Brinks Incorporated and Brinks Air Courier Australia Pty Ltd v Brinks Pty Ltd, Barry Tan and Herman Lucas (1997) N1567

• Jurisdiction: Papua New Guinea
• Judge: Injia J
• Judgment Date: 09 May 1997
• Court: National Court
• Citation: (1997) N1567
• Year: 1997
• Judgement Number: N1567

Full Title: Brinks Incorporated and Brinks Air Courier Australia Pty Ltd v Brinks Pty Ltd, Barry Tan and Herman Lucas (1997) N1567

National Court: Injia J

Judgment Delivered: 9 May 1997

PAPUA NEW GUINEA

[NATIONAL COURT OF JUSTICE]

W.S. NO. 810 OF 1994

BETWEEN

BRINKS INCORPORATED — FIRST PLAINTIFF

BRINKS AIR COURIER AUSTRALIA PTY LTD — SECOND PLAINTIFF

AND

BRINKS PTY LTD — FIRST DEFENDANT

AND

BARRY TAN — SECOND DEFENDANT

AND

HERMAN LUCAS — THIRD DEFENDANT

Waigani

Injia J

9 May 1997

PASSING-OFF — Foreign Companies not based in the country carrying on business in the country using resident sub-contractor — Security service business using name "Brinks'" — Local security service company using "Brinks" as part of its corporate and business name — Whether Local company guilty of passing-off foreign company's business.

UNDERLYING LAW — Common law and equity — Passing-off action — Principles considered appropriate and applicable to circumstances of country — Adopted and applied — Constitution, Sch. 2.2.

The First Plaintiff, a security service company based in Connecticut, USA owned a group of Companies throughout the world including the Second Plaintiff which was based in Sydney, Australia. All these companies used the name "Brinks" or Brink's" as part of their corporate name or business name. The Plaintiffs carried on the business of transporting valuables such as currency and gold in PNG using a resident sub-contractor, PNG Armoured. The First Plaintiff had an agreement with PNG Armoured but did very little or no business directly with PNG Armoured. The Second Plaintiff had agreement with several resident Companies to transport valuables into and out of PNG. Although the Second Plaintiff did not have an agreement with PNG Armoured, all business for the Second Plaintiff was carried out by PNG Armoured. The Plaintiffs did not obtain incorporation, registration or certification as a foreign enterprise under the existing laws of PNG. The Second Defendant was at one time employed by PNG Armoured as it'sManaging Director and did some work for the Second Plaintiff. Later he left his employment and with the financial assistance of the Third Defendant, incorporated the First Defendant company and registered two other business names known as "Brink's Armoured" and "Brinks Security Services" and went into various businesses, one of which was similar to that provided by the Plaintiffs through PNG Armoured. In a passing-off action by the Plaintiffs, they sought permanent injunction (and damages) to stop the Defendants from carrying on business using the name "Brink", "Brinks" or "Brink's".

Held

1. A Passing-off action is an action in equity which is enforceable by an injuction and a party seeking equitable remedy of a permanent injunction must come with clean hands. The Plaintiffs in carrying on business in the country without obtaining registration as a foreign enterprise under Part XII Division 3 of the Companies Act (Ch. 146) and certification under the Investment Promotion Act 1992 were committing criminal offences for which they stood liable to be prosecuted whereas the defendants had not broken any laws because they had obtained incorporation of the company and registered their business names under the Companies Act and Business Names Act (Ch. No. 145) and were entitled to carry on business under their registered corporate or business names. The action should be dismissed because the plaintiffs had not come with clean hands.

2. The First Plaintiff had not acquired a reputation or goodwill in the country which it could protect by a passing-off action because it had not carried on any or sufficient business in the country to establish a reputation or goodwill; that the defendants had not misrepresented to the public in the country including the First Plaintiff's customers or potential customers that their business was that of the First Plaintiff, and that no damages were actually suffered or likely to be suffered by the Plaintiffs as a result of the defendant's use of the name "Brinks". The action of the First Plaintiff should be dismissed.

3. The Second Plaintiff had acquired a reputation or goodwill in the country in the use of the name "Brinks" or "Brink's" as attaching to the provision of high quality security services, in particular, the provision of armoured car security services in the transportation of valuables, but because the defendants had not misrepresented to the public in PNG or the Plaintiffs' customers or potential customers that the services they were providing was that of the Second Plaintiff or in anyway associated with the Second Plaintiff, and because the Second Plaintiff had not actually suffered any damage or likely to suffer any damage as a result of the use of the name "Brink's" or "Brinks", the action should be dismissed.

