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Commercial High Court dismisses appeal

by Indeewara Thilakarathne

The Commercial High Court judge of Western Province L.K Wimalachandra dismissed the appeal made by Viacom International Inco, claiming the exclusive rights to the use of the letters "MTV" as its logo "MTV Music Television", against the order by 2nd defendant to register the same as the trade mark of the 1st defendant, Maharaja Organisation to promote its TV channel in Sri Lanka.

In this case the plaintiff Viacom International Inco of USA has cited the Maharaja Organisation Ltd and the Director of Intellectual Property as defendants. The plaintiff states that it is an incorporated company under the laws of the State of Delware, United States of America and it was the first to register its mark "MTV Music Television" on May 15, 1991 in Sri Lanka.

However the 1st respondent applied for the registration of the Trade Mark containing the English alphabetical letters "MTV" in respect of a communication service including transmission of television programs. The trade mark was accepted on July 29, 1994, subjecting to the condition that the registration does not entitle to the exclusive right to use the letters M,T and V. The plaintiff states that it had filed the Notice of Opposition in terms of the Section 107 (2) of the Code of Intellectual Property on January 18 ,1995.

Among other matters the plaintiff stated that 1st defendant's propounded mark will contravene the provisions of Section 99,100 and 142 of the Code and that the 1st defendant's purported mark is not registered in good faith. The 1st defendant's mark erroneously creates the impression that 1st defendant's services are the services of the plaintiff or that there is a connection or association between the 1st defendant's service and that of the plaintiff's.

The second defendant, the Director of Intellectual Property had permitted the registration of the trade mark on the basis that the 1st defendant's trade mark is distinctive in itself to warrant registration and distinctive of its source. Irrespective of the declaimed matter of the exclusive use of the letter M,T and V, the mark when looked at as a whole will not cause mistake, deception or confusion in the mind of the public and that the public will ignored the common denominator in the two marks and pay more attention to the other features. The plaintiff had failed to establish its position that the propounded mark contravenes provisions of the Code.

The plaintiff prayed that said order of the 2nd defendant dated June 30 1998 be vacated and set aside and for an order dismissing the application of the 1st defendant to register the trade mark.

Delivering the order the Commercial High Court Judge L.K. Wimalachandra upheld the 2nd defendant's view that the similarity of the plaintiff's logo phonetically and virtually with that of the 1st defendant's should be considered as a whole not on a piecemeal basis.

The Judge also observed that the exclusive rights under Section 117 of the Code relates only to the use of the trade mark as registered and not to a similar mark. The registrations give exclusive rights only to the mark as a whole. It is also stated that the owner of the mark cannot prevent the others from using the declaimed features by strength of the registration alone.

The 1st defendant's logo contains various distinctive features and its get-up and design that are different from that of plaintiff's. The 1st defendant's logo is well-known to the public of Sri Lanka and has been associated with the 1st defendant for a long period of time. Considering the above facts the Judge affirmed the order by the 2nd defendant in permitting the registration of 1st defendant's logo and dismissed the appeal by the plaintiff.

K. Kanag-Iswaran P.C. with Dr. Harsha Cabral instructed by Julius and Creasy appeared for the plaintiff while Romesh de Silva P.C. with Hiran de Alwis instructed by G.G. Arulpragasam appeared for 1st defendant, The Maharaja Organisation Ltd.

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