Section 111(10)-(14) of Chapter XXI of the Intellectual Property Act, No. 36 of 2003 lays down the Opposition procedure in Sri Lanka.
According to Section 111(10), any individual who believes that a trademark is inadmissible based on the grounds outlined in Sections 103 or 104, i.e. absolute and relative grounds of refusal, may file an opposition against the published mark. This must be done within three months from the date of publication by submitting the prescribed form and paying the required fee.
Opposition Procedure
Notice of Opposition: The opposition process commences when the opposing party files a Notice of Opposition within the stipulated three-month period following the publication of the application.
Counterstatement: Upon receiving the Notice of Opposition, the Director-General will serve a copy of the notice to the Applicant. The Applicant is then required to submit their written observations, along with supporting evidence, within three months of receiving the notice.
Hearing Fee – Once the observation / counter-statement is filed by the opposite party, NIPO issues a notice to the parties to submit hearing fee within one month from the date of notification. Once the hearing fee has been submitted by both the parties, NIPO fixes a date of first hearing.
First Hearing – In this hearing, dates for filing the evidence affidavit by the opponent, counter affidavit by the applicant and next hearing are fixed and informed to the parties. No further notification is issued by NIPO for submission or serving of affidavits or fixing of subsequent hearing.
Note – If any party fails to submit the hearing fee, the opposition is decided on the basis of documents submitted till then.
Evidence & Counter Evidence – After the first hearing, both parties are required to submit their evidences and counter evidences as per the dates decided on the first hearing.
Hearing and Decision: The Director–General hears both the parties on the date of subsequent hearing and issues a decision. The Director-General may fix further hearings if required.
Appeal and Registration: If any party is dissatisfied with the decision, they may file an appeal with the court within six (6) months from the notification of the decision.
Note: The Director-General has the discretion to grant extensions for a specified period for any actions to be completed or fees to be paid during the opposition process.
Documents required
- Power of Attorney: a duly executed and notarized power of attorney, which is signed by the Opponent.