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Pacific Fishing Company Ltd v Fish Canners (Fiji) Ltd [2003] FJHC 287; HBC0407R.2002S (11 July 2003)

IN THE HIGH COURT OF FIJI
AT SUVA
CIVIL JURISDICTION

CIVIL ACTION NO. HBC0407R OF 2002S

BETWEEN:

PACIFIC FISHING COMPANY LTD
a limited liability company having its
registered office at Beach Street, Ovalau, Levuka.
PLAINTIFF

AND:

FISH CANNERS (FIJI) LIMITED
a limited liability company having its
registered office at Level 8, Dominion
House, Thomson Street, Suva.
1ST DEFENDANT

AND:

RATTAN DEO
(f/n Bal Kissun) of 10 Salala Place, Namadi Heights, Tamavua,
Suva. Carrying on business under
the name and style of SHOP N SAVE
SUPERMARKET at 74 Kalabu Industrial
Subdivision, Nasinu.
2ND DEFENDANT

Counsel for the Plaintiff: R. Naidu, Sherani & Co.
Counsel for the 1ST & 2nd Defendants: I. Razaak, Lateef & Lateef

Date of Ruling: 11 July, 2003
Time of Ruling: 9.30 a.m.

RULING

On 29^th October 2002, the Plaintiff obtained through an ex-parte application, an interlocutory injunction against the Defendants restraining the first Defendant from the using the word “Sunrise” on its canned fish products and specifically “canned tuna flakes or any other aspect of its business until further order by the Court.” The first Defendant’s was further restrained from packaging, canning, marketing and selling its tuna flakes in packaging similar to that of the Plaintiff’s. In addition, the second Defendant, who carries on the business of a retail outlet selling goods and products including “Sunrise” products from the first Defendant, was restrained from selling “Sunrise” brand of canned tuna flakes and the same to be removed from the retail outlets, until further orders of the Court.

The Plaintiff, through its Chief Executive claims, in its affidavit in support of the application, that the first Defendant who had recently entered the canning of tuna flakes business, had begun selling its canned tuna flakes with the brand "Sunrise”. The brand was similar or close to its brand name of “Sun Bell”. In addition, the labelling and design of the first Defendant’s cans were similar to the Plaintiff’s in the following way:

“(a) The pictorial layouts on the labels of “Sunrise” cans and the picture

of the fish are very similar to that of the Plaintiff’s cans.

(b) The colour combination used by the First Defendant on the labels of

its cans is the same which is red.

(c) That on the Centre of the label of the “Sunrise” cans the words “Sunrise” and “Tuna Flakes” is written in white which is same as that of the Plaintiff’s cans.

(d) The font size used by the 1^st Defendant on labels of “Sunrise” cans and the manner in which the write up for the labels has been done is very similar to that of the Plaintiff’s cans.

(e) There is a square design of a canoe on the label used by the 1^st Defendant which is exactly the same as that of the Plaintiff and the colour combination is also the same which is blue and white.”

In all of these efforts, the Plaintiff claims, the 1^st Defendant had deliberately set out to mislead and confuse the consumers by closely associating its tuna flakes cans to those of the Plaintiff’s, and thereby gain on the considerable market reputation and clientele which the latter had built with the Fiji public since 1976. The Plaintiff’s action is now commonly known as the tort of “passing off”.

The Defendants on 18 December 2003 sought the dissolution of the Plaintiff’s injunction.

In its affidavits in support the Defendants deny any resemblance between “Sunrise” tuna products and “Sun Bell” brand belonging to the Plaintiff. The 1^st Defendant stated that the packaging in particular the can labelling it uses for its products displayed pictures of two fishes compared to the Plaintiff’s one. In addition, the 1^st Defendant’s label is a mixture of blue and red to the Plaintiff’s red only; the font and the style of print and words on the Defendant’s labels are different to those of the italic prints of Plaintiff’s; the extra imagery on the Defendant’s label depicts a coconut tree and the sun compared to a pink rose on the Plaintiff’s; and finally the Defendant’s brand name comprise only one word “Sunrise”, compared to the Plaintiff’s “Sun Bell” of two words.

The 1^st Defendant had even attempted to resolve the matter amicably and quickly by suggesting to the Plaintiff that it was willing to change the colour of the label to some other colour than the red, but this was refused by the Plaintiff suggesting that the only accepted solution is for the 1^st Defendant to change its brand name to “Moonrise”.

There are other canned fish products which the 1^st Defendant produce under the “Sunrise” brand. These include “Sunrise Gold Brand” mackerel; “Sunrise Gold Brand” Mackerel In Tomato Sauce; “Sunrise Mackerel” in Natural Oil; and “Sunrise Mackerel” in Tomato Sauce. It also packages and sell “Sunrise” Instant Full Cream Powdered Milk. The injunction in place restrains the 1^st Defendant from producing and/or selling any of its products that bears the brand “Sunrise”.

