Commercial High Court of Colombo Judge Pradeep Hettiarachchi recently dismissed an action filed by Apple Inc. against Stassen Exports Ltd. subject to penal costs at 500%.

Apple Inc. instituted action bearing No HC (Civil) 1/2020/IP in the year 2020 against Stassen Exports seeking to annul Stassen’s ‘HANA TEA’ Trademark which included an image of a ‘bitten apple’.

In its answer filed in Court, the Defendant, Stassen Exports took up the position that;

Stassen Exports duly obtained registration of its Trademark ‘Hana Tea’ bearing No. 180551 with effect from 23 May 2013 in respect of ‘Tea’ under Class 30 which is the international classification for ‘Goods and Services’

Plaintiff, Apple Inc. of USA is an Information Technology Company and does not have any business relating to the sale of food items and the Plaintiff does not manufacture, sell or export tea or tea-related products

Therefore there is no competition whatsoever between the Plaintiff’s products and that of the Defendant let alone unfair competition

There is absolutely no possibility of the public, market segments or trade circles becoming misled and/or confused that the Defendant’s Trademark and especially the Defendant’s Tea product sold under the get up as registered by the Defendant is that of the Plaintiff. It is a fallacy of the Plaintiff to contend that the Defendant’s use of its registered trademark ‘HANA TEA’ No. 180551 would mislead and/or confuse the public to believe that the Defendant’s tea is that of the Plaintiff.

That the Plaintiff has no right to claim exclusivity to the picture of an apple with a bite taken out in as much as a bitten apple is a symbol of ‘irresistibility’ and/or ‘temptation’ and the Plaintiff cannot claim exclusivity for such universal symbols. There is ample examples and/or stories whether biblical or in folklore which project and signify an apple as temptation and a bitten apple as irresistibility.

Therefore, the Plaintiff cannot claim exclusivity in respect of a picture or symbol of an apple or an apple with a bite taken out of the right-hand side especially in respect of class 30 international classification.

It was also the position of the Defendant, Stassen Exports that contrary to the position of the Plaintiff regarding its very high goodwill and reputation there have been many instances in which the

Plaintiff, namely Apple Inc. has been fined by regulators and sued for its misconduct by its own customers and other competitors.

Accordingly, the Defendant served interrogatories on the plaintiff to be answered by an affidavit;

Does the Plaintiff (Apple Inc.) sell any food or beverage products more particularly tea?

Does the Plaintiff have a product or product range by which the Plaintiff sells food and/or beverages and/or tea?

Does the Plaintiff have any registration for the apple mark under Class 30 of the International Classification?

Has the Plaintiff been sued by its consumers whether individually or by way of class actions within the 10 years immediately prior to the institution of this action?

If the answer to the above is ‘yes’ what are the said cases and the results thereof?

Has the Plaintiff been sued by way of Regulatory actions within the 10 years immediately prior to the institution of this action?

If the answer to the above is ‘yes’ what are the said cases and what were the results of such action(s}?

In or about March 2020 did the Plaintiff agree to pay up to $ 500 million to settle litigation accusing it of quietly slowing down older iPhones as it launched new models, to induce owners to buy replacement phones or batteries?

Is the Plaintiff aware of the web articles from Reuters dated 2nd March 2020 and CNN Business annexed marked D3(a) and D3{b) to the Answer or the contents thereof?

Did the French antitrust regulator fine the’ Plaintiff, € 1.1 billion ($ 1.23 billion), on the basis that the Plaintiff was guilty of anti-competitive behaviour towards its distribution and retail network?

Is the Plaintiff aware of the web article from Reuters dated 16 March 2020 annexed marked D3(c) to the Answer or the contents thereof?

Did the Plaintiff in or about 2016 loose a trademark action in China against a company called and known as Xintong Tiandi?

By the said action did the Chinese Trademark Authority as well as Court hold that there was no infringement of Plaintiff’s trademark rights by Xintong Tiandi selling handbags and other leather goods using and/or under the name “IPHONE”?

In or about October 2009, did the Plaintiff dispute and/or contest a trademark application, by Woolworths Ltd. in Australia over the new logo of Woolworths Limited for its supermarket chain Woolworths Supermarkets, a stylised “Wit similar in shape to an apple?

Did the Plaintiff take objection to the breadth of Woolworths’ said trademark application, which would allow Woolworths Ltd. to brand products, including consumer electronics, with the said logo?

In April 2011, upon Woolworths Ltd. amending its trademark application to remove various goods and services, such as “apparatus for recording, transmission or reproduction of sound or images” did the Plaintiff withdraw its opposition, allowing the trademark to proceed to registration? 

Is the said Woolworths smartphone app available on Plaintiff’s App Store called and known as ‘Apple App Store’ with the logo of Woolworths Ltd.? the contents of the article found in ‘The Age’ news website dated 5th October 2009 annexed marked D3(d) and D3(e) respectively to the Answer?

Upon the Commercial High Court of Colombo, on the application of the Defendant, directing the Plaintiff to answer the above interrogatories, the Plaintiff over a period of six months obtained several dates to answer same. However, as there was continuous postponements being sought by the Plaintiff, Apple Inc. to answer the said interrogatories, the Court by Order dated 23 June 2023 granted a final date for the Plaintiff to answer the above interrogatories subject to costs being awarded to the Defendant.

When the matter came up in Court on 31 July 2023, the Plaintiff Apple Inc. intimated to Court that the Plaintiff was unable to tender an affidavit answering the interrogatories. As such the Action of the Plaintiff, Apple Inc. was dismissed by Court and the Plaintiff was ordered to pay penal costs due to the failure of the plaintiff to answer the above interrogatories as applied for by the Defendant,

Stassen Exports.

President’s Counsel Dr Harsha Cabraal appeared with Nishan Premathiratne, Attorney-at-Law instructed by Julius & Creasy, Attorneys at Law for the Plaintiff, Apple Inc.

President’s Counsel Nihal Fernando appeared with Harshula Seneviratne, Attorney-at-Law instructed by Upendra Gunasekera Attorney-at-Law for the Defendant, Stassen Exports. (FT.lk)