N8441

PAPUA NEW GUINEA
[IN THE NATIONAL COURT OF JUSTICE]

OS 956 of 2018 
OS 958 of 2018

IN THE MATTER OF THE TRADE MARKS ACT (CH. 385) AND IN THE MATTER OF TWO APPLICATIONS PURSUANT TO SECTION 13 TRADE MARKS ACT

BETWEEN:
DIGICEL (SINGAPORE) PRIVATE LIMITED
First Plaintiff

AND:
DIGICEL (PNG) LIMITED
Second Plaintiff

AND:
AMELIA NA’ARU as the REGISTRAR OF TRADE MARKS
First Defendant

AND:
DIGIVOIP COMMUNICATIONS LIMITED (OS 956 of 2018) 
DIGITEC PNG LIMITED (OS 958 of 2018)
Second Defendants

Waigani: Anis J
2020:16th July & 6th August

MOTIONS – Interim stay and injunctions – preliminary issues – competency issues - whether delay caused by the plaintiffs – Order 4 Rule 49(17) – National Court Rules – whether relief sought were substantive relief – Order 4 Rule 49(9) – National Court Rules – Tests for grant of stay and interim orders considered – whether arguable case already considered by this Court in an earlier motion by the second defendant – whether the plaintiff has met the requirements – exercise of discretion

Cases Cited:

Vuksich & Burich (NZ) Ltd v. Pacific Energy Aviation (PNG) Limited (2020) N8410
Kawari Fortune Resources Ltd v. Louis Limbo Apurel (2015) SC1614
Muriso Pokia v. Mendwan Yallon (2014) SC1336
Nambawan Super Ltd v. Paul Paraka trading as Paraka Lawyers (2020) N8375
Gary McHardy v. Prosec & Communications Ltd trading as Protect Security [2000] PNGLR 279
Hon Havila Kapo v. Hon Mark Maipakai (2010) SC1067
Chief Collector of Taxes v Bougainville Copper Ltd (2007) SC853
Simakade Holdings Ltd v. David Dotaona (2018) N7356

Counsel:

Mr. E. Asigau, for the Plaintiffs
Ms N Paka, for the First defendant
Mr. L. Manua, for the Second Defendants

RULING ON MOTIONS

6th August, 2020

1.	ANIS J:	The plaintiffs in proceedings OS 956 and 958 of 2018 (related proceedings referred to as the 2 proceedings) applied to obtain stay and restraining orders on 16 July 2020.  I heard and reserved my ruling to a date to be advised.

2.	I rule on them now.

BACKGROUND

3.	The plaintiffs’ complaint is this.  They take issue with the first defendant’s acceptance and registration of the second defendants’ trademarks, namely, “Digivoip” and “Digitec” (the 2 trademarks).  They claim that the names are similar to those of their registered logos and trademark names, and for the first defendant to accept and register them, they argue, is in breach of the provisions of the Trade Marks Act Chapter No. 385 (Trade Marks Act).  But the plaintiffs were late to lodge their objections (notice of oppositions) within the timeframe required under the Trade Marks Act.  Their argument is this.  They claim that they had requested for and the first defendant had granted them extension of time within which to lodge their notice of oppositions.  They say based on that, they submitted their notice of objections to the first defendant within the said extended period.  They say the first defendant has however changed her position and has proceeded to and has purportedly registered the 2 trademarks to or under the names of the second defendants.

4.	The plaintiffs, aggrieved by the actions or inactions of the first defendant, file these 2 proceedings.  

MOTIONS

5.	The 2 motions in the 2 proceedings were filed at the same time on 18 December 2018.  Let me summarize the main relief in the 2 motions.  First, the plaintiffs seek orders to stay the registration of the second defendants’ 2 trademarks pending the final determination of the proceedings.  Second, they seek interim injunctions against the defendants, their agents or servants from dealing with or carrying on business under the 2 trademarks pending the final determination of the 2 proceedings.

ISSUES

6.	In my view, the main issues are:

(i)	Whether the 2 motions infringe Order 4 Rule 49(17) of the National    Court Rules (NCR) because they are moved belatedly or well outside the 1-month period, and as such, whether they should be dismissed.

