Fierce legal battle for ‘Courtyard’ in Commercial High Court

On or around 10 February, Colombo Courtyards Ltd., a Sri Lankan company operating a luxurious boutique hotel located in Colombo boasting 26 suites and rooms in the heart of Colombo with a lounge bar, library and Jacuzzi, instituted action in the Commercial High Court of Colombo against Marriott International Inc and Marriott Worldwide Corporation, operating the Marriott Hotel chain in respect of the mark/trade name ‘Courtyard’.

According to the Plaint filed in the Commercial Court, the Lankan company had instituted the action against the aforesaid multinationals following a letter of protest sent by Marriott International Inc and Marriott Worldwide Corporation for using the word ‘Courtyard’ in their trade name. Marriott’s’ position was that they owned two ‘Courtyards’ trademarks in Sri Lanka and that Colombo Courtyards Ltd. should refrain from using the word ‘Courtyard’ in its trade name, on the basis that the public would be confused.

Thus, in this backdrop Colombo Courtyards Ltd. instituted action against the Marriot companies seeking a declaration from the Commercial Court that the use of ‘Courtyard’ by Colombo Courtyard would not amount to an infringement as the Sri Lankan company is well known by the general public and respective market segment in Sri Lanka and has been conducting its business unchanged since 2010. 

Colombo Courtyard had set out in its Plaint that even CNN and Trip advisor have exceptionally rated the business of the Colombo Courtyard at a very high standard and had also been awarded the ‘Best Hotel Interior Sri Lanka’ award presented during the ‘Asia Pacific Hotel Awards 2013-2014’. 

Colombo Courtyards Ltd. also alleged in its Plaint that the Marriot hotels have not used the ‘Courtyard’ marks in Sri Lanka for several years, and on this basis sought an order from the court to remove the registration of the trademark of Marriot. Furthermore, Colombo Courtyard’s position was that ‘Colombo Courtyard’ is placed below a stylised ‘C,’ which is completely different to the mark that the Defendants use, where the name ‘Courtyard’ is placed above the word “Marriott” and the word ‘Courtyard’ placed below five images of a trees. Further, it was brought to notice that it is highly unlikely and impossible for the public to be confused between the two trademarks.

The Marriot Group filing their Answer to the Commercial Court on 25 July, countersued Colombo Courtyards Ltd. for damages equating to a sum of Rs. 500 million and sought an Interim Injunction against Colombo Courtyard to prevent the Sri Lankan company from using the trade name ‘Courtyard’ on the basis that Marriott is the registered trademark owners of the trademark ‘Courtyard’ in Sri Lanka. 

Further Marriot Group has also pleaded to Court that it has been using the ‘Courtyard’ trade name all over the world and taken steps in various countries to protect their intellectual property rights in respect of the trade name ‘Courtyard’. Marriott had specifically pleaded that in its answer that they had been using the ‘Courtyard’ trademark since 1983 and that the mark had been registered in Sri Lanka since 1999 and that the Plaintiff’s action should be dismissed. 

Thereafter the matter was fixed owing to the urgency owing into the interim injunction inquiry on the Marriot Group’s application to restrain Colombo Courtyard from using ‘Courtyard’ and the Objections of the Plaintiff are required to be filed by in the Commercial Court by 22 August.

The Legal team for the Plaintiff, Colombo Courtyards Ltd. comprises Dr. Harsha Cabral, President’s Counsel, Kushan Illangatillake and Nishan Premathiratne, Attorneys-at-Law appearing on the instructions of Nithi Murugesu & Associates, Attorneys-at-Law, Notaries Public and Patent and Trademark Attorneys. 

The Legal team for the Defendants, Marriott International Inc and Marriott Worldwide Corporation comprises of Romesh De Silva, President’s Counsel, N.R. Sivendran, Renuka Udamulla, Vasanthakumar Niles and Maithreyi Rajasingam, Attorneys-at-Law appearing on the instructions of Neelakandan & Neelakandan, Attorneys-at-Law and Notaries Public.