Janet Lanka secures interim injunction in trademark battle against ODEL
View(s):Janet Lanka (Pvt) Ltd, a Sri Lankan pioneer in the manufacture of personal care and beauty products, recently won an interim injunction against retail store giant ODEL PLC in a dispute over trademarks – ‘LuvEsence’ and ‘LUV SL’.
Janet, the smaller firm owning the ‘LuvEsence’ brand, had instituted action against ODEL in the Commercial High Court in February this year to restrain the latter from preventing and interfering with the use of Janet’s ‘LuvEsence’ mark.
The action followed many efforts by ODEL to prevent Janet from using its mark ‘LuvEsence’ on the grounds that it was confusingly similar to ODEL’s mark ‘LUV SL’.
Commercial High Court Judge L.T.B. Dehideniya, in his order dated November 28 agreed with the plaintiff (Janet) on the point that one cannot claim exclusive rights over dictionary term descriptive of the goods, such as ‘LUV’ and that the defendant (ODEL) therefore cannot prevent the plaintiff from using this term in their mark.
The judge, according to the verdict, also agreed with the plaintiff’s argument that the two marks when considered as a whole (‘LuvEsence’ including the logo of a tree and ‘LUV SL’ including the logo of an elephant) is not visually or phonetically similar as there are several distinct characteristics including the colour combinations which enable the public to distinguish between the two marks both visually and phonetically. The interim injunction restrains ODEL from preventing, obstructing and interfering with the use of the plaintiff’s mark ‘LuvEsence’.
The plaintiff Janet said that the company developed the Sri Lankan brand ‘LuvEsence’ on or around 2010 and products under this label are being sold in several exclusive boutiques located in Crescat Boulevard, Majestic City and Commons Coffee House. The line of Personal care products under the ‘LuvEsence’ label, it said, is gaining popularity among many Sri Lankan and foreign consumers.
ODEL, the proprietor of the mark ‘LUV SL’, had wanted Janet to refrain from using their mark ‘LuvEsence’ on the basis that the two marks were confusingly similar resulting in the violation of the intellectual property rights of ODEl by Janet.
Janet argued that no exclusive rights can be claimed by ODEL to use a dictionary term such as ‘LUV’ which is used by many others around the world in conjunction with another term (such as Choco Luv, Luv n’ Care, LUVNATURALS etc.). The term LUV cannot be considered in isolation when comparing the marks and the two marks as a whole must be taken into account.
Avindra Rodrigo, with Ms. Rozali Fernando instructed by F.J. & G De Saram appeared for the plaintiff whilst Harsha Amarasekera -PC with Shehan Gunawardene instructed by Julius & Creasy appeared for ODEL. Inquiry into the permanent injunction will commence on March 3, 2015.