THE REPUBLIC OF TRINIDAD AND TOBAGO IN THE HIGH COURT...

of 49

THE REPUBLIC OF TRINIDAD AND TOBAGO

IN THE HIGH COURT OF JUSTICE

Claim No. CV2014-02595

IN THE MATTER OF A TRADE MARKS DISPUTE

Between

JAPS FRIED CHICKEN LIMITED Claimant

and

NICHOLAS THOMAS

(Also known as Nicholas ‘Japs’ Thomas) Defendant

and

BHAGWATEE MAHARAJ Third Party

Before the Honourable Madam Justice Margaret Y. Mohammed

Dated the 28th day of July 2016

Appearances:

Mr. Yaseen Ahmed, Mr. Earl John instructed by Ms. Tara Lutchman and Ms. Anuradha Dean

Attorneys-at-Law for the Claimant and the Third Party.

Mr. Anthony Vieira instructed by Ms. Natasha Bisram Attorneys-for-Law for the Defendant.

JUDGMENT

1. What is in a name? It can mean everything. A name is important. There has been a long

association of names in the fast food industry internationally and locally. Patrons have come

to associate a particular kind of food and service when they see the name Wendy’s,

McDonalds or Ali’s Doubles. This matter is about the “Japs” name and it concerns who has

the right to have a trademark associated with the name “Japs” registered by the Registrar of

of 49

the Intellectual Property Office (“Registrar of IPO”). At present there is no registered

trademark in Trinidad and Tobago using the “Japs” name and both the Claimant and the

Defendant claim the right to ownership of the “Japs” name. The Defendant says he is the

original “Japs”. The Third Party says that she has been called and is still called “Madam

Japs” and the Third Party’s son who is in charge of the management of the Claimant’s

company says he has been referred to as “the Japs boy”; “the Japs man” and “Mr. Japs”. It

is from this conundrum the Court is called upon to dissect and determine who has the right

to register a trademark with the “Japs” name.

2. On the 12th February 2010 the Claimant submitted an application for the registration of a

trademark ‘JAPS FRIED CHICKEN….DE BEST TASTE AROUND & DEVICE’ in its

name to the Registrar of IPO (“the Claimant’s trademark application”). The Defendant

opposed the Claimant’s trademark application. On the 1st July 2011 the Defendant submitted

his application to register the trademark “JAPS AND DEVICE” (“the Defendant’s trademark

application”). Both applications were made in the area of restaurant services. Faced with two

applications where the names of the trademark are strikingly similar and after submissions

were filed on behalf of both parties, the Registrar of IPO decided to stay both applications

until the right to the trademark had been determined by the Court. It was as a result of the

Registrar’s decision the Claimant instituted the instant action seeking the following orders:

i. A declaration that the Claimant is the sole proprietor of the trade mark ‘JAPS

FRIED CHICKEN …. DE BEST TASTE AROUND! & DEVICE’.

ii. A declaration that the Defendant is not entitled to the use of the trade mark ‘JAPS

FRIED CHICKEN’ or ‘JAPS FAST FOOD’ or ‘JAPS’.

iii. An order directing the Registrar of IPO to grant the Claimant’s trade mark

application and to refuse to the Defendant’s trademark application.

of 49

The Claimant’s case

3. The Claimant averred that in the 1970’s the Defendant began a common law relationship

with the Third Party who was one of the founding members and a director of the Claimant’s

company. The relationship produced two children namely Alvin Thomas who was born on

the 4th January 1987 (“Alvin”) and Kevin Thomas who was born three years afterwards in

February 1990 (“Kevin”). In the late 1970’s the Third Party and the Defendant started a

business named “First Court Snack Box” out of rental premises situated on the Eastern Main

Road in Sangre Grande (“First Court”). In December 1983 the Third Party and the Defendant

constructed a new building situated at the Corner of Foster Road and Brierly Street, Sangre

Grande (“the Foster Rd property”). The building was completed in April 1984 and both the

Defendant and the Third Party opened a fast food business at the Foster Rd property in 1984

which they agreed to call “ Japs Restaurant and Bar” (“the business”). At the business they

sold chicken and chips, roti and other types of food and liquor.

4. In or about 1988/1989 the Defendant separated from the Third Party and he moved out of

the Sangre Grande area leaving the Third Party to operate the business on her own including

the responsibilities for all debts and liabilities with the implied understanding that it was the

Third Party’s. Sometime after 1989 the business which was operated totally by the Third

Party overtime changed its name to “Happy Hour Recreation Club”, “Bhago’s Kitchen”,

“Sky Scraper Recreation Club” and finally to “ Japs Fried Chicken”. In the late 1990s the

Third Party and one of her sons Darryl Mahabir operated the business with the name “Japs

Restaurant and Bar” at the Foster Rd property. During that time only the Third Party and

Darryl Mahabir promoted the business known as “ Japs Restaurant and Bar” using various

media namely by painting it at the front entrance of the business; by advertising it by flyers;

by hiring vehicles with sound systems/ microphones to advertise the business and by placing

advertisements on the radio. There was no input or assistance from the Defendant either

financially or otherwise and there was no objection by him of the promotion of the business

Japs Restaurant and Bar by the Third Party and Darryl Mahabir.

5. In 2005/2006 the business name was changed to “JAPS FRIED CHICKEN” and it operated

out of the Foster Rd property. It was operated exclusively by the Third Party and Darryl

of 49

Mahabir. In 2006 the Third Party and Mr. Darryl Mahabir started to expand the business by

opening a second outlet under the name “JAPS FRIED CHICKEN” at Andre Street, Sangre

Grande (“the Andre St property”). After the opening of the second outlet at the Andre St

property the Third Party and Darryl Mahabir spent money promoting the name “JAPS

FRIED CHICKEN” by placing new signage with the name at the front entrance of both the

Foster Rd property and the Andre St property; by having food boxes and take away bags

printed with the name “ Japs Fried Chicken”; by increasing advertisements on the radio of

the business “Japs Fried Chicken”; by increasing distribution of flyers promoting “Japs Fried

Chicken”; by hiring vehicles with sound systems/ microphones advertising the business

under the name “ Japs Fried Chicken”; by printing T shirts with the name “Japs Fried

Chicken” for the employees and promotional giveaways; and by the sponsorship of steelband

sides, windball cricket tournaments and football teams.

6. In 2006 in high court action CV 2006-01222 the Third Party and the Defendant instituted

proceedings against Winston Cooper over ownership of the Foster Rd property (“the 2006

matter”). On the 13th November 2008, in the 2006 matter the Honourable Madame Justice

Gobin ordered that the Third Party had acquired a title to the Foster Road property and that

Winston Cooper’s title had been extinguished.

7. The Third Party has continued to operate the business known as “Japs Fried Chicken” after

incorporating the Claimant in 2007 with her son Darryl Mahabir and during this time they

have established ten (10) branches in other locations in Trinidad.

8. The Claimant also averred that: the Defendant was not in use of a trademark or trade name

similar to or identical to the one applied for in the Claimant’s trademark application; at no

time prior to the Claimant’s trademark application or at present a common law mark called

“Japs Fried Chicken” or “Japs” was generated and/or used and/or owned by the Defendant;

even if (which is denied) there was any such common law mark being used by the Defendant,

the trademark being applied for by the Claimant was not similar to and/or was not identical

to and/or did not cover the same or similar goods and services as the one allegedly used by

the Defendant; the Defendant did not have a nick name “Jap” or “Japs” and in any event the

alleged nickname had no bearing on the creation of the trade name “Japs”; the registration

of 49

of the Claimant’s application would not cause deception or confusion in the mind of the

public/consumers; the Defendant had abandoned the original fast food business in 1988/1989

leaving the Third Party to operate it as her own and totally on her own; and there was no

agreement or understanding that the Defendant left the business ‘Japs Fast Food’ to the Third

Party for the benefit of Alvin and Kevin when they reach the age of maturity. If such an

agreement existed (which is denied) the limitation period to bring an action based on any

alleged agreement between the Defendant and the Third Party has expired and/or

alternatively the alleged agreement did not have the elements of a contract in law.

The Defendant’s case

9. The Defendant’s position is that he is the “Japs” referred to in the Claimant’s trademark

application and the Defendant’s trademark application. He is 67 years old and he has always

been known as and referred to by the nickname “Japs” since he was 7 years old because of

his markedly Asian features. By deed poll in 2013 he formally adopted the nickname to be

included as part of his official name. He is a well -known and popular business man in the

East-West corridor more particularly the Sangre Grande area and his name has long been

associated with fried chicken in the fast food business in that area.

10. The Defendant pleaded that he is the original and sole founder of the business which is

currently run by the Claimant. In 1979 he first started running the business at Toco Road

Sangre Grande using a secret recipe which his mother had given him and which he further

developed and enhanced over time. Whilst that operation was originally called “First Court

Snack Box” the name eventually changed to Japs Fast Food because that was how everyone

colloquially referred to it. During the period 1982 to 1983 he alone constructed and opened

the fast food outlet at the Foster Rd property known as “Japs Fast Food”.

11. In 1986 the Defendant met the Third Party. At that time the Third Party was employed as an

insurance agent with British-American Insurance (“BA”) and she frequently visited Japs Fast

Food outlet as a customer. When the Defendant and the Third Party met, the latter already

had three children from a previous relationship namely, Darryl Mahabir. Larry Mahabir and

Cindy Mahabir. The common law relationship between the Defendant and the Third Party

of 49

bore two sons, Alvin and Kevin. It was during the time that the Defendant and the Third

Party were living together the latter got involved in the business and worked alongside him

in it.

12. In 1989 whilst the Third Party was pregnant with Kevin the common law relationship

between the Defendant and the Third Party ended. The Defendant averred that he always

made it clear to the Third Party during the relationship, when separating and after they

separated that she could stay at the Foster Rd property and continue to operate the business

with the understanding that ownership and control of it would be handed over to their two

sons Alvin and Kevin jointly when Kevin reached 18 years of age (“the trust”).

13. The Defendant pleaded that the reasons he objected to the Claimant’s trademark application

was because he is the sole proprietor of the “Japs” brand and he is entitled to oppose any use

without his consent. He said that the Claimant’s trademark application is an attempt by the

Third Party and her son Darryl Mahabir to steal the Defendant’s name, reputation and

association with the business and to use it for their personal advantage. In his view this a

breach of trust and of the agreement which he had with the Third Party. He denied that he

abandoned his claims to the common law “Japs” mark and that his title has been extinguished

since he only allowed the Claimant and the Third Party to use his name in relation to the

business for the benefit of Alvin and Kevin which was the common intention behind the

trust. The Defendant averred that he has never transferred or assigned his name or the

goodwill and reputation associated with the business, to the Claimant and/or the Third Party.

