The Supreme Court has ruled in favour of D. Samson Industries (Pvt) Ltd (DSI) in a trademark dispute with Wealth Footwear Industries (Pvt) Ltd over the use of a similar logo on flip-flops.
A three-judge bench comprising Justices Janak De Silva, Menaka Wijesundera and M. Sampath K.B. Wijeratne overturned an earlier Commercial High Court order refusing to grant an interim injunction against Wealth Footwear.
The ruling, delivered on October 29, concerns DSI’s popular “Waves” brand of slippers, launched in 2010.
DSI alleged that Wealth Footwear was manufacturing and selling flip-flops bearing the marks “Wealth” and a stylised “W” that closely resembled its registered trademark, potentially misleading consumers.
Wealth Footwear argued that its logo was different, featuring a stylised letter “W” with a footprint at its centre. It also maintained that its products were sold at approximately half the price of DSI’s slippers and through different retail channels.
The Commercial High Court had previously refused DSI’s request for interim injunctions, finding that the company had delayed taking legal action and that any financial losses could be compensated through damages.
However, the Supreme Court disagreed, ruling that DSI had established a prima facie case of trademark infringement under the Intellectual Property Act.
Delivering the judgment, Justice Wijeratne observed that allowing Wealth Footwear to continue using the disputed mark could create confusion among consumers and damage the reputation and distinctiveness of DSI’s registered trademark.
The Court also held that trademark infringement is a continuing act, with each infringement potentially giving rise to a fresh cause of action. It therefore rejected the argument that DSI’s application should fail because of delays.
The judges further ruled that the Commercial High Court had erred in refusing an injunction merely because DSI could potentially recover financial damages.
Accordingly, the Supreme Court allowed DSI’s appeal and granted interim injunctions restraining Wealth Footwear, its employees, agents, retailers and distributors from manufacturing, selling, distributing or advertising footwear bearing the disputed mark or confusingly similar marks.
The injunctions provide interim protection pending the final determination of the underlying trademark infringement case.
The Court also awarded DSI the costs of the appeal and the proceedings before the lower court. (Newswire)