(ii)	Whether the 2 motions infringe Order 4 Rule 49(7) of the NCR in that they seek substantive relief which are also sought in the 2 proceedings, and as such, whether they should be dismissed.

(iii)	Whether the 2 main relief in the 2 motions did not plead or contain the correct sources, or whether they did not invoke the correct jurisdictions of the Court, for the relief in which they seek, and as such, whether they should be dismissed.

(iv)	whether the plaintiffs have met the requirements for granting a stay and interim injunction and whether the Court should exercise its discretion or otherwise.

(v)	Whether the events have overtaken the relief sought, and as such, whether the 2 motions should be dismissed.

PRELIMINARY ISSUES

7.	I will address issues 1, 2 and 3 together.  I note the submissions of the parties on them.  Regarding the first issue, I note the following.  There appears to be a significant delay in moving the 2 motions.  They were filed together with their originating summonses on 18 December 2018.  They were moved on 16 July 2020, about 1 year 6 months later.  Order 4 Rule 49(17) of the NCR reads:

17.  Dismissal /Striking out of Motions.

The Court may of its own motion or upon application strike out or dismiss a Motion which is not prosecuted within one (1) month after it is filed or if it is adjourned twice.

8.	The first contested argument is whether the delay should warrant this Court to exercise its discretion and dismiss the 2 motions since they have been delayed for more than 1 month or 1 year 6 months.  The delay is not an issue.  The real issue to me is the cause of the delay.  Was it caused by the plaintiffs?  Did the defendants have a hand in it?  Or whether the delay was caused not by the fault of the parties.  See case: Vuksich & Burich (NZ) Ltd v. Pacific Energy Aviation (PNG) Limited (2020) N8410.

9.	When I look at the facts, I note that the second defendants had also filed motions to dismiss the 2 proceedings.  They were filed on 9 May 2019 and determined on 16 March 2020, that is, ahead of the 2 motions.  This should require further scrutiny, but I will say this at the outset.  The plaintiffs must first explain the reason for this delayed period, that is, the period between 18 December 2018 to 9 May 2019.  The delay period is about 5 months.  I have considered the evidence of the parties on this issue.  I refer particularly to the affidavits of Michael Henao and Lydia David filed on 14 July 2020 and 9 May 2020 respectively.  Let me try to summarize the material facts deposed as follows:

Date	Event	
18 December 2018	Proceedings were commenced and registered by the Court Registry as a State matter under Civil Court 1 track; 2 motions were also filed	
19 December to 31 January 2019	Court vacation period	
28 January 2019	Request sent to the Registry seeking return dates	
7 February 2019	Registry sets the 2 motions down for hearing on 5 March 2019	
1 March 2019	Plaintiffs were of the view that the matters were commercial matters and were erroneously listed by the Court Registry as State related matters; plaintiffs filed 2 motions to transfer the matters to the Commercial Court Track	
5 March 2019	Matters deferred to 16 April 2019 because the Court did not sit on 5 March 2019	
16 April 2019	Plaintiffs’ motions to transfer the 2 proceedings to the Commercial Court Track were granted by Justice Polume	
30 April 2019	Plaintiffs wrote to the Registry requesting hearing dates for the 2 motions of 18 December 2018	
6 May 2019	Plaintiffs received notification from the Registry that the 2 motions were set down for hearing on 10 May 2019	
9 May 2019	Second defendants filed 2 motions to dismiss the 2 proceedings	
10 May 2019	Motions returned before Justice Hartshorn; Court indicated that it would deal with the 2 motions to dismiss first on 20 May 2019	
20 May 2019	Justice Hartshorn heard the 2 motions of the second defendant to dismiss the 2 proceedings	
16 March 2020	Court delivered its decision refusing the 2 motions of the second defendants	
23 March 2020 to 11 May 2020	Shut down period of the National and Supreme Court due to the Covid 19 global pandemic	
27 May 2020	Plaintiff wrote to the Registry requesting return dates for the 2 motions	
29 May 2020	Registry advised that the matter would be listed for directions on 9 June 2020	
9 June 2020	Matter was called and was further adjourned for directions on 25 June 2020	
25 June 2020	The 2 motions were fixed for hearing on 16 July 2020	
16 July 2020	The 2 motions were moved in Court	

