Commercial High Court gives interim relief in trademark dispute

Thursday, 10 October 2019 02:42 - - {{hitsCtrl.values.hits}}

L.G. Harris & Co. Ltd. (Plaintiff) recently instituted legal action against HCL Brush Manufacturers Ltd. and Harris Distributors Ltd. (Defendants) in the Commercial High Court Colombo alleging unfair competition.

HCL Brush Manufacturers (formerly known as Harris Ceylon Ltd.) and Harris Distributors were the licensee and sub-licensee respectively for importing, manufacturing and distributing ‘Harris’ and ‘Harris Classic’ brushes in Sri Lanka and maintained a longstanding business relationship with the Plaintiff in the capacity of the licensee and sub-licensee.

The Plaintiff states that subsequent to the termination of the License and Sub-License Agreement around 2 August 2018 the Defendants were required to change their corporate name removing the mark ‘Harris’.

The Plaintiff alleges that the Defendants engaged in acts of unfair competition by launching their own product line of paint brushes, which resembles the original ‘Harris Classic’ brush, under the mark ‘HCL’, by adopting a similar font style for their the mark ‘HCL’ to that of the Plaintiff’s mark ‘Harris’ and by deliberately promoting their brushes under the mark ‘HCL’ which was confusingly similar to the Plaintiff’s mark.

The Plaintiff further submitted that the Defendants’ blatant attempt to confuse the public was further evident as the paint brushes launched by the Defendants under the labels ‘HCL Classic Supreme’ and ‘HCL Excel’ were closely akin in appearance to the original ‘Harris Classic’ paint brush produced by the Plaintiff.

The Plaintiff also submitted that by the advertisements, advertorials and Facebook posts published by the Defendants, any average consumer will be misled into believing either that the brushes under the mark ‘HCL’ originate from the Plaintiff and/or ‘Harris’ has been rebranded as ‘HCL’, thus causing confusion or confusion relating to the likelihood of association between the brand ‘Harris’ and the brand ‘HCL’.

Taking into consideration the submissions made by all the parties the Order was delivered by Justice Rathnapriya Gurusinghe on 4 October, granting the interim injunctions sought by the Plaintiff preventing the Defendants from using the mark ‘HCL’, from using the company name ‘HCL Brush Manufacturers (Private) Ltd. and Harris Distributors (Private) Ltd.’, from manufacturing, selling brushes resembling the Plaintiff’s ‘Harris Classic’ brushes, under the brand names ‘HCL Classic Supreme’ and ‘HCL Excel’ and from using the words ‘HCL’ or ‘Harris’ in Defendants’ company names.

Counsel Avindra Rodrigo PC with Oshani Wijewardena instructed by FJ & G De Saram appeared for the Plaintiff while Dinal Philips PC with Nilshantha Sirimanna instructed by Nithi Murugesu Associates for the Defendants.