14. The Defendant admitted that he acquiesced in the 2006 matter to have the order for

ownership to be in the Third Party’s name since he understood that the Foster Rd property

and the business would eventually be transferred to Alvin and Kevin. It was his position that

it was an implied term of the trust that the Third Party would run the business with reasonable

care and skill. If she did so by expanding the business then it was consistent with the trust.

Kevin is 18 years of age and the Defendant required the Third Party to fulfill her obligations

under the trust by transferring ownership and control of the business to Alvin and Kevin in

such shares as the Court deems fit or for the Court to direct that Alvin and Kevin get majority

of 49

control of the Claimant or for Alvin and Kevin to get a fair market value for their shares or

entitlement with respect to their interest in the business.

15. Based on the Defendant’s pleading he counterclaimed for the following reliefs:

i. A ruling that this action should be dealt with as a reference to the Court for the

determination of rights under section 14(3) rather than as an appeal under section

22(1) of the Trade Marks Act1.

ii. An order that the Claimant’s trade mark application be denied, and that the

Defendant’s trademark application be granted.

iii. To the extent that this is a reference to the Court under section14 (3) of the Trade

Marks Act for a determination of rights where there are competing applications in

respect of identical trademarks and virtually the same goods and services, the

Defendant also sought the following declarations:

a. A declaration that the Defendant’s name ‘Japs’ is an asset of the business

held by the Third Party under the trust and/ or by agreement for the benefit

of their sons Alvin and Kevin .

b. A declaration that at all material times the Defendant allowed the Claimant

company and or the business to use his name for the benefit of Alvin and

Kevin, and that such permission, authorisation or license was never revoked

or withdrawn.

c. A declaration that the Defendant’s claim to a common law mark or any

similar mark was never abandoned or extinguished.

1 Chapter 82:81

of 49

d. A declaration that the Defendant, as originator of the “Japs” Brand, is its

sole proprietor and has exclusive rights to it.

iv. An Order that the trust affecting the business be carried into execution by the Court,

and for all necessary accounts and inquiries.

16. Based on the pleadings, the Claimant, the Defendant and Third Party claim the common law

mark of the “Japs” brand. The Defendant’s position is he has first priority to the “Japs”

name and he has no objection if the consuming public continues to believe that the

Claimant’s goods and services relate to him once his sons, Alvin and Kevin are allowed their

fair share and involvement in the business. Therefore he allowed the use of his name “Japs”

for the benefit of the business on the understanding and agreement that it or a fair share

would one day belong to his sons. As far as the Defendant is concerned the bone of

contention is the misappropriation of his name and goodwill.

17. At the case management conference the Court summarized the broad issues which arise from

the pleadings as:

(a) Who was the owner and /or user of the “Japs” brand/name in the fast food

business in the late 1970s to the early 1980s?

(b) What became of the Defendant’s interest in the business after 1989?

(c) Did the Third Party and later Darryl Mahabir and the Third Party from 1990 to

2007 acquire a separate goodwill apart from any association with the original

business or the business in 1989?

(d) Did the Claimant acquire a separate goodwill apart from any association with

the original business or the business in 1989?

(e) Does the issue of an estoppel/res judicata arise regarding the Foster Rd

property?

(f) Is the Claimant entitled to register the trademark it applied for?

18. I did not treat with the matter as an appeal of the decision of the Registrar of IPO under the

Trademarks Act since his decision was simply to stay both applications until the Court

determines which party has the right to the “Japs” trademark. In my view there was no

of 49

decision from the Registrar to appeal and there were broader issues which arose from the

pleadings which ultimately impacted on the determination of which party has the right to the

“Japs” brand and to register the said trademark.

19. While there were two different versions of the historical relationship by the main witnesses,

the Defendant and the Third Party, it was clear that their personal relationship was intricately

intertwined with the operation of the business. At the trial the Third Party, Darryl Mahabir

and Thomas Hoyte gave evidence on behalf of the Claimant and the Third Party. The

Claimant also relied on a witness statement of James Curtis McKenzie which was tendered

into evidence through a hearsay notice since he was deceased. The Defendant gave evidence

on his own behalf. He also called his siblings, Phyllis Thomas, Morris Paul Thomas,

Theodore Thomas, and one of his former employees Eustacia Noel. All the witnesses save

and except James Mc Kenzie were cross examined at the trial and the Court was unwilling

to attach any weight to his untested evidence. Given that most of the witnesses were family

members of the respective parties it was not surprising to the Court that they all sought to

give evidence which supported the party on whose behalf they were called.

20. In this matter there were questions of facts to be decided from conflicting evidence. In

determining the version of the events which is more likely to be accepted in light of the

evidence the Court is obliged to check the impression of the evidence of the witnesses against

the: (1) contemporaneous documents; (2) the pleaded case: and (3) the inherent probability

or improbability of the rival contentions. (Horace Reid v Dowling Charles and Percival

Bain2 cited by Rajnauth –Lee J (as she then was) in Mc Claren v Daniel Dickey3).

21. In The Attorney General of Trinidad and Tobago v Anino Garcia4 the Court of Appeal

stated that the initial onus of proof is on the Claimant to prove his version of the events as

pleaded in the Statement of Case and his deviation from the pleaded case immediately calls

his credibility into question. Lord Bingham in Business of Judging Selected Essays and

2 Privy Council Appeal No. 36 of 1897 3 CV 2006-01661 4 Civ Appeal No. 86 of 2011 at para 31

of 49

Speeches 2005 at page 6 stated the main tests needed to determine whether a witness is lying

or not are, although their relative importance will vary widely from case to case are:

i. the consistency with the witness evidence with what is agreed, or clearly shown by

other evidence , to have occurred;

ii. the internal consistency of the witness’ evidence;

iii. consistency with what the witness has said or deposed on other occasions;

iv. the credit of the witness in relation to matters not germane to the litigation

v. the demeanour of the witness.”

22. After hearing the evidence from the two main witnesses in this matter, the Third Party and

the Defendant I was not convinced that they were entirely truthful with the Court in this

matter. I struggled to accept several aspects of the truthfulness of their evidence since I was

mindful that while they were now on opposing sides in this matter, not too long ago in the

2006 matter they happily joined forces to defeat a claim by a Third Party. In the 2006 matter,

they both gave similar evidence concerning the history of the business which they were

contradicting in this matter which I will go into greater detail later in this judgment. In such

circumstances, I was left to ponder whether they were both changing their evidence in this

matter to serve their own interest just as they did in the 2006 matter.

Who was the owner and /or user of the “Japs” brand/name in the fast food business in

the late 1970s to early 1980s?

of 49

23. Lord McNaughton in Inland Revenue Commissioners v Muller and Company

Margarine Limited5 described the concept of “goodwill” as:

“What is goodwill? It is a very easy thing to describe, very difficult to define. It is the

benefit and advantage of the good name, reputation and connection of a business. It is

the attractive force which brings in custom. It is the one thing which distinguishes an

old establish business from a new business from its first start. The goodwill of a

business must emanate from a particular center or source. However widely extended or

diffused its influence may be, goodwill is nothing unless it had power of attraction

sufficient to bring customers home to the source from which it emanates.”

24. It was common ground that there was a “Japs” brand associated with the business in the late

1970s and early 1980s and that the Claimant was only incorporated in 2007. Therefore in

my view any goodwill associated with the “Japs” brand in the late 1970s to early 1980s could

not have been as a result of the Claimant.

25. The Claimant and the Third Party contended that during the late 1970s and early 1980s the

“Japs” brand was associated with both the Third Party and the Defendant. The Defendant

argued otherwise. His position was that he was the originator of the “Japs” brand and

therefore he is the sole proprietor who has exclusive rights to it. He argued that the fried

chicken fast food business which he started in the late 1970s was already popularly called

“Japs” when he met the Third Party in 1986. Therefore the “Japs” brand was already

associated with the fried chicken fast food business which he operated alone when he met

the Third Party.

26. Having examined the evidence I have concluded that the “Japs” name originated with the

Defendant. Its association with the fast food business in the late 1970s and early 1980s was

due to his involvement in the original business. However, during this period the business

was owned jointly by both the Defendant and the Third Party. As such while the Defendant

5 (1901) AC 217

of 49

may have been the originator, in the late 1970s to the early 1980s the goodwill associated

with the “Japs” brand in the fast food business became an asset of the business which was

owned by both the Defendant and the Third Party. I have arrived at this conclusion for the

following reasons.

27. The Third Party’s evidence was that the name “Japs” became associated with the business

because of the Defendant and that she was called “Madam Japs” because of her association

with the Defendant. This was also the Defendant’s evidence. Therefore, there is no dispute

that the “Japs” brand originated with the Defendant and it became associated with the

original business because of his involvement in it. This appears to be consistent with the

Defendant’s assertion that the “Japs” brand was an asset of the original business. Therefore,

in the late 1970s to early 1980s the owner or user of the “Japs” brand meaning the goodwill

associated with the fried chicken fast food business in the Sangre Grande area was the

original business. The question is who owned the original business during that period.

28. There were four reasons, I found that the Third Party’s evidence that the original business

was owned jointly with the Defendant more credible than the Defendant’s evidence that he

was the sole proprietor. Firstly, the Third Party’s evidence on the issue of joint ownership of

the business was consistent with her pleaded case. According to the Third Party she had three

children with her then common law husband Junior Mahabir in the 1970s namely Darryl

Mahabir, Larry Mahabir and Cindy Mahabir who were born in 1973, 1976 and 1979

respectively. In the 1970’s the Third Party and the Defendant were friends and it was during

this time the Defendant introduced her to Dolly Prieto. During that time she was also

working as an insurance agent with BA where she received a good income and where she

continued working until 1986-1987. Her common law relationship with Junior Mahabir

ended shortly after Cindy Mahabir was born in 1979 and she started a discreet romantic

relationship with the Defendant in late 1979 and in 1983 they started a common law

relationship which ended in late 1989 when she was 3 months pregnant with their son Kevin.

29. The Third Party said that she and the Defendant started “First Court” in the late 1970s. While

she admitted that she never worked at “First Court” since she was working at BA she said

of 49

she contributed financially since she and the Defendant were friends and he asked her to

assist him financially although they were not romantically involved. Therefore, she paid the

rent of $500.00, both of them spent money on furnishing First Court and she paid an

additional $500.00 towards running First Court and the Defendant paid the workers.

According to her First Court sold Chinese food, Creole food, roti, and fried chicken and

chips. The type of food they sold depended on the cooking ability and taste of the cooks.

