Commercial High Court issues Enjoining Order against use of “Thilakawardhana”

The plaintiffs Sunil Thilakawardhana, and seven other companies under the Thilakawardhana Group instituted legal proceedings before the Commercial High Court of Colombo, on a plaint filed before it, against Thilakawardhana Solar Power Solutions Ltd., Thilakawardhana Construction Ltd. and T.C. Thilakawardhana Group Ltd. and the Court recently issued an Enjoining Order against all the defendants.

The plaintiffs had set out in the plaint that Thilakawardhana Solar Power Solutions Ltd., Thilakawardhana Construction Ltd., and T.C. Thilakawardhana Group Ltd. (the defendants) are engaged in unlawful and illegal activity by infringing the plaintiffs’ Intellectual Property rights under the Intellectual Property Act No. 36 of 2003.

As set out in the plaint, the Thilakawardhana Group has its roots traced to Sunil Thilakawardhana who established Thilakawardhana Textiles’ in 1986 and expanded the business into a successful venture with numerous successful companies under the Thilakawardhana Group.

The plaintiffs took out the position in the plaint that the Thilakawardhana Group is well established in multiple locations which include Kiribathgoda, Ja-Ela, Nittambuwa, Kandy, Kadawatha, Wattala and Gampaha providing a wide variety of goods under one roof making them effectively a one stop shop and also serves the public through its online presence https://www.thilakawardhana.com

The plaintiffs set out in the plaint that, over the years they have gained immense goodwill in respect of the level of quality at which goods and services have been provided by the different companies of the plaintiffs’ operating under the ‘Thilakawardhana’ name/brand. The plaintiffs also stated to Court that the plaintiffs have registered trademarks containing the ‘Thilakawardhana’ name and that the ‘Thilakawardhana’ name/brand have amassed immense goodwill in multiple business activities and are well-known with the general public and in most households in Sri Lanka.

Furthermore, the plaintiffs demonstrated through their plaint that due to the extensive island-wide reputation garnered by the plaintiffs over the years, the trading name/brand name ‘Thilakawardhana’ has now been identified to be a well-known name/brand, exclusively and distinctively attached to the plaintiffs and their line of businesses.

The plaintiffs set out in the plaint that the common contact number of the plaintiffs started receiving calls inquiring about solar solutions and on a further inquiry it was found out that the defendants were maintaining three separate Facebook pages containing the name ‘Thilakawardhana’ with the exact spelling as the plaintiffs without in any manner attempting to differentiate themselves from that of the plaintiffs’ trade name/trademarks and had used an address in the same locality as of the plaintiffs despite there being no registered office at the address mentioned.

As set out in the plaint, the plaintiffs further demonstrated that it was clear that the defendants had intentionally advertised using the plaintiffs’ trademark/trade names and using an address in a locality where the plaintiffs maintain a prominent presence with the intention of clearly piggy-backing on the goodwill and reputation of the plaintiffs.

The plaintiffs further set out in their plaint that through all of the forgoing acts, the defendants are engaging in conduct that constitutes acts of infringement of the plaintiffs’ Intellectual Property rights in violation of the provisions in the Intellectual Property Act No. 36 of 2003.

The plaintiffs sought inter alia, injunctions and orders of accounting for profits in respect of the violations done by the defendants pertaining to the plaintiffs’ use of the lawful, trademark/trade name, as well as engaging in acts contrary to honest trade practices and amounting to unfair competition, in contravention to the Intellectual Property Act No. 36 of 2003, by using names misleadingly and confusingly identical and/or similar to the “Thilakawardhana” trading name of the plaintiffs.

High Court Judge Priyantha Fernando, having considered the submissions made on behalf of the plaintiffs’ in the first instance on the 31 January 2023, moved to issue an Enjoining Order restraining and preventing the defendants through its agents and/or servants and/or shareholders and/or directors and/or otherwise directly/indirectly from the use of a trade name identical and/or similar and/or having an overall resemblance to that of the plaintiffs’ trade name/trademarks or a part of the plaintiffs’ trade name/trademarks, without the consent of the plaintiffs.

The plaintiffs were represented in Court by Nishan Premathiratne, Krishan Fernandopulle and Vikum Jayasinghe Attorneys at-Law appearing on the instructions of Messrs Sarravanan Neelakandan, Law Associates. All the defendants were represented by Attorney-at-Law Ravindranth Dabare who requested a date for objections to be filed. The Enjoining Orders granted in favour of the plaintiffs were extended till 28 February 2022.