10.	I note that there is no real challenge by the defendants to these back-ground facts or information.  They appear to show, in my view, an accurate account of what had transpired up to 9 May 2019 and beyond.  In my view, I find the reasons or explanations given by the plaintiffs to be sufficient.  The delay is clearly explained, and as it is, it does not appear to show that it was caused by the plaintiffs.  The plaintiffs had tried to obtain return dates for the 2 motions to be moved.  They were prevented by various factors including, (i) Court vacation, (ii), adjournments that were beyond the plaintiffs’ control, (iii), closure of the Court due to the Covid 19 pandemic, (iv), the time and period the Court had to deal with the 2 motions that were filed by the second defendants, which had sought to dismiss the 2 proceedings, and (v), the delay in receiving the decision which again had not been caused by the plaintiffs.  Given this facts or scenario, it would, in my view, be most unjust or unfair to penalize the plaintiffs.

11.	I am therefore not inclined to exercise my discretion to dismiss or strike out the 2 motions based on the argument raised by the second defendants under Order 4 Rule 49(17).

12.	The next preliminary argument is this.  The second defendants say the relief pleaded are substantive in nature; that the motions should only seek interim relief; that the substantive relief should be left to a trial proper.  The applicable rule relied upon by the second defendants is Order 4 Rule 49(9) of the NCR.  It reads in part, Except as otherwise expressly provided in the National Court Rules, Motions shall be for relief on interlocutory matters only and not for the substantive relief claimed in the originating process.  Relief 1 of the 2 motions seek orders to stay the registration of the 2 trademarks of the second defendants pending the final determination of the proceedings.  Relief 2 of the 2 motions seek interim injunctions to restrain the defendants from dealing with the 2 trademarks until the substantive matter is dealt with or is determined.  The next thing to consider is the relief sought in the 2 proceedings.  The stay and injunctive relief are pleaded as 5th and 6th relief in the 2 proceedings.

13.	I note that relief 1 and 2 in the 2 motions are expressly interim in nature as pleaded therein.  As for the stay, the plaintiffs are asking the Court for an interim stay pending the final determination of the proceedings.  The same can be said for the interim injunctions.  Such interim relief are permissible, and the National Court may grant such relief pending determination of the final matter.  It is worth noting the difference between a stay and an interim injunction.  It is better explained by the Supreme Court in Kawari Fortune Resources Ltd v. Louis Limbo Apurel (2015) SC1614.  The Court stated at paragraph 24, and I quote in part:

24…….An interim order is typically an injunction addressed to an opposing party so as to protect an interest of the party seeking the interim order whereas a stay is not so addressed but rather suspends the operation of the judgement or decision under challenge: Peter Makeng v Timbers (PNG) Limited (2008) N3317 (Injia DCJ, as the Chief Justice then was).

14.	The primary relief the plaintiffs seek in both proceedings is to enable to the first defendant to perform her functions under the Trade Marks Act, that is, process or hear the plaintiffs’ notice of oppositions concerning the registrations of the 2 trademarks.  For that to happen, a stay relief may be necessary as a suitable relief because as it is revealed in these proceedings, the first defendant has gone ahead and has registered the 2 trademarks.  A stay order if granted would temporarily suspend registrations of the 2 trademarks pending determination of the substantive proceedings.  The interim injunction is a relief that the plaintiffs may also seek to amongst others maintain the status quo pending the outcome of the 2 proceedings that are filed herein.  Should the Court declare void the actions of the first defendant for breaching the provisions of the Trade Marks Act, the Court may order the first defendant to complete the process, namely, to consider and determine the plaintiffs’ notice of oppositions of the 2 trademarks of the second defendants.  This is of course not this Court’s findings or intentions, but it is a possible scenario which is construed or formulated based on the relief as they are pleaded in the 2 proceedings.