THE LAW ON PASSING OFF

The tort of passing off has developed over the years from the classic case of the Defendant selling his goods as for those of the Plaintiff to other kinds of activities that involve deception of sort. For example in Combe International Ltd v. Scholl (UK) Ltd. [1980] RPC1, the Defendants were found guilty of the offence, when its goods were sold under the pretence that they were the same as those of the Plaintiff when they were not. Further, in Erven Warnink Besloten Venootschap v. J. Townend & San (Hull) Ltd. [1979] AC 731 (Commonly referred to as the Advocaat case), the passing off action was successful against the Defendant for selling its goods as if they were the same goods sold by a class of persons of which the Plaintiff was a member, when they were not.

In Hodgkinson & Corby Ltd. v. Wards Mobility Ltd. [1994] 1 WLR 1564, Jacob J. explored the law of passing off, beginning by defining what is not the law (p.1569):

“....... There is no tort of copying. There is no tort of taking a man’s market or customers. Neither the market nor the customers are the Plaintiff’s to own. There is no tort of making use of another’s goodwill as such.”

Jacob J. then defined the basic essential ingredient of passing off thus: (p.1994):

“At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular.” (emphasis added)

The classic statement of the law in this area is as pronounced by Lord Halsbury LC in the House of Lords case of Reddaway v. Banham {1896} AC 199. He said, (p. 204):

“For myself, I believe the principle of law maybe very plainly stated, and that is, that nobody has any right to represent his goods as the goods of (somebody else. How far the use of particular words, signs, or pictures does or does not come up to the proposition which I have enunciated in each particular case must always be a question of evidence, and the more simple the phraseology, the more likely it is to a mere description of the article sold, the greater becomes the difficulty: but if the proof establishes the fact the legal consequence appears to follow”.

The misrepresentation by the defendant is not necessarily limited to the use of trade mark, but in any other way or means, as per Lord MacNaughten speech in Reddaway v. Banham (Supra), at pp. 215 – 216:

“No man is permitted to use any mark or symbol or devise, or other means whereby, without making a false representation himself to a purchaser who purchase from him, he enables such purchaser to tell a lie, or to make a false representation, to somebody else who is the ultimate customer”. (emphasis added)

According to Lord Jamicey in Reckett and Coleman Products v. Borden Inc. [1990] UKHL 12; [1990] 1 All ER 873, if the Plaintiff is to succeed in a passing of action, he must satisfy three (3) requirements. First he must establish to the satisfaction of the Court, that the goods or products in question, has acquired a particular reputation amongst the public/consumers. Secondly, the consumer wishing to buy his product, is likely to be misled into buying the product of the Defendant. Finally, the Plaintiff will suffer damage as a consequence.

Nourse L.J. in Consorgio del Prosciutto di Parma v. Marks & Spenser P/c (1991) R.P.C. 351 expressed the ingredients as the “classical trinity” being (1) goodwill of the Plaintiff, (2) misrepresentation by the defendant, (3) consequent damage.

Our own Courts’ decisions in Flour Mills of Fiji Limited v. Visama Atta Mills Limited HBC0559.1993 (per Pathik J.); Pacific Fishing Company v. B. Kumar & Or. HBC0491.1993 (per Kepa J.) and Food (Pacific) Limited v. Eagle Ridge Investment HBC0444.2000 (per Singh J.) have dealt with the law in this area.

COURT’S DETERMINATION

For the Plaintiff in this case to succeed it has to prove that the defendant deliberately or otherwise, by the use of the word “Sunrise” on its canned tuna flakes and especially the packaging of the same, had deceived the consumers into purchasing it in the mistaken belief that they were buying the Plaintiff’s “Sun Bell” tuna flakes.

It is accepted that the Plaintiff’s “Sun Bell” tuna flakes canned product had been on the market, both here and in the region for a very long time (since 1976 according to the affidavits of its Chief Executive Officer). The product has achieved a very good reputation and reliability and market recognition in over 25 years since production. Its packaging including labelling picture design write-up and colour has not changed much from the beginning. Against a red background, the label pictures a complete tuna fish with the words “Sun Bell” above the fish and “TUNA FLAKES” below it. A pink rose with the name of the producer balances the frontal presentation. The obverse pictorial presentation is similar except that the Plaintiff’s logo and “A Product of Fiji” Fiji Trade and Investment Bureau logo, takes the place of the pink rose.

The First Defendant’s tuna flakes canned product on the other hand, which began its production in 2000 has, what can only be described as a generally similar packaging format. Like the Plaintiff’s, the label is red. There are two (2) tuna fishes at the centre, with the word ”Sunrise” above and “Tuna Flakes” below the fishes. The manufacturer’s (1^st Defendant’s) name together with “Product of Fiji” logo balances the frontal presentation.

The obverse bears similar depiction of the 2 tuna fishes and wordings, with the picture of a coconut tree and sun instead of the manufacturer and logo.

The question for this Court to ultimately determine is whether on the facts, the Defendant is guilty of passing off. The Plaintiff argues, that the packaging, including the primary colours used by the First Defendant in its label are similar if not the same to theirs. The shape or configuration and the size of both cans of products are almost the same, approximately one-third of a normal size of a canned fish. Given this, and although the colours of the tuna fishes on the 1^st Defendant’s label are slightly of lighter complexion to the Plaintiff’s, it may not, and so the Plaintiff’s argument goes, be particularly noticeable to a rushing supermarket trolley of a normal Saturday morning shopper.