They did not have any special hiring process and they paid an average of $150.00 to $200.00

per week to each employee. When presented with a photograph which had a sign “Japs Fast

Food” she identified the sign as that which was erected at the Foster Rd property in 1984.

She insisted that the Foster Rd property was constructed in 1983 to 1984 and not 1982 to

1983 and she was steadfast in her position that when the construction was ongoing she was

already in a relationship with the Defendant. While she agreed that she did not present

invoices for construction of the property in 1982, 1983 and 1984 she denied that the reason

was because she was not involved with the Defendant at that time.

30. To the Third Party’s credit she acknowledged that while the business was at First Court the

Defendant’s mother seasoned the chicken at her home but this practice changed when the

business moved to Foster Rd. Given that the Third Party was not involved in the preparation

of the chicken and the day to day operation of the business at First Court, it was entirely

possible that she would not have been aware of any special secret recipe used to season the

chicken while the business was at First Court.

31. Secondly, the Third Party’s evidence on the ownership of the business was consistent with

her evidence in the 2006 matter. In her witness statement filed in the 2006 matter the Third

Party stated the following at paragraphs 10, 20, 21 and 22 and 38:

“10. A fast food business had been started in about the late 1970s between

Nicholas Thomas and myself. This business “First Court” was at that time

operating out of rented premises on the Eastern Main Road, Sangre Grande.

20. In about June, 1984, the Defendant and I opened the new fast food outlet

and bar at the Foster St property. The business at that time was called “Japs

Restaurant and Bar”. We sold chicken and chips, roti and other types of

of 49

food as well as liquor. Again we depended on the skill and taste of our cooks.

We also sold alcohol. We had no special hiring process. We had roughly 6

or 7 employees. The average salary for our workers was about $200.00 to

$250.00 per week.

21. There was a shift system in the business. We had employees who worked 3

shifts 8:00am to 4:00pm, 4:00pm to 12:00am and 12:00am to 8:00am.

During the day shift we had 2 cooks, 1 server and 1 casher working. During

the evening shift we had 1 cook and 1 cashier working. During the shift after

12:00am we had one employee work that shift. Mainly alcohol and fried

chicken would be sold during the afternoon and night shifts. This shift

system continued up until the business became Japs Fried Chicken.

22. After Dolly Prieto had asked Nicholas Thomas to demolish the old

dilapidated house, he along with a few workers began breaking down the

same. It was an old wooden structure on pillars. It had broken window and

rusted old galvanize, the wood was severely rotted. The demolition process

took a few days in about November 1983 and the old material was removed

from the site.

23. At this time in 1984 I still worked as an insurance agent with British

American Insurance Company Limited. However, I took a more active role

in this business. Given that I had more flexibility with my job and as a

travelling insurance agent, I would pass in and out of the business to oversee

on my way to and from my insurance clients. Customers who knew of my

relationship with the Defendant would refer to me as “Madame Japs”…..

38. In about June, 1984, Nicholas Thomas and I opened the new fast food outlet

and bar on the said portion of land. The business at that time was called Japs

Restaurant and Bar. We sold chicken and chips, roti and other types of food

of 49

as well as liquor. The business was very successful after it was opened. Also

Dolly Prieto was very supportive of our business.”

32. Therefore, the Third Party’s witness statement in the 2006 matter confirmed that she and the

Defendant started the business in the 1970s; that the preparation of the Foster Rd property

for construction stated in late 1983 and both she and the Defendant opened the business at

the Foster Rd property in June 1984 which was consistent with her pleading and evidence in

this matter.

33. Thirdly, the Defendant’s evidence in the 2006 matter was consistent with the Third Party’s

evidence that they owned the business jointly during the late 1970s to early 1980s. In his

witness statement filed in the 2006 matter the Defendant stated that he and the Third Party

started the business “First Court” in the 1970s; they started the demolition process at the

Foster Rd property in preparation for the construction of the business at that location in late

1983; the Third Party would pass by during this process; in December 1983 the new building

at the Foster Rd property started and it was completed in April 1984 and they opened it for

business in June 1984.

34. Fourthly, the Defendant’s evidence on the ownership of the business during the period of

late 1970s to early 1980s in this matter was inconsistent with his evidence in his witness

statement in the 2006 matter. In this matter according to the Defendant, he visited Panama

in 1979 where he got the idea to open a fried chicken and chips outlet and when he returned

he opened “First Court” which was popularly referred to as “Japs”. At First Court all

different types of food were sold such as sandwiches, creole food and fried chicken and chips

but the latter was the main dish. The Defendant stated that he purchased the ingredients for

the seasoning of the chicken in the market for his mother, Irene Thomas, who together with

his sisters, prepared and seasoned the chicken at his mother’s house using the mother’s

special recipe. His mother seasoned the chicken overnight and only his sisters and some

workers were trained by his mother in the preparation of the chicken. The Defendant also

purchased biscuits by the bag from Bermudez which was used to make the crust of the fried

of 49

chicken sold at First Court. This evidence was confirmed by his siblings Theodore Thomas,

Morris Thomas and his sister Phyllis Thomas.

35. The Defendant consistently denied throughout his evidence that he met the Third Party

before 1986. He even cynically suggested to the Court that if he had known her in the late

1970s to early 1980s then the father to her children would not have been Junior Mahabir.

He also stated that after about 7-8 months of operation of First Court, he approached his aunt

Dolly Prieto to relocate the business to the Foster Rd property. By that time the business

was called Japs Fast Food which later morphed into Japs Fried Chicken since fried chicken

and chips was the best seller. He constructed the new building at the Foster Rd property in

1982- 1983 and he presented a picture which he said was taken in 1983 at the front of the

Foster Rd property which was a picture of a sign outside the business with “ Japs Fast

Food”. According to the Defendant he and the Third Party started living together soon after

meeting and shortly after the Third Party left her job as an insurance agent and she joined

him working full time in the business at which time people called the Third Party “Madam

Japs”.

36. However, during cross-examination, the Defendant admitted that his witnesses statement in

the 2006 matter was to support the Third Party in their joint claim for the Foster Rd property

but he was adamant that he did not know the Third Party in the 1970’s and that she was not

around when the Foster Rd property was constructed which he acknowledged contradicted

the information in his witness statement in the 2006 matter. There were three material

inconsistencies in the Defendant’s witness statement in the 2006 matter from his evidence

in the instant matter namely:

In the present witness statement the Defendant stated he alone founded the business

First Court in 1979. In his witness statement in the 2006 matter he said in the early

1970’s both he and the Third Party opened the fast food outlet called First Court.

His evidence in this matter was he alone broke down the old structure and rebuilt

the building at the Foster Rd property. In his witness statement in the 2006 matter

he said both he and the Third Party joined together to construct the same building

in 1983/1984.

of 49

His evidence in this matter was met he the Third Party in 1986 and he never knew

her before. This is totally opposite to his witness statement in the 2006 matter where

he stated they started First Court in the 1970s.

37. The Defendant’s explanation for the inconsistencies between his evidence in this matter and

his witness statement in the 2006 matter was he was tricked by the Third Party’s attorney at

law in the 2006 matter to sign such a statement. At paragraphs 19 of his witness statement

in this matter he set out his reasons for the inconsistencies and the stated:

“19. I turn now to certain witness statements made by Bhagwatee and me in High Court

Action CV2006-01222, a claim brought by us against Winston Cooper. There is

now shown to me marked ‘Japs 6’ true copies of the two witness statements both

of which were filed on 25 September 2008 in those proceedings. I regret to say

that I allowed myself to be used in a deception to the Court when I signed that

statement. I am very sorry about what was done. I should have paid greater

attention to the document that was given by Bhagwatee’s lawyer before I signed

it. I went along with them in good faith and signed that witness statement because

I wanted to help her and I trusted that she and those advising her would do what

was right for the boys’ sake. I realise and admit now that while some aspects of

the witness statements are true; some aspects are only partially true; and some

aspects are lies.

20. It is true that I was close to my aunt Tanty Dolly who died in 2005; that Tanty

Dolly was Alvin’s god-mother; that Tanty Dolly gave me permission to tear down

and rebuild her property at the corner of Brierly Street and Foster Road for the

purpose of relocating my fast food business; and that demolition and

reconstruction of Tanty Dolly’s property took place in 1982 and 1983.

21. It is partly true that Bhagwatee developed a close relationship with Tanty Dolly,

but this occurred after 1986 not in the 1970s; and it is partly true that Bhagwatee

discussed renovation plans in respect of the property with Tanty Dolly and that

she did certain extensions and repairs to the property, but this occurred in 1993

of 49

(Bhagwatee was not involved in demolition of the old building and its

reconstruction in 1982 and 1983).

22. It is not true that Bhagwatee and I started our relationship in the 1970s; or that she

and I together started the fast food restaurant in Sangre Grande; or that she and I

discussed conversion of the property at Brierly Street and Foster Road with Tanty

Dolly; or that she was present during the demolition and construction process in

1982 and 1983; or that she and I opened the outlet at Brierly Street and Foster Rd

in June 1984, I solely opened that establishment in 1983. Bhagwatee was nowhere

around at any of these times.

23. I should have insisted on the full truth being told and I should have objected to facts

in my witness statement as was done; but I did not have independent legal advice

and I was under real stress at that time. Further, and in any event, those proceedings

were taking place at a time when I had left Bhagwatee completely in charge of the

business, so I let her and her lawyer call the shots. I was also mindful that

Bhagwatee had in fact later developed a close relationship with Tanty Dolly; she

had in fact spent money assisting Tanty Dolly with her needs, for which Tanty

Dolly was grateful; she had in fact spent money carrying out certain extensions to

the property; and, at the end of the day, it was true to say that Tanty Dolly wanted

the property to remain in our family. In the circumstances, I did as Bhagwatee’s

lawyer provided because I felt Bhagwatee should be able to stay in the premises

which, we had agreed, would pass on to our two sons. This also explains why I did

not ask for the property to be put in our names jointly and why I raised no objection

when the Court made an Order declaring her to be owner of the property. There is

not shown to me marked ‘Japs 7’ true copies of the Order and Judgment of Madam

Justice Gobin both dated 13 November 2008 in those proceedings. Bhagwatee can

boast that she outsmarted me, but my intention was always to help her and our

children.”

of 49

38. The Defendant’s evidence in this matter is that he deliberately misled the Court in the 2006

matter by giving some untrue statements in his witness statement. In my view this position

adopted by the Defendant in the instant matter appears to be self-serving and convenient to

him since he was prepared to allow certain untruths in the 2006 matter to assist him and the

Third Party which caused them to eventually be successful in their claim but some seven (7)

years afterwards he was making an about turn changing his story on certain material facts

since it was not in his interest. I am not prepared to accept the reasons set out by the

Defendant for this about turn since I was not convinced that he was not doing the same thing

in this matter. In this regard, I do not accept the Defendant’s explanation which he said

caused him to deliberately mislead the Court. In my view he has conveniently chose to point

out the aspects of the evidence in the 2006 matter which are untrue since it now does not

support his claim in this matter. If the Defendant felt as strongly as he did after the order of

Gobin J he could have taken steps to have it set aside since there was nothing stopping him

from doing what he now says was “the right thing”. However he did not. His evidence in the

2006 matter was earlier in time than the evidence on this issue in this matter, therefore I

accept that his evidence in the 2006 matter is the more credible evidence on this issue.

