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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Sri Lanka is the IP Act 36/2003.

International law

Which international trademark agreements has your jurisdiction signed?

Sri Lanka is a signatory to the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights. 

Regulators

Which government bodies regulate trademark law?

The National Intellectual Property Office administers all IP activities, including the regulation of trademark law.  

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

The exclusive right to a mark can be acquired through a registration obtained under the IP Act 36/2003. According to Section 102(2) therein, registration of a mark may be granted to the party that fulfils the conditions of a valid application first or validly claims the earliest priority for its application. However, under Section 104(1)(c), the registrar will not register:

  • a mark that is likely to mislead the public; or
  • an unregistered mark used earlier in Sri Lanka by a third party in connection with, or identical to, similar goods or services if the applicant was aware or could not have been unaware of such use.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Unregistered marks can be protected by the Unfair Competition Law or a common law action for passing off. 

How are rights in unregistered marks established?

Unregistered marks can be protected under the Unfair Competition Law or a common law action for passing off.

Are any special rights and protections afforded to owners of well-known and famous marks?

Yes, Section 104(1)(d) of the IP Act prohibits the registration of marks that are identical or similar to well-known marks and trade names. Marks will not be registered if they are identical or sufficiently similar to, or constitute a translation, transliteration or transcription of, third-party marks for identical or similar goods or services. In this instance, it is immaterial whether the well-known mark is registered in Sri Lanka. 

To what extent are foreign trademark registrations recognised in your jurisdiction?

Sri Lanka is a party to the Paris Convention for the Protection of Industrial Property and must grant the same rights to nationals of other contracting states as it grants to its own nationals. Therefore, an applicant that has submitted a trademark application in a contracting state may claim priority on the basis of that application when filing an application for the registration of the same mark in Sri Lanka within six months from the date of the priority application.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The registered owner of a mark has the right to:

  • use the mark;
  • assign or transmit the registration of the mark; and
  • conclude licensing contracts.

Who may register trademarks?

Any party, whether a company, partnership, association or agent authorised by the applicant, can register a trademark. 

What marks are registrable (including any non-traditional marks)?

As per Section 102(3) of the IP Act, marks may comprise:

  • arbitrary or fanciful designations;
  • names;
  • pseudonyms;
  • geographical names;
  • slogans;
  • devices;
  • reliefs;
  • letters;
  • numbers;
  • labels;
  • envelopes;
  • emblems;
  • prints;
  • stamps;
  • seals;
  • vignettes;
  • selvedges;
  • borders and edgings;
  • combinations or arrangements of colours; or
  • shapes of goods or containers. 

Can a mark acquire distinctiveness through use?

Yes, a mark may acquire distinctiveness through use in Sri Lanka. 

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

As per Section 103(1) of the IP Act, a mark will not be registered if it: 

  • consists of shapes or forms imposed by the inherent nature of the goods or services or their industrial function;
  • consists exclusively of a sign or indication which may serve, in the course of trade, to designate the type, quality, quantity, intended purpose, value, place of origin or time of production or supply of the goods or services concerned;
  • consists exclusively of a sign or indication which has become, in the language or bona fide and established trade practice in Sri Lanka, a customary designation of the goods or services concerned;
  • is incapable of distinguishing the goods or services of one enterprise from those of another;
  • consists of any scandalous design, is contrary to morality or public order or, in the opinion of the National Intellectual Property Office director general or any court to which the matter may be referred, is likely to offend the religious or racial susceptibilities of any community;
  • is likely to mislead trade circles or the public as to the nature, source, geographical indication, manufacturing process, characteristics or suitability for the purpose of the goods or services concerned;
  • does not represent in a special or particular manner the name of an individual or enterprise;
  • is, according to its ordinary signification, a geographical name or surname;
  • reproduces or imitates armorial bearings, flags or other emblems, initials, names or abbreviated names of any state, intergovernmental international organisation or organisation created by an international convention, unless authorised by the competent authority of that state or international organisation;
  • reproduces or imitates official signs or hallmarks of a state, unless authorised by the competent authority of that state;
  • resembles in such a way as to be likely to mislead the public a mark, collective mark or certification mark whose registration has expired and not been renewed during the two years preceding the filing of the application for the registration of the mark in question or where its renunciation, removal or nullity has been recorded in the register for two years preceding the filing of the application for the mark in question;
  • has been applied for in relation to goods or services which are prohibited in Sri Lanka; or
  • consists of a certain word or definition, as may be prescribed.

Are collective and certification marks registrable? If so, under what conditions?

Yes, collective and certification marks are registerable in Sri Lanka. A mark is registerable as a collective mark if the application is accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.

A mark is registerable as a certification mark if the application is:

  • designated as a certification mark; and
  • accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.  

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. 

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes, a mark can be cancelled for non-use if it has not been used for five consecutive years immediately preceding the date of the cancellation application.

The cancellation procedure is as follows:

  • Any party or competent authority (including the National Intellectual Property Office director general) can file a cancellation application with the court for non-use of the mark.
  • The court may cancel the mark after considering the date of the events and other circumstances.
  • The court registrar will communicate the court’s decision to the National Intellectual Property Office director general and the decision will be published in the Official Gazette

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

In Sri Lanka, revocation proceedings can be brought in respect of part of the goods or services covered by a mark, based on absolute and relative grounds. 

Who may file a request for revocation and what is the statute of limitations for filing a request?

