Global IP Matrix - Issue 8

Contributors
Mrs Sarah Norkor Anku, Senior partner at Anku.Anku
At-Law
www.ankuatlaw.com
Tatiana Pogrebinskaya, Trademark Attorney at
Gorodissky & Partners, Russia.
www.gorodissky.com
Laura Castillo Sepúlveda Partner at INNVENTIVA -
Espacio Legal
www.innventivalegal.com
Simran Bhullar (Associate) at LexOrbis, India
www.lexorbis.com
Caitlin Kavanagh, Marketing Manager at
Minesoft, UK
www.minesoft.com
Alec Griffiths, IP Manager at
Patent Seekers, UK
www.patentseekers.com
Cementing
Trademark Rights
Anomi I Wanigasekera - Partner and head
of IP at Julius & Creasy
www.juliusandcreasy.com
Co-Authored by Navindi Naotunna, Associate
at Julius & Creasy Law firm,
Sri Lanka
www.juliusandcreasy.com
Manisha Singh, Partner at LexOrbis, India
www.lexorbis.com
EDRADEMARK
AEERE
International Intellectual Property Attorneys
Trademark, Patent, Design, Copyright, Domain name
registration, litigation & enforcement services
125mm (H) x 180mm (W)
Ifeanyi E. Okonkwo, Associate at
Stillwaters Law Firm
www.stillwaterslaw.com
Ray Zhao, Senior Partner at
Unitalen Attorneys at Law, China
www.unitalen.com
Pakistan Office:
(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
Email: UnitedTrademark@UnitedTm.com
Websites: www.utmps.com and www.unitedip.com
In July 2020, the Commercial High
Court of Colombo ruled that Tokyo
Cement Company (Lanka) PLC
had established a prima facie case
to use the word ‘Tokyo’ exclusively
along with the distinctive triangular
shape logo as its trademarks. This
is an important ruling because it
established that even though using
a geographical name is a public
interest right, it does not trump
acquired intellectual property rights
when the name itself does not act as
a trademark.
Background
Tokyo Cement Company, the Plaintiff, is
one of the leading cement manufacturers in
Sri Lanka. They are the owner of multiple
trademarks bearing the term ‘Tokyo’ and
‘Tokyo Super’ registered for manufacturing
cement in class 19. Most of their marks
contain a distinct shape that is readily
identifiable and distinctively associated
exclusively with the Plaintiff. Since 1982,
the Plaintiff has been using the trading
name and trademarks containing the word
‘Tokyo’.
The Defendant, Tokyo Elevators and
Escalators (Private) Ltd, is a specialised
elevator enterprise that designs, manufactures,
processes the elevators and parts, and has
been in business since 2011.
Tokyo Cement discovered that Tokyo
Elevators are using a billboard that had
incorporated ‘Tokyo’ along with a shape
that is misleadingly similar to their
trademarks and the distinctive shape of
their trademark.
Authored by Anomi Wanigasekera, Partner & Head of Intellectual
Property Division & Co-Authored by Navindi Naotunna, Associate at
Julius & Creasy Law firm, Sri Lanka - www.juliusandcreasy.com
Tokyo Cement made the fateful decision
to start proceedings for infringement of
its registered trademarks, tradenames,
and contravention of the provisions of the
Intellectual Property Act for dishonest acts to
gain unfair advantages.
The Plaintiff’s Arguments
Tokyo Cement’s first argument was that
they have the exclusive right to trademarks
comprising of the word or the name ‘Tokyo’
and the triangular shape logo because they
designed it for themselves and that they
have used it for a long time. They argued
they have used it since 1982 and are wellknown.
Therefore, although the trademark
is registered for manufacturing cement, no
other person is entitled to use it for any other
product. They further argued that even if the
trademark is not registered, no other person
can use its name and logo for any other
product as his logo and name goes along with
the acquired goodwill/reputation.
The Defendant’s Arguments
Tokyo Elevators argued that Tokyo Cement
had not placed any evidence on establishing
they have used the said triangular shape logo
along with the name ‘Tokyo’ from 1982 and
denied their claim. Their second argument
was that the Plaintiff is not entitled to deprive
the Defendants by using a Geographical name,
which is ‘Tokyo’. Further, they argued there is
no proof that the Defendants have misled any
public member and invited the court to make
a side-by-side comparison.
Decision
Gunawardhena J upheld Tokyo Cement’s
application.
Having examined both marks, his Honour
found that the mark and the name
‘Tokyo’ even compared side by side, had very
similar resemblances. His Honour accepted
that the law provides, trademarks do not
need to resemble or appear to a third party,
similar when it is compared side by side. It
is the mind’s impression of the mark that is
critically important (Societe Des Produits
Nestle SA v Multitech Lanka (Pvt) Ltd). His
Honour accepted that if the phonetic sound
misleads the public, then there is always
unfair competition.
Gunawardhena J accepted that the word
‘Tokyo’ is a Geographical name. However,
since the word ‘Tokyo’ is used along with
a triangular shape mark with two parallel
horizontal lines, and registered under class
19, his Honour held that Tokyo Cement has
exclusive rights for the mark. Tokyo Elevators
lost the claim because they had not registered
their mark, even though they claim to have
been using it.
Regarding the products of the parties,
his Honour relied on the judgment of the
High Court of Delhi, in Daimler Benz
Aktiegesellschaft Vs. Hybo Hindustan and
accepted that no person can use a reputed
trademark for propagating their products.
The crux of these findings came back
to the question of the Tokyo Elevators
trademark misleading the general
public. His Honour found that even
though they are two different products,
originating from different countries,
Tokyo Elevators are recurrently and
continuously unfairly competing
with Tokyo Cement by using similar
trademarks that are cherished
intellectual property rights of Tokyo
Cement.
Tokyo Elevators has appealed.
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