Guyana is in court battles in two countries following lawsuits filed by a Canadian company owned by a Guyanese-born man, but now operated by his two sons, which is in a tussle with the Government and the Guyana Sugar Corporation (GuySuCo) over the trademark ‘Demerara Gold’.
Following the government’s onslaught, through Minister of Agriculture Robert Persaud, on the company over the use of the words on its sugar which is not produced in Guyana, accusing it of deceit among other things, the sons of Lionel Bedessee, owners of Bedessee Imports Inc, through his lawyers filed lawsuits in Canada and the US.
The company did not only name Persaud and GuySuCo as defendants but in the lawsuit in Canada, Guyana Observer, NCN, Kaieteur News, Guyana Times and Guyana News Today were also named as defendants.
In June, Persaud and GuySuCo lost round one of the battle as their attempts to have the lawsuit thrown out or stayed until the determination of the similar case in New York were denied by Judge G.R. Strathy.
A victory was however won in the New York court when Judge Joan Azrack granted the government an order requesting that proprietary and confidential business or governmental information, politically sensitive information and other matters that could cause “competitive, governmental, or political injury or damages if such information were disclosed…” must remain confidential. The motion filed by the government to have such information protected was supported by Bedessee.
According to the ruling by Canadian Judge Strathy, Demerara sugar, made directly from the juice of the sugar cane and noted for its coarse and sticky amber crystals, had its origins in the early 1800s in the plantations of the Demerara district of what was then British Guiana, now the Cooperative Republic of Guyana.
He said that today, sugar calling itself ‘Demerara,’ is produced in several countries, including Mauritius, Barbados, India and Malawi, as well as Guyana and this has been a source of concern for GuySuCo.
In their motion GuySuCo and Minister Persaud through their lawyers raised the issue of whether the doctrine of sovereign immunity applies to allegedly defamatory public statements made or authorized by Persaud, in which he stated, among other things, that the plaintiffs’ sugar – produced in Mauritius and sold as ‘Demerara Gold’ with a map of Guyana on the label – was being deceptively marketed as a Guyanese product. They asked that this action be stayed or dismissed against them, primarily based on the State Immunity Act, which provides, among other things, that a foreign state or its agency (which would include Minister Persaud) is immune from the civil jurisdiction of a Canadian court except in proceedings relating to either the “commercial activity” of the foreign state or to “damage to or loss of property” that occurred in Canada.
However, the judge said “in my view, the statements at issue have a stronger nexus to the commercial activities of the Guyanese state, carried on through its wholly-owned state sugar company GuySuCo, than they do to the sovereign interest of Guyana in informing and protecting the Diaspora or promoting agricultural activity in general.
“To use the language of the Supreme Court in Re Canada Labour Code, at para. 62, these statements relate “most obviously and directly” to the commercial activities of the Guyanese state. The statements promoted Guyana’s “brand” and disparaged the brand of a competitor. To permit a lawsuit by Bedessee in relation to such activity is neither an affront to the dignity of the Guyanese state nor an interference with its sovereign functions,” the judge said.
He then dismissed the motions without prejudice to the right of the defendants to move for a stay should the New York action be permitted to proceed and the parties are unable to agree on measures to prevent duplication of issues and potential inconsistent results.
“The motion is therefore dismissed, with cost. If counsel are unable to agree on the amount of costs, written submissions may be made to me…” the judge said.
No Guyanese Demerara sugar
According to the background of the case, as provided in the decision seen by this newspaper, Bedessee Imports Ltd was founded by Lionel Bedessee, who went to Canada from Guyana in 1971. Then it was difficult to find Caribbean foods in Ontario and Bedessee began to import food from that region. In 1977, he started a retail store selling Caribbean food on Queen Street West in Toronto and from that store, the business has grown and prospered to the extent that at present it operates from a 46,000 square foot warehouse and manufacturing facility in Scarborough. Bedessee Imports Inc. was incorporated on September 23, 1985 to carry on the same business in the United States. It has a warehouse in Brooklyn, New York and a wholesale outlet in Florida, both of which are now managed by the founder’s sons.
The products marketed by Bedessee include raw cane sugar from Mauritius, which it sells under the trademark ‘Demerara Gold’, a mark it has been using for sugar and other products since at least 1984. The product label contains a map of Guyana. Bedessee also markets a brown sugar product described as ‘Guyanese Pride,’ which also has a map of Guyana on the label. Neither product contains Guyanese Demerara sugar.
About Guyana, the judge said “A small country, it faces significant economic challenges and the sugar industry plays an important role in the economy. Some 500,000 Guyanese expatriates, referred to as the “Diaspora,” live abroad, principally in Canada, Great Britain and the United States. The evidence is that there is a passionate and patriotic relationship between the Diaspora and Guyana and that the Diaspora is an important constituency for the Guyanese government and for Guyanese businesses exporting products abroad,” the judge wrote.
He said Guyana’s sugar industry has been one of the most important sectors of its economy since its colonial beginning in 1816.
Not a recent controversy
According to the judge the right to use the name ‘Demerara’ in relation to sugar products is not a recent controversy. It recalled that in the case Anderson v. Britcher (1913), 24 Cox’s Criminal Law Cases, 60, a matter that was taken before the English Kings Bench Division on a stated case by the metropolitan police magistrate, the respondent had been charged with unlawfully selling as ‘Demerara sugar’ a sugar that was “cane sugar crystals coloured with an organic dye foreign to genuine Demerara sugar, so that the sugar was not of the quality, substance, or nature of the article demanded by the purchaser.”
