David Orlando Tapper v Heneka Watkis-Porter

• Jurisdiction: Jamaica
• Judge: Phillips JA,Mcdonald-Bishop JA,F Williams JA (AG)
• Judgment Date: 19 February 2016
• Neutral Citation: [2016] JMCA Civ 11
• Date: 19 February 2016
• Court: Court of Appeal (Jamaica)

Bewteen

David Orlando Tapper (Trading as “Fyah Side Jerk and Bar”)

Appellant

and

Heneka Watkis-Porter (Trading as “10 Fyah Side”)

Respondent

[2016] JMCA Civ 11

Before:

The Hon Miss Justice Phillips JA

The Hon Mrs Justice Mcdonald-Bishop JA

The Hon Mr Justice F Williams JA (AG)

JAMAICA

IN THE COURT OF APPEAL

SUPREME COURT CIVIL APPEAL NO 21/2015

Phillips JA

1 This appeal challenged Laing J's refusal to grant an interim injunction restraining Heneka Watkis-Porter (the respondent), trading as “10 Fyah Side”, from, inter alia , passing off “10 Fyah Side”, “Fyah Side” or any other colourable imitation of David Orlando Tapper's (the appellant's) marks: “Fyah Side Jerk and Bar” and “Fyah Side”.

Background

2 The facts outlined herein were gleaned from the affidavits of David Orlando Tapper filed on 7 January 2015 and Raymond McLean and Cecil Dinnall both filed on 23 January 2015, in support of the appellant's application for an interim injunction; the affidavit of Heneka Watkis-Porter filed 20 January 2015 in response; the appellant's particulars of claim filed 7 January 2015; the respondent's defence filed 19 February 2015 and the appellant's reply to the respondent's defence filed 6 March 2015.

3 The appellant is a sole trader who carries on business as “Fyah Side Jerk and Bar” and uses the brands and marks: “Fyah Side Jerk and Bar” and “Fyah Side”. He has been using these brands and marks and has been conducting business as “Fyah Side Jerk and Bar” since 2008. The appellant registered the name “Fyah Side Jerk” as a business name with the Companies Office of Jamaica on 28 January 2009. “Fyah Side Jerk and Bar” is a full service restaurant and bar located at Race Course, Toll Gate in the parish of Clarendon that: (i) sells food such as jerk pork, fish, chicken, sausages and soups; (ii) makes sauces and seasoning used in the preparation of its meals; and (iii) sells the sauces and seasonings it makes as a separate product to its customers.

4 The respondent is the Chief Executive Officer of Patwa Apparel Limited (“Patwa Apparel”) located at Shop #12 Devon House, 26 Hope Road, Kingston 10 in the parish of Saint Andrew. “Patwa Apparel” is a limited liability company incorporated in Jamaica under the Companies Act on 15 September 2011 that designs, markets and distributes clothing. It utilizes Patois as a major part of its business model under two brands: “Patwa Apparel” and “10 Fyah Side”. “10 Fyah Side” was launched as a brand in October2013 under which the respondent sells jellies, jams, sauces, seasoning and condiments. It was submitted for registration with the Jamaica Intellectual Property Office (JIPO) under the Trade Marks Act on 8 October 2013 by the respondent.

5 The appellant became aware of the respondent's use of the mark “10 Fyah Side” through a feature of the launch of her brand in an article in the Jamaica Gleaner dated 4 November 2013. He then visited JIPO to submit an application to register “Fyah Side Jerk and Bar” and “Fyah Side” and upon so doing he learned that there was a pending application to register “10 Fyah Side”, dated 8 October 2013, which prevented him from registering his marks. After seeking and obtaining legal advice, the appellant filed a notice of opposition to the respondent's application for registration on 5 February 2014 at JIPO. Both parties have filed evidence at JIPO in support of their cases, however, up to 19 November 2015 when the matter was last heard before this court, the matter at JIPO was yet to be determined.

6 The appellant alleged that while he was awaiting JIPO's decision, the respondent continued to pass off her mark as his mark by widely advertising and promoting the mark “10 Fyah Side” on Facebook and in the Jamaica Gleaner. The appellant also alleged that the respondent's mark has been causing confusion and deception in the market for three main reasons: (i) the marks “Fyah Side Jerk and Bar” and “Fyah Side” are distinctive and well known and would have been obvious to the respondent; (ii) the respondent's mark is aurally and visually similar to his mark; and (iii) persons have been associating the brand “10 Fyah Side” with “Fyah Side Jerk and Bar”.