15.	I therefore find the second preliminary issue baseless and dismiss it.

16.	The third preliminary issue is this.  The second defendants complain that the 2 motions did not plead the jurisdictional basis for the 2 main relief.  Reference is made to Order 4 Rule 49(8) of the NCR.  The rule reads in part, All Motions must contain a concise reference to the Court’s jurisdiction to grant the orders being sought. Motions not containing such reference will not be accepted for filing. If accepted by the Registry staff without such reference, and it goes before the motions judge, the Court may strike out the motion for being incompetent and for lack of form.  As such, the second defendant submits that the 2 motions are incompetent and must be dismissed.  I note the submissions and case law referred to by counsel.  The sources pleaded in the 2 motions are Order 12 Rule 1, Order 14 Rules 9 and 10 of the NCR and s. 155(4) of the Constitution.  In my view, the plaintiffs have sufficiently pleaded the sources for the relief that are sought in the 2 motions.  I do take issue with Order 14 Rule 9 of the NCR which applies to preservation of properties before a party may commence proceedings and not after.  But apart from that, I find the sources to be in order and I find the argument baseless.  The Supreme Court in Muriso Pokia v. Mendwan Yallon (2014) SC1336, stated these:

12.  We do not agree, however, that the notice of motion was necessarily incompetent or that the primary Judge erred in hearing the motion. Order 4, Rule 49(8) vests a judge with a discretion to hear a motion that is non-complaint with this rule. Provided that the Judge is satisfied that the party responding to the motion (the appellant in this case) has been put on notice as to the case to be met and that no unfairness to that party will arise from hearing such a non-compliant motion, it is proper to hear the motion.

13.  We consider that the primary Judge was so satisfied here and decided to hear the motion despite its non-compliance with the Rule. No error of law was involved in the primary Judge deciding to hear and determine the motion. Grounds of appeal 1 and 2 are dismissed.

17.	Also, and in a recent decision in Nambawan Super Ltd v. Paul Paraka trading as Paraka Lawyers (2020) N8375, I stated at paragraph 12:

12.  I adopt the above decisions herein to the present case.  I will add by saying that in an application for extension of time to file defence out of time, it is sufficient to plead Order 1 Rule 15, or Order 12 Rule 25(b), or Order 7 Rule 6, that is, together or otherwise, as the source(s) to the relief.  I will remark that in practice, parties do also ask the Court to invoke its powers under section 155(4) of the Constitution.  All these citations, to me, tend to cause Courts to create additional rules and decisions which are evident in recent developments of the National Court Rules and in the case law.  Sometimes, these can become cumbersome, confusing and perhaps one may even argue whether Courts are reading too much into these rules when trying to figure out whether a correct source has been cited in an interlocutory matter.  There is a danger, in my view, that these may eventually lead to a situation where compliance of specific rules may overtake or become more important or relevant than the actual problem or substance of an interlocutory matter that is before the Court for determination that is lodged by an aggrieved party.  I caution or remind myself of these with this remark.

(Underlining mine)

18.	I adopt what were stated above in these cases herein.  And in so doing, I dismiss the third and final preliminary issue.  I will proceed to deal with the merits of the application.

INTERIM STAY AND INJUNCTIONS

19.	Let me begin by setting out the requirements for granting a stay and injunction.  As for a stay order, the requirements are not exhaustively defined or identified.  In Gary McHardy v Prosec & Communications Ltd trading as Protect Security [2000] PNGLR 279, the Supreme Court states them as follows:

·	Whether leave to appeal is required and whether it has been obtained.
·	Whether there has been delay in making the application.
·	The nature of the judgment sought to be stayed.
·	Whether on the face of the record of the judgment there may be indicated apparent error of law or procedure. 
·	Preliminary assessment about whether the applicant has an arguable case on the proposed appeal.
·	Possible hardship, inconvenience or prejudice to either party. 
·	The financial ability of the applicant. 
·	Balance of convenience.
·	Whether damages would be sufficient remedy. 
·	The overall interest of justice.  

20.	The Supreme Court in Hon Havila Kavo v. Hon Mark Maipakai (2010) SC1067, whilst it acknowledged the considerations, stated and I quote:

20.  In exercising its discretion, the Court must consider all relevant and appropriate circumstances in determining whether it is just and reasonable that the order ought to be stayed.  It is not intended that the discretion should be exercised on all or selected considerations and factors enumerated in Gary McHardy; rather the Court is required to consider the totality of those relevant factors and circumstances, in order to dispense substantive justice in the circumstances of the case before it. The circumstances of a particular case may warrant greater or less or even no weight to a particular relevant factor(s) and then again, that is a matter of discretion: Wapua v Lakopa (2009) SC 1048.

