Moke International Ltd v Sanphers Trading & Industry Ltd

• Jurisdiction: Anguilla
• Judge: Sandcroft, M.
• Judgment Date: 20 July 2020
• Judgment citation (vLex): [2020] ECSC J0720-2
• Docket Number: Claim Number: AXAHCV 2020/0023
• Court: High Court (Saint Christopher, Nevis And Anguilla)
• Date: 20 July 2020

[2020] ECSC J0720-2

EASTERN CARIBBEAN SUPREME COURT

IN THE HIGH COURT OF JUSTICE

(CIVIL)

Claim Number: AXAHCV 2020/0023

Between:

Moke International Limited

Claimant/Respondent

and

Sanphers Trading & Industry Limited

Defendant/Applicant

Appearances:

Ms. Tara Carter of Counsel for the Claimant/Respondent

Mr. Thomas Astaphan Queen's Counsel for the Defendant/Applicant, and with him Mrs. Tonae Simpson Whyte

Introduction

1 Sandcroft, M. [Ag.]: Presently serving before this court, under the judicial scalpel, is a critical application for determination, viz the defendant/applicant, Sanphers Trading and Industry Limited, is requesting that the Statement of Case of the claimant be struck out because it discloses no reasonable grounds for bringing the claim (or no cause of action). The claimant/Respondent, Moke International Limited, vociferously maintains that the claim is brought pursuant to Sections 12 and 36 of the Trademarks Act, R.S.A. c. T30, and that there is a viable action for passing off to be tried by this Honourable Court.

2 It was Lord Woolf who pointed out in Kent v Griffith [2001] 1 QB 36 that it is not accurate to say that a court should be reticent about striking out a statement of case that has no real prospect of success when the legal position is clear and when investigation of the facts would be of no assistance. Indeed His Lordship said that the Courts are now being encouraged to take issues that have been or can be identified at an early stage and deal with them so that time and expense can be saved. Active case management is an ongoing process; it does not stop because this or that applications have been made to be determined by the court. It may be that during the application the issues become more sharply defined. The applicable law becomes evident. If that is the case, it makes no sense to say that because there is this particular application then that application alone is an end in itself and the court should not take all opportunity to resolve other issues. Once the parties have the opportunity to make their case then there can be nothing wrong with using case management powers to deal with the case justly and save expense regardless of the application being made.

3 The novel concept of saving expense, conserving resources and achieving expedition is an appealing one, even more so today when trial dates are far away and the cost of going to trial can be significant. In striving to achieve this concept many litigants apply for summary judgment in instances where it appears that the other party has no reasonable prospect of success.

4 The point being made by this Court is that the CPR 2000 is a new procedural code (it is not an updated version of the old) with expanded powers to manage cases in such a manner that cases that should not go to trial are identified and disposed of early. Striking out is not the only way of stopping cases from going forward. The power of active case management exists at all times the case is within the court system. It is time we left behind the notion of trying to fit the old Civil Procedure Code with all its defects into the CPR 2000. New definitely means new and we should not attempt to put old wine into new wineskins.

Background/Chronology

5 The claimant/respondent is an international corporation which operates from Buckinghamshire, United Kingdom, and is the proprietor of a registered trademark in Anguilla with the Trade Mark No. 5268 registered in Class 12 in respect of the word: MOKE (the “Trademark”). MOKE is the mark for a vehicle which was engineered in Britain and which is currently manufactured in France. MOKE vehicles are sold by the claimant/respondent.

6 The claimant/respondent obtained proprietorship in the Trademark on 23rd November 2016. At all material times, the said Trademark has been subsisting in Anguilla.

7 The defendant/respondent is an Anguillian incorporated company that owns and operates several local ventures including a car rental business. The defendant/respondent, in about January 2020 imported into Anguilla three motor vehicles which were manufactured in China and Case Number: AXAHCV2020 /0023 bear the words: MOKE.

8 The Defendant/applicant, SANPHERS TRADING & INDUSTRY LTD. operated, among other things, a car rental business, specifically dealing in up-market vehicles.

9 In the month of January, 2020, the company purchased three electric MOKE vehicles from a company named “ Sixt Car Rental” located in St. Barths, French West Indies. The vehicles arrived in Anguilla on 13 ^th January, 2020. On the front of each vehicle the word “MOKE” was mounted and on the back was the logo “ MOKE OF AMERICA”. Once cleared from Customs, the vehicles were brought to the premises that SANPHERS operated from. They were said to have been purchased for personal use and for rental to individuals in Anguilla.

