Wed | Aug 23, 2017

Court grants another injunction to Tapper in Fyah Side trademark dispute

Published:Friday | February 26, 2016 | 2:00 AMMcPherse Thompson
Some of the products that wear th '10 Fyah Side' brand.

The owner of popular Clarendon eatery Fyah Side has secured another injunction against a business-woman restraining her from using the trademark, pending a final decision on rights to the name.

The decision by Court of Appeal Justice Hilary Phillips reverses the ruling of Supreme Court Justice Kissock Laing, who had refused to grant the restraining order to David Orlando Tapper, proprietor of Fyah Side Jerk and Bar.

Tapper has been trying to bar Heneka Watkis-Porter from using the marquee 10 Fyah Side at her business, which she operates from Devon House in Kingston.

Tapper has operated his Fyah Side business at Toll Gate, Clarendon, for more than seven years, while Watkis-Porter has been in business for just over two years.

He had obtained an interim injunction in July 2015 barring Watkis-Porter from using the marks, pending an appeal against Justice Laing's order.

In the written decision made last week, Justice Phillips said that upon a proper assessment of each party's case, it would appear that Tapper has a stronger case than Watkis-Porter.

She found, contrary to Justice Laing, that there was no inordinate delay on Tapper's part in taking steps to protect his rights.

Justice Phillips said Tapper pursued the protection of his brand in the entity established pursuant to the Trade Marks Act, which governs the regime for the protection of trademark rights.

"The balance of convenience, therefore, in all the circumstances, in my opinion, lies in granting the injunction," the judge ruled.

The Court of Appeal also found that Justice Laing had misapplied some critical aspects of the evidence before him.

"As a consequence, the court can disturb his conclusion as the exercise of his discretion was palpably wrong," Justice Phillips said.

Tapper is a sole trader who carries on business as Fyah Side Jerk and Bar, a full-service restaurant and bar located in an area of Toll Gate known as Race Course, from where he prepares and sells jerked pork, fish, chicken, sausages and soups; and produces sauces and seasoning used in the preparation of the meals. The sauces and seasonings are also sold as separate products.

Watkis-Porter is the chief executive officer of Patwa Apparel, a company which designs, markets and distributes clothing. It utilises Patois as a major part of its business model under two brands: 'Patwa Apparel' and '10 Fyah Side', the latter used by Watkis-Porter to sell jellies, jams, sauces, seasoning and condiments.

Tapper said he became aware of Watkis-Porter's use of the mark '10 Fyah Side' when he tried to register his trademark at the Jamaica Intellectual Property Office (JIPO). He was told then that an application was pending for '10 Fyah Side' and prevented from registering his marks.

Tapper filed a notice of opposition to Watkis-Porter's application for registration with JIPO. Both parties have filed evidence at JIPO in support of their cases.

In outlining the background to the case in her February 19, 2016 decision, Justice Phillips noted that up to November 2015, when the case was last heard by the Court of Appeal, the matter at JIPO was yet to be determined.

Attorney Keachea Dixon, who represented Watkis-Porter, had asked the appellate court not to disturb the finding of Justice Laing, saying the upper court would be disturbing the status quo and may influence the decision of the JIPO registrar.

mcpherse.thompson@gleanerjm.com