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Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Yes, agents filing for registration of a mark on behalf of the owner require power of attorney. No notarisation or legalisation is required. 

What information and documentation must be submitted in a trademark registration application?

The following information and documentation must be submitted in a trademark registration application:

  • power of attorney duly executed by the applicant;
  • a request for the mark’s registration;
  • the applicant’s name and address and a postal address in Sri Lanka if he or she is resident outside Sri Lanka;
  • five copies of a representation of the mark; and
  • a clear and complete list of the particular goods or services for which registration of the mark is requested with an indication of the corresponding international classification class or classes, as may be prescribed. 

What rules govern the representation of the mark in the application?

The representation of marks is governed by Part II (Rule 11-31) of the IP Regulations 1/2006. 

Are multi-class applications allowed?

No, multi-class applications are not allowed. Separate applications must be filed for each class.

Is electronic filing available?

No, electronic filing is not available in Sri Lanka. 

What are the application fees?

The fee for filing a trademark application with the National Intellectual Property Office is SLRs1000.

Priority

How are priority rights claimed?

Priority rights in a trademark registration application made in Sri Lanka are claimed by:

  • specifying the date and application number allotted to the prior application filed in a country that is party to the Paris Convention for the Protection of Industrial Property; and
  • furnishing a certified copy of the priority document; and
  • paying the applicable fee. 

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Yes, there is a provision for trademark searches in Sri Lanka. However, the manner of conducting searches is different from other jurisdictions. In Sri Lanka, searches are conducted manually using the trademarks register and the National Intellectual Property Office issues no official search report.

There is no legal mandate, but it is always advisable to conduct a trademark search before filing a trademark application, as it is helpful for brand owners to evaluate the chances of the successful registration of their mark in Sri Lanka and plan a course of action against potential conflicts. 

Examination

What factors does the authority consider in its examination of the application?

The National Intellectual Property Office director general usually considers the grounds mentioned in Section 103(1) of the IP Act 36/2003 in its examination of the application.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes, the authority checks for similar marks mark during the examination.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Under Section 110 of the IP Act, an applicant has three months to rectify defects in its application. 

Can rejected applications be appealed? If so, what procedures apply?

If a party is dissatisfied with a National Intellectual Property Office decision it can file an appeal. The procedure for filing an appeal against rejected applications is as follows:

  • A decision may be referred to the court within six months from the date of a rejected application by filing:
    • an appeal petition;
    • a certified copy of the decision to be appealed; and
    • affidavits from the National Intellectual Property Office case file.
  • A copy of the above documents must be served to the  National Intellectual Property Office and the other respondents.
  • The court hearing the appeal may call for the original National Intellectual Property Office case file and receive and admit new evidence by way of an affidavit and documents in addition to the evidence already submitted, as required.
  • The court may affirm, reverse or vary the National Intellectual Property Office decision or issue such directions to the National Intellectual Property Office director general. 

Registration

When does a trademark registration formally come into effect?

A trademark registration has retrospective effect from the date of its application. 

What is the term of protection and how can a registration be renewed?

A trademark is registered in Sri Lanka for 10 years from the date of its application. It can be further renewed for an indefinite number of 10-year periods on payment of the renewal fee. 

What registration fees apply?

A fee of SLRs560 is payable for a trademark registration application and registration certificate after the application has been accepted and overcome any third-party opposition. 

What is the usual timeframe from filing to registration?

The usual timeframe for a trademark registration is 48 to 60 months from the date of filing, depending on the National Intellectual Property Office’s workload. 

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes, third parties can formally oppose an application. Any party which believes that its rights will be affected by the registration of a mark may file an opposition with the competent authority in response to the publication of the mark in the Official Gazette.

A third party can formally oppose an application on any of the following grounds:

  • descriptiveness of the proposed mark;
  • similarity with an earlier mark; or
  • a lack of distinctiveness and likelihood of causing confusion and deception among the general public and in trade circles.

What is the usual timeframe for opposition proceedings?

It takes approximately 18 to 24 months to conclude opposition proceedings. However, this timeframe is indicative and may increase depending on the National Intellectual Property Office’s workload.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, opposition proceedings are subject appeal. The procedure for filing an appeal is as follows:

  • A decision may be referred to the court within six months from the date of a rejected application by filing:
    • a petition of appeal;
    • a certified copy of the decision to be appealed; and
    • affidavits from the National Intellectual Property Office case file.
  • A copy of the above documents must be served to the National Intellectual Property Office and the other respondents.
  • The court hearing the appeal may call for the original National Intellectual Property Office case file and admit new evidence by way of an affidavit and documents in addition to the evidence already submitted, as required.
  • The court may affirm, reverse or vary the National Intellectual Property Office’s decision or issue such directions to the National Intellectual Property Office director general. 

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