21.	As for injunctive relief, the considerations are settled as well in the case law, but again, the Court’s power to decide whether it would grant or refuse to grant an injunction, remains discretionary.  An applicant will be required to demonstrate, (i), that there is an arguable case, (ii), whether the balance of convenience favors the applicant, (iii), whether the applicant has provided an undertaking as to damages, and (iv), whether the interest of justice favors the applicant?  See case: Chief Collector of Taxes v Bougainville Copper Ltd (2007) SC853.

22.	I will address the 2 relief together.  As a start, I note that both the first and second plaintiffs have provided separate undertakings as to damages.  The second defendants, on the other hand, argue that the undertakings may be worthless given the ‘common knowledge’ that the plaintiffs are in a ‘cash strive situation’ and further, they argue that the first plaintiff is not a registered entity in Papua New Guinea.  I have considered the submissions of all the parties.  I find the arguments by the second defendants wanting in merit.  There is no cogent or reasonable evidence disclosed to support the claims by the second defendants that the plaintiffs are worthless or that they are in a financial constraint or crisis.  And it is misconceived, in my view, to argue that a foreign entity, which is not incorporated or registered in Papua New Guinea, is not entitled to or cannot commence proceedings in the National Court to assert, enforce or claim a right if it is aggrieved by the actions or inactions of a defendant.  I also note that evidence adduced by Mr Henao in his affidavit of 18 December 2018, shows that the first plaintiff owns the second plaintiff which is incorporated in Papua New Guinea.

23.	Do the plaintiffs have arguable cases in the 2 proceedings?  I note that this Court had considered and determined this question on 16 March 2020, that is, by His Honour Justice Hartshorn when he heard and dismissed the second defendants’ 2 motions to dismiss the 2 proceedings.  The issue of merit was considered at that time.  On point and at paragraph 8 of His Honour’s decision, he said, and I quote:

As to whether Digicel is entitled to challenge the first defendant’s registration of the second defendants’ Trade Marks, from a consideration of the evidence, I am satisfied that Digicel has an arguable case.  Consequently, I am of the view that the second defendants have failed to establish that Digicel’s claims are plainly and obviously untenable, that they cannot succeed and that they are bound to fail.

24.	It is sufficient, in my view, to point to that to say that the requirement has been met.  It is also and my view, sufficient to say that the requirement to establish an arguable case is inapplicable here because it had been determined by this Court earlier, and that if the second defendants are unhappy about it then they should appeal that decision to the Supreme Court.  I have expressed similar view in judicial review proceedings and in the case of Simakade Holdings Ltd v. David Dotaona (2018) N7356.  At paragraph 17, I stated:

17.	I will add this.  If a leave Court finds, in addition to the other requirements, that there is an arguable case or that the judicial review is meritorious, the matter should proceed to the substantive judicial review hearing and it should be heard without delay.  A notice of motion that is subsequently filed by a respondent or an interested party to dismiss the judicial review proceeding on the basis of want of reasonable cause of action or for want of merit, in my view, should itself (i.e., the notice of motion) be regarded as abuses of the court process.  That is, if a respondent or an interested party fails to appeal the decision of the leave Court after the leave Court finds that there is an arguable case, the issue of whether the judicial review has merit or is arguable, should not be challenged in a further interlocutory process except at the substantive hearing of the judicial review application itself.  An exception I see where the judicial review Court may proceed to hear an application of this nature (i.e., application to dismiss a judicial review for want of merit after leave has been granted and) before the actual judicial review hearing, is in a case where if it can be proven that the applicant did not fully disclose a crucial or material fact or facts concerning the merit of the proceeding, at the hearing of the application for leave to apply for judicial review.  The second exception I see is where the facts or events have changed since the time the Court had granted leave to apply for judicial review and that the facts are crucial concerning the merit of the proceeding.  I make these rulings because I observe generally that judicial time for judicial review proceedings have now been taken up with applications after applications filed by parties after leave stages which has seen judicial review proceedings being delayed and in many instances far beyond their required hearing times.  In my view, judicial review proceedings, from the time leave is granted, should take less than three (3) months to complete.  Instead, I see that it can take beyond six (6) months and even years before a judicial review matter is finally resolved or is determined.  In my view, such practices go beyond the requirements as inscribed under Order 16 in the National Court Rules and in the case law, when dealing with judicial review proceedings.

