Trademarks in Sri Lanka

Sri Lanka identifies and protects registered and unregistered trademark or service mark in accordance to Intellectual Property act of No 03. Of 2003 and provides the few advantages to the proprietors of registered Trademarks such as it provides the proof of ownership of the mark and also enables the proprietor to take action against infringement.

Application For Registration

1. An application for registration of a mark shall be made to the Director-General in the prescribed form and shall contain —
(a) A request for the registration of the mark

(b) The name, address of the applicant and, if he is resident outside Sri Lanka, a postal address for service in Sri Lanka

(c) Five copies of a representation of the mark

(d) A clear and complete list of the particular goods or services in respect of which registration of the mark is requested, with an indication of the corresponding class or classes in the international classification, as may be prescribed.

2. The Director-General shall first notify the applicant of any defect in the application and shall afford him an opportunity to rectify such defect within three months from the date of receipt of such notification. The date on which the applicant rectifies such defect shall be deemed to be the date of receipt of the application for registration

3. Where the Director-General refuses to register a mark, he shall, if so requested by the applicant, state in writing the grounds of his decision.

Opposition

1. A person can give a notice of opposition accompanied by evidence to substantiate the ground of opposition, within a period of three months from the date of publication of the application. Such opposition can be given on cases, where, such person considers that the mark is inadmissible.

2. Where, within the specified period notice of grounds of opposition is received by the Director-General, he shall serve a copy of such grounds of opposition on the applicant and shall request him to present his observations on those grounds in writing accompanied by evidence to support his application within a period of three months.

3. On receipt of the observations of the applicant, the Director-General shall after hearing the parties, if he considers such hearing necessary, decide, as expeditiously as possible, whether such mark should be registered or not. If the Director-General decides that the mark can be registered, then if —

(a) No appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision

(b) An appeal is preferred against his decision, upon the determination of such appeal.

The Director-General shall accordingly register such mark.

Registration Of Marks

1. The Director General shall issue certificate of registration on registration of the mark.

2. The Director-General shall keep and maintain a register called the “Register of Marks” wherein shall be recorded in the order of their registration, all registered marks and such other matters relating to marks as are authorized or directed by this Part to be so recorded or may from time to time be prescribed.

3. The Director-General shall cause to be published in the Gazette, in the prescribed form, all registered marks in the order of their registration, including in respect of each mark so published reference to such particulars as may be prescribed.

Term Of Trademark

Registration of a mark shall expire ten years after the date of registration of such mark.

Renewal

1. Registration of a mark may be renewed for consecutive periods of ten years each on payment of the prescribed fee. Such renewals of registration shall be.

2. The Director-General shall record in the register and cause to be published in the Gazette in the prescribed form all renewals of registration specifying any removal from the lists of goods or services.

Revocation or Nullity

The Court may on the application of any person showing a legitimate interest, or of any competent Authority including the Director-General , to which the registered owner of the mark and every assignee, licensee or sub-licensee on record shall be made party, declare the registration of the mark null and void if its registration is precluded under the provisions of sections 103 and 104 :

Provided, however, that grounds of nullity which does not exist on the date of the application to Court, shall not be taken into account.

Trademark Classes

Sri Lanka follows the International Classification of Goods and Services. There are 34 classes of Goods and 11 classes of services. in total 1-45 classes are present.

Trademark Search

Trademark searches are divided into two categories:
1. Device search: Device Search is to determine the availability of a device mark or logo against visually similar marks in virtually any country in the world.
2. Word Search: Similarly word mark is search can also be conducted under the respective classes specified above.