39. However while I was not prepared to accept the Defendant’s evidence on this issue I could

not totally disregard all his evidence since as I said previously the Third Party’s evidence

was also discredited on other issues.

What became of the Defendant’s interest in the business after 1989?

40. It was not in dispute that the Defendant and the Third Party were not on happy terms when

they separated in 1989. The Defendant’s position is that the goodwill associated with the

“Japs” brand is an asset of the business and that he had an understanding and an agreement

with the Third Party that when they separated he left his interest in the business (which

included his goodwill associated with the “Japs” brand) in her care for the benefit of his sons

Alvin and Kevin since it was his intention that the Third Party would hand over the said

interest to Alvin and Kevin when they came of age. In this regard it was argued on his behalf

that a trust came into existence when the Third Party allowed the Defendant to believe, by

of 49

not doing anything to the contrary, that she would hold the business for an on behalf of

Alvin and Kevin.

41. The Third Party has denied the existence of any trust. She contended that even if there was

a trust, it is not sustainable in law and that the limitation period for pursing an action in trust

has expired. Her position was that after she and the Defendant separated in 1989 the

Defendant abandoned his interest in the business and to the name “Japs”. Further even if the

Defendant had acquired a name or the use of a mark at common law, the evidence was that

there was no activity by the Defendant since 1991 to present in a similar trade and therefore

the Defendant ceased to have an intention to deal with the goods for which he claims the

mark which would entail abandonment of the mark so far as goods are concerned. The Third

Party also argued that the Defendant could not sue on the trust since the beneficiaries are not

a party to the proceedings

42. Before I address the assertion of the trust I will address the Claimant and Third Party’s

submission on the Defendant’s abandonment of the common law mark. To support this

contention the Claimant and Third Party relied on Kerly’s Law of Trademarks and Trade

Names6 and Star Industrial v Yap Kwee Kor7 where it was stated that a trademark right

as any other right can be abandoned by the owner but so long as he remains the registered

proprietor of the mark and carries on the business to which the mark is attached it would be

difficult, if not impossible to show abandonment. Section 35 of the Trademarks Act 8 only

speaks about the non-use (or abandonment) of a registered trademark and in this case there

is no registered trademark.

43. Therefore, in my view both authorities cited by the Claimant and Third Party on the issue of

abandonment of the trademark are irrelevant since the learning in Kerly refers specifically

to registered trademarks and it was not in dispute that in the instant case neither party has a

registered trademark for “Japs”. Further, in Star Industrial the proceedings concerned an

allegation of passing off while in the instant proceedings the action is not grounded as a

6 10th ed 7 1976 FSR 256 8 Chapter 82:81

of 49

claim for passing off but rather the main issue for determination is who is entitled to the use

of the unregistered common law mark.

44. I now turn to the issue of the trust. Section 21 of the Supreme Court of Judicature Act9

provides that where there is a conflict or variance between law and equity with reference to

any matter, the rules of equity shall prevail.

45. In Words and Phrases legally defined10 “Trust” is defined as:

“Where a person had property or rights which he holds or is bound to exercise for or on

behalf of another or others, or for the accomplishment of some particular purpose or

particular purposes, he is said to hold the property or rights in trust for that other or those

others, or for that purpose or those purposes, and he is called a trustee. A trust is a purely

equitable obligation and is enforceable only in a court in which equity is administered.

The trustee holds the property or must exercise his rights of property in a fiduciary

capacity, and stands in a fiduciary relationship to the beneficiary.11”

46. The authors of Equity on the Law of Trust 12 summarized that for a trust to be sustainable

in law there must be certainty of words in creating the trust, certainty of subject of the trust

property and certainty of object of namely who are the beneficiaries. In order to ascertain

“the certainty of words” the approach advocated is to examine the evidence surrounding the

intent and not mere form only. At page 38 the authors in Equity on the Law of Trust stated:

“Since ‘equity looks to the intent rather than the form’ there is no need for any technical

expression to be used in order to constitute a trust. It is a question in every case of

construction of the words used to ascertain whether they (together with any admissible

extrinsic evidence) establish an intention to set up a trust. The question has often arisen

under wills whether a trust is created where the testator has in terms expressed his

confidence, wish, belief, desire, hope or recommendation that the legatee or devisee will

9 Chapter 4:01 10 3rd ed 11 Page 334 12 5th ed by Phillip Petit

of 49

use the gift a certain way, or whether in such a case the legatee or devisee takes

beneficially with at most a moral obligation to use the gift in the way indicated.”

47. In ascertaining the certainty of intention in the context of the family, the Courts have found,

based on the evidence presented, that informal declarations of trust of personality are

possible. In Paul v Constance13, because on several occasions Mr. Constance declared to

Mrs. Paul, ‘the money is as much yours as mine’, the court held him to have declared a trust

of the property in equal shares for himself and Mrs. Paul.

48. In Re Kayford Limited14 Megarry J formulated the rule as follows: “There is no doubt about

the so-called ‘three certainties’ of a trust. The subject matter to be held on trust is clear, and

so are the beneficial interests therein, as well as the beneficiaries. As for the requisite

certainty of words, it is well settled that a trust can be created without using the words ‘trust’

or ‘confidence’ or the like: the question is whether in substance a sufficient intention to

create a trust had been manifested”.

49. In Rochefoucauld v Boustead15 land was transferred to the defendant on the understanding

that it would be held on trust for the Comtesse de la Rochefoucauld however, this was never

actually put into writing. The defendant mortgaged the property. The Comtesse sought a

declaration that the defendant held the property on trust. The defendant argued the trust was

not enforceable due to the lack of writing. It was held that equity will not allow a statute to

be an instrument of fraud. To deny the existence of the trust would amount to a fraud on the

Comtesse. The trust could be evidenced by oral evidence. According to Lindley LJ the

Statute of Frauds does not prevent the proof of a fraud; and it is a fraud on the part of the

person to whom the land is conveyed as a trustee, and who knows it was so conveyed, to

deny the trust and claim the land himself.

13 (1977) 1 WLR 527 14 (1975) 1 WLR 279 15 (1897) 1 Ch 196

of 49

50. With respect to certainty of subject if the trust property is not clearly defined the purported

trust is altogether void.

51. In describing the importance of the beneficiaries of the trusts to determine the validity of a

trust the authors of Equity and Law of Trusts described the positions as:

“If there are certainty of words, and the property subject to the trust is clearly

identified, the trust will be valid. If, however, the beneficial interest to be taken are

not certain, those interest will fail for uncertainty, and the trustees will hold on a

resulting trust for the settlor.”16

52. According to the Defendant when he and the Third Party separated the only business he had

was the business known as “Japs Restaurant and Bar” which was in operation at the Foster

Rd property. Instead of putting out the Third Party from the premises at the Foster Rd

property and the business he left everything in her care because of Alvin and the other child

who was on the way (Kevin). In his words “He did not fight her down for anything”. He left

her to use the premises and to run the business and he permitted her to use his name “Japs”.

However before he left he made it clear to the Third Party, and she agreed, that she would

continue operating the business on the understanding that it would be handed over to their

sons when they became adults. Even after the separation the Defendant thought that they

had a good non-intimate relationship in the interest of the sons since the Defendant and the

Third Party always talked about leaving the business for their sons, Alvin and Kevin. They

spoke on many occasions concerning the Third Party assuming control of the business and

turning it over to the sons when they turn 18 years. Based on these discussions the Defendant

thought that he and the Third Party had a complete and binding verbal agreement since the

Third Party never qualified the understanding and agreement they had and she never said

anything to the contrary. The Defendant said that he never thought about putting the

agreement in writing because the Third Party agreed every time they spoke and he never

thought that a mother would cheat her sons. His part of the agreement was to leave the Third

16 6th ed Page 41

of 49

Party in control of the business and to permit her to use the “Japs” brand in relation to Japs

Fast Food/ Japs Fried Chicken.

53. In cross-examination the Defendant said that when he left the Third Party he only moved out

his clothes, deodorants, creams and some personal effects. He denied the assertion made by

the Third Party that he removed equipment, counters, tables and chairs from the business.

He said that he took a letter dated 2011 to the Third Party where his then attorney-at-law

called upon her to honour their agreement since the Third Party had failed to respond to a

letter dated 2010 from his previous attorney at law where he called upon her to change the

name of the Claimant, vacate the Foster Rd property, pay reasonable compensation to Alvin

and Kevin for their share in the business and to make good for the breach of trust.

54. The Third Party’s evidence on this issue was that when the Defendant left her he moved out

of the Sangre Grande area and she continued using the premises and operating the business

Japs Fast Food as her own without any input from him. She denied that the Defendant left

her in charge of the business. Sometime after they separated in the latter part of 1989 one

morning she went to the business and she observed that furniture, stock, kitchen appliances,

bar and countertop were missing. She later discovered from Thomas Hoyte that it was the

Defendant who moved out the items which the Mr. Hoyte confirmed in cross-examination.

As far as the Third Party was concerned when the Defendant left her he left her without

anything and they never had any discussions before, during or after their separation about

the Defendant leaving the business and premises for her to run for their sons. She stated that

even after Kevin was born the Defendant visited her and his son but he did not give them

anything.

55. A different picture emerged from her in cross-examination. The Third Party admitted the

following: when they separated in 1989 the Defendant had a ½ share in the business; at that

time the business was doing well; the Defendant took his half share when he took the items

from the business therefore she was the owner of the entire business after she and the

Defendant separated; the Defendant never asked her to change the name of the business and

he never objected to her continuing using the name ; even after the Defendant left her the

public still called her as “ Madam Japs” and she did nothing to make them believe otherwise;

of 49

the Defendant gave her permission to use the “ Japs” name but he did not tell her that she

can assign it; although the Defendant left her with nothing when they separated she did not

apply for maintenance for her two sons from the Defendant; the Defendant did not transfer

any interest in the business to her; in 1989 the business was on property owned by Dolly

Prieto therefore the Defendant could not transfer it to her; she acknowledged that although

she and the Defendant did not have any agreement that she could run the business on the

condition that it was to left for their sons, she agreed that the Defendant did not oppose her

remaining on the premises and running the business and he never took steps to have her put

out.