It was found that the sugar was a crystallized cane sugar grown in Mauritius and coloured with dye. The magistrate had dismissed the charge, finding that the term ‘Demerara sugar’ was a “… generic term applicable to any sugar of the substance, kind, and colour of the sugar in question wherever produced, and that therefore the said sugar was of the nature, substance, and quality of the article demanded by the appellant, the purchaser, and that accordingly the sale was not to his prejudice, and that no offence had been committed by the respondent.”
The matter was appealed but it was dismissed and the judge stated that:
“It would appear that ‘Demerara sugar’ does not mean sugar having certain qualities peculiar to Demerara sugar, but it means a sugar which is cane sugar and which has a particular colour owing to certain treatment, and it is stated that Demerara sugar as originally produced was white, and probably if a person asked for Demerara sugar and was offered real Demerara sugar in its natural state he would refuse it. This sugar which the appellant got when he asked for Demerara sugar was Demerara sugar in every single particular as understood by everybody who deals with such things, except that it was grown, not in Demerara, but in Mauritius.”
“It was stated and admitted that with regard to Demerara sugar the word ‘Demerara,’ as applied to sugar, does not mean sugar grown only in Demerara; it means sugar grown in Demerara, or in Grenada, Martinique, or St. Kitts, or Tobago, or Barbados, or Dominics [sic] or in many other islands of the West India group, and therefore the case really is hardly distinguishable from that of a Brussels carpet, which nobody supposes to be necessarily a carpet made in Brussels, or the case of a Cambridge sausage, which I suppose nobody believes to come necessarily from Cambridge.”
According to the judge “moving rapidly forward well into the 20th century”, Bedessee’s un-contradicted evidence is that it has been using the name ‘Demerara Gold’ as a trademark for sugar and other products in Canada and the United States since at least 1984.
On the other hand GuySuCo’s evidence is that, prior to 2003, its marketing was relatively unsophisticated.
“It sold sugar for export primarily in the Caribbean region, and the sugar was sold ‘nameless’ in unlabeled 50 kg. bags with unsophisticated packaging.”
It was in April 2003, according to the judge GuySuCo launched its first branded sugar for the retail trade, which it called ‘Demerara Gold’, the same name used by Bedessee.
GuySuCo began a process of registration of the name or mark ‘Demerara Gold’ in Europe, Trinidad and Tobago, Antigua and Guyana and it had other applications in progress in the West Indies. It registered the mark in the Supplemental Register in the United States, presumably because it could not meet the requirements for registration on the Principal Register.
In October 2003 GuySuCo wrote to Rayman Bedessee, and invited him to submit an application for a distributorship of GuySuCo’s ‘Demerara Gold’ product in Canada. Bedessee replied that although he would be happy to buy bulk sugar from
GuySuCo, and stated: “[P]lease be advised that this brand [‘Demerara Gold’] is owned and used in Canada by Bedessee Imports Ltd. It is a trademark. We would be unable to use your mark, and you will be unable to sell your brand to anyone in Canada and USA.”
Shortly after the launch GuySuCo applied to the Canadian Intellectual Property Office to register the mark. This prompted an opposition by Bedessee, which later applied to register the same mark. GuySuCo in turn filed an opposition to Bedessee’s application.
GuySuCo subsequently abandoned its Canadian application for registration of “Demerara Gold” as its trade mark.
The lawsuits
It was following GuySuCo’s apparent failure to have the Demerara Gold trademark registered in the US and Canada that a campaign was launched against Bedessee by Minister Persaud resulting in the lawsuits against the minister, GuySuCo and others including David Narine, (alleged to be a representative of GuySuCo in the United States), and various newspapers. The suits claim that they made false statements concerning Bedessee’s business and products, and have “disparaged their Canadian and United States trademark ‘Demerara Gold.’”
One of the statements singled out by the Canadian judge was part of a June 9, 2009 Ministry of Agriculture media release. The release among other things urged Guyanese in the Diaspora not to purchase any product that “is deceptive and misleading, creating an impression that they are made in Guyana.”
In New York the company is seeking injunctive and monetary relief arising out of alleged “acts of trademark infringement…; false advertising..; defendants dilution of the distinctive quality of plaintiff’s trademarks… and for cancellation of defendant’s fraudulently procured trademark registration.”
The company said its US website lists nearly 1,500 different food and food-related products that it is authorized to offer for sale and sell under various brands and trademarks. These trademarks include Demerara Gold and Guyanese Pride, which it said are distinctive of its goods and services and as indicating the company as the source of origin of those goods and services.
It said that GuySuCo and the Government of Guyana “have been distributing, promoting and selling the infringingly marked Demerara Gold goods in the United States commerce with knowledge of Bedessee’s superior and established rights to the distinctive Demerara Gold mark and name for the purposes of trading upon Bedessee’s goodwill and reputation, creating in consumers’ minds an association with Bedessee and giving GuySuCo’s goods a salability they otherwise would not have.”
In its application, which has twelve claims, the company is accusing the defendants of false advertisement and libel.
It cited alleged trademark infringement and unfair competition; false advertising; trademark dilution; injury to business reputation; common law and commercial defamation; common law product disparagement; tortuous interference with contractual relations; tortuous interference with prospective economic advantage; deceptive acts and practices; common law unfair competition; cancellation of registration; and civil liability for false or fraudulent registration as claims for relief in the New York law suit.
The company is demanding a trial by jury on all the claims.
