Sri Lanka: Court Rules in Mobile Phone Trademark Infringement Case

In March 2005 MTN Networks (Pvt) Ltd filed suit against an individual, alleging infringement of MTN's registered trademark.¹

The plaintiff provides mobile phone, internet, satellite mobile telephony and international telephone services. The plaintiff is a fully owned subsidiary of Telekom Malaysia BhD, which is one of the largest telecommunications operators in Asia, with a market capitalization of $6.4 billion and 10 million customers.

The plaintiff carries on business under the name Dialog GSM in the Sri Lankan mobile phone service market and regularly advertises in electronic and print media using the name Dialog. The plaintiff provides access to its services through a network of Dialog branches, arcades, service points and business partner locations. In addition to its Dialog GSM mobile phone service, the plaintiff expanded its portfolio of telecommunications services provided under the brand name Dialog to internet services (Dialog Internet), satellite mobile services (Dialog SAT) and international direct dial telephone services (Dialog Global).

The plaintiff stated that the trademark DIALOG had become distinctive of the plaintiff. Moreover, the plaintiff alleged that it had acquired substantial goodwill and reputation in respect of the trademark. The trademark is registered in the name of the plaintiff in Sri Lanka. Since 2001 the plaintiff has advertised the trademark with the slogan 'The Future. Today'. The plaintiff uses this slogan in almost all its advertisements, promotional material, hoardings, point of sale material, monthly bills, official receipts, subscriber applications forms and postcards. The plaintiff alleged that the phrase 'The Future. Today', together with the trademark DIALOG appearing in red on a coloured background, have become synonymous with the plaintiff. The plaintiff's application to register the phrase 'The Future. Today' along with the trademark DIALOG is pending registration.

In March 2005 the plaintiff became aware that the defendant sold and repaired mobile phones under the name Dualog Phone Centre. The plaintiff alleged that the word 'Dualog' was likely to mislead the public because the defendant had wrongfully simulated and/or reproduced the combination of get-up, trade dress and colour used by the plaintiff in respect of the trademark DIALOG. The word 'Dualog' appears in red letters on a white background in a font identical to that used for the trademark DIALOG. The defendant also uses the phrase 'The Future. Today' in a manner identical to the plaintiff's signature phrase.

The plaintiff also contended that the defendant used the word 'Dualog' for the same goods and services in respect of which the trademark DIALOG is used. The plaintiff further stated that the defendant's use of the word 'Dualog' infringed the exclusive rights of the plaintiff protected under Section 121 of the IP Act (36/2003).

The reliefs sought by the plaintiff included the following:

• a declaration that the defendant was not entitled to use the word 'Duolog' in any manner which could mislead the public directly and/or indirectly, in violation of the rights of the plaintiff under the act;
• a permanent injunction restraining the defendant and/or his employees or agents from directly and/or indirectly:

• using the word 'Duolog' or any other word resembling the trademark DIALOG;
• displaying and/or using the plaintiff's banners and visiting cards, and carrying on any advertising and/or promotional activities simulating and/or reproducing the combination of get-up, trade dress and colour used by the plaintiff in respect of Dialog GSM; and
• using the phrase 'The Future. Today' or any other phrase resembling the plaintiff's signature phrase;

• an enjoining order restraining the defendant and/or his employees or agents from engaging in the following acts directly and/or indirectly until the determination of the application for an interim injunction:

• using the word 'Duolog' or any other word resembling the trademark DIALOG;
• displaying and/or using the plaintiff's banners and visiting cards, and carrying on any advertising and/or promotional activities simulating and/or reproducing the combination of get-up, trade dress and colour used by the plaintiff in respect of Dialog GSM; and
• using the phrase 'The Future. Today' or any other phrase resembling the plaintiff's signature phrase; and

• an order to deliver to the plaintiff all banners, visiting cards and other promotional material similar to the marks, labels and advertising material used by the plaintiff in connection with Dialog GSM.

The court issued an enjoining order in respect of the third aforementioned relief. The court was due to hear the defendant's objections and answers on June 22 2005. However, the parties agreed to settle the case on the following terms:

• The defendant has removed and ceased using the banners and visiting cards. The defendant has also ceased using the word 'Duolog' and the signature phrase 'The Future. Today';
• The defendant will undertake not to use the word 'Duolog' or any other word which resembles the trademark DIALOG, directly and/or indirectly, either himself and/or his employees or agents;
• The defendant will undertake not to display and/or use the banners and visiting cards, and not to carry on any advertising and/or promotional activities simulating and/or reproducing the get up, trade dress and colour combinations used by the plaintiff in respect of Dialog GSM, directly and/or indirectly, either himself and/or his employees or agents; and
• The defendant will undertake not to use the signature phrase 'The Future. Today' used by the plaintiff in respect of Dialog GSM or any other phrase resembling the plaintiff's signature phrase, directly and/or indirectly, either himself and/or his employees or agents.

The case was thus settled and the parties moved the court to enter decree accordingly under Section 408 of the Civil Procedure Code.

1. MTN Networks (Pvt) Ltd v MCP Peiris (Commercial High Court).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.