56. However, the Third Party’s evidence that after she and the Defendant separated in 1989, he

abandoned his share in the business leaving it for her to operate as her own, lacked credibility

since she gave a different and inconsistent story both in the Statement of Case in the 2006

matter and in her witness statement in the 2006 matter.

57. In the 2006 matter the Third Party and the Defendant were the Claimants. They asked the

Court to declare that the Third Party was entitled to an equitable interest in the Foster Rd

property by virtue of promissory estoppel and/or proprietary estoppel. Alternatively they

sought a declaration that they both had been in continuous exclusive possession of the Foster

Rd property for a period in excess of twenty (20) years.

58. In the Statement of Case in the 2006 matter which both the Third Party and the Defendant

signed as being the truth they stated at paragraphs 16 to 24:

“16. In or about the 21st March, 1990, whilst the Claimants were in occupation of the

said building and unknown to the Claimants, the said Dolly Prieto executed a

Deed of Conveyance all her interest and title to the said portion of land to one

Ricardo Hernandez and which said Deed was registered as No. 04714 of 1994

(hereinafter called ‘the 1994 Deed’).

17. The said Dolly Prieto died on or about January, 2005.

of 49

18. Further in or about the 17th of November, 2005, again unknown to the Claimants,

Ricardo Hernandez executed a Deed of Conveyance registered as No. 2006 0027

8843, whereby the said portion of land was purchased by one Winston Cooper,

the Defendant herein, of Boodooville Circular, Sangre Grande (hereinafter called

the 2006 Deed).

19. In or about March, 2006 the Claimants were further given until the 4the April,

2006 to quit and deliver up occupancy of the said premises.

20. At no time prior to the death of Dolly Prieto in 2005, did Ricardo Hernandez or

any one on his behalf bring to the Claimant’s attention the existence of the 1994

Deed. Further, at no time, subsequent to Dolly Prieto’s death did Ricardo

Hernandez or any one on his behalf bring to the Claimants attention his intention

to sell the said portion of land or the subsequent sale of the said portion of land

to the Defendant until the Notice to Quit was given to the Claimants.

21. Further at no time, subsequent to the 1994 Deed, and until the Notice to Quit in

March, 2006 did the said Ricardo Hernandez or the Defendant or any one on

their behalf visit the said premises and/or attempt to exercise rights of ownership

or of possession over the said premises.

22. Between the years 1984 to 2006 the Claimant has operated her business out of

the said premises due to reliance on the representation made by the said Dolly

Prieto as set out at paragraph 10 and 14 hereinabove and has expended large

sums of money thereon.

23. Further, from the period 1984 to 2006, the Claimants again acted in reliance on

the representations referred to above and carried out numerous and extensive

improvements, extensions and repairs in order to maintain the said premises on

the undertaking, representation and promises made to her/them by the said Dolly

Prieto.

of 49

24. The Claimants will contend that by virtue of the promises and assurance made

to them by the said Dolly Prieto, they have acted on the same and acted to their

detriment. Further, the Claimants exercised acts of ownership and control over

the said premises without interruption and as a result of which the Defendant and

his predecessor in title are estopped from relying on the validity of the said 2006

Deed.”

59. In the aforesaid paragraphs, which were some of the material facts on which the Third Party

and Defendant relied on to support their claim against Winston Cooper in the 2006 matter,

the Third Party certified as true that: both she and the Defendant were occupying the building

at the Foster Rd property in 1990 (which was after the date of separation in 1989); that in

March 2006 some 17 years after the separation both the Third Party and the Defendant were

served with a notice to quit and to deliver up occupancy of the Foster Rd property; prior to

2005 Dolly Prieto never indicated the Third Party and the Defendant that she parted with

ownership of the Foster Rd property by a 1994 deed and it was on reliance of promises and

representations made by Dolly Prieto both the Third Party and the Defendant during the

period 1984 to 2006 carried out numerous and extensive improvements, extensions and

repairs to maintain the Foster Rd property.

60. In my view on the pleaded facts in the Statement of Case in the 2006 matter the Third Party

acknowledged the Defendant’s ownership of the business for the period 1984 to 2006 which

included the period after they separated in 1989.

61. But that was not all. The Third Party’s witness statement filed in support of the 2006 matter

was consistent with the Statement of Case in the 2006 matter but which contradicted her

assertion that the Defendant abandoned his interest in the business after 1989. At paragraphs

44, 45, 48, 56,57, 74,76 to 81 she stated:

“44. Sometime in about 1988/1989 Nicholas Thomas and I separated from each

other. He after this moved out of the Sangre Grande area. I thereafter

continued to operate the fast food business on my own. I also continued to

look after Dolly Prieto and offer my assistance to her.

of 49

45. In about the 21st March, 1990 unknown to us Dolly Prieto executed a Deed

of Conveyance for all her interest and title to the said portion of land to the

said Ricardo Hernandez and which said Deed was registered as No. 4714 of

1994 (hereinafter called “the 1994 Deed”). We never had any knowledge

of this transaction and had continued to operate our business and had

continued to care for and maintain Dolly Prieto by giving approximately

$1,000.00 per month A true copy of Deed No. 1711 of 1990 is hereto

attached and marked as “B.M.2” to be tendered into evidence.

48. Sometime in about early 1996 Dolly Prieto and I were sitting in the business

place and chatting as we usually do when Dolly asked me if I could start

paying her a monthly rent for the premises of $3,000.00. I was taken aback

by this sudden request as this was not what she had stated before. I asked

her why she was now asking for a rent after all these years and after Nicholas

and I had spent so much money on the building with her encouragement and

permission. I told her she was being unreasonable and that I was already

giving her a sum of money every month to maintain herself and was also

looking after her Dolly Prieto did not respond and we had no further

conversation about rent after that. Also our relationship continued as before.

I never agreed to pay any rent. ….

56. After the year 2000 I continued to operate the Fast Food Business but on my

own due to my being separated from Nicholas Thomas.

57. After 2000 I continued as before to perform various repairs and renovations

to the said building. These included the changing of galvanize, changing

the partitions, counters and tiling. These extensions/improvements and

repairs were done due to Dolly Prieto’s renewed assurances and were to

maintain the building in a good state of repair and fit for the business. ….

74. Dolly Prieto died in January, 2005. After her death I continued to operate

the Fast Food business. I made investigation to determine if Dolly Prieto

had left a Will but none was found. She had always assured myself and

of 49

Nicholas Thomas the portion of land including the building would be ours.

Apart from the ejectment proceedings she always encouraged us to continue

our business and that we should not worry about the building and the land

and she that would have taken care of these. ….

76. In or about 17th day of November, 2005 again unknown to myself and

Nicholas, Ricardo Hernandez executed a Deed of Conveyance registered as

No. 200600278843D001 whereby the said portion of land was supposedly

purchased by one Winston Cooper, the Defendant herein, of Boodooville

Circular, Sangre Grande (hereinafter called the “2006 Deed”). A true copy

of this Deed is hereto attached and marked as “B.M. 16”.

77. I continued operating my fast food business and doing necessary repairs

after Dolly Prieto’s death. However in about March, 2006 a Policeman

came into the fast food outlet and informed me that Mr. Winston Cooper

had sent a Notice to Quit dated 3rd March, 2006 to me. I enquired as to the

purpose of the Notice and was informed by the Police Officer that Mr.

Cooper was the new owner of the premises. I told him that no one had

informed me of this development. I was totally shocked about the situation.

The Notice was giving me up until the 3rd March, 2006 to quit and deliver

up occupation of the said premises. A true copy of the Notice to Quit is

hereto attached and marked “B.M. 17”. ….

79. At no time prior to Dolly Prieto’s death in 2005 did Ricardo Hernandez or

anyone on his behalf inform me or Nicholas Thomas of any Deed regarding

the said portion of land. Further Ricardo Hernandez was always aware of

the close relationship that Dolly Prieto had with myself and with Nicholas

Thomas. He was also aware of our fast food business which was operating

out of the said portion of land. At no time after Dolly Prieto’s death did he

ever contact myself or Nicholas Thomas to enquire about our status with

regards to the building and the said portion of land. Also at no time did

Ricardo Hernandez ever inform us that he had sold the land to Mr. Cooper.

of 49

We were only made aware of this when we received the Notice to Quit in

March, 2006.

80. Also since the 1994 Deed and until we received the Notice to Quit in March,

2006, no one including Ricardo Hernandez and Winston Cooper ever

visited the said premises or ever indicated to us that they were the owner of

intended in purchasing the property. Ricardo Hernandez at all times for over

15 years had resided in Canada and I have never seen him in Trinidad since

he left.

81. Also from since the fast food business was started in 1984 and until many

years after Dolly Prieto always represented to Nicholas Thomas and myself

that the property would be ours eventually. Over the years she actually

encouraged us to carry out various repairs and renovations to the said

premises. We would always let Dolly Prieto know what we were doing with

the building and she never objected.”

62. In the aforesaid paragraphs the Third Party referred to the business after her separation from

the Defendant both as her own and also as “ours” meaning both the Third Party and the

Defendant. One impression the Third Party gave in the aforesaid paragraphs of her witness

statement in the 2006 matter was that after she and the Defendant separated in 1989, she

continued to operate the business alone, even calling it “my fast food business”. However,

when she referred to the representations from Dolly Prieto which the Third Party and the

Defendant said encouraged them to make improvements to the business at the Foster Rd

property during the period after separation she referred to the business as “ours”. The Third

Party never stated in her witness statement in the 2006 matter that after she and the Third

Defendant separated she became the sole owner of the business which in my view is different

from operating the business as her own. The Third Party never made it clear that the

Defendant had abandoned his right to ownership in the business leaving his share to her. She

also never said she bought the Defendant’s share in the business.

63. In my view, the reasons the Third Party never made such a distinction clear in the 2006

matter was because she was well aware that in the 2006 matter Dolly Prieto allowed both

of 49

she and the Defendant to operate the business at the Foster Rd property due to the close

relationship between Dolly Prieto and the Defendant; she knew that to bolster her claim for

possession of the Foster Rd property similar evidence from the Defendant was critical and

that the Defendant had indeed left his interest in the business with her for the benefit of their

two sons . In this regard, since the Third Party’s evidence in the 2006 matter was earlier in

time I find it to be more credible than her evidence on this issue in the instant matter. I accept

that based on the Third Party’s evidence in the 2006 matter that after her separation from the

Defendant, she continued to operate the business as her own but it was still jointly owned by

both the Third Party and the Defendant which she acknowledged as “ours”.