Cases Referred to in the Judgement

Scott v Brown Doering McNab & Co. [1892] 2 QB 724

Reddaway v Bonham [1895] ALL ER 133

Inland Revenue Commissioner v Muller & Co.'s Margarine Ltd [1901] AC 217

Panhard v Panhard [1901] 2 Ch 513

Gibson Battle & Co Ltd v James King & Sons [1915] SASR 15

AG Spalding & Bros v AW Gamage Ltd (1915) 84 LJ (Ch. 449)

Poiret v Jules Poiret Ld and AF Nash [1920] 37 RPC 177

Concrete Engineering and Contracting Company Limited v Hardie Trading Propriety Limited [1928] SASR 132

Snell v Unity Finance Ltd [1963] 3 ALL ER 50

Sheraton Corp. of America v Sheraton Motels Ltd [1964] RPC 202

Suhner & Co. AG v Suhner Ltd [1967] RPC 336

The Crazy Horse Case [1967] RPC 581

Alain Bernadin et Compagnie v Pavilion Properties Limited

Globelegance BV v Sarkissian [1974] RPC 603

Baskin Robbins Ice Cream Co. and Another v Gutman and Another [1977] FSR 545

Star Industrial Company Limited v Yap Kwee Kor (trading as New Industrial Company) [1976] FSR 256

HP Bulmer Ltd v Bollinger SA [1978] RPS 79

Erven Warnink B and Others v J Townend & Sons (Hull) Ltd and Others [1979] 2 ALL ER 927

Habib Bank Ltd v Habib Bank AG Zurich [1981] 2 ALL ER 650

Reckitt & Colman Products Ltd v Borden Inc. and Others [1990] 1 ALL ER 873

Taittinger and Others v Allbeu Ltd and Others [1994] 4 ALL ER 75

Counsel

CR Hudson for the Plaintiffs

D Hill for the Defendants

9 May 1997

INJIA J: The Plaintiffs' action is based on the common law tort of passing-off. The Plaintiffs seek permanent injunctions and damages. The case involves the use of the name "Brink", "Brinks" or "Brink's".

1. BACKGROUND OF THE CASE

The essence of the Plaintiff's claim is this. The First Plaintiff is a company incorporated, registered and based in Connecticut, USA. The Second Plaintiff is an Australian company incorporated, registered and based in Sydney. The Second Plaintiff is wholly owned by the First Plaintiff and regarded as a "subsidiary" of the First Plaintiff. The First Plaintiff claims that it has carried on business using the name "Brinks" in USA since 1865 in the business of providing security services throughout USA and in a large number of countries throughout the world under the name "Brinks". The First Plaintiff claims it has a series of companies registered throughout the world of which the Second Plaintiff is one. Both plaintiffs claim that they have carried on business in Papua New Guinea (PNG) continuously since 1988. They claim that even though they are not incorporated and/or registered in PNG, they have carried on business using their PNG agent or sub-contractor, namely PNG Armoured. They say that as part of teir international reputation or goodwill, by conducting business in PNG through PNG Armoured, they have acquired a reputation or goodwill in PNG in the name "Brinks". They claim that the Second Defendant was at one time a Managing Director of PNG Armoured and was performing the services required by the plaintiffs on behalf of PNG Armoured. He left the company in 1994 and he used his business knowledge of the plaintiff to set up the First Defendant company and registered the business names "Brinks Armoured" and "Brinks Security Services". Financial backing for the business was provided by the Third Defendant. The plaintiffs say the defendants are carrying on business similar to that of their own and this is creating confusion in the minds of the public in PNG, among their existing and potential customers throughout PNG. They claim that the defendants are misrepresenting to the public in PNG that the services they are providing are that of the Plaintiffs or are associated with the plaintiffs. They claim thatas a result, the plaintiffs are likely to suffer damages to their business in PNG unless the defendants are permanently restrained from using the name by this court.

The defendant's defence in essence is that they admit that they have incorporated the First Defendant company and registered the said two (2) business names and are carrying on business in PNG of providing security services, some of which are similar to those of the Plaintiffs. They say the Plaintiffs have no reputation or goodwill in PNG which is capable of being protected by...