A mark whether a trademark or a service mark, is a visible sign that is capable of distinguishing the goods or services of different enterprises and organizations. Additionally, there are certification and collective marks. The certification marks are granted to the owner in case he/she certifies as to the origin, material used in the manufacturing of the product and its quality or accuracy. On the other hand, the collective marks are certain marks serving to distinguish the origin or any other common characteristic of goods or services of different organizations which use the mark under the control of the registered and exclusive owner. In Sri Lanka, the trademarks for an unregistered mark are simply the name or device used to promote the brand and in case of registered trademarks, it is the same mark.

Paris Convention

Sri Lanka is a signatory to the Paris Convention for the Protection of Industrial Property. The convention was signed on 20th March 1883 in Paris. It established a union requisite for the protection of industrial property. It ensures national treatment to the applicants who are residing in one of the countries in the union. The agenda is to provide equal treatment of foreign nationals as well. It is essential to ensure non-discrimination and equal treatment between the citizens and non-citizens of the country.

The Intellectual Property Act No. 36 of 2003 regulates trademarks, among other exclusive rights in the country.

Conducting trademark searches in the country

The trademark search in the index of the registry can be conducted for both word marks and devices. Before filing any trademark application, it is advisable by the experts that a trademark search must be conducted to ascertain there is no existing mark that can be deceptively similar to applicant's mark. The search is essential to ensure that there are no oppositions or objections on the later stage.

The wordmark search in Sri Lanka involves the NICE Classification wherein the goods fall under Classes 1-34 and the services fall under Classes 35-45. The search can be conducted in any class or associated classes.

On the other hand, the device marks can be searched with the help of International Classification of Figurative Elements of Marks with respect to the goods and services falling under Classes 1-45.

Requisites and Required Documents

The information and documents submitted to the department must be in English or if it is not possible, then the notarised copy of translation along with the affidavit must be submitted.

The information that is required for registration is as follows:

  1. Name, address and the nationality or incorporation details of the applicant.
  2. There must be the appropriate depiction of the trademark. In case, the mark is a logo, then the same cannot exceed 10cm X 10cm.
  3. Description of the goods or services.
  4. In case the applicant claims the colour combinations, there must be proper indication of the colours used.
  5. In case of a priority claim, the applicant must provide the priority application number, filing date and the priority country.

In addition to the above information, the applicant should also provide the power of attorney. The regulations do not mandate the notarization of the document. The document must be signed by two witnesses whose name and addresses are to be provided on the document. The applications for trademark registration cannot be filed without POA. On the other hand, in case the priority claim is filed, the priority document must also be filed.

Examination of the Trademark

After filing the application with the Registrar, it is examined on the basis of distinctiveness, possibility of deceptiveness and any other conflicting trademarks. If any discrepancy is found, then the official examination report shall be issued by the Registrar.

There are certain specified grounds for refusal or objection by the Registrar:

  1. The mark is similar/identical to an earlier trademark for the similar group of goods or services.
  2. The mark is similar/identical to an earlier trademark for the different group of goods or services.

The exceptions are provided if there is an honest concurrent use or the use is through the consent of the proprietor. Further, in case the report is sent to the applicant, the appropriate reply along with requisite documents has to be filed within 30 days. In case the application passes the examiner's report, then the same is published in the trademark journal on the registry's website. After advertisement, the individuals and organizations in the public can file the opposition within three months of such publication.

Trademark Duration

After registration of the trademark in Sri Lanka, it is valid for a period of ten years from the date of application. After the expiry of ten years, the trademark can be duly renewed.

Well-Known Trademarks

In Sri Lanka, the mark is considered well-known on the basis of its national, international and cross-border reputation. Section 104(2) of the 2003 Act prescribes the following grounds to assess whether a mark is well-known or not:

  • Particular facts and circumstances relating to the mark;
  • Any fact or circumstance that in any manner infers that the mark is well known;
  • The degree of knowledge or recognition of the mark of the relevant sector of the public;
  • The duration, extent and geographical territory of use, advertising or publicity and registration of application.
  • The value associated with the mark.

Conclusion

The marks registered in Sri Lanka, before the accession to Madrid Protocol, were only valid in the country. However, post the succession, the applicants need not apply separately in all the countries. It is cost-effective and less time consuming. Given that the country is also a part of the Paris Convention, the priority applications shall be taken care of in accordance with the document. Therefore, to summarise, the country's trademark law only focuses on traditional issues, without giving due importance to the ones occurring due to changing dynamics of trade and commercialisation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.