The law relating to the Intellectual Property Rights is embodied in the Intellectual Property Act No 36 of 2003. The National Intellectual Property Office situated at the capital city Colombo is the administrative body relating Intellectual Property Rights.
Sri Lanka is a Member of the following International treaties canopying trademarks:
- WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs Agreement)
- Paris Convention for protection of Industrial Property
The applicants for the proposed mark shall use the following insignias depending upon the status of their trade mark(s).
- ™ -for an unregistered trademark, that is, a mark used to promote or brand goods
- ® -for a registered trademark
- SM – for an unregistered service mark, that is, a mark used to promote or brand services.
Some key points pertaining to trademarks in Sri Lanka are enumerated below:
|
Relevant Office |
National Intellectual Property Office Sri Lanka (NIPO) |
|
Law in Force |
Intellectual Property Act No. 36 of 2003 |
|
Nice Classification |
Yes (11th Edition) |
|
Paris Convention |
Yes |
|
Madrid Protocol |
No |
|
Multi- Class System |
No |
|
Document (s) Required to file a Trademark application |
Note: An application can be filed without aforesaid original documents and the same can be filed at a later date. |
|
Prosecution Process |
Filing Publication of mark in the Trademarks Journal Opposition Period (Three months from the date of publication) Registration Renewal |
|
Registration Term |
10 years from the date of application |
|
Renewal Term |
10 years |
|
Cancellation Proceedings |
If the trademark has not been used for a period of 5 years prior to an application being made to a court for an order directing the removal of the trademark from the Register of trademarks on the grounds of non-use, any person can apply to court for such an order of removal of the trademark. |
Advantages of Trademark Registration
Although the registration of a mark is not mandatory, however a trade mark registration provides assured advantages to the proprietor of the registered mark over the unregistered mark.
- It provides an exclusive right to the owner of the mark to use the mark and attach its identity
- with the goods produced or rendered by it.
- It provides prima facie evidence of ownership and validity.
- It allows use of registered trademark or other suitable abbreviations to demonstrate ownership of a trademark.
- It prevents the unfair competitors from using the registered mark.
REGISTRATION OF MARK
The Act specifically recognizes and protects only the rights of the owners of registered marks. The exclusive rights to a mark under the Act also are acquired only by registration.
Therefore, registration of mark under the Act is on the First to File basis.
However, the well-known marks have been accorded effective protection under the Act by prohibiting registration of a mark either identical with or misleading or constitutes a translation, transliteration or transcription of well-known mark in Sri Lanka.