This case concerns three separate applications for an injunction to restrain the defendant from (a) infringing the claimant’s registered trademark, (b) from passing off, (c) from committing acts of unfair competition and for delivery up or destruction of goods and an inquiry into damages. In another matter, H.C.A No. 550 of 2003, the defendant brought a claim against the claimant seeking an order to expunge the claimant’s trademark from the Trademarks Register. The defendant’s claim against the claimant was still pending when the judgment in this matter was issued.
The claimant alleged that between August and October 2002, the defendant changed the imagery on their milk products (Nestle Full Cream Milk, Low Fat Milk with Omega, Svelty skimmed milk and Svelty Calcium Plus skimmed milk powdered) to include a glass with a white splash of liquid as a predominant feature, which is the same or similar to their ‘get-up’, causing confusion. In defense, it was argued that the direction for the package comes from Switzerland with no local input and no room to make modifications.
The defendant further argued that the contested imagery was not unique to the claimant’s goods, being widely used in industry both locally and abroad.
The claimant proposed that the injunction be suspended for a period of six months to allow the defendant time to change their labelling. This, it was argued by the defendant, would result in millions of dollars in loss, as 50% of the plant operations would have to be shut down, resulting in layoffs and local farmers losing business as no milk would be bought for that period of time. The alternative, which was the use of stickers on the existing packaging, was not feasible according to the defendant, as placing stickers would delay their production line and it would take six months to acquire a new design.
The court concluded:
Regarding trademark infringement: No particulars were provided by the claimant of actual infringement of the trademark by the defendant.
Regarding unfair competition/passing-off: Substantial evidence was provided by both parties by way of affidavit and other means. The court was of the view that there was a serious issue to be tried, which is a required element in an application for an interlocutory injunction.
Regarding the balance of justice: The claimant sells only powdered milk, whereas the defendant sells both powdered and liquid milk. There is substantial potential loss not only to the claimant but also to the milk industry, which could suffer millions of dollars in loss as a result of the injunction. Justice lied in refusing the injunction.
The court further found it unlikely that a casual customer would be confused between the two goods; one is liquid milk in tetra packs while the other is powdered milk in pillow packs, with a different design and color scheme. Thus, the court considered that the claimant will have a challenge proving the likelihood of confusion.
Cases referred to:
Schweppes Ltd v Gibbens 22 RPC 601
De Cordova & Ors. V Vick Chemical Co. 1951 68 RPC 103
Taverner Rutledge Ltd. V Specters Ltd. 1959 14 RPC 355
American Cyanamid v Ethicon Ltd. 1975 AC 3&6