Section 53(1) Trade Marks Act is as follows:

“53. Infringement of trade marks.

(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, 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.”

8. As to the submission of Paradise Supermarket that, “Paradise Beverages” does not fall within the definition of a trademark, from the evidence it is clear that those words are part of the trade mark registered as TM 70107.

9. As to the submission of Paradise Supermarket that the use of, “Paradise Beverages” on the subject cans is not a “use” in relation to goods for which TM 70107 is registered, I am satisfied that the use is in relation to goods for which TM 7017 is registered given that the description of the goods for which TM 70107 is registered includes “.... mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”.

10. In regard to the parallel importation submission of Paradise Supermarket, any reliance upon the Customs (Prohibited Imports) Regulation 1973 must fail as a Regulation cannot take precedence over a statute. Further, there is no reference to s. 53(1) Trade Marks Act in the said regulation. This submission has no bearing on whether PFL’s trade mark has been infringed pursuant to s. 53(1) Trade Marks Act.

11. PFL submits that the relevant statutory inquiry in s. 53(1) Trade Marks Act is whether a substantially identical or deceptively similar mark is used in the course of trade in relation to goods in respect of which PFL’s trade mark is registered.

12. PFL relies upon the cases of Southern Cross Refrigerating Co v. Toowoomba Foundry Ltd (1954) 91 CLR 592; Shell Co of Australia Ltd v. Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 and Torpedoes Sportswear Pty Ltd v. Thorpedo Enterprises Ltd (“Thorpedo”) [2003] FCA 901. PFL submits that the relevant cases and texts indicate that the tests for, “deceptive similarity” involve a consideration of what are the “essential features” or “idea” of the mark and whether the relevant consumer would be caused to wonder whether goods bearing the allegedly infringing mark would come from the owner of the registered mark.

13. PFL submits that assessing deceptive similarity involves a judge placing himself in the position of the notional reasonable consumer in Papua New Guinea and making the determination with reference to certain relevant principles and concepts.

14. In this instance, PFL submits that the words, “PARADISE BEVERAGES” comprise the essential features of TM 7017 and that a reasonable consumer would likely recall a trade mark by its essential features. A reasonable consumer could be misled by the words on the cans of Pepsi to believe that the cans of Pepsi had a connection to or originated from PFL as the importer of the goods.

15. Paradise Supermarket submits as to, “substantially identical or deceptively similar”, that as this case does not involve two competing products as was the case in Ramu Sugar Ltd v. WX Investment Ltd (2009) N3652, the need to determine if, “Paradise Beverages” is substantially identical or deceptively similar to TM 70107 does not arise. This is because there is no evidence to suggest that TM 70107 is actually being used in relation to goods for which TM 70107 is registered such that the use of the plain words, “Paradise Beverages” on the alleged infringing cans would cause confusion to a consumer.

16. In regard to deceptive similarity, in Ramu Sugar v. WX Investment (supra), I stated at [8]:

“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.”

17. This submission of Paradise Supermarket that the need to determine whether “Paradise Beverages” is substantially identical or deceptively similar to TM 70107 does not arise as there is no evidence that TM 70107 is being used in relation to goods for which TM 70107 is registered, assumes either that:

a) s. 53(1) Trade Marks Act requires that there be such use for an infringement to occur; or

b) to determine whether a mark is substantially identical with or deceptively similar to the trade mark, the trademark must be being used for there to be a comparison.

18. A consideration of the wording of s. 53(1) Trade Marks Act, to my mind, does not require that the registered trade mark that is purportedly being infringed, is being used, whether in relation to goods for which it is registered or at all.

19. In regard to whether the subject trade mark must be being used for there to be a comparison, the consideration of confusion and deception arises in assessing deceptive similarity, but only in a notional sense based upon the concept of the, “reasonable consumer” or the, “person(s) of ordinary intelligence and memory”: Shell Co of Australia (supra) at 415. The consideration is whether a, “reasonable consumer” is, “caused to wonder” whether it may be that the products to which the infringing mark is applied come from the same source as those to which the registered trade mark may be applied: Southern Cross Refrigerating Co (supra) at 594-595.
20. As a comparison is made in the notional sense as referred to, it is not necessary, in my view, that there be evidence of use of the existing trademark for there to be a comparison. I make reference in this regard to s. 1(3) Trade Marks Act which provides that:

“(3) 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.”

