Two Sri Lankan cement makers reach settlement over trade mark dispute
View(s):Tokyo Cement Company (Lanka) PLC has agreed to a settlement over a suit filed against Ruhunu Lanka Cement (Pvt) Ltd in the Commercial High Court of the Western Province in a trade mark infringement dispute.
Tokyo Cement has alleged that the trade names of the brands that the two companies distributed were similar and filed action.
Tokyo Cement distributes under various brands including Tokyo Super, Mitsui and Nippon. The company stated that it was in joint venture with Japan’s Mitsui Mining Co Ltd (now Nippon Coke and Engineering Company Ltd), and used its brand name Mitsui and Nippon in its distribution brands.
The defendant, Ruhunu Lanka Cement, is part of distribution conglomerate, Hansagiri Group of Companies and is the sole agent in Sri Lanka for DG Cement Industries (Pakistan). It distributes under cement brands such as Ruhunu Cement, Maha Cement, DG Cement and Mitsuki, a media release from Ruhunu Lanka said.
“Thus, the plaintiff said that the defendant’s brand name ‘Mitsuki Cement’ was confusingly similar to the Plaintiff’s own brand ‘Mitsui Cement’ along with the prominent green and red horizontal lines and blue lettering, which were in both brand logos. The plaintiff, represented by Eraj De Silva, instructed by Anusha M. Fernando, declared that the aforesaid stylised presentation and trade name had come to be used exclusively by the plaintiff for which they have gained a market reputation. And stated that the defendants were ‘attempting to piggyback on and usurp the goodwill of the plaintiff’s products’,” the release said.
Defendant’s Counsel led by Manoj Bandara with Hasitha Gamage, instructed by Sudath Perera Associates, argued that the intellectual property right of the trade name “Mitsui” belongs to Mitusi & Co Ltd of Japan, which the plaintiff had allegedly been using without the authority of Mitsui & Co Ltd. It was also questioned whether the plaintiff actually had any intellectual property rights in Sri Lanka in respect of the “Mitsui” trade name, since they were not seen to be registered as a licensee of any “Mitsui” trademark.
Further in regard to the confusion of the two similar names, it was stated that, since the plaintiff was abandoning the brand “Mitsui” and changing to “Nippon”, therefore “Mitsui” and “Mitsuki” would not be seen in the market at the same time, the release added.
Both parties mutually agreed to a settlement. The defendant, Ruhunu was able to continue to retain its trade name “Mitsuki” and, in order to avoid any confusion, said they would no longer use the aforementioned green and red horizontal logo getup in their packaging/ trade dress. However the defendant would continue to distribute the remaining stock of cements with the aforesaid logo within a given time period.