Two weeks after the Commercial Court listened to final legal arguments into a trademark infringement lawsuit brought against H.K. Enterprise by BAF Trading Corporation, of which the company is claiming millions United States dollars in damages, the court is yet to announce a date for its ruling.
The trademark suit also involved the Ministry of Commerce (MOC) and the Liberia Intellectual Property Office (LIPO), which BAF alleged facilitated H.K. Enterprise obtaining its trademark as sole distributor and importer of “Pop Drink” in Liberia.
The ruling is still in possession of the three-judge panel court.
However, during the trial, the court came down with a declaratory judgment against the Ministry and LIPO on grounds that they refused to testify on the matter, despite being named as defendants.
Although the two public entities did not testify, the court subpoenaed some of their senior members, who testified on the matter.
During their arguments, BAF’s lead lawyer Cllr. Tiawan Gongloe said that his client obtained the trademark in 2010 from LIPO, giving the Liberian company the right as sole distributor and importer of “Pop drink” in Liberia.
Cllr. Gongloe argued that his client continually imported the product to the satisfaction of their customers until January 2014, but that with the support of some government officials, H.K. Enterprise managed to obtain the same trademark giving it the right to also import and distribute the drink in the country.
According to him, his client registered their company in 2009, and at the same time, exerted tremendous effort to introduce and promote the product on the Liberian market by obtaining its trademark from LIPO in 2010.
Gongloe further argued that on April 17, 2014, BAF wrote Commerce Minister, Axel A. Addy, about H.K. Enterprise’s infringement, and LIPO’s wrongful conduct.
Interestingly, on October 31, 2014, Minister Addy banned the importation of the drink and instructed LIPO to restore BAF’s rights from January 1, 2015; which LIPO failed to do.
Cllr. Gongloe argued that after two months of waiting for restoration of their rights, to no avail, BAF Trading filed for declaratory judgment before the honorable court on March 10, 2015.
In a counter-argument, H.K. Enterprise’s legal team contended that an investigation conducted by LIPO showed that BAF’s right to the trademark expired in June 2013, which gave H.K. Enterprise the right to apply and obtain the trademark as the sole importer and distributor of “Pop Drink” in 2014.
They contended that there was an agreement between PT Forisa, the factory that manufactures the product, and Franco Asian Enterprise Singapore, the distributor of its product, appointing H.K. Enterprise as the sole distributor of the drink in Liberia, which led LIPO to revoke BAF’s trademark certificate.
They alleged that the company wrote LIPO and the Ministry about the termination of the contract held with BAF.
The agreement clearly prohibits H.K. Enterprise from the registration of the trademark in the country, which they admitted to have done, according to Cllr. Gongloe.
However, Cllr. Gongloe further argued that in 2010, BAF received an appointment letter, which he openly read in court.
The communication said, “BAF Incorporation has been given the full right and authority by PT. Afrindo Business International to do whatever necessary within the boundary of the laws of the Republic of Liberia to promote and protect the product in the Liberian market, at his own risk and expenses.”
According to Cllr. Gongloe, the trademark has a clear provision on grounds that a registered trademark can be invalidated. “The registrar shall invalidate the registration only if the person requesting the invalidation proves that any of the requirements of section 39(1) and 40(2) does not satisfy the 2003 Act of the Intellectual Property Laws.”
He added that a revocation of trade mark is a court procedure, listed as Section 21(4), which he quoted as saying: “The final decision of the court shall be notified to the Director General who shall record it and publish a reference thereto as soon as possible.”
He added that: “The use of a registered trademark, in relation to any goods or services for which it has been registered by any person other than the registered owner, shall require the agreement of the latter” as stated in Section 43 (1) of the Act of 2003.
He said once this provision of the law is followed, there can be no confusion in the commerce.
“That the only entity that can raise issue about registration of trademark for Pop Drink in Liberia is PT. Forisa, the manufacturer, it may sue BAF Trading, but even PT. Forisa knows that it will not succeed, because Forisa did not have any restriction on PT. Afrindo and by extension on BAF Trading as it has on Franco Asian Enterprise and by extension on H.K enterprise.
“Therefore,” Cllr. Gongloe said, “It was how PT. Forisa asked LIPO to mediate between BAF and Franco Asian Enterprise Singapore and to find amicable way to transfer the Trademark to PT. Forisa.
“This clear request cannot be the basis for suspension, invalidation and revocation of BAF Trading Trademark Certificate. LIPO must respect its own laws that created it.
“The status of a trademark cannot be affected by the conduct of a manufacturer. If every time a manufacturer changes its distributor and a new trademark is issued, then LIPO will keep violating its own law and become a source of confusion as it has done in this case. The issuance of trade mark is intended to prevent confusion.”
During the trial the court subpoenaed several individuals from both the Ministry of Commerce and LIPO to testify about a communication based on which LIPO claimed that it cancelled BAF’s trademark certificate and subsequently issued it to H.K. Enterprise.
For Deputy Minister Steve Marvey, he explained that, “the document dated January 14, 2014 captioned ‘To whom it may concern,’ was not sent to me, but that the letter dated April 29, 2014 was addressed to me,” he said, adding “I do not fully comprehend the assumed reason behind Forisa’s letter of April 29, 2014, because I did not communicate with said company prior to receiving the communication.”
Also, LIPO Acting Director General, Robert Y. Mezzeh, whose signature appeared on the two trademarks (BAF Trading 2010 and H.K enterprise 2014), did not appear for the trial though the court served him the subpoena.
However, Prince Decker, the man who replaced Mezzeh, was allowed to testify on his behalf.
In his testimony, Decker said, “The trade mark certificate that was cancelled for Pop Drink was issued at two separate intervals.”
“At the time, I was not privileged to participate in the step and procedure for registration during the issuance of BAF Trading trademark certificate in 2010” he said, denying his participation.
He explained that, “the cancelled certificate of H.K Enterprise was inadvertently done by LIPO, during which period I was the registrar supervising the registry that headed the registration procedure.”
LIPO’s Head of Research, Moses Nyepan, explained the process and procedure to obtain a trademark registration, and ways by which a conflict can be avoided.
According to Nyepan, as head of research, he did not know how H.K Enterprise registered the trademark certificate for Pop Drink.
“But I know that the information on the trademark certificate of BAF is in the database at LIPO and it is valid for a period of ten (10) years,” Nyepan told the court.