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

• Jurisdiction: Papua New Guinea
• Court: National Court
• Citation: (1997) N1567
• Date: 09 May 1997
• Year: 1997

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

1 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

2 Underlying law—Common law and equity—Passing–off action—Principles considered appropriate and applicable to circumstances of country—Adopted and applied—Constitution Sch2.2

3 Constitution, Sch2.2

4 AG Spaulding & Bros v AW Gamage Ltd (1915) RPC 84, 84 LJ (Ch) 449, Alain Bernadin et Compagnie v Pavilion Properties Limited (The Crazy Horse Case) (1967) RPC 581, Baskin Robbins Ice Cream Co and Another v Gutman and Another [1977] FSR 545, Concrete Engineering and Contracting Company Limited v Hardie Trading Propriety Limited [1928] SASR 132, Erven Warnink BV and Others v J Townend & Sons (Hull) Ltd and Others [1979] 2 All ER 927, Gibson Battle & Co Ltd v James King & Sons [1915] SASR 15, Globelegance BV v Sarkissian (1974) RPC 603, Habib Bank Ltd v Habib Bank AG Zurich [1981] 2 All ER 650, Holman v Johnson (1775) Cowp 343, HP Bulmer Ltd v Bollinger SA [1978] RPC 79, Inland Revenue Commissioner v Muller & Co's Margarine Ltd [1901] AC 217, Panhard v Panhard [1901] 2 Ch 513, Poiret v Jules Poiret Ltd and AF Nash (1920) 37 RPC 177, Reckitt & Colman Products Ltd v Borden Inc and Others [1990] 1 All ER 873, Reddaway v Bonham [1895] All ER Rep 133, Scott v Brown Doering McNab & Co [1892] 2 QB 724, Sheraton Corp of America v Sheraton Motels Ltd [1964] RPC 202, Snell v Unity Finance Ltd [1963] 3 All ER 50, Star Industrial Company Limited v Yap Kwee Kor (trading as New Industrial Company) [1976] FSR 256, Suhner & Co AG v Suhner Ltd (1967) RPC 336, Taittinger and Others v Allbeu Ltd and Others [1994] 4 All ER 75 referred to

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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 their 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 that as 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 a passing–off action. They deny any misrepresentation involved and any likelihood of damages. They say that they are entitled to conduct business in PNG under their corporate name and style and under their two (2) registered business names because they have complied with the relevant laws of PNG as to incorporation and registration. They say the plaintiffs do not have any right to carry on business in PNG because they have failed to comply with relevant laws of PNG requiring registration of foreign companies, registration of business names, etc.

2. Law on passing–off

Before I deal with the issues relating to the pleadings, some objections taken by the defendants taken as to the competency of the proceedings and the evidence, it is necessary to set out the principles relating to the tort. There is no statutory law governing the tort of passing–off. There is also no case precedent on the tort in PNG. Both parties agree that the principles of common law and equity in England as adopted under Sch2.2 of the Constitution should be adopted and applied. As there is general consensus between the parties as to what those principles are, I set out those principles.

Generally speaking, "passing–off" means a misrepresentation made by one trader which is calculated to give that trader the business benefit of another trader's goodwill or reputation. Passing–off is an actionable tort.

The development of this tort in the equity courts of England goes back to the mid 19th century. Although there have been many cases with different pronouncement of the principles, the basic principles developed in the earlier decisions have remained essentially unchanged to this day. I would prefer the description of the action of passing–off given by Buckley LJ in HP Bulmer Ltd v Bollinger SA [1978] RPS 79 at 93–95:

"To succeed on this part of the appeal the respondents must establish that the appellants have committed the tort of passing–off, a form of civil actionable wrong which does not depend upon any legislation but it recognised as an actionable wrong by the general law of the land. A man who engages in commercial activities may acquire a valuable reputation in respect of the goods in which he deals, or of the services which he performs, or of his business as an entity. The law regards such a reputation as an incorporeal piece of property, the integrity of which the owner is entitled to protect. This does not, of course, mean that he is entitled to protection against legitimate competition in the market. If A's goods have acquired a reputation on the market connected with a particular name, mark or get–up, A cannot complain if the value of that reputation is depreciated by B coming on to the market with similar goods which acquire a reputation which owes nothing to the name, mark or get–up associated with A's goods. A can, however, complain if B in the course of his operation uses in connection with his goods the name, mark or get–up associated with A's goods or one so closely resembling it as to be likely to lead to confusion on the market between the goods of A and those of B. By so doing B wrongfully appropriates to himself part of the reputation belonging to A and so infringes the integrity of A's property in that reputation. This proprietary right recognised by the law as to a right in the name, mark or get–up is the badge or vehicle: Singer v Loog ([1880] 18 Ch D 395 at 12), per Lord Justice James; ([1882] 8 App Cas...