64. Given the evidence, it was clear in order to determine if any trust was created the conduct of

the Defendant and the Third Party during and after their relationship had to be examined

since they are not strangers but the parents of two (2) sons and therefore any transaction

would not have been arm’s length.

65. How did the Third Party and the Defendant conduct themselves during the relationship?

Based on the evidence I have found:

The business at Foster Rd was operated by both of them;

It was called “Japs Fast Food Restaurant” by customers based on the Defendant’s

nickname;

The Third Party’s association with the name “ Madam Japs” was a direct result of

the Defendant’s name “ Japs”;

During the time they ran the business they were involved in an intimate relationship

which bore two sons; and

Both the Defendant and the Third Party had other children who were born previous

to the relationship and who were not involved in the business.

66. Therefore it is reasonable to assume that during the relationship the primary consideration

for both the Defendant and Third Party concentrating their efforts into the business was that

the business was for the benefit of the children who came out of their relationship, Alvin and

Kevin.

of 49

67. How did they conduct themselves after the separation? According to the evidence of the

Third Party and the Defendant after the separation:

The Defendant did not object to the Third Party continuing to operate the business

using the name “ Japs” in the same premises;

The Third Party did not seek any maintenance from the Defendant for the sons ;

The Third Party and the Defendant maintained a cordial relationship since they

joined forces in 2006 to defeat a challenge to the ownership of the property at Foster

Rd ;

In the 2006 matter although the Third Party acknowledged the Defendant’s interest

in the business he did not object to the Third Party claiming it to be hers.

68. Equity looks to intent and not form. No particular formula is required. It is not necessary

that the word ‘trust’ is used or that the Defendant as settlor knew that is what he was doing

technically. In my view, the conduct of the Third Party and the Defendant during and after

their separation demonstrated that there was certainty of words. It was not in dispute that

both the Third Party and the Defendant have other children apart from Alvin and Kevin.

They are the only children who were borne out of the relationship between the Third Party

and the Defendant and are products of the “Japs” business. It is therefore reasonable to infer

that when the Defendant passes on the only children who would be entitled to his share in

the business are Alvin and Kevin and not his other children borne out of other relationships.

In such circumstances it is also reasonable to infer that the Defendant’s decision to join with

the Third Party in the 2006 matter, some 17 years after his separation from the Third Party

was because he was interested in preserving his interest in the Foster Rd property where the

business is situated; he was also interested in preserving his interest in the business for his

two sons, Alvin and Kevin who were borne out of the relationship with the Third Party while

they were working as a joint unit in the business; and the only reason he did not object to the

Third Party operating the business alone was because he believed that his interest in the

business was being looked after by the Third Party. Apart from denying the Defendant’s

assertion and in circumstances where such inferences can be made the Third Party did not

of 49

put forward any plausible explanation to contradict them. In my view the Defendant’s

actions by leaving his share of the business with the Third Party and permitting her to

continue to use his name “Japs” in the business after he separated from her demonstrated his

intention that he only did so because he wanted her to hold his share in the business for their

two sons which is inconsistent with him abandoning his rights altogether.

69. With respect to the Third Party’s action. While, the Third Party treated the entire business

as her own after the separation, in my view, despite her evidence to the contrary, she knew

that when the Defendant left her, he left his share with her to run the business for the benefit

of their two sons since if she thought otherwise she would have taken steps to obtain

maintenance for them sons from him which she admitted she did not pursue. She would have

also taken steps to ensure that she distanced the business from any association with the

Defendant. She would not have sought his assistance in joining with her in the 2006 matter

to defeat the claim for ownership of the Foster Rd property from Winston Cooper. In the

2006 matter she would not have referred to the business as being owned by both she and the

Third Party in the period after they separated. She also admitted that the Defendant never

fought her over the business, the property or took steps to remove her from it. Even if I accept

her evidence that when the Defendant left he took his share of the business since he removed

certain items from the restaurant, based on the Third Party’s own evidence at that time the

business was doing well so those items could not have been the value of his share in the

business.

70. Further, in 2006 there could not have been any lack of certainty since some 17 years after

the separation both the Defendant and the Third Party joined forces to defeat a challenge to

the ownership of the Foster Rd property. If the Third Party was unaware, as she claimed, that

she was holding the Defendant’s share in the business and property on trust for Alvin and

Kevin, in my view it is more plausible that she must have been aware that some 17 years

after she and the Defendant separated that the only reason that the Defendant joined with her

in the 2006 matter was to ensure that his interest in the business which he left with the Third

Party was secured for his sons. In my view there is no other reasonable explanation for the

of 49

Defendant joining with the Third Party in the 2006 matter since he did not seek nor obtain

an order for the property to be vested jointly with her.

71. In my view if both the Third Party and the Defendant intended otherwise then they would

have acted differently after their separation. The Defendant would not have joined forces

with the Third Party in the 2006 matter if it is true that the Defendant abandoned his right in

the business altogether or he “left with his ½ share”. Even if he did he would have insisted

that the Foster Rd property be jointly vested in both their names. He would have taken steps

to have the business closed down and liquidated in order for each party to obtain their equity

in it. On the Third Party’s part, she would have sought maintenance from the Defendant; and

she would have taken steps to disassociate the business from the Defendant. There was no

evidence from either of them that they took such action.

72. Secondly, there was certainty of subject. The Defendant’s consistent evidence in his witness

statement and in cross-examination was that he left his interest in the business with the Third

Party since this was his way of providing for his sons. Although the Third Party stated that

the Defendant could not give her the Foster Rd property since it was owned by Dolly Prieto

she did not deny that he had an equitable interest in the building on the Foster Rd property.

As much as the Third Party protested that the Defendant left her with nothing after they

separated she did not deny that he had a ½ interest in the business and by joining forces with

him in the 2006 matter she acknowledged that he had an equitable interest on the Foster Rd

property. Therefore at least by 2006, if not before both the Third Party and the Defendant

knew that the Defendant still had an interest in the business.

73. Thirdly, there was certainty of object. The Defendant has consistently said that he is only

seeking to ensure that his share in the business goes to his sons and he was not seeking

anything for himself. While the Third Party has denied this, she failed to put forward any

plausible reason for the Defendant joining with the Third Party as Claimants in the 2006

matter to deal with the challenge to the ownership of the Foster Rd property.

74. The Defendant as the settlor is entitled to seek the interest of the beneficiaries. While the

Third Party did not fully ventilate her contention that the Defendant could not sue on the

of 49

trust since the beneficiaries are not a party to the proceedings. Counsel for the Defendant

submitted that the Defendant as settlor can vary, revoke and enforce the trust since he has an

interest to protect and safeguard the interest of the beneficiaries.

75. In the instant case the trust was a family trust for the benefit of the Defendant and Third

Party’s two (2) sons. It therefore created a legal relationship between the Defendant and the

Third Party since it was the Defendant’s interest in the business which was placed in the

Third Party’s control for the benefit of the two (2) sons. In my view if the Third Party as

trustee failed in her duties as the trustee of the Defendant’s interest in the business both the

beneficiaries and the Defendant’s whose interest were left on trust with the Third Party have

a vested interest in ensuring that the Third Party acted properly and not in breach of her

duties.

76. In the circumstances, I do not agree with the Third Party’s contention that only the

beneficiaries can seek to enforce the trust and any breach of it.

77. The Claimant and Third Party also contended that the Defendant cannot maintain an action

for breach of trust since the limitation period for doing so has passed. No authorities were

presented by them in support of this contention.

78. Section 5 the Limitation of Certain Actions Act17 provide:

“5. (1) Subject to subsection (6), this section applies to any action for damages for

negligence, nuisance or breach of duty whether the duty exists by virtue of a

contract or any enactment or independently of any contract or any such enactment

where the damages claimed by the plaintiff for the negligence, nuisance or breach

of duty consist of or include damages in respect of personal injuries to the plaintiff

or any other person.

(2) Subject to subsection (3), an action to which this section applies shall not be

brought after the expiry of four years from—

17 Chap 7:09

of 49

(a) the date on which the cause of action accrued; or

(b) the date on which the person injured first acquired knowledge of the

accrual of the cause of action.

79. In my view the Claimant and Third Party’s contention on the limitation point failed since the

Defendant has not claimed that he has suffered any loss or injury by the Third Party’s failure

to recognize the trust and/or agreement for her to hold the business and the Foster Rd

property on trust for their sons. The relief which he is seeking with respect to the trust is for

the Court to recognize the existence of the trust and to direct the Third Party to take steps to

honour her obligations under it which is to give Alvin and Kevin their appropriate share.

This may entail an account and enquiry since the Third Party has denied the existence of the

trust and therefore she has not accounted to anyone how she has managed the Defendant’s

interest in the business after the separation in 1989.

80. In the instant case the Third Party still has shares in the business therefore her custodian of

it has not ended. She still has the opportunity to honour her obligation now that the Court

has found that there is a trust of the Defendant’s interest in the business for the benefit of the

two (2) sons.

81. Therefore, the Defendant did not abandon his one half share in the business. The goodwill

associated with the “Japs” brand for fast food was an asset of the business. When he

separated from the Third Party he left his one half share and interest in the business on trust

with the Third Party for the benefit of the two children who were borne out of the relationship

between them.

Did the Third Party and later Darryl Mahabir and the Third Party from 1990 to 2007

acquire a separate goodwill apart from any association with the original business or

the business in 1989?

of 49

82. The Third Party’s position was when she and the Defendant separated, the latter abandoned

and/or left the business and consequently the name “Japs” totally for her. Thereafter she

continued the business and built goodwill in the business until it was handed over to the

Claimant of which she is a shareholder. Therefore the goodwill and or unregistered mark

has changed over the years in that the person named “Japs” is now recognized and known as

Darryl Mahabir and the product is not fast food but chicken and chips.

83. The Defendant’s position is that the Third Party and later Darryl Mahabir and the Third Party

did not acquire a separate goodwill in the business. He has grounded his position on the

following points. The business was always associated with the Defendant, even after he had

separated from the Third Party. “Japs” is the name associated with the quality of the food

served, in particular highly seasoned fried chicken from the inception of the business. Both

the Third Party and Darryl Mahabir made several attempts to rebrand the business by

changing the name to Happy Hour Recreational Club, Bhago’s Kitchen and Skyscraper

Recreation Club but the business did better under the “Japs” name. The Third Party did

nothing to declare that the business was under new management after the Defendant

separated from her since she delighted in and encouraged the name association by allowing

herself to be called “Madam Japs”. Darryl Mahabir also did nothing to disassociate himself

from the “Japs” name when he assumed management but he did the opposite by embarking

on an advertising blitz representing himself as the original Japs and it is irrelevant that the

business thrived after the Defendant left since it was the responsibility of the Third Party to

use reasonable commercial efforts to continue operating it as a going concern.

