Nothing special about arrack claims, apex court ruling shows

Leading coconut arrack distiller, the Distilleries Company of Sri Lanka, was not allowed to proceed with an appeal in the Supreme Court against the use of the trademark “Extra Special Arrack” by competitor Hingurana Distilleries (Pvt) Limited.

“Extra Special Arrack” is commonly known as “Gal Arakku’’.

In a similar case 25 years ago, three leading lawyers appeared for W M Mendis & Co in an “Extra Special Arrack’’ trademark lawsuit against DCSL.

In its recent decision, the Supreme Court refused leave to an appeal by DCSL which objected to the trademark “Extra Special Arrack”.

The bench comprised Justices Sisira de Abrew, Prasanna Jayawardena, PC and Murdu Fernando,PC.

The appeal was the result of a rejection by the director general of Intellectual Property of Sri Lanka to a notice of opposition filed by DCSL on the granting of trademark No 109416 in class 33, related to wines, spirits and liquor.

Following an inquiry, DCSL appealed to the Commercial High Court of Colombo in terms of Section 173 of the Intellectual Property Act against Hingurana Distilleries as the first respondent and the director general of Intellectual Property of Sri Lanka as second respondent.

After written and oral submissions, High Court Judge, Ruwan Fernando, dismissed the DCSL application.

DCSL objected on numerous grounds, including the extensive use by Hingurana Distilleries of the “Extra Special Arrack” trademarks of DCSL and their purported similarities.

But Hingurana Distilleries argued that terms “Extra”, “Special”, and “Arrack” are all descriptive terms to which no party is entitled to any exclusivity.

The petitioner appealed to the Supreme Court (case No SC/HC/LA 23/2017) on the basis that the order of the High Court judge was contrary to facts, law and the evidence among other specific grounds.

Mr. Nihal Fernando, President’s Counsel with Mr. Harshula Seneviratne, attorney at law appeared on the instructions of Ms. V Senaratne, attorney at law for DCSL.

Mr. Chanaka A. M. Jayamaha with Ms. Sandaleka Hettiarachchi and Ms. Oshini Chandradasa, attorneys at law appeared on the instructions of Parakrama de Alwis, attorney at law for Hingurana Distilleries (Pvt.) Ltd.

Mr. Susantha Balapatabendi, Senior deputy solicitor general appeared for the director general of Intellectual Property of Sri Lanka.