TRADEMARKS FILING AND PROSECUTION IN SRI LANKA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Sri Lanka are designated by the following symbols:
™ (for an unregistered trademark, that is, a mark used to promote or brand goods)
℠ (for an unregistered service mark, that is, a mark used to promote or brand services)
® (for a registered trademark)
The owner of a registered trademark may commence legal proceedings against trademark infringement of its mark.
Under the Intellectual Property Law of Sri Lanka, it is not mandatory to register a trademark. Unregistered trademarks can be protected against unauthorized use under the common law action for passing off.
| Relevant Office | National Intellectual Property Office of Sri Lanka (NIPO) |
| Law in Force | Intellectual Property Act No. 36 of 2003. |
| Nice Classification | Yes (Ninth Edition) |
| Paris Convention | Yes |
| Madrid Protocol | NO |
| Multi – Class System | NO |
| Documents required for filing a trade mark application | Simply executed Power of Attorney (The aforementioned document can be filed at a later stage also) |
| Prosecution Process | Filing Publication of mark in the Trade Marks Journal Opposition period (three months from the publication date)Registration Renewal |
| Registration Term | 10 years from the date of registration |
| Renewal Term | 10 years from the date of previous registration |
| Cancellation Proceedings | If the trademark has not been used for a period of 5 years prior to an application being made to a Court for an order directing the removal of the trademark from the register of trademarks on the grounds of non- use, any person can apply to Court for such an order of removal of the trademark |
Conducting Index Trademark Searches in Sri Lanka
An index trademark search in Sri Lanka can be conducted for word marks as well as device marks. Prior to filing of a trademark application, it is advisable to conduct a trademark search to ascertain the availability of deceptively similar trademarks, existence of prior identical/similar marks on the register etc.
Trademark search is conducted to avoid any objection and opposition in future on the grounds of prior similar marks.
Trademark searches can be classified into the following categories:
- Word Search
- Device Search
Word mark Search in Sri Lanka
Word mark search edition of Sri Lanka follows the Nice Classification and trademark can be filed for goods falling under classes 1-34 and services falling under classes 35-45. Trademark searches in Sri Lanka can be conducted for the desired classes and associated classes.Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Sri Lanka.
Device Mark Search in Sri Lanka
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.A device mark can be searched with the help of International Classification of Figurative Elements of Marks which prescribes Vienna Codes for different figures.
Trademark Applications in Sri Lanka
Trademark filing and applications in India is regulated under the Intellectual Property Act, No. 36 of 2003. Trademark applications in Sri Lanka can be filed in two categories:
- Ordinary Applications
- Convention Application (claiming priority from a convention country)
Ordinary Trademark Applications in Sri Lanka
Ordinary trademark applications filed in Sri Lanka are applications which are filed without claiming any priority. Multi class trademark applications cannot be filed in Sri Lanka, separate applications are to be filed for each class.
Priority / Convention Trademark Applications in Sri Lanka
A priority trademark application should be filed in Sri Lanka within 6 months after the date on which the application was made in the convention country. A certified copy of the priority documents needs to be filed within 2 months from the date of filing of the conventional application in Sri Lanka.
Paris Convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Sri Lanka within 6 months of after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Act, will be registered as of the date as which the application was made in the Convention Country and that date shall be deemed for the purpose of the Act to be the date of registration.
Trademark Classes for Goods and Services in Sri Lanka
Sri Lanka follows the International Classification of Goods and Services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services form classes 1 to 45.
Trademark Filing in Sri Lanka
An application for registration of trademark in Sri Lanka is to be filed with the National Intellectual Property Organization, Sri Lanka in the prescribed form alongwith payment of requisite fees.
Further details regarding filing of trademark applications can be accessed on the Trademark Registry’s Website, Sri Lanka at the following link: http://www.nipo.gov.lk/marks.htm
Requirements for Filing a Trademark Application in Sri Lanka: Who Can File a Trademark Application in Sri Lanka?
Any person who claims to be the proprietor of the trademark can file an application for its mark in respect of desired goods/services. The trademark application is required to be filed at the Trademark Office, Colombo.
After filing the trademark application, the same is examined by the Trademarks Registry, Dhaka so as to ascertain its inherent registrability and/or any similarity with existing marks. If any objection is raised, an official examination report will be issued by Trademarks Registry. To overcome the objection, it is necessary to file a response to examination report along with the supporting documents showing the marks as used.
If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the Trademarks Journal. If there are no oppositions filed within 3 months from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.
Trademark registration is a long process and it takes around 48- 60 months (depending on the backlog at the trade marks office) to obtain registration in case no opposition has been filed by a third party.
