WIPR Annual 2019 Business Brief: Sri Lanka

Patent rights are secured in Sri Lanka through registration. In order to obtain registration for a patent, an application should be filed at the National Intellectual Property Office on the prescribed form.

How are patent rights registered or secured in Sri Lanka?

Patent rights are secured in Sri Lanka through registration. In order to obtain registration for a patent, an application should be filed at the National Intellectual Property Office (NIPO) on the prescribed form.

Sri Lanka is a contracting party to Paris Convention and the Patent Cooperation Treaty (PCT). Therefore, it is possible to file a convention patent application as well as a PCT national phase application in Sri Lanka.

A convention application should be filed within 12 months from the date of the earliest priority application.

The time frame for filing a PCT national phase application in Sri Lanka is 30 months from the date of earliest priority.

The period of protection of a patent right is 20 years from the date of filing the application.

What are the costs of obtaining and defending a patent?

Registration of a patent costs approximately US $550. Defending a patent (infringement action) costs approximately $6,000 to 7,000.

Is there anything unusual about Sri Lanka’s patent law that companies should be aware of, and what are the most common mistakes businesses make?

Sri Lanka’s IP system does not provide patent protection for new plant varieties despite being a signatory to the TRIPS Agreement.

"‘Use’ is not a prerequisite for trademart filings, but if a registered mark is not used for a period of five years it becomes vulnerable to nonuse cancellation."

There is currently no second-tier patent protection system in Sri Lanka.

The common mistakes businesses make include:

• Public disclosure before filing the patent application. When an invention is publicly disclosed, the application for the grant of patent should be filed within one year of the first public disclosure. Most of the time inventors fail to comply with this one-year deadline.
• Overlooking convention/PCT deadlines.
• Failing to disclose previous patents filed abroad relating to the same or essentially the same invention as that claimed in the application.
• Not seeking the assistance of a patent attorney for drafting the patent application. This often results in narrow claims/inaccurate descriptions.
• Not understanding patent ownership issues in relation to commissioned works.

Trademarks

How are trademarks registered or secured and what protection do they grant?

In order to obtain registration for a trademark, an application should be filed at the NIPO in the prescribed form.

The registration of a trademark is valid for a period of ten years from the date of filing the application and is renewable for consecutive periods of ten years.

In terms of the IP Act of Sri Lanka, the registration of the mark gives its owner the exclusive right to use, assign and license the mark.

Nevertheless, unregistered marks are also protected in Sri Lanka by provisions relating to unfair competition and common law action for passing off.

Furthermore, the IP Act prohibits registration of a mark which is similar to an unregistered mark used earlier in Sri Lanka by a third party for identical/similar goods and a mark which is identical with or misleadingly similar to a mark that is well-known in Sri Lanka for identical or similar goods of a third party.

What are the costs of registering and defending a trademark?

Registration of a trademark costs approximately $700 to 800. Defending a trademark (infringement action) costs approximately $6,000 to 7,000.

Is there anything unusual in Sri Lankan trademark law that foreign companies should be aware of, and what are the most common mistakes businesses make?

Registration of a mark shall 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 for goods lawfully manufactured, imported or sold under the mark provided such goods have not undergone any change.

‘Use’ is not a prerequisite for trademark filings, but if a registered mark is not used for a period of five years it becomes vulnerable to non-use cancellation.

"Despite the existence of several collective societies registered under the IP Act, the function of these entities in enforcement of copyright is minimal."

Non-visible marks such as sound marks and smell marks are not registrable in Sri Lanka.

The use of the symbol ‘®’ or any word or sign expressing/implying that the registration has been obtained for a mark when the mark is not registered/pending registration in Sri Lanka is an offence under the IP Act.

Use of the symbol ‘®’ in respect of a registered mark is not mandatory.

The common mistakes businesses make include:

• Filing trademark applications without conducting prior searches.
• Filing different trademark applications containing common elements in the name of related but different entities in the same class. As per the current practice of the trademark office, consent letters are not accepted from related entities.
• Failure to detect potential infringement in the market. Prolonged uncontested infringement impairs the trademark owner’s ability to claim interim injunctive relief if court action is instituted.

Counterfeiting

How big is the problem of counterfeiting in your jurisdiction?

Counterfeit and pirated goods are a major issue in Sri Lanka.

Notable amendments have been introduced to the Customs Ordinance of Sri Lanka though the IP Act. These amended sections prohibit the importation and exportation of any counterfeit or pirated goods or any other goods in contravention of the IP Act.

Sri Lanka’s customs has authority to intercept counterfeit goods on its own initiative. To facilitate performance of this ex officio action, it has established an Intellectual Property Rights (IPR) Enforcement Unit.

The Anti-Piracy and Counterfeit Unit of the Criminal Investigation Department of the Sri Lanka Police also conducts raids on counterfeit goods.

What sectors are particularly at threat?

Counterfeit goods span multiple industries including garments, software, motor spare parts, cigarettes, medicines, electronic goods and pharmaceutical products.

What are the best strategies for dealing with the problem?

• Registering trademarks with the NIPO and customs.
• Publishing cautionary notices to create awareness about the ownership of the mark.
• Notifying customs of any impending violation of the IP.
• Filing a criminal and/or civil action.
• Sending cease-and-desist letters to deal with minor counterfeit issues.
• Improving collaboration between brand owners and law enforcement agencies in identifying counterfeit goods.
• Enhancing consumer awareness regarding adverse effects of using substandard products.

Copyright

What are the key challenges to copyright in your jurisdiction?

Unauthorised reproduction of music, movies and software, etc, is a major threat faced by the entertainment industry.

Despite the existence of several collective societies registered under the IP Act, the function of these entities in enforcement of copyright is minimal.

How should people ensure they are protected against copyright infringement?

In Sri Lanka, protection of copyright is accorded without any formality such as registration.

In order to protect the rights of local performers, provision has been made under the IP Act for the establishment of a performing rights society.

Further, Sri Lanka is a party to the Berne Convention for the Protection of Literary and Artistic Works and the Universal Copyright Convention.

What is the best way to deal with infringement?

Seeking the intervention of the director-general to find a solution to the dispute concerned. However, this is best suited for small-time infringements. Institution of legal action is advised for large-scale infringements.

Creating public awareness. In this regard, the Sri Lanka police publish cautionary notices in local newspapers to educate the public about the criminal consequences of violating IP rights including copyright.

Including a copyright notice in the work concerned to act as a deterrent against infringement.

Anomi Wanigasekera is the partner in charge of the IP group at Julius & Creasy. She can be contacted at: anomi@juliusandcreasy.lk 

Wathsala Samaranayake is an associate at Julius & Creasy. She can be contacted at: wathsala@juliusandcreasy.lk