1 May 2015Jurisdiction reportsAnomi Wanigasekera and Kanishka Talagala

Business brief 2015: Sri Lanka

How do you register or secure patent rights, and is national or international coverage most appropriate?

In Sri Lanka intellectual property is protected by the provisions of the Intellectual Property Act No. 36 of 2003, which replaced the Code of Intellectual Property Act No. 52 of 1979. The procedure for patent registration is contained in chapter XIII of the existing act. An application must be filed at the National Intellectual Property Office of Sri Lanka (NIPO). It must contain a description of the patent, its claims, any drawings, an abstract, details of any pending foreign applications filed for the same invention, and a declaration that the applicant has not obtained a prior patent abroad for the identical invention.

Once granted, a patent is valid for 20 years from the date of application and is renewable up to the 20th year. Priority may be claimed over an earlier national, regional or international application. Sri Lanka is a party to the Patent Cooperation Treaty.

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.

How do you register or secure trademark rights and what protection do they grant?

The procedure for registration is contained in chapter XXI of the existing IP act. An application must be filed at the NIPO. It must contain the name, address of the applicant, a representation of the mark, a specification of the goods/services in a single class, and must be signed by the applicant or agent with a signed power of attorney. For a foreign language mark a translation, certified by a sworn translator, must be given.

Priority may be claimed over an earlier application filed within the previous six months in a state signed up to the Paris Convention, or any member of the World Trade Organization (WTO) or any state party to bilateral relations with Sri Lanka, for reciprocal IP protection.

This also applies where goods bearing the mark are exhibited at an official international exhibition, if the trademark application is made within six months of such an exhibition. The date of application is the date of the first exhibition of the goods bearing the mark.

Rights conferred by registration are harmonious to those granted by the TRIPS Agreement. Registration 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 in relation to goods lawfully manufactured, imported or sold under the mark.

"The presence of counterfeit and lookalike brands is a major challenge. In cases of small-time infringers, transmission of cease-and-desist letters is effective."

Only visible signs are capable of registration under the present legal regime; 3D marks are permitted. A registered mark can be cancelled if it is not used for a period of five consecutive years immediately preceding the date of instituting court action.

Once a mark is registered in Sri Lanka, the date of registration is the date of application and the mark is renewable every ten years.

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 is a major challenge. In cases of small-time infringers, transmission of cease-and-desist letters is effective. Institution of 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’s police, which is empowered to raid premises involved in such activities.

What are the most common mistakes trademark owners make?

Failure to detect potential infringement in the market is observed. 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?

Sri Lanka’s customs officials have the power to combat the importation and exportation of counterfeit items. Right owners can request that customs suspend the clearance of goods that are suspected of being counterfeit. Customs have established an enforcement unit. Right owners seeking to safeguard their rights could register them with this unit.

How should people ensure they are protected against copyright infringement?

There are no provisions for registering copyright in Sri Lanka, although Sri Lanka is a party to the Berne Convention.

What is the best way to deal with infringement?

Software piracy and illegal reproduction of copyrighted works affects 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.

Preventive action to enhance public awareness is the most effective form of protection. The NIPO carries out workshops and other public events for this purpose. The Sri Lankan police publish cautionary notices in local newspapers to educate the public about the criminal consequences of violating IP rights.

A dispute resolution mechanism before the IP director general 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?

There are no separate provisions for registration of geographical indications (GIs) in Sri Lanka, although GIs are protected under the IP act.

Anomi Wanigasekera is the partner in charge of the intellectual property 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: anomi@juliusandcreasy.lk

Kanishka Talagala is an attorney-at-law at Julius & Creasy and an associate in the firm’s intellectual property group. She has experience in IP, arbitration and litigation matters. She can be contacted at: kanishka@juliusandcreasy.lk

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