Trademark Duration in Sri Lanka
Once a trademark is registered in Sri Lanka, it is valid for a period of 10 years from the date of application. The trademark registration can then be renewed for a further period of 10 years from the date of expiration of registration or of the last renewal of the registration.
Trademark Filing Procedure in Sri Lanka
The procedure for filing a Trademark in Sri Lanka is as follows:
Filling a Trademark in Sri Lanka – A trademark application in Sri Lanka can be filed for a single class only. Multi class trademark applications cannot be filed in Sri Lanka. Application for a trademark or a Priority trademark application claiming priority from a convention country can also be filed in Sri Lanka within 6 months from the date on which trademark application was filed in the convention country.
Official Examination of a Trademark in Sri Lanka/Issuance of Office Action – After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report will be issued by the Registrar depending on the back log at the registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Sri Lanka can be refused/ objected by the Registrar on the following grounds:
- A mark is similar/identical to an earlier trademark for the same or similar goods/services.
- A mark is similar/identical to an earlier trademark in respect of different goods/services.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.
Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within 30 days. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing.
When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal, which is published and available on Registry’s website.
Publication/Advertisement of a Trademark – After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal for a period of 3 months from the date of publication, so as to invite the public for filing opposition against the registration of the mark.
Opposition of Published Trademark – On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date of publication of the mark.
Registration & Renewal of a Trademark in Sri Lanka – If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 10 years from the date of filing of the application and registration certificate is issued. The trademark can be renewed from time to time for a period of ten years on payment of prescribed renewal fees. Each renewal term is for a period of 10 years.
Trademark Prosecution Flowchart in Sri Lanka
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Trademark in Sri Lanka- FAQs
TRADEMARK OPPOSITION IN SRI LANKA
PROCEDURE FOR TRADEMARK OPPOSITION IN SRI LANKA
On publication of a trademark in the Trademarks Journal, any person can file an opposition against registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date on which the mark was published in the Journal.
A trademark application can be opposed in Sri Lanka on grounds given under Sections 103 and 104 of the Intellectual Property Act No 36 of 2003. Section 103 of the Act specifies the grounds on which a mark is not registrable and section 104 provides for marks inadmissible by reason of third party rights.
Once an opposition is filed against a trademark a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to present his observations on the grounds of opposition within three months, failing which the application shall be treated as abandoned.
Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.
After hearing the parties, the Registrar shall decide whether the trademark shall be registered or not. If the Registrar decides to register the mark, then if-
- no appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision ;
- an appeal is preferred against his decision, upon the determination of such appeal; the Registrar shall accordingly register the mark.
For more information on trademark opposition in Sri Lanka please write to us at info@ssrana.com
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TRADEMARK REGISTRATION IN SRI LANKA
A trademark is registered for a period of 10 years from the date of application. To register a trademark in Sri Lanka, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark will then be registered for a period of 10 years from the date of filing of the application in Sri Lanka and the registration certificate will be issued.
The insignia ® can be used for a registered trademark in Sri Lanka.
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TRADEMARK RENEWAL & RESTORATION IN SRI LANKA
HOW TO RENEW A TRADEMARK IN SRI LANKA
A trademark can be renewed in Sri Lanka from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.
The procedure for filing a renewal for a trademark in Sri Lanka is as follows:
Request to renew a trademark in Sri Lanka can be filed within 6 months BEFORE THE EXPIRY of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.
Request to renew a trademark in Sri Lanka can be filed within 6 months AFTER THE EXPIRY of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.
How to restore a trademark in Sri Lanka?
The procedure for filing for restoration of a trademark in Sri Lanka is as follows:
If a trademark has been removed from the Register on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark within 1 year from the expiration of the last registration of trademark.
For more information on trademark renewal and restoration in Sri Lanka please write to us at info@ssrana.com
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TRADEMARK RECTIFICATION AND REMOVAL IN SRI LANKA
On What Grounds can a Registered Trademark Be Removed in Sri Lanka?
