Corporate Cabs Limited v Kumar - [2022] NZHC 1088

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2021-404-1547

[2022] NZHC 1088

IN THE MATTER OF Passing off, misleading or deceptive conduct under the Fair Trading Act 1986 and breach of the Trade Marks Act 2002

BETWEEN

CORPORATE CABS LIMITED

Plaintiff

AND

PREM KUMAR

Defendant

Hearing: 23 March 2022

Appearances:

E W Davies for Plaintiff

No appearance for Defendant

Judgment:

17 May 2022

JUDGMENT OF HARVEY J

This judgment was delivered by me on 17 May 2022 at 4.30pm, pursuant to Rule 11.5 of the High Court Rules.

Registrar/Deputy Registrar Date: ………………………….

Solicitors:
Skinners Law, Auckland

CORPORATE CABS LTD v KUMAR [2022] NZHC 1088 [17 May 2022]

Introduction

[1] Corporate Cabs Limited (CCL) provides taxi services throughout New Zealand. Mr Kumar was previously licenced by CCL to operate a taxi using CCL’s name, trademarks and business systems under an Owner Operator Agreement (the Agreement). However, the Agreement came to an end in November 2017. CCL says that since that time Mr Kumar has operated a taxi service under the brand “Business Cabs” or “Business Cab” and using a vehicle and presentation that CCL says is deceptively or confusingly like its own.

[2]The plaintiff, in summary, contended that the defendant had:

(a)breached the Agreement by advertising and marketing its services using the complained of Infringing Brands and Infringing Elements (first cause of action);

(b)used the Infringing Brand, which amounts to misleading and deceptive contact in trade under s 9 of the Fair Trading Act 1986 (second cause of action);

(c)used the Infringing Brand to pass off as the plaintiff’s intellectual property (third cause of action); and

(d)by using a combination of words, stylisation and colours that are like the plaintiff’s trademark, breached the Trade Marks Act 2002 (fourth cause of action).

[3] On 8 October 2021, Davison J issued an interlocutory decision restraining Mr Kumar from using what was defined by CCL as the “Infringing Brands or any similar brands” and “Infringing Elements” in the course of conducting a taxi service business or any similar business, pending determination of the plaintiff’s claims or further order of the Court.1 Davison J noted that Mr Kumar had taken no steps in the

1 Corporate Cabs Limited v Kumar [2021] NZHC 2700.

matter to date and had not appeared at the hearing on 4 October 2021.2 Accordingly, he made orders for service of the judgment and any further documents on Mr Kumar by email and directed that the defendant was to file a statement of defence by 21 October 2021.

[4] Notwithstanding those orders, the defendant took no steps and by minute of 4 November 2021 Wylie J set the matter down for formal proof.3

[5] When the proceeding was called before Harland J on 2 February 2022, as a formal proof hearing, the defendant had still not taken any steps. However, the Judge expressed concern regarding the plaintiff’s claim for a permanent injunction, given that there was no engagement by the defendant…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Corporate Cabs Limited v Kumar

Details

AGLC: Corporate Cabs Limited v Kumar [2022] NZHC 1088
Case: [2022] NZHC 1088
Decision Date: 17 May 2022

CaseChat Overview and Summary

The plaintiff, Corporate Cabs Limited (CCL), sought a permanent injunction against the defendant, Mr Kumar, who had been operating a taxi service under the brand “Business Cabs” or “Business Cab”. CCL contended that Mr Kumar was using a vehicle and presentation that was deceptively or confusingly like its own, following the termination of their Owner Operator Agreement in November 2017. The Court had to decide whether Mr Kumar had breached the Agreement, whether his conduct amounted to misleading or deceptive conduct under the Fair Trading Act 1986, and whether a permanent injunction was appropriate. On the evidence provided, the Court found that Mr Kumar had breached cl 6.9 of the Agreement, which prohibited him from using any intellectual property that was substantially the same as or deceptively or confusingly similar to the plaintiff's intellectual property. The Court also found that Mr Kumar's conduct did not amount to misleading or deceptive conduct under the Fair Trading Act 1986, as there was insufficient evidence to show that potential patrons might reasonably mistake Mr Kumar's “Business Cab” for a Corporate Cab. However, the Court found that a permanent injunction was appropriate, as damages would be an inadequate remedy and the plaintiff was not seeking them. The injunction was necessary to prevent Mr Kumar from acting in such a way as to breach the Agreement in future and to preserve CCL's intellectual property.

The Court granted the application for a permanent injunction against Prem Kumar, restraining him from using the Infringing Brands or any similar brands and the Infringing Elements in the course of conducting a taxi service business or any similar business. Corporate Cabs Limited was also entitled to costs on a 2B basis against Prem Kumar.

Orders