25.	However, even if I may be wrong, I have briefly considered the evidence that have been filed to date with the relief that are being sought in both proceedings.  Sections 13, 40 and 41 of the Trade Marks Act, in my view, are relevant for this purpose.  They read:

13.  Rectification of Register by Court.
(1)	Subject to this Act, the Court may, on the application of the Registrar or a person aggrieved, order the rectification of the Register by—
(a)	making an entry wrongly omitted to be made; or
(b)	deleting or amending an entry wrongly made or wrongly remaining; or
(c)	inserting a condition or limitation that ought to be inserted; or
(d)	correcting an error or defect.
(2)	On the application of the Registrar or of a person aggrieved, the Court may make such order as it thinks fit for the purpose of cancelling or varying a registration on the ground of failure to observe, or contravention of, a condition or limitation entered in the Register.
(3)	The power to order rectification of the Register conferred by this section includes power to order the removal of a registration from Part A to Part B of the Register.
(4)	The Registrar shall not make an application to the Court under this section unless he considers the application is desirable in the public interest.
(5)	Notice of an application under this section (other than an application by the Registrar) shall be given to the Registrar, who may appear and be heard, and shall appear if so directed by the Court.
(6)	An office copy of an order made under this section shall be served on the Registrar who shall, on receipt of the order, take such steps as are necessary to give effect to the order.

40.  Notice of opposition.
(1)	A person may, within three months after the date of advertisement of the acceptance of an application for the registration of a trade mark, or within such further period as the Registrar, on application made to him within the first-mentioned period, allows, give notice to the Registrar in the prescribed manner of opposition to the registration of the trade mark.
(2)	The opponent shall serve a copy of the notice of opposition on the applicant on or before the date on which the notice is given to the Registrar.
(3)	The applicant may, within three months after the date of service on him of the copy of notice of opposition, lodge with the Registrar in the prescribed manner a counter statement in support of his application.
(4)	The applicant shall serve a copy of the counter statement on the opponent on or before the date on which the counter statement is lodged with the Registrar.
(5)	The Registrar may require the opponent or the applicant to appear before him and give evidence or further explanation in respect of the opposition or the application.
(6)	Subject to Section 41, the Registrar shall, after the expiration of a period of three months from the date on which the notice of opposition is given to him, or such further period, not exceeding three months, as the Registrar on the application of the opponent or the applicant allows, determine the opposition and decide—
(a)	to register the trade mark without conditions or limitations; or
(b)	to register the trade mark subject to such conditions or limitations as he thinks fit; or
(c)	to refuse to register the trade mark.
(7)	In determining the opposition the Registrar may take into account a ground of objection whether relied on by the opponent or not.
(8)	A person who is aggrieved by a decision of the Registrar under Subsection (6), may appeal to the Court.

41.	Opposition may be referred to Court.
(1)	At any time after notice of opposition to the registration of a trade mark has been given to him the Registrar may, and on the application of both the opponent and the applicant shall, refer the matter to the Court for determination.
(2)	In determining the opposition the Court may take into account a ground of objection whether relied on by the opponent or not.
(3)	On determination of the opposition the Court may order—
(a)	that the trade mark may be registered without conditions or limitations; or
(b)	that the trade mark may be registered subject to such conditions or limitations as it thinks fit; or
(c)	that registration of the trade mark be refused.
(4)	An office copy of an order made under this section shall be served on the Registrar, who shall, on receipt of the order, take such steps as are necessary to give effect to the order.