Section 136 of the Intellectual Property Act, No. 36 of 2003 provides for the grounds on which a registered trademark can be removed in Sri Lanka. The grounds are:
- If the registered owner has, without valid grounds, failed to use the mark within Sri Lanka or cause it to be used within Sri Lanka by virtue of a license, during five consecutive years immediately preceding the date of the application to Court ;
- If the registered owner has caused, provoked or tolerated the transformation of the mark into a generic name for one or more of the goods or services in respect of which the mark is registered so that in trade circles and in the eyes of the public its significance as a mark has been lost;
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TRADEMARK FORMS AND FILING FEES IN SRI LANKA
TRADEMARK FILING FORMS IN SRI LANKA
- Form M 01 – Application for Registration
- Form M 02 – Notice of opposition to Registration
- Form M 04 – Payment for Publication
- Form M 05 – Renewal of Registration
- Form M 08 – Application for Recording of Assignment, Transmission or License Contract
Further, Details regarding the Trademark forms can be accessed at the following link:
TRADEMARK FILING FEES/COST IN SRI LANKA
| Marks | Rs | |
| 1. | Application for registration of each – | |
| (a). Mark | ||
| (i). Individual applicant | 1150.00 | |
| (ii). Others (partnership, company, society, etc) | 3450.00 | |
| (b). Collective mark | 5750.00 | |
| (c). Certification mark | 5750.00 | |
| 2. | On application to Director General to state grounds of decision | 1150.00 |
| 3. | On notice of opposition for registration of a mark | 2300.00 |
| 4. | On observations of applicant in answer to notice of opposition | 1150.00 |
| 5. | On the hearing of opposition by applicant and opponent each | 1150.00 |
| 6. | For registration of a mark and issue of certificate | 1150.00 |
| 7. | Upon each entry in the register of a note that mark is associated with a newly registered mark | 345.00 |
| 8. | On application to register a subsequent proprietor/applicant in cases of assignment or transmission. | |
| (a). For a single mark | 2300.00 | |
| (b). For every additional mark, the devolution being identical in each case and if made in one application | 575.00 | |
| 9. | On application to change the name or address of proprietor/applicant where there has been no alteration of proprietorship | |
| (a). For a single mark | 1150.00 | |
| (b).For every additional mark, the change being the same in each case and if made in one application | 575.00 | |
| 10. | (a). Renewal of registration of a mark – | |
| (i). individual owner | 3450.00 | |
| (ii). Others | 4600.00 | |
| (b). Renewal of a collective and certification mark | 5750.00 | |
| (c). Surcharge | 10 % of the fee | |
| 11. | On application to alter the address of registered proprietor or the licensee | |
| (a). For a single mark | 1150.00 | |
| (b). For every additional mark, the alternation being the same in each case and if made in one application. | 575.00 | |
| 12. | For every entry in the register or a rectification thereof or an alteration therein not otherwise charged | 575.00 |
| 13. | For canceling the entry or part of the entry of a mark upon the register, on the application of the owner of such mark | 575.00 |
| 14. | On an application to the Director General for leave to add or to alter a mark or collective mark or certification mark | 3450.00 |
| and for publication in the Gazette of Mark if leave is granted (1cm x 1 cm) | 230.00 | |
| 15. | For inspecting register, application, notice of opposition, observation or decisions or any other document related to documents enumerated | 115.00 |
| 16. | For obtaining copies of documents relating to all kinds of marks- A4 size page or part thereof | 115.00 |
| Each additional page or part of thereof | 57.50 | |
| 17. | For a page or part thereof of documents not specified in 16 above | 57.50 |
| 18. | For obtaining the certified copies of documents referred to in regulation 16 and 17 above one page | 230.00 |
| Every additional page or a part thereof | 57.50 | |
| 19. | For publication of mark (per 1cm x1cm) | 115.00 |
| 20. | Application on request for recording particulars of Licence contract or sub Licence or assignment or transmission | 1150.00 |
| 21. | Application for recording of expiration or termination of the Licence contract | 575.00 |
| 22. | Application for renunciation of the registration of any goods or services for which a mark is registered either wholly or in respect of part of the goods or service and | 575.00 |
| For publication in the Gazette of that renunciation of registration (Per 1cm x 1cm) | 115.00 | |
| 23. | Application of change in the conditions governing the use of a collective mark or certification mark and | 2300.00 |
| For publication in the Gazette of the notification of changes (Per 1cm x 1 cm) | 115.00 | |
| 24. | (i). For a certificate as to the current status of the registration of the mark | 575.00 |
| (ii). For the preparation of priority documents | 862.50 | |
| 25. | (i). For correction of clerical error caused by the owner or his agent | 575.00 |
| (ii) Deletion of a mark under Regulation No. 15(2) | 287.50 | |
| 26. | Publication of the application in the Gazette under Section 111(7) | |
| (i). Where the size of the representation of the mark is not more than 04cm x 04cm | ||
| (a) If the number of words in the list of goods or services are 10 or below 10 | 1725.00 | |
| (b) If the number of words in the list of goods or services are 11-20 | 2875.00 | |
| (c) If the number of words in the list of goods or services are 21 or above | 4025.00 | |
| (ii). Where the size of the represenation of the mark is more than 04cm x 04cm, and additional fee of | 2300.00 | |
| (iii). Where it is a collective mark or a certification mark, an additional fee of | 2300.00 |
Further, Details regarding the Trademark Filings fees can be accessed at the following link:
Sri Lanka Trademark Filing Fees
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SRI LANKA TRADEMARKS ACT
The National Intellectual Property Office of Sri Lanka established under the Intellectual Property Act No 36 of 2003 is mandated with the administration of the intellectual Property System in Sri Lanka. It was first established on January 1, 1982 with the same mandate under the provisions of Code of intellectual property Act no 52 of 1979.
