Mara v Bagre Nui (trading as Pacific Taxi Services) [2020] PGNC 128; N8369 (4 May 2020)

N8369

PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]

WS 846 OF 2017

BETWEEN:
WINGTI MARA for and on behalf
of himself & 2 others trading as
Airport Services
Plaintiff

AND:
BAGRE NUI trading as
Pacific Taxi Services
Defendant

Waigani: Hartshorn J
2020: 4^th May

MISREPRESENTATION – trial - plaintiff claims damages for intentionally deceiving the public for misrepresentation in an action of passing off - three elements need to be proved by the plaintiff in its cause of action of passing off - the plaintiff's goods or services have acquired a goodwill or reputation (both of which mean the same thing) in the market and are known by some distinguishing feature; that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and that the plaintiff has suffered or is likely to suffer - plaintiff has proved misrepresentation and has suffered or is likely to suffer damage to his goodwill, arising from the defendant's misrepresentation

INJUNCTION -defendant and his servants or agents are permanently restrained from directing public attention to his business in such a way as to cause or to be likely to cause confusion in Port Moresby between his business and that of the plaintiff by painting his taxis with the same colours and pattern as the colours and pattern of the taxis of the plaintiff; passing off or attempting to pass off or causing, enabling, or assisting others to pass off or to attempt to pass off his business as and for the business of the plaintiff

DAMAGES - damages for plaintiff’s loss of business to be assessed together with interest –

COSTS - costs of the plaintiff to be paid by defendant

Cases Cited:
Papua New Guinea Cases

Brinks Incorporated v. Brinks Pty Ltd (1997) N1567

Overseas Cases

Numatic International Ltd v. Qualtex UK Ltd [2010] 1237 (Ch)
Reckitt and Colman Products Ltd v. Borden Inc. & Ors [1990] UKHL 12, 1 All ER 873

Counsel:

Mr. K. Kil, for the Plaintiff
Mr. A. Benny, for the Defendant

4^th May, 2020

1. HARTSHORN J: This is a decision on whether the plaintiff has successfully made out his claim for passing off against the defendant.

Background

2. The plaintiff and defendant operate taxi services. The plaintiff pleads that the defendant has sprayed the defendant's taxis using the same colours and pattern as those used by the plaintiff on his taxis. The plaintiff claims that this constitutes passing off and that the plaintiff has suffered loss and damage as a result. Injunctive relief and damages are sought.

3. The defendant did not tender any evidence at trial due to the non-attendance of his counsel. The evidence of the plaintiff is therefore uncontested.

Consideration

4. The three elements that need to be proved by the plaintiff in its cause of action of passing off were reproduced and considered by Injia J (as he then was) in Brinks Incorporated v. Brinks Pty Ltd (1997) N1567. They are that:

a) the plaintiff's goods or services have acquired a goodwill or reputation (both of which mean the same thing) in the market and are known by some distinguishing feature;

b) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

c) the plaintiff has suffered or is likely to suffer damages as a result of the erroneous belief engendered by the defendant's misrepresentation.

(These elements are a summary by Halsbury's Laws of England, 18th Volume, 4th ed. (Butterworths, London, 1995) of the elements requiring proof that were discussed by the House of Lord's in Reckitt and Colman Products Ltd v. Borden Inc. & Ors [1990] UKHL 12, 1 All ER 873).

Goodwill or reputation

5. In Reckitt and Colman (supra) at 499, in regard to goodwill or reputation, Lord Oliver of Aylmerton said:

"First he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' .... under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services."

6. For goodwill and reputation in the get-up of a product, in Numatic International Ltd v. Qualtex UK Ltd [2010] 1237 (Ch) at [39], Floyd J stated:

"It is recognised that it is more difficult to acquire sufficient reputation and goodwill in the shape or get-up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get-up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public."

7. So one of the factors that must be proved by the plaintiff in establishing that he has acquired a sufficient goodwill or reputation attached to his taxi service by association with the get-up used on his taxis is that the get-up has come to denote a particular source for his taxis to the relevant public.

8. In this instance the submission of the plaintiff is that he has been using the colours light red and yellow and the paint pattern of bottom and top yellow and red in the middle (get-up), although it is pleaded in his statement of claim that he sprays his taxis read at the bottom and yellow at the top. It is also pleaded that the defendant has been spraying his taxis with the same pattern, bottom red and top yellow. From a perusal of the annexures to the first affidavit of the plaintiff, I will proceed on the basis that it is the get-up that the plaintiff uses and it is the get-up that he alleges the defendant is copying and therefore passing off.

9. The evidence of Sakias Kay and Andria Tarabi filed on behalf of the plaintiff is amongst others, to the effect that the plaintiff's get-up denotes to them that a taxi with that get-up is from the plaintiff's taxi service, Airport Transport Services.

10. The defendant submits that the plaintiff has only been operating his taxi service for three months and that this is not a sufficient length of time to acquire a reputation or goodwill in Port Moresby. No authorities were relied upon for this submission.

11. In this instance, although three months could be considered a relatively short period of time, the evidence of Sakias Kay and Andria Tarabi is the effect that in that period of time, because of the customer service provided by the taxis with that getup, that they prefer and choose taxis with that getup.

12. I am satisfied therefore upon the evidence, that the plaintiff has established that he has the requisite goodwill and reputation.

Misrepresentation

13. The defendant submits that he did not intentionally confuse or deceive the public into believing that his taxis were those of the plaintiff by using the getup.

14. It is not necessary that it be proved that members of the public were confused or deceived intentionally for the plaintiff to prove the element of misrepresentation in a passing off action. In this instance, the evidence of Sakias Kay and Andria Tarabi is to the effect that they were confused by the colour scheme and pattern of the defendants taxis to the extent that they engaged the defendant's taxis. I am satisfied on this evidence that the plaintiff has satisfactorily proved misrepresentation.

Damage

15. The evidence of the plaintiff is such that I am satisfied that he has suffered or is likely to suffer damage to his goodwill, arising from the defendant's misrepresentation.

16. Consequently, for the above reasons, the plaintiff has satisfactorily made out his case to the requisite standard.

Orders

17. The Court orders that:

a) The defendant and by his servants or agents and otherwise, is permanently restrained from:

1. directing public attention to his business in such a way as to cause or to be likely to cause confusion in Port Moresby between his business and that of the plaintiff by painting his taxis with the same colours and pattern as the colours and pattern of the taxis of the plaintiff;
   
2. passing off or attempting to pass off or causing, enabling, or assisting others to pass off or to attempt to pass off his business as and for the business of the plaintiff.
   

b) The defendant shall pay to the plaintiff:

1. damages for loss of business to be assessed, together with interest pursuant to statute;
   
2. the costs of the plaintiff of and incidental to this proceeding.
   

c) Time is abridged.

__________________________________________________________________
Nicholas Tame Lawyers: Lawyers for the Plaintiff
Niuage Lawyers: Lawyers for the Defendant