(Underlining mine)

26.	This is not the trial of the matter.  But there appears to be prima facie evidence disclosed by the plaintiffs which shows, and I will summarize.  Firstly, it seems obvious that the plaintiffs’ cases fall under ss. 13 and 40 of the Trade Marks Act.  Its evidence appears to indicate that they were out of time to lodge their notice of oppositions on the 2 trademarks of the second defendants.  Evidence appears to indicate that they may have applied within the 3 months as required under s. 40(1) to the first defendant for an extension of time to lodge their notice of oppositions.  Evidence appears to also indicate that no hearings or decisions have been made by the first defendant to the plaintiffs’ notice of oppositions.  Evidence also appears to indicate that meanwhile, the first defendant may have gone ahead to register or confirm registration of the 2 trademarks of the second defendants.  And the plaintiffs herein, again and as stated above, will be asking this Court at the trial of the matter, to order or direct the first defendant to complete the process that is provided for under s. 40.  I also note that s. 41 permits the first defendant to, instead of deciding, refer a notice of opposition to the National Court to determine.  This Court also has powers under s. 13, which is invoked by the plaintiffs herein, to, amongst others, revoke registration of a trademark that may be approved by the first defendant.  So, the approach that is taken by the plaintiffs where they are seeking Court intervention to the registration process of the 2 trademarks under the Trade Marks Act is permitted under the Act.  This position, in my view, also discards the argument by the defendants that the events have overtaken the purposes of the relief that are being sought in the 2 motions.  

27.	For these reasons, I do find that the matter has merit.

28.	Regarding balance of convenience, I will say this.  Prima facie evidence disclosed shows that the plaintiffs have been in business in Papua New Guinea for many years ahead of the second defendants.  It is not unreasonable therefore to assume that they may have established their brand or goodwill.  Of course, to prove these may require a proper or separate hearing and this is not the time to hear or decide on that.  But the information I have is sufficient, in my view, to say that the balance of convenience favors the granting of an interim stay and injunction.  Damages would not be an adequate remedy if no interim injunction is put in place.  On the other hand, if the plaintiffs are unsuccessful in the end, they should be able to compensate the second defendants if damages are suffered based on the undertakings that have been provided by the plaintiffs.  As for the stay relief, the fact that needs to be emphasized is this.  The primary purpose for these proceedings commenced by the plaintiffs, based on the relief sought and evidence disclosed to date, is to, if successful, direct or allow the first defendant to continue or complete the plaintiffs’ notice of opposition that has been filed against the 2 trademarks.  These trademarks have since been approved it seems.  If they are allowed to continue, it will defeat the purpose of the proceedings.  Staying the first defendant’s decision, in my view, may also have the potential of limiting or minimizing possible damages that may be suffered by the plaintiffs.  It also appears or may be seen as a better option that takes into account the interests of all the parties concerned.

29.	I also find that the interest of justice favors the granting of the interim stay and injunctions sought in the 2 motions herein.  And that is based on the reasons that I give above in my judgment.

SUMMARY

30.	I am satisfied that this is a case where I should exercise my discretion and grant the relief sought in the plaintiffs’ 2 motions filed here.

COST

31.	An order for cost is discretionary.  I will order costs of the 2 motions to follow the event, that is, the defendants shall pay the plaintiffs’ costs of the 2 motions on a party/party basis which may be taxed if not agreed.

REMARK

32.	I refer to the submissions of the first defendant.  I uphold the plaintiffs’ submission that the first defendant has treated this hearing as the actual trial and as such has raised substantive arguments.  These arguments should be left to the trial proper.

ORDERS OF THE COURT

33.	I make the following orders:

(1)	The registration of the Second Defendants’ trademarks known as “DIGIVOIP” and “Digitec” are stayed pending hearing and determination of these proceedings.

(2)	Until further orders of the Court, the First and Second Defendants, their servants, employees, agents or whosoever are restrained from carrying on business, conducting any activity, trading in reliance on and giving effect to the trade marks known as “DIGIVOIP” and “Digitec” pending hearing and determination of these proceedings.

(3)	The defendants shall pay the plaintiffs’ costs of the 2 motions which shall be assessed on a party/party basis to be taxed if not agreed.

(4)	Time for entry of these orders is abridged to the date of settlement by the Registrar which shall take place forthwith.

The Court orders accordingly.
________________________________________________________________
Pacific Legal Group:         Lawyers for the Plaintiffs
In-house Legal Counsel:   Lawyers for the First Defendant
Rageau Manua & Kikira   Lawyers for the Second Defendants