Details regarding the Intellectual Property Act No 36 of 2003 can be accessed at the following link:
Intellectual Property Act of Sri Lanka
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WELL KNOWN TRADEMARKS IN SRI LANKA
The Trademarks Registry recognizes well-known trademarks in Sri Lanka on the basis of their international, national and cross border reputation.
Section 104(2) of the Intellectual Property Act, No. 36 of 2003 prescribes the criteria for determining whether a mark is well-known and the same is as under:
i. particular facts and circumstances relating to each mark;ii. any fact or circumstance from which it may be inferred that the mark is well known;
iii. the degree of knowledge or recognition of the mark of the relevant sector of the public;
iv. the duration, extent and geographical area of use of the mark;
- the duration, extent and geographical area of promotion of the mark, including advertising or publicity and the presentation at any fair or exhibition of the goods or services to which the mark applies;
- the duration and geographical area of the registration or the application for
registration, of the mark, to the extent that they reflect use or recognition of the mark;
- the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognized as being well known, by the Competent Authority;
- the value associated with the mark;
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TRADEMARKS NOT REGISTRABLE IN SRI LANKA
What marks are not registrable in Sri Lanka?
The trademarks which are not registrable in Sri Lanka are the following:
- which consists of shapes or forms imposed by the inherent nature of the goods or services or by their industrial function;
- which consists exclusively of a sign or indication which may serve, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, place of origin or time of production, or of supply, of the goods or services concerned;
- which consists exclusively of a sign or indication which has become, in the current language or in the bona fide and established practices of trade in Sri Lanka, a customary designation of the goods or services concerned ;
- which, is incapable of distinguishing the goods or services of one enterprise from those of another enterprise ;
- which consists of any scandalous design or is contrary to morality or public order or which, in the opinion of the Director-General or of any court to which the matter may be referred to, as the case may be, is likely to offend the religious or racial susceptibilities of any community;
- which is likely to mislead trade circles or the public as to the nature, the source, geographical indication the manufacturing process, the characteristics, or the suitability for their purposes, of the goods or services concerned ;
- which does not represent in a special or particular manner the name of an individual or enterprise ;
- which is, according to its ordinary signification, a geographical name or surname ;
- which reproduces or imitates armorial bearings, flags or other emblems, initials, names or
- abbreviated names of any State or any inter-governmental international organization or any organization created by international convention, unless authorized by the Competent Authority of that State or international organization;
- which reproduces or imitates official signs or hall-marks of a State, unless authorized by the Competent Authority of that State which resembles in such a way as to be likely to mislead the public, a mark or a collective mark or certification mark the registration of which has expired and has not been renewed during a period of 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 during a period of two years preceding the filing of the application for the mark in question;
- the registration of which has been sought in respect of goods or services the trading of which is prohibited in Sri Lanka.
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TRADEMARK PROTECTION IN SRI LANKA
Remedies available for protection of trademarks in Sri Lanka are:
Civil Action
The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.
Criminal Proceedings
Criminal complaints can also be filed against persons who have infringed the trademark in Sri Lanka in addition to a civil action.
Administrative Remedies
Notice of opposition can be filed against trademark applications published in the Trademarks Journal in Sri Lanka. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trademarks.
Border Measures
Sri Lanka law has certain border control measures (limited to Sri Lanka) to combat counterfeit goods and Copyright works. Sri Lanka Intellectual Property Act No. 36 of 2003 provides the Customs officials the requisite powers to seize pirated Copyright goods in contravention with the provision of the said Act.
The Sri Lanka Customs Department has established an Intellectual Property Rights Enforcement Unit. This Unit was established for the purpose of safeguarding the rights of Intellectual Property Right holders and to protect the society from counterfeit and pirated goods
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TRADEMARK OPPOSITION FLOWCHART IN SRI LANKA
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