How do you register or secure patent rights, and is national or international coverage most appropriate?
Patents are registered in Sri Lanka under the Intellectual Property Act No. 36 of 2003. As per chapter XIII of the Act, an application must be lodged at the National Intellectual Property Office of Sri Lanka (NIPO) with the full details including description, claims, drawings, abstract, prior art, and a declaration that the applicant has not obtained a prior patent abroad for the identical invention. An applicant can also claim priority over an earlier regional or international application. As Sri Lanka is a party to the Patent Cooperation Treaty it is possible to file using the procedures set forth there.
Upon being granted, a patent is valid for 20 years from the date of application and is renewable annually from the expiration of the second year.
Where can you find information on existing patents in your jurisdiction?
It is possible to conduct a search for information on existing patents at the NIPO directly. There is no online patent database in Sri Lanka yet.
How do you register or secure trademark rights and what protection do they grant?
Registration is not mandatory for use of a trademark in Sri Lanka. However, the option of registration is available through chapter XXI of the Act. An application must be filed at the NIPO with the full details including the applicant’s name, address, representation of the mark, a specification of the goods/services in a single class, and translation and transliteration of non-English characters certified by a sworn translator. The application must be signed by the applicant or agent with a signed power of attorney.
Priority may be claimed over an earlier application filed within the previous six months in a country party to the Paris Convention, or any member of the World Trade Organization (WTO) or any nation party to bilateral relations with Sri Lanka for reciprocal IP protection. Where goods bearing the mark are exhibited at an official international exhibition, and the trademark application is made within six months of such an exhibition, the date of the first exhibition can be claimed as the filing date.
"The Sri Lanka Customs also registers trademarks which are registered with the NIPO for cross border control."
Rights conferred on an owner of a trademark are in line with the TRIPS Agreement. Once registered, a mark is valid for ten years from the date of filing or date of priority and is renewable every ten years. It can also be cancelled if not used for a period of five consecutive years immediately preceding the date of instituting court action.
A registered owner has the right to use, assign or transmit or license the trademark. However, registration does not preclude third parties from using their bona fide names, addresses, geographical names, or other descriptive terms if such use has no trademark significance; or from using marks in relation to goods lawfully manufactured, imported or sold under the mark.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
The presence of counterfeit and lookalike brands in the market is one of the major challenges. Letters of demand and cease-and-desist letters are effective for small-time infringers whereas legal action is advised for large-scale infringers.
Complaints can also be lodged with the anti-piracy and counterfeiting division of the Criminal Investigation Department of Sri Lanka Police, which is empowered to raid premises involved in such activities.
Further, dilution of existing marks through registration of confusingly similar marks is also a challenge to bona fide trademark owners.
On the other hand preventive action such as publication of cautionary notices can be helpful in keeping the public and trade circles informed of one’s trademarks.
What are the most common mistakes made by trademark owners?
Failure to detect potential infringement and delaying enforcement of rights are common mistakes. Prolonged uncontested infringement will impair the trademark owner’s ability to claim interim injunctive relief if court action is instituted.
What are the best strategies for dealing with the problem?
Trademark owners must be mindful of market trends in order to identify infringement and potential infringement. Upon detection of such infringement, action must be taken efficiently and effectively. The anti-piracy and counterfeiting division of the Criminal Investigation Department of Sri Lanka Police can be kept informed and raids can be carried out where necessary.
With regard to international trade, Sri Lanka’s customs officials have the power to combat the importation and exportation of counterfeit items. Sri Lanka’s Customs has an Intellectual Property Rights Enforcement Division which has been established to safeguard the rights of IP owners and protect the public from the counterfeits and pirated products. The Sri Lanka Customs also registers trademarks which are registered with the NIPO for cross border control.
How should people ensure they are protected against copyright infringement?
Sri Lanka does not provide for copyright registration. Literary and artistic works are protected by mere creation and Sri Lanka is a party to Berne Convention.
What is the best way to deal with infringement?
Unauthorised and illegal reproduction of music, movies and software piracy, etc, is a major threat to the entertainment industry. The operation and effectiveness of collecting societies in enforcement of copyright is minimal.
The most effective form of protection seems to be action to enhance public awareness. The NIPO carries out workshops and other public events for this purpose. The Sri Lanka Police publishes cautionary notices in local newspapers to educate the public about the criminal consequences of violating IP rights.
However, there are discussions on formulating regulations with regard to collecting societies.
The IP Act also provides under section XXXII for filing legal action against unfair competition in relation to inventions, industrial designs, marks, trade names, literary, scientific and artistic works and other IP. This is an umbrella provision providing protection for unfair commercial activities regardless of registration status.
A dispute resolution mechanism before the director general of IP also exists under the act; this is best suited for small-time infringements. Institution of legal action is advised for large-scale infringers.
Are there any other IP developments we should know about?
Recent amendments proposed to the IP Act address facilitation for a voluntary depository system for copyright owners.
There are no separate provisions for registration of geographical indications (GIs) in Sri Lanka, although GIs are protected under the IP Act. Sri Lanka is currently discussing introduction of new provisions to the national laws to accommodate GIs and a draft bill is currently under discussion.
Sri Lanka acceded to the Marrakesh Treaty in October 2016 to facilitate access to published works for people who are blind, visually impaired or otherwise print-disabled.
Anomi Wanigasekera is the partner in charge of the IP group at Julius & Creasy. She has experience in contentious and non-contentious IP matters, and has been involved in trademark, design and infringement cases. She can be contacted at: email@example.com
Business brief 2017, Sri Lanka, Anomi Wanigasekera, piracy, infringement, India