EDITORIAL - Misleading the consumer

The recent criminal conviction of a Bridgetown store-owner for selling knock-offs or unauthorised imitations of the Puma brand might have come as surprise to many, but local law has for long set its face firmly against such conduct, even though its enforcement has not always been through prosecution by the state.

In 1986 in the case Rick’s and Sari Industries Ltd. v Gooding, the claimant company had for ten years been a manufacturer of spices, including curry powder distributed under the trade name, “Sari”. The defendant, who had been formerly associated with the claimant company, then began the marketing of his own brand of curry powder under the name “Sari Madras” with a similar get up and packaging. In upholding the claimant’s action for “passing off”, Williams CJ held that it was immaterial whether or not the defendant intended to pass off his goods as those of the claimant. The question was rather, “whether the ordinary, sensible members of the public would be confused [between the products]. It is not sufficient that the only confusion would be to a very small, unobservant section of society…” Nor can a defendant escape liability by showing that a close inspection of the offending goods would have dispersed any misapprehension that might have arisen initially.

Thereafter, in 1998, mainly in order to comply with its international obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights of the World Trade Organisation, Barbados enacted the Protection against Unfair Competition Act, Cap 239A, which provided at section 3 for civil remedies, including an injunction and damages, for any person who was injured or likely to have been injured by an act of unfair competition; as further defined in section 4 as including “any act or other conduct by a person in the course of industrial or commercial activities that is contrary to honest practices, in particular any act or other conduct (i) that causes or is likely to cause confusion with respect to another person’s enterprise or activities and to the products or services offered by such person…”

Then in 2003, as if to make assurance doubly sure, as part of its consumer reformist agenda, Barbados enacted the Consumer Protection Act, Cap 326D and also established the Fair Trading Commission to regulate the protection of consumers so far as the formation of the contract for the supply of goods was concerned. This Act prohibited a person, in trade or commerce as a supplier, from engaging in false representations in general as to the goods and from conduct that is liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for a purpose, or quantity, of goods.

So that while last week’s conviction might have come as a surprise to the unwitting who might think that the sale of knock-offs harms no one but the consumer himself, this practice is also regarded in law as a form of unfair competition against the entity that owns the goodwill in the authentic original brand.

The accused in the local matter has indicated an intention to appeal the criminal conviction and we can therefore make no further comment on it. However, those who are likely to be considered to be infringing the law in this respect should heed carefully the words of the local attorney representing Puma, that the owners of other internationally recognised brand will be likewise pursuing their rights in the local courts. We must no longer assume that Barbados is too small a jurisdiction for these things to matter to cosmopolitan concerns.

Barbados Advocate

Mailing Address:
Advocate Publishers (2000) Inc
Fontabelle, St. Michael, Barbados

Phone: (246) 467-2000
Fax: (246) 434-2020 / (246) 434-1000