Having heard oral submissions from parties on 27 July, the Commercial High Court made an Order granting two Interim Injunctions in favour of Tokyo Cement Company (Lanka) PLC (the Plaintiff) against Tokyo Elevators and Escalators Ltd. and its Directors (the Defendants).
The order, firstly, restraining and preventing the Defendants from the use of the Plaintiff Tokyo Cement’s trademark/trade name with a misleadingly similar sign to that of the Plaintiff Tokyo Cement’s distinct striped pyramid shape and/or in any other misleadingly similar form or manner carrying the Plaintiff Tokyo Cement’s trademarks or trade name and secondly, restraining and preventing the Defendants from using the Plaintiff Tokyo Cement’s trademark/trade name or any word which is misleadingly similar to the Plaintiff Tokyo Cement’s trademarks or trade name as a part of ‘Tokyo Elevators’ name and/or in any manner whatsoever to identify ‘Tokyo Elevators’.
Commercial High Court Judge Frank Gunawardena, having heard oral submissions on 27 July, made the Order in respect of the Interim Injunction Inquiry on behalf of the Plaintiff Tokyo Cement and the Defendants, granting the two Interim Injunctions against ‘Tokyo Elevators’ and its Directors Maddumage Kaumadi Upekshika Fernando and Maddumage Lakshan Udayanga Fernando, to be in effect until the conclusion of the trial.
The Plaintiff Tokyo Cement Company (Lanka) was represented in Court by President’s Counsel Dr. Harsha Cabral with Nishan Premathiratne, Migara Cabral and Krishan Fernandopulle Attorneys-at-Law appearing on the instructions of Messrs Julius and Creasy Attorneys-at-Law. The Defendants Tokyo Elevators and Escalators Ltd. and its two shareholder directors were represented by President’s Counsel Farman Cassim with Charaka Jayaratne Attorney-at-Law appearing on the instructions of Dimuthu Kuruppuarachchi. The High Court Judge, when granting the Interim Injunctions, considered that the Plaintiff was the registered mark owner of several marks encompassing the word ‘TOKYO’ along with a striped pyramid shape, thus prima facie the Plaintiff Tokyo Cement had exclusive rights in terms of Section 121 of the Intellectual Property Act No. 36 of 2003.
The judge also considered the concept of “well-known marks” and the requirement of infringement being on the basis of “imperfect recollection” as set out in two celebrated cases. Tokyo Cement Company (Lanka), which was established in 1982, is one of Sri Lanka’s leading cement manufacturers and the parent company of the Tokyo Cement Group which consists of Tokyo Super Cement Lanka Ltd., Tokyo Cement Power Lanka Ltd., Tokyo Super Aggregate Ltd., Tokyo Eastern Cement Company Ltd., and Tokyo Supermix Ltd. The Plaintiff’s activities are not only limited to manufacturing, research, product innovation, marketing and distribution of cement and cement-based products but have expanded into various other areas as well.
As set out in the Plaint, the Plaintiff Tokyo Cement instituted this case on or around 18 October 2019 on the grounds of Trademark infringement, infringement of Trade name and Unfair Competition by the Defendants and an ex parte Enjoining Order restraining and preventing the Defendants from the use of the Plaintiff Tokyo Cement’s trademark/trade name with a misleadingly similar sign to that of the Plaintiff Tokyo Cement’s distinct striped pyramid shape and/or in any other misleadingly similar form or manner carrying the Plaintiff Tokyo Cement’s trademark or trade name was granted.
Thereafter, the Defendants came to courts and filed Objections to the Interim Injunction inquiry. Contempt proceedings were also filed by the Plaintiff Tokyo Cement against the directors of Tokyo Elevators which are for the time being laid by.
The matter has now been fixed for the Defendants’ Answer for 9 October.