Steady progress: IP in Sri Lanka

Criminal action

Criminal actions can be instituted by the rights holder. Actions can be filed in the form of a private complaint in the Magistrates’ Court. Once a search warrant is obtained, a raid will be conducted by the police. The goods will be seized and put in the custody of court until the conclusion of the matter, where the goods will be destroyed upon a magistrate’s order. The accused will very often settle the matter by giving an undertaking in court.

The option of filing a criminal action through the Criminal Investigations Department (CID) for execution by the police further strengthens the enforcement of IP rights in Sri Lanka. Under the IP Act a person found guilty of an offence on conviction aft er trial before a magistrate is liable for a fine up to Rs500,000 ($4350), or imprisonment of six months, or both. For a second conviction, the punishment can be doubled.

Administrative action

A brand owner can make an application to the director general of customs to detain the counterfeit goods. Once the goods are detained the rights holder should institute proceedings within 10 working days, or the goods will be released to the owner.

Sri Lanka has not yet formalised its customs recording procedure. The initial steps have been taken but the application procedure is still not in place. At present, most brand owners follow an informal method of recording their trademarks with customs.

Civil action

Civil actions are available in cases of IP rights infringement, where the rights holder can seek injunctive relief from the Commercial High Court of Colombo, which has sole jurisdiction over IP matters.

Unfair competition is defined in the act as “any act or practice carried out or engaged in, in the course of industrial and commercial activities, that is contrary to honest practices”. This provision is comprehensive and many civil suits are filed based on this section, which also includes passing-off and undisclosed information.

Recent case law

A leading manufacturer of energy drink products instituted an action against an entity for infringement of its trademark. The plaintiff filed suit on the basis that the defendant was importing, distributing, marketing and selling the infringed product using the plaintiff’s identical trademark, device mark and trade dress.

In terms of section 121(2) and 121(4) of the Intellectual Property Act, without the consent of the registered owner of a mark third parties are precluded from the following acts: