OS 530 OF 2007; Ramu Sugar Limited v W. X. Investment Limited and RH Trading Limited (2009) N3652

• Jurisdiction: Papua New Guinea
• Judge: Hartshorn J
• Judgment Date: 06 April 2009
• Court: National Court
• Citation: [2009] PNGLR 537
• Year: 2009
• Judgement Number: N3652

Full Title: OS 530 OF 2007; Ramu Sugar Limited v W. X. Investment Limited and RH Trading Limited (2009) N3652

National Court: Hartshorn J

Judgment Delivered: 6 April 2009

N3652

PAPUA NEW GUINEA

[IN THE NATIONAL COURT OF JUSTICE]

OS 530 OF 2007

BETWEEN:

RAMU SUGAR LIMITED

Plaintiff

AND:

W. X. INVESTMENT LIMITED

First Defendant

AND:

RH TRADING LIMITED

Second Defendant

Waigani: Hartshorn J.

2009: 16th March,

: 6th April

TRADE MARKS - Infringement of Trade Mark – Section 53 Trade Marks Act – the mark Fine Sugar and its sugar cane device deceptively similar to the registered trade mark Ramu Sugar and its sugar cane device - Defendants’ sale of Fine Sugar an infringement of Ramu's registered trade – Orders for injunctive relief granted

Cases cited:

Papua New Guinea cases:

Nil

Overseas Cases:

Television Food Network, G. P. v. Food Channel Network Pty Ltd (No. 2) [2009] FCA 271

Counsel:

Mr. R. Diweni, for the Plaintiff

Mr. L. Tabie, for the Second Defendant

6 April, 2009

1. HARTSHORN J: Ramu Sugar Limited (Ramu) has a registered trademark that it uses on its sugar product that is manufactured under the ‘RAMU SUGAR’ label (Ramu Sugar).

2. R. H. Trading Limited (RH Trading) sold a sugar product labeled ‘FINE SUGAR’ (Fine Sugar) which it obtained from W. X. Investment Limited (WX Investment). Ramu contends that Fine Sugar is identical or deceptively similar to Ramu Sugar and breaches the Trade Marks Act. In addition, Ramu contends that RH Trading and WX Investment are passing off Fine Sugar as Ramu Sugar.

3. Ramu commenced this proceeding seeking amongst others, declaratory and injunctive relief. On 19th September 2007, Ramu obtained interlocutory orders against RH Trading and subsequently was given leave to add WX Investment as a defendant. Since being named as a defendant, WX Investment has not entered an appearance in the proceeding although I am satisfied on the evidence that WX Investment has been properly served and was notified that the hearing before me was to take place. The hearing before me proceeded in the absence of representation on behalf of WX Investment.

Trade Marks Act

4. Section 53 Trade Marks Act relevantly provides that a registered trade mark is infringed by a person who:

"…. 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."

5. Section 1(3) Trade Marks Act provides that:

"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."

6. Section 56 Trade Marks Act provides that:

"The relief which a Court may grant in an action or proceeding for infringement of a registered trade mark includes an injunction, subject to such terms (if any) as the Court thinks fit, and, at the option of the plaintiff, either damages or an account of profits."

Deceptively similar

7. The words ‘deceptively similar’ are used in the same context in trade mark legislation in numerous jurisdictions. They have been extensively considered by the Australian Courts. Our Trade Marks Act is based upon trade mark legislation in Australia and Australian Court decisions are persuasive in this jurisdiction.

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.

9. Ramu relies upon amongst others, the affidavit evidence of its sales and marketing manager, Mr. Greg Baker. Mr. Baker deposes amongst others that;

a) Ramu has a registered Trade Mark no. A64,631 which was registered on 28th January 2003. It uses the trade mark on its Ramu Sugar product packaged in poly pack and sold in 500g and 250g packets.

b) the Ramu Sugar product is marketed and sold throughout Papua New Guinea and commands about 97% of the market.

c) Fine Sugar is sold in 500g and 250g packets that are identical to those of Ramu Sugar.

d) the 2 products are very similar in their general packaging and get-up and in his view the Fine Sugar product can easily be confused with the Ramu Sugar product by consumers and the public generally.

e) RH Trading was selling Fine Sugar.

10. I am satisfied from the evidence and from a perusal of the subject products...