In 2020 the Government of Sri Lanka has given approval to a proposal to enter the Madrid Protocol governed by the World Intellectual Property Organization (WIPO) in order to streamline the process of international registration of trade and services marks.

In fact, no legal provision exists for those who submit their applications to the National Intellectual Property Office to register their trademark or service mark to obtain international registration directly through the office in Sri Lanka. Instead, they have to submit applications separately through the Intellectual Property Agents operating in each county.

The Madrid System makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated contracting parties.

The access to the Madrid Protocol administered by WIPO provides exporters with a reliable, convenient, and cost-effective way to protect trademarks in a series of jurisdictions and depends on the government's roadmap and on the growing needs of the market.

In order to access the Madrid System, the Government of Sri Lanka has taken several steps towards developing its IP system and policy by means of:

  • Establishing IP protection tools in accordance with international best practices;
  • Implementing the relevant offices and efficient IP protection structures;
  • Endeavoring to promote Sri Lanka as a commercial hub in Asia by establishing a major role in the technology and economic market on a regional and international level;
  • Improving the NIPO and modernizing its structure also recruiting new examiners for trademarks and patents to accelerate examinations and reduce backlogs;
  • Signing major and important IP rights treaties, such as the Paris Convention for the Protection of Industrial Property, the WIPO Copyright Treaty, the Berne Convention for Literary and Artistic Works, and the Patent Cooperation Treaty;
  • Taking part in major IP agreements.

The overall IP ecosystem in Sri Lanka has therefore improved in recent years in developing IP rights protection. Furthermore, the implementation of the Madrid System will further promote trade and attract investment.

Changes in the Madrid Protocol

In this regard, we remind you that with Notice No. 26/2023 published on 19 September 2023, the World International Property Organization amended several provisions of the Regulations under the Protocol relating to the Madrid Agreement concerning the international registration of marks.

The most significant changes entered in force on 1 November 2023 as following:

a) Contracting Parties to provide holders of international registration with a minimum time limit of two months, or 60 consecutive or calendar days, to file a request for review of, or an appeal against, or a response to the provisional refusal;

b) the Regulation gives Contracting Parties until February 1st, 2025 to meet the new minimum time limit requirement. Contracting Parties that need more time, for example, to amend their domestic legal framework, could further delay the effectiveness of this obligation by notifying the lnternational Bureau before February 1st, 2025, or, for new Contracting Parties, before they are bound by the Protocol.

c) the provisional refusal notice requires to specify also the name and address of registered representatives if the refusal is based on earlier rights;

d) if the national trademark offices do not comply with the new provisions, WIPO will not accept the provisional refusal and the national offices might then rectify their notifications to comply with the above.

To see the full document by WIPO, click here.

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.