84. In my view, the Third Party’s and Darryl Mahabir’s evidence supported the Defendant’s

contention for the following reasons.

85. The Third Party’s evidence was that in the 1980s the name Japs Restaurant and Bar was not

named after Darryl Mahabir since he was not around the business and he only started to

assist in the late 1980s. In the 1980s customers of the business called her “Madam Japs”

because of her association with the Defendant. Even after she and the Defendant separated

and up until the present people still call her “Madam Japs” and continue to associate the

of 49

name “Japs” with the business. In the early 1990s when she introduced Darryl Mahabir to

customers as her son, people started to call him “Japs boy”.

86. Darryl Mahabir acknowledged that in 1988 people called his mother “Madam Japs”. He said

he assumed that it was due to her relationship with the Defendant. He knew at that time she

was involved in a relationship with the Defendant and that even after the Defendant separated

from his mother she continued to allow persons to call her “Madam Japs”. He said that when

his mother introduced him to customers of the business they called him “the Japs man”, and

“Mr. Japs”. He said that since the 1990s he was associated with the “Japs” name. He

acknowledged that in an earlier time he was called “Punjab” and in response to the question

why he did not call the business Punjab Fried Chicken after he took it over, he stated that he

was called “Japs” by the public, he is “Japs” and he became “Japs”. According to Darryl

Mahabir the Defendant’s name was “Jap” and not “Japs”. While he accepted that he did not

know anything about how the business started he denied that the business at Foster Road is

the same business the Defendant left his mother, the Third Party. He admitted that after he

took over the business he engaged in an advertising campaign spending significant sums of

money on radio advertisements, billboards and sponsorship of events using the “Japs” name.

87. The undisputed evidence was that the Third Party’s association with the “Japs” brand which

was the name “Madam Japs” arose due to her association with the Defendant and Darryl

Mahabir’s association with the “Japs” brand as “the Japs man” or “Mr. Japs” was because

he was the son of “Madam Japs”. Therefore his association with the “Japs” name was

because his stepfather was the Defendant at that time. While the names of “Madam Japs”

and “the Japs man” and “Mr. Japs” may be separate and unique to the Third Party and Darryl

Mahabir respectively, their association arose when the Third Party and the Defendant were

in a common law relationship.

88. There was no evidence from the Third Party that after she and the Defendant separated and

she was left to run the business she took steps to disassociate herself from the “Japs” name

or brand. She continued to operate the business with the same name as before and even when

she changed the name of the business she continued to allow herself to be referred to as

“Madam Japs”. The Third Party did not take any steps to disassociate herself from the name

of 49

“Madam Japs” which she knew only arose due to her connection with the Defendant. Even

when she introduced Darryl Mahabir to customers of the business she did not do anything to

make it clear that he was not associated with the name “Japs”. She stood by and allowed

customers to call Darryl Mahabir “the Japs boy” which she knew clearly was a reference to

the Defendant.

89. Further even when the Third Party and Darryl Mahabir changed the name of the business

they returned to the “Japs” name which they knew was associated with the Defendant since

they knew that it was more successful. According to the Third Party after she separated from

the Defendant she changed the name of the business from Japs Restaurant and Bar in the

1990s to Happy Hour Recreation Club, then to Bhago’s Kitchen (which was a reference to

her name) later to Skycraper Recreation Club and all these businesses were successful.

90. Similarly, there was no evidence from Darryl Mahabir to distance himself from the “Japs”

name after the Defendant separated from the Third Party. He did not tell patrons that the

business was under new or different management and therefore he was not to be associated

with the “Japs” name. Indeed by his actions of engaging in an advertising campaign he did

the opposite and allowed his association with the “Japs” name to continue.

91. There was no evidence that there was a separate goodwill established after 1989 with the

Third Party’s name “Madam Japs” or Darryl Mahabir’s name “the Japs man” or “Mr Japs”.

The Third party never renamed the business after 1989 using the “ Madam Japs” name which

while was associated with the Defendant was arguably unique to her and not the Defendant.

Similarly while Darryl Mahabir was known as “the Japs man” or “Mr Japs” and it was due

to his association with the Defendant, it appears that those words collectively were associated

with him. However, there was no evidence that Darryl Mahabir when he took over

management of the business he sought to use the name “the Japs man “ or “ Mr Japs” which

was unique to him.

92. In 2007, “Japs” appeared to be a household name branded by the Defendant’s association

with the fast food business when the Claimant was registered. The Claimant’s trademark

application was made in the name of “Japs” and not “Madam Japs” or “the Japs man” or “Mr

of 49

Japs” which both the Third Party and Darryl Mahabir said they were called by the public.

The Third Party admitted that she did not apply for trademark under any other names which

the business carried. In my view if the Third Party and Darryl Mahabir wanted to disassociate

with the Defendant’s “Japs” name they could have applied for a trademark under one of the

names of the business after 1989. However they did no such thing.

93. In the circumstances, I have found that the business which operated after 1989 by the Third

Party and later the Third Party and Darryl Mahabir did not acquire a separate goodwill from

the “Japs” name associated with the original business but rather it piggy-backed on it.

Did the Claimant acquire a separate goodwill apart from any association with the

original business or the business in 1989?

94. It was argued on behalf of the Claimant and the Third Party that the business which is

operated by the Claimant is totally different from the original business or the business in

1989. In particular, the distinguishing feature of the present business from the original

business and the business in 1989 is the type of food sold in the Claimant’s business. The

Claimant and Third Party asserted that in both the original business and the business in 1989

they sold all types of food which included creole food, roti, chinese food, fried chicken and

chips. However the Claimant only sells fried chicken and chips and that there is no special

recipe for the fried chicken and chips.

95. The Defendant’s position was that prior to 2007 the Claimant Company did not exist and

therefore it could not have acquired a reputation in connection to the name “Japs Fried

Chicken” which was an already existing brand. He asserted that, calling the Claimant Japs

Fried Chicken, does not allow the Claimant to acquire a separate goodwill since it is not a

new name but it simply adopted the original name. The goodwill in the business has always

been associated with the Defendant’s name and reputation in North East Trinidad which is

personal to him since it is what distinguished it from other fast food operations. The

Defendant continues to be known as Japs and he continues to operate a number of businesses

going by that name. His name, reputation and goodwill continues whether or not he operates

of 49

the business. Therefore the goodwill attached to the Claimant Company is its historical

goodwill which stemmed from the original name of the business and from the Defendant’s

reputation.

96. In order for the Claimant to acquire a trademark which already exited it must demonstrate

that it got consent from the owner of the mark to use it; there is no confusion which can or

likely to arise in the minds of the public if allowed to use the mark or it can show that it has

acquired the mark via transfer or assignment from the original owner. There was no such

evidence with respect to any of these matters.

97. The names Japs Fast Food, Japs Restaurant and Bar and Japs Fried Chicken were all in

existence prior to the incorporation of the Claimant. Therefore I agree with the Defendant

that calling the Claimant company “Japs Fried Chicken Limited” does not by that simple act

cause the Claimant to acquire a separate goodwill since all this did was simply adopt the

original name and brand which was associated with the business of which the Defendant is

a one half share owner.

98. According to the Defendant he has used his name as a trade in relation to a number of

businesses including, Japs Auto Garage, Japs Pub, Japs Trading, and Japs Construction since

the 1970s. Although he stated in cross-examination that he had operated a fast food business

after he separated from the Third Party, this was not pleaded as part of his case therefore I

have attached no weight to this evidence.

99. It was not in dispute that the original business and the business after 1989 in addition to fried

chicken and chips they sold other types of food such as Creole food, Chinese food and Indian

food and that the Claimant only sold fried chicken and chips. However in my view the type

of food which was sold was not only the distinguishing feature between the Claimant and

the original business and the business in 1989. The distinguishing feature was a combination

of fried chicken and chips together with the name “Japs” which the Third Party, the sole

witness who was involved in the original business, the business in 1989 and a shareholder

and director of the Claimant said was due to the association of the name with the Defendant.

of 49

100. In my view because the Claimant no longer sells all types of food but concentrates solely on

fried chicken and chips does not mean that it is an entirely different entity from the original

business or the business in 1989. The Defendant and his witness Eustacia Noel testified that

in addition to the special recipe which was used by the Defendant’s mother in seasoning the

chicken in the original business, fried chicken and chips were served all night. While I accept

that the recipe may have changed during the different incarnations of the business which was

the evidence of Eustacia Noel, the Third Party and Darryl Mahabir, the undisputed fact which

remained is the best seller was fried chicken and chips which is what was the business was

associated with and by extension the Defendant.

101. In the instant case the Claimant did not have a different name which caused it to have its

own distinct and separate goodwill. Indeed the first word in the Claimant’s name is the word

“Japs” which clearly was meant to be associated with the “Japs” brand which was associated

with the original business and the 1989 business. What is remarkable is that the Third Party

changed the name of the business after 1989 three times, to Happy Hour Recreational Club,

Bhago’s Kitchen and Skycraper Recreation Club and not one of these names was as part of

the name of the Claimant Company even when the Third Party said that all these businesses

were profitable. Even Darryl Mahabir admitted that he was called “Punjab” in his earlier

years. He admitted that he had a very close relationship with his mother, the Third Party

therefore he knew that the separation between the Third Party and the Defendant were not

on amicable terms. Against this backdrop I would assume that a reasonable person who is

taking over management of a business would want to make it clear to the public that he was

disassociating himself from the Defendant and one way of doing that was by using a different

name which excluded the “Japs” brand. However, the opposite happened since the Claimant

company was incorporated using “Japs” as the first word in its name. Therefore, implicit in

such action was the intention by the Third Party and Darryl Mahabir that the goodwill

associated with the “Japs” name was to be associated with the Claimant Company. If the

intention was otherwise then either a new and different name would have been used in the

Claimant’s name or the Claimant would have been given a name associated with any of the

names of the business after 1989.

of 49

102. The names Japs Fast Food, Japs Restaurant and Bar and Japs Fried Chicken were all in

existence prior to the incorporation of the Claimant. Therefore I agree with the Defendant

that calling the Claimant company Japs Fried Chicken Limited does not by that simple act

cause the Claimant to acquire a separate goodwill. I have therefore concluded that the

Claimant did not acquire a separate goodwill apart from its association with the original

business and the business in 1989.