Any party can file a request for revocation with the National Intellectual Property Office director general. Notably, if the proprietor of an earlier right acquiesces in the use of a later trademark for five successive years, it is no longer entitled to file an application for invalidity based on relative grounds.      

What are the evidentiary and procedural requirements for revocation proceedings?

To initiate revocation proceedings, any party can apply to the National Intellectual Property Office director general on the following grounds:

  • The mark of the petitioner is well known and enjoys a commercial reputation and goodwill across various jurisdictions in Sri Lanka.
  • The registered proprietor has failed to use the mark for five consecutive years following its registration.
  • The registered proprietor was aware of the disputed mark’s goodwill and reputation and filed the application for registration of the mark with a bona fide intent to exploit its commercial reputation and goodwill.
  • The mark is devoid of distinctive character, as it is similar or identical to the petitioner’s mark.

Various documents to substantiate the above claims (including copies of worldwide registrations) can be presented as evidence.  

Appeal

What is the appeal procedure for cancellations or revocations?

The appeal procedure for cancellation or revocation is as follows:

  • An appeal of the National Intellectual Property Office director general’s decision may be filed with the relevant court within six months from the date of such decision by filing:
    • a petition of appeal;
    • a certified copy of the decision appealed; and
    • affidavits from the Intellectual Property Office’s case file.
  • A copy of the above documents will be served on the director general and other respondents.
  • The court may call for the director general’s original case file and receive and admit new evidence by way of an affidavit and documents in addition to the evidence already presented to the director general regarding the appeal.

The court may affirm, reverse or vary the original decision or issue such directions to the director general.

Surrender

What is the procedure for surrendering a trademark registration?

A registered trademark holder may renounce its mark’s registration, either wholly or in respect or part of goods or services, by making a written declaration.

The declaration must be forwarded to the director general and should be recorded in the register and published in the Official Gazette.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

As per Section 205 of the IP Act 36/2003, the Colombo Commercial High Court has exclusive jurisdiction over all disputes under the act.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The following actions can be taken against trademark infringement:

  • Civil action – the competent courts can be moved to grant relief of injunction against infringement or passing off;
  • Criminal proceedings – a criminal complaint can be filed against parties that have infringed the trademark in Sri Lanka, in addition to a civil action; and
  • Administrative relief – a notice of opposition can be filed against trademark applications published in the Trademark Journal in Sri Lanka. Proceedings can be initiated for the rectification or cancellation of registered trademarks before the Registrar of Trademarks.

Who can file a trademark infringement action?

The owner of a registered trademark or a person authorised by such person can file a trademark infringement action.      

What is the statute of limitations for filing infringement actions?

The statute of limitations for filing infringement actions is three years from the date of infringement. 

What is the usual timeframe for infringement actions?

Since the act of infringement is continuous, no specific timeframe has been provided for infringement action. 

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The issuance of injunctions to prevent imminent or further infringement is covered by Sri Lanka’s relevant civil laws. 

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

According to Section 170 of the IP Act, if the owner of a mark satisfies the court that its mark has been infringed, the court may grant an injunction prohibiting the party from continuing the infringement. The court may also order damages and such other relief as the court may deem just and equitable. The injunction may be granted together with an award of damages and will not be denied only for the reason that the applicant is entitled to damages. The court may order such damages to be adequate to compensate the rights holder for the loss suffered in addition to the recovery of any profits. However, the Sri Lankan courts have not been inclined to award punitive damages. 

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Sri Lanka has certain border control measures to combat the import of counterfeit goods and copyrighted works. The IP Act provides custom officials with the requisite powers to seize pirated goods which contravene the said act.

Customs established an IP rights enforcement unit to safeguard IP rights and protect consumers from counterfeit and pirated goods.  

Defence

What defences are available to infringers?

In the case of trademark infringement, the defendant may plead the following defences:

  • the doctrine of laches (if applicable);
  • the doctrine of estoppel (if applicable);
  • dissimilarity between the marks (in cases where the plaintiff alleges similarity between the marks);
  • that its goods are entirely different from that of the plaintiff;
  • that its customer base is entirely different from that of the plaintiff; or
  • that its mark is capable of distinguishing its goods and services from those of the plaintiff. 

Appeal

What is the appeal procedure for infringement decisions?

All appeals under the IP Act must be filed with the Colombo Commercial High Court.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

The assignment of trademark rights is governed by Section 123 of the IP Act 36/2003 which prescribes as follows:

  • An application for registration may be assigned for all or part of the goods or services for which the application was filed or the mark was registered.
  • Such assignment will be invalid if the purpose or effect thereof is to mislead the public, particularly with regard to the nature, source, manufacturing process, characteristics or suitability for their purpose of the goods or services to which the mark is applied.
  • Any party entitled by assignment to an application for registration or the registration of a mark may apply to the National Intellectual Property Office in the prescribed manner to have such assignment or transmission recorded in the trademark register.
  • The assignment of rights will not be recorded in the register unless the prescribed fee is paid.

The assignment of rights will have no effect against a third party unless they are recorded in the trademark register.      

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademark licensing is governed by the IP Act 36/2003 and a licensing agreement must be recorded to have legal effect.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence agreement may include the following clauses:

  • quality control monitoring;
  • trademark usage;
  • grant of rights;
  • indemnity; and
  • termination.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

There is no specific legal provision relating to the creation of security interests over a trademark in Sri Lanka. 

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademark logos can be protected under copyright law.

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

No specific law governs the protection of trademarks online.