Thursday, 4 December 2014 00:00
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The legal battle between the marks ‘LuvEsence’ and ‘LUV SL’ was instituted by the proprietor of the former mark, Janet Lanka Ltd. (Plaintiff), the pioneer in the manufacture of personal care and beauty products around 3 February 2014 to restrain the corporate giant ODEL Plc (Defendant) from preventing and interfering with the use of their (Janet’s) mark ‘LuvEsence’.
This Case No. 05/2014/IP was filed in the Commercial High Court of Colombo in consequence to the numerous attempts made by ODEL to prevent Janet from using their mark ‘LuvEsence’ on the frivolous basis that it was confusingly similar to ODEL’s mark ‘LUV SL’.
Janet developed the Sri Lankan brand ‘LuvEsence’ around 2010 and products under this label are being sold in several exclusive boutiques located in Crescat Boulevard, Majestic City and the Commons Coffee House.
The line of Personal care products under the ‘LuvEsence’ label is gaining popularity among many Sri Lankan and foreign consumers. The ‘LuvEsence’ brand was advertised and promoted extensively through the electronic and print media, gaining recognition through the sponsorship of various events and radio shows including the Colombo Fashion Week Supermodel Sri Lanka, Murali Cup 2013, Lite 87 FM for Miss Universe Sri Lanka 2013, Life Online Miss Popularity title for Lite 87 FM Miss Universe Sri Lanka 2013, etc.
ODEL Plc, the proprietor of the mark ‘LUV SL’ which derives from the concept of ‘Love for Sri Lanka’ which was initially used for a line of souvenirs, demanded 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.
ODEL went on to argue that they have priority in the use of their mark ‘LUV SL’ and that Janet knowing the existence of the mark ‘LUV SL’ attempted to piggy-back on the goodwill and reputation of ODEL and pass off their brand ‘LUV SL’ by adopting a mark which is confusingly similar.
Janet took on the challenge and instituted action against ODEL under the Intellectual Property Act seeking injunctive relief against ODEL to prevent them from restraining and interfering with the use of their mark ‘LuvEsence’.
ODEL also sought relief from Court in the same action to prevent Janet from using their mark ‘LuvEsence’ claiming exclusive rights to use the term ‘LUV’. 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.
The judge of the Commercial High Court of Colombo, L.T.B. Dehideniya, in his order dated 28 November 2014, agreed with the Plaintiff on the point that one cannot claim exclusive rights over dictionary term descriptive of the goods, such as ‘LUV’ and that the Defendant therefore cannot prevent the Plaintiff from using this term in their mark.
The judge further 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) are 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. The judge went on to say that the targeted market of products under the two labels is an enlightened fraction of upper middle-class society who were able to distinctly identify the two marks without difficulty.
The judge granted the interim injunction sought by Janet (Plaintiff), restraining ODEL Plc from preventing, obstructing and interfering with the use of their (Plaintiff’s) mark ‘LuvEsence’, on the basis that the Plaintiff has established a prima facie winnable case before court, refusing to grant the interim injunction sought by the Defendant (ODEL) to prevent the Plaintiff from using their mark ‘LuvEsence’ as there has been no violation of the intellectual property rights of the Defendant (ODEL).
Counsel Avindra Rodrigo with Rozali Fernando instructed by F.J. & G De Saram appeared for the Plaintiff, Janet Lanka while President’s Counsel Harsha Amarasekera with Shehan Gunawardene instructed by Julius & Creasy appeared for the Defendant, ODEL Plc in this case.
The inquiry into the permanent injunction will commence on 3 March 2014.
