On July 6, 1987, the trade mark “Fresdent”, for chewing/bubble gum, was registered in the name of K.C. Confectionery Limited (“K.C.”). This registration was renewed on January 22, 1998. On July 31, 1997, W.M. Wrigley Jr. Company (“Wrigley’s”), which owned the mark “Freedent”, brought an action to have the mark “Fresdent” struck out from the Trinidad and Tobago Register of Trade Marks on the grounds that its entry was made in the Register without sufficient cause and/or that its entry wrongly remained in the Register.
After futile attempts at obtaining security for its costs from Wrigley’s, K.C. applied for a summons and sought an Order from the High Court that Wrigley’s provide security for K.C.’s costs in the matter, on the basis that Wrigley’s was ordinarily out of the jurisdiction.
Wrigley’s argued that K.C. was not entitled to security for costs because Order 23, Rule 1 provided for the court’s discretion to order a plaintiff to give security for costs on the application of a defendant, while K.C. was not a defendant since no relief was sought against it.
In making its determination, the court considered the following issues:
K.C.’s status in the proceedings; and
whether it was, in all the circumstances, just to order security for costs against Wrigley’s, central to which was whether, if K.C. succeeded in resisting Wrigley’s claim to have “Fresdent” struck out from the Trinidad and Tobago Register of Trade Marks, K.C. would be able to recover from Wrigley’s any costs awarded in its favor.
The court considered that K.C. was not only served with the proceedings but agreed to a Consent Order on the first date that the matter was heard, by virtue of which it was implied that K.C. was the ‘Respondent’ opposing Wrigley’s application. The court also found that Wrigley’s sought a relief against K.C., being that K.C. pay the costs of Wrigley’s application. Therefore, applying the principle in Taly NDC v Terra Nova Insurance (1986) 1AER 69C at page 71 that, if a third party is given leave to defend an action alone, they become the defendant in the action, the court held that K.C. was a party to the action in the nature of a defendant, on which basis it was entitled to bring an application for security of costs.
As regards the issue of whether it was, in all the circumstances, just to order security for costs against Wrigley’s, the court considered (i) Supreme Court Practice 1997, 23/1 – 3/3 and Porzelack K G v Porzelack (UK) Ltd, which established that it is ordinarily just to require a foreign plaintiff to give security for costs; (ii) Supreme Court Practice, 1997, 23/1 – 3/4 citing Re Apollinaris Co’s Trade Marks (1891) Ch. Div 1, which established that security will not be required from a person (or a foreign company) permanently residing out of the jurisdiction, if they have substantial property, whether real or personal, within it and (iii) Supreme Court Practice, 1997 23/1 – 3/2 citing Porzelack KG v Porzelack (UK) Ltd, in view of which the court considered the likelihood of Wrigley’s succeeding in its claim.
The court was not persuaded that there was a high likelihood of success of Wrigley’s claim since K.C. had, operating in its favor, a long-standing registered trademark, and the usual factors to be considered when comparing the marks for similarities and differences made it difficult for the court to determine the likelihood of Wrigley’s success at that preliminary stage in the matter.
With respect to Wrigley’s property within the jurisdiction, the court found that Wrigley’s products had enjoyed a significant increase in market sales in Trinidad and Tobago and its annual receivables in that jurisdiction were more than sufficient to cover the likely costs of the action; further, the matter before the court demonstrated Wrigley’s intention to remain in Trinidad. The court also considered that if no security were given by Wrigley’s, K.C. could enforce a judgment for costs in England against Wrigley’s assets held there.
The court therefore held that it was not just in all the circumstances to make an Order for security for costs in favor of K.C..
Cases referred to:
Ebrard v Gassier (1884) 28 Ch. D. 232 at 235
Taly NDC v Terra Nova Insurance (1986) 1AER 69C, 71
Other authorities referred to:
Supreme Court Practice, 1997, 23/1 – 3/4 citing Re Apollinaris Co’s Trade Marks (1891) Ch. Div 1
Supreme Court Practice, 1997 23/1 – 3/2 citing Porzelack KG v Porzelack (UK) Ltd
Kerly’s Law of Trade Marks 11th Ed. Chapter 17.