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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.
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.
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.
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.
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.
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.
What is the appeal procedure for infringement decisions?
All appeals under the IP Act must be filed with the Colombo Commercial High Court.
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