21. It is not included in s. 1(3) that the trade mark allegedly being infringed must be being used at the relevant time and so supports my view that there does not need to be evidence of use of the existing trademark for there to be a comparison. I note further, that notwithstanding that there are numerous cases that refer to a comparison between two competing products, being the trade mark allegedly being infringed in the course of it being used and the mark that is allegedly infringing, this does not lead to the conclusion that a trade mark allegedly being infringed must be being used, but rather that such a comparison between the marks on the competing products may be made when a trademark allegedly being infringed, is being used.

Whether the mark on the Pepsi can is deceptively similar to TM 70107

22. As submitted by PFL, in assessing the likelihood of deception or confusion for the purposes of deceptive similarity, a, “reasonable consumer” being, “caused to wonder” whether it might be the case that the products to which the infringing mark is applied come from the same source as those to which the registered mark may be applied, is sufficient: Southern Cross Refrigerating Co (supra) at 594-595.

23. Then in Television Food Network G.P. (supra) to which I referred in Ramu Sugar v. WX Investment (supra) at [8], two principles that in my view are apposite to this case are:

“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;”
24. In this instance, the mark on the Pepsi can is, “PARADISE BEVERAGES”. Immediately before those words is, “IMPORTED & DISTRIBUTED IN PNG BY”, and immediately thereafter is, “P.O. BOX 1624 BOROKO, N.C.D.”.

25. The word, “PARADISE” on the Pepsi can does not have a conjoined “a” and “r” similar to “Paradise” in TM 70107, and, “PARADISE” is completely capitalised whereas, “Paradise” in TM 70107 is not. “PARADISE” is comprised of white lettering and so is, “Paradise” in TM 70107. The word, “BEVERAGES” on the Pepsi can and, “BEVERAGES” in TM 70107 are both comprised of white lettering and are completely capitalised. To my mind, a reasonable consumer in Papua New Guinea would have cause to wonder whether it may be the case that the Pepsi can with the infringing mark came from the same source as those to which TM 70107 may be applied. This is especially so when the words and figures, “IMPORTED & DISTRIBUTED IN PNG BY PARADISE BEVERAGES P.O. BOX 1624 BOROKO N.C.D.” are read on the Pepsi can.

26. I am satisfied that the words, “PARADISE BEVERAGES” on the Pepsi can comprise the essential feature of TM 70107 and that a reasonable consumer in Papua New Guinea would be misled by the words on the Pepsi can to believe that the Pepsi can had a connection to or originated from PFL as the importer of the goods. The words, “PARADISE BEVERAGES” in my view are deceptively similar to PFL’s trade Mark registered as TM 70107 and are likely to cause confusion to a reasonable consumer as to the source of the Pepsi cans in question and would lead to the assumption that the Pepsi cans were connected to PFL.

27. Given the above I am satisfied that PFL is entitled to the declaration that it seeks. PFL is also entitled to the consequential relief that it seeks, especially given the history of Paradise Supermarket in regard to the importation of the subject Pepsi cans, that is in evidence.

Orders

28. The Court orders:

a) A declaration that the writing “Imported & Distributed in PNG by Paradise Beverages” as appears on the cans of Pepsi imported by the defendant, is an infringement of the trade mark “Paradise Beverages” as registered in Papua New Guinea by the plaintiff under trade mark registration number 70107 (plaintiff’s Trade Mark), pursuant to Section 53(1) of the Trade Marks Act Chapter No. 385.

b) A permanent injunction preventing the defendant from importing cans of Pepsi or any other products with the “Paradise Beverages” mark or any other mark substantially identical with the plaintiff’s Trade Mark, pursuant to Section 56 of the Trade Marks Act Chapter No.385.

c) that the cans of Pepsi imported by the defendant upon which appear the writing “ Imported & Distributed in PNG by Paradise Beverages” are seized and disposed of in accordance with the powers provided for in Section 17 of the Customs (Prohibited Imports) Regulation Chapter 101.

d) that the defendant shall pay the plaintiff’s costs of and incidental to this proceeding on a party party basis.

e) that time is abridged.
__________________________________________________________________
Ashurst: Lawyers for the Plaintiff
Noel Kera Legal: Lawyers for the Defendant