Trademarks 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-

1. no appeal is preferred against his decision, upon the expiry of the period  within which an appeal may be preferred against his decision ;
2. 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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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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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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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:

1. 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 ;
2. 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 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:

Sri Lanka Trademark Forms

TRADEMARK FILING FEES/COST IN SRI LANKA

Further, Details regarding the Trademark Filings fees can be accessed at the following link:

Sri Lanka Trademark Filing Fees

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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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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:

• 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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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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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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