Trade and Service Marks

– Intellectual Property Act No. 36 of 2003, in force since November 12, 2003.
– Intellectual Property Regulations No. 01 of 2006, in force since October 16, 2006.
– Intellectual Property (Amendment) Act No. 7 of 2018, in force since March 28, 2018.
– Intellectual Property (Amendment) Act No. 8 of 2021, in force since January 18, 2021.
– Intellectual Property (Amendment) Act No. 8 of 2022, in force since March 16, 2022.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, London Act, and Articles 13 to 30 Stockholm Act.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, London Act, since December 29, 1952.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 20, 1978.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Trademark Law Treaty, since August 1, 1996.

Filing

Applicant: an individual, partnership or corporation. 

Foreigners and nationals not living in the country: may apply through an authorized agent. 

Trade and service marks of foreigners: are accepted. 

Kinds of protection: the exclusive right to use the registered mark. 

Novelty: a mark should be distinctive and not ordinarily a surname, geographical word or descriptive word.

National flags: are not registrable. 

Names or portraits: may only be registered with the consent of the owner.

Association marks: possible.

Priority: a priority date is given to members of the Convention provided the application is filed within six months of the first application.

Classification: international classes 1 to 45 (11th Edition of the International Nice Classification). A separate application is required for each class. 

Territory covered: Sri Lanka.

Filing requirements for an application(to be sent to resident agent):
1. Power of attorney;
2. List of goods to which the mark is to be applied;
3. 5 specimens of the mark;
4. For a Convention application, 1 certified copy of the application filed in the Convention country.

Electronic filing: possible. 

Electronic signatures: are accepted for simply signed documents, but not for notarially executed documents. Scanned copies of signed documents are accepted, however, the original must be sent at a later date.

For assignments: a power of attorney signed by the assignee and a deed of assignment or any other document of title signed by both the assignor and the assignee.

Examination

Amendment of application: possible. 

Examination: examination as to distinctiveness and prior registrations.

Opposition: may be filed within three months from publication of the application on the grounds of lack of distinctiveness, similarity to previous registrations or if the marks were in use prior to the date of the application, or if the marks are likely to deceive or are contrary to the law or morality.

Letters of consent: can be accepted but is not conclusive. The Director-General of IP has the discretion whether to accept such a consent or not. 

Application kept secret: the application is laid open to public inspection. 

Appeal: appeals may be made to the Office of the Director of Intellectual Property, the Commercial High Court, and the Supreme Court. 

Publication: the mark is advertised in the Gazette after acceptance. 

Alteration of registration: possible.

Protection

Delivery of document (and usual duration after filing): two years. 

Beginning of protection: after registration, with effect as from the date of application. 

Kind of property: goods and services. 

Duration – extension: ten years with the possibility of extension for further periods of ten years upon payment of the prescribed renewal fees.

Compulsory character of registration: registration is not essential for acquiring trademark rights. 

User rights: trademark rights may be acquired through the use of a mark. 

Obligation to use: if a mark is not used for five years, it is liable to be expunged unless failure to use the mark is due to special circumstances.

Marking of registered goods: optional. 

Text of marking: at the discretion of the owner. 

Renewal: a mark must be renewed before the expiry of each period of ten years. 

Latest term for renewal: a grace period of six months is allowed subject to a surcharge.

Modification of the mark: at the discretion of the Office of the Director of Intellectual Property provided there is no substantial change in the mark. 

Licenses: are provided for under the existing law; could be registered, however it is not compulsory. 

Assignment: possible without the goodwill of the business.

Modification of Protection after Registration

Cancellation for non-use: a mark may be expunged if it is not used for five years and there is no bona fide intention of using it.

Nullification: the court may nullify a registration if the mark is wrongly or fraudulently registered.

Provision for restoration: no provision. 

Infringement and penalties: an injunction and damages may be awarded as compensation for infringement.