Case Note on Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas (2022) CV2014-02595, Civil Appeal No P-297 of 2016.

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The claimant tried to register the composite trade mark ‘JAPS FRIED CHICKEN…DE BEST TASTE AROUND!’ and device in 2010. The defendant opposed the registration of the trade mark on the grounds that he was owner of the unregistered trade mark ‘JAPS FRIED CHICKEN’. The Intellectual Property Office held a hearing and stayed the trade mark application referring the matter to the High Court to determine the parties’ rights to use the trade mark in question. Subsequently, the claimant petitioned the High Court to order the grant of the trade mark applied for. The defendant counterclaimed for the refusal of the claimant’s trade mark application and to grant his own trade mark application for ‘JAPS FRIED CHICKEN’.

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Evolution Of The Trade Mark

The facts indicate that the claimant and defendant initially operated a business together under the name ‘JAPS FAST FOOD’, selling a variety of food including fried chicken. In 1989, the defendant left the business and subsequently in 1990, the claimant started using the name ‘JAPS FRIED CHICKEN’. Mohammed J in the High Court held that neither party owned the trade mark ‘JAPS FAST FOOD’, and that the trade mark was owned by the business because the goodwill in the name ‘JAPS’ vested with the company.[1] As such, there was no separate goodwill in the name ‘JAPS’ vesting with the claimant.

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High Court Ruling

Mohammed J held that Japs Fried Chicken Limited’s trade mark application should fail for three reasons:

1.   The claimant, Japs Fried Chicken Limited, is not the proprietor of the unregistered trade mark and moreover, does not have goodwill in the name ‘JAPS’

2.   The brand ‘JAPS’ is jointly owned by the defendant Nicholas Thomas and the third party, Bhagwatee Maraj. Moreover, that the goodwill and other property from the jointly held business was being held on trust by Bhagwatee Maraj for Nicholas Thomas.

3.   Allowing the claimant, Japs Fried Chicken Limited, to register the trade mark will cause confusion with the unregistered trade mark held by the defendant and third party.[2]

These findings were based on matters of fact[3] that led Mohammed J to a finding that there was a trust established between the defendant, Nicholas Thomas, and the third party, Bhagwatee Maraj despite the defendant leaving the business in 1989.

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The Appeal

Aboud JA writing the sole and unanimously supported opinion in the Court of Appeal stated that Mohammed J’s finding in the High Court that there was a trust was incorrect given the ‘absence of a written declaration or unequivocal or corroborated evidence that a trust was declared in precise terms’[4] and moreover, the fact that Mohammed J did not consider the fact that the defendant abandoned the business and removed equipment from it in 1989.[5]

As a result, in the absence of a valid trust, the reasoning underlying the decision to prevent the claimant from registering the trade mark must necessarily be reversed.[6] This is because the absence of the trust meant that the goodwill in the name ‘JAPS FRIED CHICKEN’ was not owned by the defendant, but rather the claimant, Japs Fried Chicken Limited. Consequently, the claimant is entitled to register the trade mark because the defendant abandoned any rights in the name ‘JAPS’ since 1989.[7] Therefore, the claimant is the sole proprietor in the mark ‘JAPS FRIED CHICKEN…DE BEST TASTE AROUND!’ and device and moreover, the Intellectual Property Office was ordered to register the mark in the name of the claimant.[8]

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Lessons Learned

Although the subject matter of this case was about the ability to register a trade mark, the core legal question centred on the law of trusts. Nonetheless, the decision is a vital reminder of the importance of organising one’s intellectual property rights for any business venture especially where multiple persons are involved and moreover, where the brand is derived from one specific party. Had better intellectual property management been exercised, the long and costly court process could have been avoided.

Parties entering similar situations should consider the following:

1)   Conduct an IP audit before entering into any formal business arrangements so that everyone is clear what they are bringing to the table;

2)   Discuss licensing and ownership of any pre-existing IP being brought into the business;

3)   Discuss ownership of any IP created during the course of the business;

4)   Designate rules in the business’s by-laws or otherwise for the treatment of IP especially accounting for the situations where the business is dissolved or where a party wants to leave.

Proactive IP management is always the way forward.

[1] Japs Fried Chicken Limited v Thomas and Maharaj (2016)CV2014-02595, p 21.

[2] Japs Fried Chicken Limited v Thomas and Maharaj (2016)CV2014-02595, p 24.

[3] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, paras36 and 43.

[4] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, para77.

[5] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, para126.

[6] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, paras126-129.

[7] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, paras130-132.

[8] Japs Fried Chicken Limited and Romario Mahabir v Nicholas Thomas(2022) CV2014-02595, para134.

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