Does the issue of estoppel/ res judicata arise regarding the Foster Rd property?

103. In the 2006 matter both the Third Party and the Defendant instituted proceedings against

Winston Cooper to defeat his paper title on the basis that they had a possessory title for the

Foster Rd property. The relief they sought was a declaration that they were entitled to the

possessory title. On the 13th November 2008 Gobin J. declared that the Third Party was the

owner of the Foster Rd property. This decision was not appealed.

104. The Third Party has submitted that the decision of Gobin J. determined the matter of the

ownership of the Foster Rd property definitively and finally since two of the parties in the

2006 matter are the same two parties in these proceedings and the contested issue of the

ownership of the Foster Rd property is the same. Therefore based on the principle of estoppel

by record the Defendant cannot ask the Court in these proceedings to make a decision on the

ownership of the Foster Rd property to go to Alvin and Kevin since this would directly

conflict with the order of Gobin J.

105. The Defendant’s position is that the doctrines of estoppel and res judicata do not apply since

in the 2006 matter the Court was not invited to consider and never ruled on any dispute

between the Defendant and the Third Party. In any event the Defendant submitted that he is

not disputing that the Third Party has the legal title to the Foster Rd property. His position is

the Third Party’s legal title is subject to equity and it does not permit her to disclaim the trust

which is the reason he joined with her to defeat Winston Cooper’s claimed title.

of 49

106. Halsbury’s Laws of England18 describes the doctrine of res judicata as:

“The doctrine of res judicata provides that, where a decision is pronounced by a

judicial or other tribunal with jurisdiction over a particular matter, that same matter

cannot be reopened by parties bound by the decision, save on appeal. It is most

closely associated with the legal principle of cause of action estoppel', which

operates to prevent a cause of action being raised or challenged by either party in

subsequent proceedings where the cause of action in the later proceedings is

identical to that in the earlier proceedings, the latter having been between the same

parties (or their privies), and having involved the same subject matter. However, res

judicata also embraces 'issue estoppel', a term that is used to describe a defence

which may arise where a particular issue forming a necessary ingredient in a cause

of action has been litigated and decided, but, in subsequent proceedings between

the same parties involving a different cause of action to which the same issue is

relevant, one of the parties seeks to reopen that issue. For this reason, res judicata

has been described as a portmanteau term which is used to describe a number of

different legal principles with different juridical origins upon which the courts have

endeavoured to impose some coherent scheme only in relatively recent times.”

107. Halsbury’s Laws of England19 describes estoppel by record as:

“Under the doctrine of res judicata, a matter that has been adjudicated on by a

competent court cannot be re-litigated; thus a form of estoppel known as estoppel

by record arises when a judgment has been given which is a matter of record,

principally matters appearing on the records of courts of law. Estoppel by

record may now arise whether or not the judicial decision in question has been

pronounced by a tribunal that is required to keep a written record of its decisions.

The rationale for the existence of estoppel by record can be summed up in two

expressions:

18 Vol 11 (2015)) para 1603 19 Vol 11(2015)) para 1610

of 49

(1) that it is in the public interest that there should be an end of litigation; and

(2) that no one should be proceeded against twice for the same cause.

It accords with the first of these expressions that a party relying on estoppel

by record should be able to show that the matter has been determined by a

court of competent jurisdiction in a judgment which is final.”

108. In my view the doctrine of res judicata does not apply to the instant proceedings since the

Defendant in this matter has not sought to obtain any rights of ownership of the Foster Road

property which was one of the issues in the 2006 matter. In this matter one of the Defendant’s

claim against the Third Party is that she holds his interest in the business on trust for their

sons Alvin and Kevin which is new, distinct and a separate claim.

109. As far as the doctrine of estoppel by record is concerned, in the 2006 matter the Court did

not rule on any dispute between the Third Party and the Defendant concerning whether the

Third Party was holding the Defendant’s share of the Foster Rd property on trust for their

sons Alvin and Kevin.

110. Therefore the doctrines of estoppel by record and res judicata in my opinion do not arise.

Is the Claimant entitled to register the mark?

111. It was argued on behalf of the Claimant that the business or the goodwill of the name “Japs”

was handed over or continued by the Third Party in 1989. The name or goodwill has been

moulded into something very successful to present day. Based on the totality of the evidence

the issue of deception and confusion has not been shown and cannot be supported by the

Defendant and that no other statutory conditions have been satisfied to disentitle the

Claimant from registration of the trademark by the Claimant.

112. The Defendant submitted that the “Japs” brand preceded the Claimant, its incorporation and

the trademark application. The Defendant has priority of use of the unregistered mark. The

Claimant has not produced sufficient or any evidence to show that it can distinguish goods

of 49

or services from those of the Defendant. As such the Claimant’s application is confusingly

similar to the Defendant’s common law unregistered mark. Further there are aspects of the

Claimant’s trademark application which make it un-registrable namely it must not describe

its product directly, the trademark office cannot grant exclusive rights in the name or likeness

of a living person without the person’s consent and it is false advertising to claim that one’s

product is the best product unless able to prove it.

113. Section 13 of the Trademarks Act provides as follows:-

“13. It shall not be lawful to register as a trademark or part of a trademark-

a. Any matter the use of which would, by reason of its being likely to –

i. Deceive or cause confusion;

ii. Disparage or falsely suggest a connection with persons, living or dead,

institution, beliefs or national symbols or bring them into contempt or

disrepute,

iii. Be disentitled to protection in a Court of Justice;

b. Subject to section 17, words that generically designate goods or services or

types of goods or services to which the trademark applies;

c. Any matter the use of which would be contrary to law or morally; or

d. Any scandalous design”

Section 13A provides:-

“(1) A trademark shall not be registered –

a. If it is identical with, or confusingly similar to, or constitutes a translation of a

trademark or a trade name which is well-known in Trinidad and Tobago as being

already the mark of a person other than the applicant for registration and used

for identical or similar goods or services; or

b. If it is identical with, or confusingly similar to, or constitutes a translation of a

trademark which is registered with respect to goods or services which are not

similar to those with respect to which registration is applied for, provided that

of 49

use of the trademark in relation to those good or services would indicate a

connection between those goods or services and the owner of the registered

trademark and that the interests of the owner of the registered trademark are

likely to be damaged by such use.

(2) In determining whether a trademark is well-known, account shall be taken of the

knowledge in Trinidad and Tobago obtained as result of the promotion of the

trademark, in the relevant sector of the public that normally deals with the relevant

good or services.

114. The test for an objection under Section 13 of the Act (this section deals with the objection

under Ground 5) is deception or confusion as to the origin of the goods or service in question

and was stated by Evershed J in Smith Hayden and Co. Ltd App. (1946) 63 PRC 97 at page

101 as follows:-

“…….having regard to the reputation acquired by name ‘Hovis’ is the Court

satisfied that the mark applied for, if used in a normal and fair manner in connection

with any goods covered by the registration proposed will not be reasonably likely

to cause deception and confusion amongst a substantial number of persons.”

115. The Claimant’s trademark application for the use of the “Japs” name is strikingly similar to

the common law unregistered mark which is owned by the original business. In my view, it

would likely cause confusion. In any event I have found that the Claimant is not the

proprietor of the unregistered common law trademark with the “Japs” name and that the

Claimant has not acquired a goodwill with the “Japs” brand. The owners of the “Japs” brand

is the Defendant and the Third Party who were the owners of the original business. Therefore

the Claimant is not entitled to register the trademark application and only the Defendant and

the Third Party who jointly own the original business are entitled to register it.

Costs

116. On the 4th February 2015 the Court made a budgeted costs order where the costs budget was

fixed in the sum of $270,173.75. There were six (6) issues for determination. The Claimant

of 49

and Third Party succeeded on the just one issue and the Defendant succeeded on the

remaining issues. In the circumstances I award the Defendant 5/6 of the sum of $270,173.75

which is the sum of $225,144.78. The Claimant and Third Party are to pay the Defendant

costs in the sum of $225,144.78.

Disposition

117. The Defendant is the originator of the “Japs” brand. However he is not the sole proprietor

and does not have exclusive rights to it since in the late 1970s to early 1980s the owner

and/or user of the “Japs” brand/name in the fast food business was the business which was

owned jointly by both the Defendant and the Third Party. The Defendant did not abandon

his interest in the business after the separation 1989. The Defendant’s interest in the business

after 1989 was left with the Third Party to hold on trust for the benefit of Alvin Thomas and

Kevin Thomas. The Defendant has a vested interest in ensuring that the Third Party acted

properly and not breach her duties as a trustee. The Defendant can still pursue the instant

action against the Third Party since he is seeking the Court to recognize the existence of the

trust and to direct the Third Party to honour her obligations to Alvin and Kevin which she

can still do. The Third Party can still account. The business which was operated by the

Third Party and later Darryl Mahabir and the Third Party from 1990 to 2007 did not acquire

a goodwill separate and apart from any association with the original business. The Claimant

did not acquire a separate goodwill apart from any association with the original business and

the business in 1989. The issues of estoppel and/or res judicata do not arise with respect to

the Foster Rd property since the issues in the 2006 matter were different from the instant

matter. The Claimant is not entitled to register the trademark it applied for since it had no

right to the common law trademark.

Order

118. The Claimant’s claim is dismissed.

119. The Defendant’s trademark application is also denied.

of 49

120. It is declared that both the Defendant and the Third Party are the joint proprietors of the

“Japs” name and they have the exclusive rights to it

121. It is declared that the name “ Japs” is an asset of the business which was owned by both the

Defendant and Third Party when they separated in 1989 and the Defendant’s one half share

was held by the Third Party under the trust and agreement for the benefit of Alvin Thomas

and Kevin Thomas.

122. It is declared that the Defendant allowed the Claimant’s company and/or the business to use

the “Japs” name for the benefit of Alvin Thomas and Kevin Thomas and that such

permission, authorization or license was never revoked or withdrawn.

123. It is declared that the Defendant’s claim to the unregistered mark “Japs” was never

abandoned or extinguished.

124. The Third Party to account to the Defendant for his share of the business which he left with

her from 1989 to present.

125. The Claimant and the Third Party to pay the Defendant’s costs in the sum of $225,144.78.

126. Stay of execution of 42 days.

Margaret Y Mohammed

Judge

THE REPUBLIC OF TRINIDAD AND TOBAGO IN THE HIGH COURT...

Documents

Transcript of THE REPUBLIC OF TRINIDAD AND TOBAGO IN THE HIGH COURT...