Commercial High Court grants enjoining orders against counterfeiter of Dorset trademark

The Commercial High Court in Colombo last week issued an enjoining order against Mans Lanka Ltd., preventing it from using the Trademark/Trade name ‘dorsët’ in its products.

The Plaintiffs, namely Dorset India Ltd., and Dorset Kaba Security Systems Ltd., who are of Indian origin and who are considered as the foremost manufacturing and supplying brand of architectural hardware, high level securities solutions and luxury faucets, complained to court on the basis that their previous agent, Mans Lanka Ltd., had been placing counterfeit door locks in the Sri Lankan market with the ‘dorsët’ Trademark/Trade name and is infringing the Plaintiffs’ rights in respect of the ‘dorsët’ Trademark/Trade name and acting contrary to fair trade practices.

The legal team for the Plaintiffs comprising of President’s Counsel Dr. Harsha Cabral,   Nishan Premathiratne and Janith Fernando, Attorneys at Law who appeared on the instructions of Nisansala Sandamali Kottachchi, Attorney at Law, submitted to court through the Plaint that the 1st Plaintiff Dorset India Ltd., is the owner of the Trademark ‘dorsët’  in Sri Lanka and the 1st Plaintiff had been supplying its products bearing the ‘dorsët’ Trademark/Trade name to Sri Lanka through Dorset Kaba Security Systems Ltd., the 2nd Plaintiff in this action.

It was submitted to court through the Plaint that the Plaintiffs through its present agent Mac Bertan Ltd., learned that the Defendant had been selling counterfeit products of the Plaintiff carrying the ‘dorsët’ Trademark/Trade name and a counterfeit door lock was purchased from one of the Defendant’s outlets. 

It was submitted further through the Plaint that on a cursory examination the counterfeit door lock and/or its packaging purchased from the Defendant has no visible differences with the Plaintiffs’ genuine door lock and it was done so in order for the Defendant to confuse the consumers and ride on the goodwill of the ‘dorsët’ brand.

It was submitted through the Plaint that the Plaintiffs took the counterfeit product to India for product testing and evaluation and discovered certain differences between the Plaintiffs’ original door lock and the Defendant’s counterfeit door lock as reflected in the documents submitted in the Plaint and also found out the Defendant’s product is of inferior quality and substandard to the Plaintiffs’ original product.

The Defendant’s counterfeit product and the Plaintiffs’ original product were both produced to court marked as Exhibit X and Exhibit Y respectively to be kept with the court registry.

The Learned High Court Judge on being satisfied with all material and submissions made to court that the Defendant had infringed the rights of the Plaintiffs as contemplated in Section 121, 144 and 160 of the Intellectual Property Act No. 36 of 2003 granted enjoining orders against the Defendant preventing the Defendant from applying and offering for sale products with the term or name ‘dorsët’ and/or using the term or name ‘dorsët’ in any manner whatsoever so nearly resembling the Registered Trademark bearing No: 167525 and/or the Plaintiffs’ tradename ‘dorsët’.

Pursuant to the notices of this action being served on the Defendant the matter is scheduled to be called on 18 April.