‘Thilakawardhana’ Group of Companies precludes exclusive use of name by third party

‘Thilakawardhana’ Group of Companies recently precluded exclusive use of its name by a third party.

This is following the Plaintiffs, Sunil Thilakawardhana, Thilakawardhana Textiles Ltd., Thilakawardhana Textiles Chains Ltd., Thilakawardhana Textiles KY Ltd., Thilakawardhana  Textiles RD Ltd., Thilakawardhana Online Ltd., Thilakawardhana Group of Companies Ltd., and Thilakawardhana Cellular Ltd., instituting legal proceedings in Case bearing No. CHC/03/2023/IP before the Commercial High Court of Colombo against 3 Defendant Companies namely Thilakawardhana Solar Power Solutions Ltd., Thilakawardhana Construction Ltd., and T C Thilakawardhana Group Ltd., on the basis that they were unlawfully using the name ‘thilakawardhana’ in a manner likely to mislead and confuse the general public.

The Plaintiffs’ set out in their Plaint that Thilakawardhana Group of Companies has its roots tracing as far back as 1986 to when Sunil Thilakawardhana established Thilakawardhana Textiles. Since its humble beginnings, Thilakawardhana Group of Companies has accrued substantial repute in Sri Lanka for being an accessible department store amassing an ever-increasing customer base and has expanded the business into the successful venture it is today with numerous successful companies under the ‘thilakawardhana’ name/brand. It was further set out in the Plaint that the Plaintiffs 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 set out in the Plaint 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. Thus, the name ‘thilakawardhana’ has become exclusively and distinctly associated with none other than the ‘thilakawardhana’ Group of Companies.

As set out in the Plaint, the 3 Defendant Companies, namely Thilakawardhana Solar Power Solutions, Thilakawardhana Construction and T C Thilakawardhana Group, could not have been unaware of the Plaintiffs’ and by orchestrating the use of such name ‘thilakawardhana’ in a dishonest manner, the Defendants have engaged in an unlawful and illegal activity infringing the Intellectual Property rights of the Plaintiffs’. 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’.

When this matter was supported in the Commercial High Court the Learned High Court Judge Priyantha Fernando, being satisfied with the submissions made on behalf of the Plaintiffs’ in the first instance, moved to issue an Enjoining Order against the use of the Plaintiffs’ ‘thilakawardhana’ name.

Thereafter, the matter came up before Court on several occasions and the Defendants filed their Objections vehemently objecting to the application of the Plaintiffs’ and pursuant to an inquiry held before Court, ultimately the Defendants agreed to change their company names to ‘Kekirawa T. C. Thilakawardhana Solar Power Solutions Ltd.’, ‘Kekirawa T. C. Thilakawardhana Construction Ltd.’ and ‘Kekirawa T. C. Thilakawardhana Group Ltd.’.

The Defendants also agreed to use their name in a manner in which ‘Thilakawardhana’ is not used in isolation and only to use it as stipulated in the manner agreed upon by the Defendants in the Terms of Settlement and further as per such terms, agreed not to directly or indirectly use, any other trade name/trademark or any mark having an overall resemblance to that of the Plaintiffs’ ‘Thilakawardhana’ trade name and to remove/withdraw any representation made in violation of such terms.

All 3 Defendant companies and its representative Thushan Chandika Thilakawardhana, agreed to not directly or indirectly make any representation through social media or otherwise to the general public or any third party or create any link or association with the Plaintiffs’ or their directors or shareholders in any manner whatsoever and further agreed to remove and withdraw any direct or indirect representation already made through social media or otherwise to the general public or any third party or any link or association already created with the Plaintiffs’ or their directors or shareholders and to make a clear distinction with the Plaintiffs’ in any and all future representations. Thus, any violations of such rights would tantamount to contempt.

The Plaintiffs were represented in Court by Nishan Premathiratne, with Krishan Fernandopulle and Vikum Jayasinghe, Attorneys-at-Law appearing on the instructions of Sarravanan Neelakandan, Law Associates.  All the Defendants were represented in Court by Attorney-at-Law Ravindranath Dabare instructed by Arundathi Divisekara.