7 By reason of the alleged passing off and the respondent's continued use of the mark “10 Fyah Side”, the appellant contended that he suffered and was likely to suffer loss and damage. He therefore filed a claim form and particulars of claim on 7 January 2015, seeking, inter alia : declarations that the respondent was passing off her goods as those of the appellant; an injunction restraining the respondent from passing off goods under the mark “10 Fyah Side” or “Fyah Side” as the goods of the appellant; an order for delivery up or destruction upon oath of all printed or written material in the name “10 Fyah Side”; an inquiry as to damages with interest and costs. The respondent filed a defence to the claim on 19 February 2015 and the appellant filed a reply to the defence on 6 March 2015.

Application for interim injunction heard by Laing J

8 On 7 January 2015, the appellant also filed a notice of application for court orders with supporting affidavit seeking an interim injunction to, inter alia , restrain the respondent from further infringing his common law mark and causing him loss and damage until the determination of the claim. The order he sought was as follows:

• ‘1. An injunction restraining the Defendant whether by herself, her servants, agents or otherwise from using advertising, dealing with, passing off 10 Fyah Side, Fyah Side or any other colourable imitation of the Claimant's mark Fyah Side Jerk and Bar, Fyah Side or otherwise howsoever;’

9 This application for an interim injunction was heard by Laing J on 26 January 2015. The learned judge examined the principles outlined in the oft cited case ofAmerican Cyanamid Co v Ethicon Ltd [1975] AC 396 [1975] AC 396 in order to make a determination as to whether or not to grant an interim injunction. He referred to four main issues: (i) whether there was a serious issue to be tried; (ii) would damages be an adequate remedy; (iii) does the balance of convenience lie in favour of granting the injunction and if the balance of convenience is even, should the status quo be maintained; and (iv) the appellant's delay in filing a claim.

10 In keeping with the dicta enunciated inAmerican Cyanamid Co v Ethicon Ltd the learned judge, in determining whether there were serious questions to be tried, was urged firstly to assess whether the claim was ‘frivolous or vexatious’. Laing J also examined the appellant's claim against the respondent for the tort of passing off within the context of the principles stated in the House of Lords case of Reckitt and Colman Products Ltd v Borden Inc and others [1990] 1 All ER 873 [1990] 1 All ER 873 which summarised the elements to be proved in the tort of passing off. The learned judge stated that in a trial concerning the passing off of one person's goods as those of another, the court must examine a number of serious issues which include: (i) whether the appellant has goodwill; (ii) has there been any misrepresentation to the public; (iii) are the parties in the same market; (iv) what are the distinguishing features of both marks; and (v) has the appellant suffered or is likely to suffer damage to his goodwill. After considering the information before the court, the learned judge found that, there were a number of serious issues to be tried.

11 In deciding whether or not damages would be an adequate remedy, the learned judge applied the principles stated in the Privy Council case ofNational Commercial Bank Jamaica Ltd v Olint Corp Ltd [2009] UKPC 16 [2009] UKPC 16. He found that, on a balance of probabilities, damages would not be an adequate remedy for a number of reasons: (i) the difficulty in assessing any damage to the appellant's goodwill; (ii) doubt as to whether or not the appellant could honour his cross-undertaking as to damages given the stage of development of the respondent's products, the marketing she had done and the publicity she had obtained therefrom; (iii) the difficulty in assessing the respondent's loss of market share, reduction in and slowing growth rate of her business; and (iv) the difficulty in quantifying the respondent's loss of momentum if the injunction was granted and she was removed from the market.

12 The learned judge assessed the balance of convenience by considering the dictum of Lord Hoffmann dealing with this aspect generally as enunciated inNational Commercial Bank Jamaica Ltd v Olint Corp Ltd and with specific reference to passing off, he assessed the balance of convenience in the light of the dictum of Walton J in The Athletes Foot Marketing Associates Inc v Cobra Sports Ltd and Another [1980] RPC 343 [1980] RPC 343. On his assessment of the facts and situations in the instant case, the learned judge indicated that he was unable to conclude that either party had a strong prima facie case. While he acknowledged that there were similarities between the marks “10 Fyah Side” and “Fyah Side” and that both parties were already in the market, he was nonetheless of the view that the appellant would suffer loss if the respondent was not restrained, and the respondent would suffer loss if restrained. As a consequence, in reviewing all these factors, he opined that there was no course that he could take that would lessen the irremediable prejudice to either the appellant or the respondent. He therefore found that the balance of convenience lay in favour of maintaining the status quo, which meant that the respondent would continue to use the mark “10 Fyah Side” in relation to her goods alongside those of the appellant in the market pending trial.

13 The learned judge also considered the issue of delay in deciding whether or not to grant an injunction. He noted that the appellant became aware of the respondent's...