Chint wins injunction issue in Supreme Court in counterfeit dispute

Tuesday, 24 October 2023 01:13 - - {{hitsCtrl.values.hits}}

The interim injunction issued by the Commercial High Court of Colombo restraining the four Defendants including Chint Power Solutions Ltd., from using the “Chint Power” trade name in any manner howsoever and using Chint Power name or any other name that is misleadingly similar and/or closely/nearly resembling the trademark/trade name of the CHINT Group Corp., was unanimously ruled and ordered to dismiss the appeal petition filed against the said interim injunction without leave being granted by the Supreme Court.

The order was issued by the three-judge-bench of the Supreme Court consisting of Justices Shiran Gunaratne and Priyantha Fernando, chaired by Supreme Court Justice Preethi Padman Surasena.

Chint Group Corp., being the registered owner of the ‘Chint’ and ‘Chint Power’ trademarks in many countries around the world, has been selling its products through Chint Power Solutions Ltd. in Sri Lanka for many years though the said marks were not registered in Sri Lanka. The Chint Power Solutions Ltd., which was distributing their products in Sri Lanka had purportedly registered the ‘Chint Power’ mark in its own name and transferred to the 4th Defendant later on, was engaged in selling products confusingly similar that of the products of the Chint Group Corp. against which the initial action has been instituted in the Commercial High Court of Sri Lanka.

The application was filed under 3 causes of action i.e., for a declaration that the registration of the Defendants’ trademark to be declared null and void, against the violation of the Plaintiffs’ tradename and for unfair competition of the Defendants. Upon being satisfied with the material produced before the Court, the Commercial High Court issued an order granting interim injunctions against the Defendants on 2 March 2022.

The appeal petition was filed by the 3rd and 4th Respondents i.e., R.K.R Electronics Ltd. and Sriskantharaja Rajivkumar, being the current assignees of the registered trademarks, seeking leave to appeal be granted and the order of the Commercial High Court be set aside.

On the advice of Sudath Perera Associates, Attorney-at-Law Manoj Bandara, appearing for the Plaintiff – Respondents i.e., CHINT Group Corp., produced the facts that the sale of products misleadingly and confusingly identical to those of theirs are not the original products and the “Chint” and “Chint Power” brands have acquired substantial goodwill and reputation in many countries and a well-known trademark for switches and sockets in Sri Lanka where the consumers identify and associate the said CHINT products with the Plaintiff – Respondents and therefore, the impugned conduct of the Petitioners also constitutes acts contrary to honest practices as envisaged in s.160(1) of the IP Act.

After considering the facts presented by both parties, the Supreme Court three-judge-bench ruled to dismiss the appeal petition without leave being granted against the interim order issued by Commercial High Court of Colombo.

Kuvera De Soyza, the President’s Counsel as instructed by Attorney-at-Law Sanjaya Fonseka appeared and supported the matter on behalf of the Defendant – Petitioners.

Senior Counsel Manoj Bandara with Attorney-at-Law Thivanka Hettiarachchi as instructed by Sudath Perera Associates appeared on behalf of CHINT Group Corp.