Are there nevertheless distinguishing features in the labelling of the First Defendant’s product that are sufficient to avoid deception? In its affidavit, the First Defendant points to such features. These, the Court has already alluded to above in comparing the packaging of the two products. Counsel for the First Defendant’s argue that the label “Sunrise” is different and is furthermore only a single word compared to “Sun Bell” of the Plaintiff’s is a distinguishing feature. This together with the depiction of two (2) tuna fishes compared to the one fish depicted on the Plaintiff’s label and as well as the words and portrayals on both sides of the label make the First Defendant’s product different from the Plaintiff’s. There could not, in Counsel’s view, be any misrepresentation and no deception had been intended by the Defendants.

This Court readily concedes that there are certainly features in the labeling of the 1^st Defendant’s tuna flakes that distinguishes it from the Plaintiff’s. But what of the similarities in the totality of the picture and images the two products portray to the consumers other than their distinguishing features? The fact that the Plaintiff may have had a monopoly on the local tuna flakes market for some time makes the demand for clear unequivocal and distinctive characterisation of the Defendant’s product all the more necessary to differentiate it from the Plaintiff’s.

The question for the Court to ask is whether the red label of the First Defendant’s canned tuna flakes together with the picture of the tuna and the word “Sunrise”, in bold print above the fishes, are close enough to resemble the Plaintiff’s canned tuna flakes, as to confuse the consumer and move her or him to buy it in the mistaken belief that it is the Plaintiff’s. Does the fact that the First Defendant’s brand name is made up of one word “Sunrise”, compared to the Plaintiff’s two “Sun Bell”, constitute an adequate distinguishing feature that can excuse the First Defendant from claims of deception? The Defendants further argued that neither the brand “Sun Bell” nor the word “Sun” is patented or protected by the Plaintiff and is therefore open to anyone to use them as they please. While this maybe strictly correct, it is not so in the case where the words are used in and for the same line of goods manufactured or produced. The law that protects the Plaintiff does not differentiate in misrepresentation by the use of trade mark or other ways. Lord Herchell confirmed this position in Reddaway v. Banham (supra) stating (at p.209)

“It is .... “this fundamental rule” ____ i.e. that purchasers should not be deceived ____” which govern all cases, whatever be the particular mode adopted by any man for putting off his goods as those of a rival trader, whether it is done by the use of a mark which become his trade mark, or in any other way”. (emphasis added)

On the facts of this case, there can be no doubt that the packaging of the First Defendant’s canned tuna flakes are similar and very close to if not resemble the packaging of the Plaintiff’s product. Whether in fact the action of the First Defendant amounted to passing off to which the Plaintiff is entitled to the protection under the law, is for the Court to decide later. It is adequate for the present purposes to say that given the arguments so far advanced by Counsel and having carefully considered the positions of the parties in this application, the Court has no reservation but refuse the Defendant's application to dissolve the injunction.

INJUNCTION

It only remains for this Court to review the terms of the injunction that it had granted earlier in the light of submissions by Counsel. Within the parameters of the American Cyanamid v. Ethicon Ltd. [1975] UKHL 1; (1975) AC 396, principles, the interim injunction granted more than satisfies the requirements. There is a serious question to be tried; that the Plaintiff is able to compensate the Defendants for damages; and the balance of convenience in the considered opinion of this Court, favours the Plaintiff. The issue of interlocutory injunction had in addition been exhaustively canvassed in both Counsel’s submission.

However, the Defendant’s Counsel submitted that the terms of the injunction were far too wide. It also restrained in effect, the Defendants from using the word “Sunrise” in its other products such as milk powder and canned mackerels. It is conceded by the Plaintiff that it does not in fact produce “milk powder” nor canned mackerels in standard cans. The law on passing off as it applies in the present category is only relevant to similar line of products i.e. tuna flakes, that the Plaintiff is wishing to protect. It is not intended to protect its future prospects in products which the first Defendant is already embarked upon. This Court agrees with the Defendant’s Counsel in this regard.

Under the circumstances, the injunction granted by this Court on 26^th October 2002 is hereby varied to read as follows:

1. The 1^st Defendant by itself and/or through its servants and/or agents or howsoever is hereby restrained from using the word “Sunrise” on its canned tuna flakes until further Order of this court.
   
2. The 1^st Defendant by itself and/or through its servants and/or agents or howsoever is hereby restrained from packaging, canning and marketing its canned tuna flakes in packaging similar to that of the Plaintiff’s and/or in such a manner as to deceive purchasers into the belief that they are purchasing the Plaintiff’s canned tuna flakes in packaging similar to that of the Plaintiff’s until further Order of this Court.
   
3. That a grace period of one (1) month is given to the defendants to dispose of or otherwise sell their stock of “Sunrise” canned tuna flakes and thereafter any stock remaining to be withdrawn from all wholesale and/or retail outlets.
   

The Court further orders the Plaintiff’s undertaking as to damages.

The Defendants to pay costs to the Plaintiff to be taxed, if not agreed.

F. Jitoko
Judge

At Suva
11^th July 2003