The claimant manufactured and sold a ghee product named “Cow Brand Pure Butterfat Ghee” in Trinidad and Tobago, using its registered mark for butterfat ghee, Trade Mark No. B 10668 ‘COW BRAND & DEVICE’. The claimant gained significant goodwill from the sale and advertisement of its butterfat ghee. However, the registration of the claimant’s trademark stated that the trademark would not give the claimant any right to the exclusive use of the words “Cow Brand”. The second defendant manufactured and sold a ghee product named “Pure Cow Brand Butter Ghee” which was distributed by the first defendant in Trinidad and Tobago.
In September 2017, the claimant became aware that the first defendant had put for sale its own ghee product, which bore the claimant’s trademark, and whose packaging so closely resembled the claimant’s packaging that it could be confused with the claimant’s ghee. The second defendant alleged that the first defendant placed a sticker with the word “Milk” over the word “Brand” on the tin of the defendant’s Ghee. The claimant therefore applied to the High Court for the following:
interim injunctions prohibiting the defendants from infringing the claimant’s trademarks and passing off goods as that of the claimant;
an order for the detention, custody or preservation of the infringing goods in accordance with Rule 17.1(1)(c) of the Civil Proceedings Rules 2016; and
a Norwich Pharmacal Order, by which a party or third party could be compelled to disclose information in the matter.
The court examined whether the claimant was entitled to the interim relief sought. Applying the principle laid down in American Cyanamid Co. v Ethicon Ltd. [1975] A.C. 396, Jet Pak Services Ltd. v BWIA International Airport Ltd. (1998) 55 WIR 3 and R v Secretary of State for Transport ex parte Factortame Ltd. and Others (No. 2) (1990) 3 WLR 818, the court found that the claimant should be granted the interim relief sought because:
there was a serious issue to be tried in view of the evidence presented by the claimant at that stage, on the basis of which the court found that the claimant had a high likelihood of success in showing that it had significant goodwill, there was a misrepresentation by the defendants leading to a likelihood of confusion between the two ghee products, and that the claimant suffered damage as a result of that misrepresentation, giving rise to an action in passing off;
that damages paid to the claimant could never be viewed as an adequate remedy in the circumstances, as a continuation of the defendants’ actions could cause irreparable damage to the claimant’s goodwill; and
that justice would be better achieved in granting the interim relief as opposed to refusing it.
Further, on examining the cases of Carillon (Caribbean) Limited v First Citizens Bank Limited CV2011-01424, Bankers Trust Co v Shapira [1980] 1 WLR 1274, Mitsui & Co Limited v Nexen Petroleum UK Limited [2005] 3 All ER 511 and RFU Consolidated Information Services Limited [2012] 1 WLR 3333, the court exercised its discretion to grant a Norwich Pharmacal Order in favor of the claimant as there was a wrongdoing of a tortious or contractual nature which involved the defendants, and information held by the defendants may be relevant and necessary for the protection of the claimant’s interest.
The court therefore granted the claimant the interim relief sought.
Cases referred to:
American Cyanamid Co. v Ethicon Ltd. [1975] A.C. 396
Jet Pak Services Ltd. v BWIA International Airport Ltd. (1998) 55 WIR 3;
R v Secretary of State for Transport ex parte Factortame Ltd. and Others (No. 2) (1990) 3 WLR 818;
Norwich Pharmacal Co. v Customs and Excise Commissioners [1974] AC 133;
Bankers Trust Co v Shapira [1980] 1 WLR 1274;
Mitsui & Co Limited v Nexen Petroleum UK Limited [2005] 3 All ER 511;
RFU Consolidated Information Services Limited [2012] 1 WLR 3333;
Carillon (Caribbean) Limited v First Citizens Bank Limited CV2011-01424
P v T Ltd [1997] 4 All ER 200, [1997] 1 WLR 1309;
Carlton Film Distributors Ltd v VCI Plc [2003] EWHC 616, [2003] FSR 876;
AXA Equity & Law Life Assurance Society plc v National Westminster Bank plc [1998] CLC 1177;
Aoot Kalmneft v Denton Wilde Sapte (a firm) [2002] 1 Lloyd's Rep 417
CHC Software Care Ltd v Hopkins and Wood [1993] FSR 241.
Other authority referred to:
Hollander, Documentary Evidence (8th edn, 2003) p 78, footnote 11