10 Letters dated the 20 ^th and 29 ^th January, 2020, were received by SANPHERS from Carter & Associates written on behalf of the claimant/respondent. Both letters indicated that the vehicles were not manufactured by the claimant/respondent and that the defendant/applicant ( SANPHERS) did not have permission to use, hire, or otherwise drive any vehicle marked “ MOKE”, which was not manufactured by them.

11 The letters indicated that the trade-mark was protected by registration in Anguilla and that if the defendant/applicant, SANPHERS, failed to submit to the demands of the claimant/respondent legal proceedings would be commenced against it.

12 A response was sent on behalf of the defendant/applicant ( SANPHERS), by way of email, on 3 ^rd February, 2020. Thereafter, a third letter dated 6 ^th February, 2020, was sent by Carters & Associates setting out what is alleged to be an additional infringement of the claimant's/respondent's “intellectual property rights and ownership”, namely the importation of vehicles bearing the word/mark “ MOKE”.

13 A letter dated 12th February, 2020, was sent by J.M. Dyer & Co., on behalf of the defendant/applicant in response to said letter. That as an act of good faith, defendant/applicant withdrew the said vehicles from its rental fleet.

14 On 2 ^nd April, 2020, the claimant/respondent brought a claim against the defendant, pursuant to sections 12 and 36 of the Trademarks Act R.S.A.c T30 of the Laws of Anguilla, alleging infringement of the registered trademark “ MOKE”, confusion or likelihood of confusion and passing off.

15 An Application to Strike out the claimant's claim and for Security of Costs was filed on 17 ^th April, 2020 on behalf of the defendant/applicant.

Defendant's/Applicant's Submissions

16 Mr. Astaphan Q.C. for the defendant/applicant, submitted inter alia that:

• i. The claimant/respondent had no real prospect of succeeding on the claim and that the claim did not disclose any reasonable cause of action.

• ii. The matter in dispute is a matter of law. The claimant could only succeed on the claim if there was a legally binding trademark between the claimant/respondent and the defendant/applicant. The claimant/respondent was seeking to rely on confusion and passing off as the underlying cause of action.

• iii. To find passing off of a trademark this Honourable Court must find that the elements of passing off existed at the material time.

• iv. The claimant/respondent sought to establish the passing off in paragraph 10 of the Particulars of Claim wherein they said that notwithstanding the defendant's/applicant's undertaking to remove the vehicles from hire temporarily, the defendant/applicant subsequently used and placed the vehicles on the market for commercial hire. The vehicles have, from a date unknown, been rented to residents and visitors of Anguilla. While the claimant/respondent is unable to give specific dates of the acts of infringement, the claimant states that by reason of the vehicles bearing the Trademark, being identical to the claimant's/respondent's vehicles and being offered to the public for hire by the defendant/applicant, there is sufficient cause to find infringement of Trademark pursuant to the Trademarks Act, R.S.A. c. T30, and in paragraph 16 where in respect of the claimant/respondent and defendant's/applicant's vehicles being identical and considering that the Anguilla market is small, the continued use and/or hire of the Defendant's vehicles will cause confusion and lead ordinary members of the public to believe that the Claimant's and Defendant's vehicles are the same.

• v. The court should consider that the trademark ‘ MOKE’ is registered, by the claimant/respondent, in respect of Class 12 [Automobiles, Automotive Parts and the like] of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks. Class 12 of the Agreement is limited to the registration of marks on goods/products and does not include services.

• vi. In its pleadings, the claimant/respondent asserted that the defendant/applicant infringed upon its trademark “ MOKE”, by purchasing and placing on the market for commercial hire, in Anguilla, vehicles that bore the mark “ MOKE”, that were identical in design to that of the claimant's/respondent's vehicle; and that it did so without having authorization to ‘use’ said mark on its vehicles.

• vii. That to bolster the claim of Infringement of the trademark “ MOKE”, the claimant/respondent further asserted that one of the defendant's/applicant's principals, Mrs. Sandra Richardson, posted on the 15 ^th of March, 2020, a promotion for their “Electric or EMokie”

• viii. The claimant/respondent, in an attempt to establish there being confusion or the likelihood of confusion in the market, bases its claim on (a) the design of both vehicles being identical; and (b) an allegation that the owner of M Rentals is being asked whether the vehicles that he purchased from the Claimant/Respondent for rental in Anguilla, are the same as the...