In 1954, Walters Trinidad Brewery Co. Ltd submitted an application for the registration of the trademark “Pola Beer” in respect of beers, which was granted. In 1961, the ownership of the mark “Pola Beer” was assigned to Caribbean Development Company Limited, which did not use the assigned mark until December 1993. From December 1993 to June 1994, there was an unusually small production of beer using the mark “Pola Beer”. These beers were distributed throughout Trinidad and Tobago without any promotional advertising campaign.
In 1992, the trademark “Polar”, in respect of beers, was registered in the name of Cerveceria Polar C.A. At that time, there was a “Negative List” prohibiting the importation of foreign beer to Trinidad and Tobago, and there was a high tariff attached to beers produced outside of the Caribbean Community and Common Market (CARICOM), of which Trinidad and Tobago was a part. Representatives of Cerveceria Polar C.A. visited Trinidad and Tobago and held discussions with certain firms there. Also, samples of products from Cerveceria Polar C.A. were sent to potential distributors in Trinidad and Tobago. However, there was no advertisement of the beer produced using the mark “Polar” in Trinidad and Tobago, nor was any dealership established in that territory.
On March 24, 1994, Caribbean Development Company Limited filed an action to have “Polar” struck off the Register of Trade Marks on the grounds that:
(a) the trademark of Cerveceria Polar C.A. was registered without any bona fide intention that it should be used in relation to the goods in respect of which it was registered, and that there had been in fact no bona fide use of the said trademark in relation to the goods by any proprietor thereof for the time being up to the date one month before the date of the application; and
(b) up to the date of one month before the date of the application, a continuous period of five years or longer had lapsed during which time there was no bona fide use in relation to the goods in respect of which the trademark was registered by any proprietor for the time being; and
(c) the trademark “Polar” was entered on the Register without sufficient cause and/or so nearly resembled the trademark of Caribbean Development Company Limited in respect of the same goods or description of goods as to be likely to deceive or cause confusion.
Likewise, on May 17, 1994, Cerveceria Polar C.A. filed an equivalent action against Caribbean Development Company Limited in relation to the mark “Pola Beer”, registered in the name of Caribbean Development Company Limited and excluded the ground identified at (c) above.
In making its decision, the court determined that the issues to be considered were:
(i) whether Cerveceria Polar C.A. registered its mark “Polar” with no bona fide intention of using it;
(ii) whether Caribbean Development Company Limited registered its mark “Pola Beer” with no bona fide intention of using it;
(iii) whether there had been bona fide use of the mark “Pola Beer” in relation to beers by Caribbean Development Company Limited up to one month before the date of the application by Cerveceria Polar C.A.;
(iv) whether there had been bona fide use of the mark “Polar” in relation to beers by Cerveceria Polar C.A. up to one month before the date of the application by Caribbean Development Company Limited; and
(v) whether the “Negative List” made the importation into Trinidad and Tobago of “Polar” beer practically impossible or banned it altogether.
As regards the first issue, the court found that there was an absence of a firm intention on the part of Cerveceria Polar C.A. to use its mark in the immediate future, and that the ignorance of its Export Director concerning the possibility of having “Polar” beers imported under a special license, the removal of the Negative List and the reduction of tariffs on ex-CARICOM beer, suggested a casual approach by Cerveceria Polar C.A. to the use of “Polar” in Trinidad and Tobago at the time of its registration. As a result, the court held that Cerveceria Polar C.A. lacked bona fide intention to use the mark “Polar” in Trinidad and Tobago.
Similarly, in relation to Caribbean Development Company Limited, the court found that there was no bona fide intention on its part to use the mark “Pola Beer” as it had not used the mark from 1961 to 1993, and depressed market conditions presented a challenge for such use only from 1989.
In respect of the third issue mentioned above, the court found that the evidence did not clearly show that the “Polar” samples sent to firms in Trinidad and Tobago were intended for the purpose of introducing the product into the country, and as such, the court held that there had not been a bona fide use of the trade mark “Polar” up to the date one month before the date of the application by Caribbean Development Company Limited.
Moreover, the court found that based on the extent of the sales of “Pola Beer”, which was unusually small, the production and sale of that beer was not a course of trading embarked upon as an end in itself, and further, was not a genuine use of the mark “Pola Beer” but rather a colorable use. As such, the court held that there had not been bona fide use of the mark “Pola Beer” in relation to beers by Caribbean Development Company Limited up to one month before the date of the application by Cerveceria Polar C.A.
Finally, in relation to (v) above, the court distinguished the facts of this matter from those of Aktirbologet Manus v RJ Fullwood and Bland Ltd (1948) 65 RPC 329 and (1949) 66 RPC 71, in which it was considered that war-time legislation and an Import Prohibition Order were special circumstances in trade that made it practically impossible for a Swedish firm to use their British mark for a period of more than five years. The court found that the Negative List did not totally prohibit imports and that the Export Director of Cerveceria Polar C.A. was unaware of the figures involved in the tariff and did not interest himself in finding out. As a result, the court held that Cerveceria Polar C.A.’s non-use of “Polar” in Trinidad and Tobago was not due to special circumstances in trade but to the absence of intention to use the mark.
Accordingly, the court held that both applicants succeeded and ordered both “Polar” and “Pola Beer” to be taken off of the Register of Trade Marks.
Cases referred to:
Re Ducker’s Trademark (1921) 1 CH 113;
Electrolux Ltd. v Electrix Ltd. (1954) RPC 23;
Aktirbologet Manus v RJ Fullwood and Bland Ltd (1948) 65 RPC 329 and (1949) 66 RPC 71.
Other authorities referred to:
Powell’s T.M. 2 Ch 388;
Concord Trade Mark (1987) 13 FSR 209;
Kerly’s Law of Trade Mark and Trade Names;
Kerly’s Law of Trade Mark and Trade Names 10th Ed., at para 11-43
Kerly’s Law of Trademark and Trade Names 12th Ed., paras 2-19
Notes of Official Rulings (1944) 61 R P C 148; and
“Bulova” Trademark 1967