Trademarks 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)|
|Multi – Class System||NO|
|Document(s) 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.
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
- TRADEMARK REGISTRATION IN SRI LANKA
- TRADEMARK RENEWAL & RESTORATION IN SRI LANKA
- TRADEMARK RECTIFICATION AND REMOVAL IN SRI LANKA
- TRADEMARK FORMS AND FILING FEES IN SRI LANKA
- SRI LANKA TRADEMARKS ACT
- WELL KNOWN TRADEMARKS IN SRI LANKA
- TRADEMARKS NOT REGISTRABLE IN SRI LANKA
- TRADEMARK PROTECTION IN SRI LANKA
- TRADEMARK OPPOSITION FLOWCHART IN SRI LANKA