Registering a Trademark in Sri Lanka: What the Intellectual Property Act Requires

The Intellectual Property Act No. 36 of 2003 requires an application to the Director-General, examination against the refusal grounds in sections 103 and 104, publication, and a three-month opposition period. Registration then lasts ten years from the filing date and is renewable.

A business that has traded under the same name for fifteen years often assumes the name is already its own. Section 102(1) of the Act is direct on the point: the exclusive right to a mark is acquired by registration. Long use builds goodwill, and goodwill has its own value in a passing off action, but it does not by itself produce the exclusive right that registration produces.

What can be registered as a mark

Section 102(3) sets out what a mark may consist of, and the list is deliberately wide. It covers arbitrary or fanciful designations, names, pseudonyms, geographical names, slogans, devices, reliefs, letters, numbers, labels, envelopes, emblems, prints, stamps, seals, vignettes, selvedges, borders and edgings, combinations or arrangements of colours, and the shapes of goods or containers.

Registration goes to whoever is first to fulfil the conditions of a valid application, or first to validly claim the earliest priority, under section 102(2). The right is allocated by filing date. The person who thought of the name is not necessarily the person who ends up owning it.

The two sets of grounds for refusal

An application can fail on two distinct bases. It is worth knowing which one you are facing, because the answer changes what can be done about it.

Section 103 lists the objective grounds, which go mainly to the mark itself rather than to a rival's rights. A mark shall not be registered if it:

• consists of shapes or forms imposed by the inherent nature of the goods or services, or by their industrial function
• consists exclusively of a sign that designates the kind, quality, quantity, intended purpose, value, place of origin, or time of production or supply
• consists exclusively of a sign that has become a customary designation for those goods or services in Sri Lankan trade
• is incapable of distinguishing one enterprise's goods or services from another's
• is scandalous, contrary to morality or public order, or likely to offend the religious or racial susceptibilities of any community
• is likely to mislead trade circles or the public as to nature, source, manufacturing process, characteristics, or suitability
• does not represent the name of an individual or enterprise in a special or particular manner
• is, in its ordinary signification, a geographical name or a surname
• reproduces or imitates the emblems, flags, names or abbreviations of a State or an intergovernmental organisation without authorisation, or official signs and hallmarks of a State
• resembles, in a way likely to mislead the public, a mark whose registration expired without renewal in the two years before the application, or whose renunciation, removal or nullity was recorded in the register in that period
• is sought for goods or services whose trading is prohibited in Sri Lanka
• consists of any other word or definition as may be prescribed

Section 103(2) softens several of those grounds and is easy to overlook. In applying paragraphs (b), (c), (d), (f), (g) and (h), the Director-General must have regard to all the factual circumstances, and in particular to how long the mark has been used in Sri Lanka or abroad, and to whether it is held to be distinctive in other countries or in trade circles. A mark that looks descriptive on its face is therefore not automatically barred. Evidence of use and acquired distinctiveness is part of the statutory test, not merely a plea in mitigation.

Section 104(1) covers refusal by reason of someone else's rights. The Director-General shall not register a mark that resembles, in a way likely to mislead the public, a mark already validly filed or registered by a third party, or an unregistered mark used earlier in Sri Lanka by a third party, or a trade name already used here. It also bars marks identical or misleadingly similar to a mark or trade name well known in Sri Lanka, including translations and transliterations, and marks that infringe other third-party rights or offend the unfair competition provisions in Chapter XXXII.

Section 104(1)(f) deserves separate mention because it catches a common commercial arrangement. A mark filed by the agent or representative of a third party who owns that mark in another country, without the owner's authorisation, shall not be registered unless the agent or representative justifies the filing. Local distributors who register a principal's brand in their own name are squarely within it.

Where the objection is that a mark is well known, section 104(2) sets out the criteria the decision turns on. They include the degree of knowledge or recognition in the relevant sector of the public, the duration, extent and geographical area of use and of promotion, the record of successful enforcement, and the value associated with the mark. Section 104(2)(ix) states that the list is neither exclusive nor exhaustive.

Section 104(1)(b) is the limb businesses most often overlook. A mark can be refused because it resembles an unregistered mark already in use in Sri Lanka, where the applicant was aware of that use or could not have been unaware of it. Somebody else's prior use can defeat your application even though they never registered anything.

How an application moves through the office

1. The application is made to the Director-General under section 106, and section 109 provides that it will not be entertained until the prescribed fee is paid.
2. The Director-General examines it for formal compliance under section 110. Where there is a defect, section 110(2) requires notice to the applicant and three months to rectify it. Section 110(3) then treats the date of rectification as the date of receipt of the application, which can cost an applicant priority.
3. The mark is examined against sections 103 and 104 under section 111(1). If it is refused, section 111(3) allows one month to make written submissions, and section 111(4) provides for a hearing.
4. Under section 111(5) the Director-General may refuse the application, accept it absolutely, or accept it subject to conditions, amendments, or limitations as to the mode or place of use.
5. On acceptance the applicant pays a publication fee under section 111(7), and the application is published under section 111(9) with the representation of the mark and the goods or services claimed.
6. Any person may then oppose the registration within three months of publication, on section 103 or 104 grounds, under section 111(10). Where no opposition is received, section 111(11) requires the Director-General to register the mark.

How long a registration lasts

Registration expires ten years after the date of registration under section 118(1). Section 118(2) matters more than it first appears: the date of registration is the date the Director-General received the application, not the date the certificate issues. The ten years runs from filing, so the time an application spends in examination and opposition is taken out of the first term.

Renewal is for consecutive periods of ten years under section 119(1). Section 119(2) provides that renewal is not subject to any further examination of the mark or to opposition, which makes it an administrative step rather than a second contest. The fee must be paid within the twelve months preceding expiry. Section 119(3) allows a further six months of grace on payment of a surcharge, and section 119(5) requires the Director-General to remove the mark from the register if the fee is not paid within those periods.

What registration lets an owner stop

Section 121(1) gives the registered owner the exclusive rights to use the mark, to assign or transmit the registration, and to conclude licence contracts.

Section 121(2) is the enforcement provision. Without the owner's consent, third parties are precluded from using the mark, or a sign resembling it in a way likely to mislead the public, for the goods or services for which it is registered or for similar goods or services. They are also precluded from any other use of the mark, or of a resembling sign or trade name, without just cause and in conditions likely to be prejudicial to the owner's interests.

Two provisions are worth drawing out. Section 121(3) treats applying or affixing the mark in Sri Lanka as prohibited use even where the goods are intended for export rather than sale here, which matters in a manufacturing economy. And section 121(4) provides that the court shall presume the likelihood of misleading the public where a person uses a mark identical to the registered mark for identical goods or services, so the owner is not left proving confusion in the plainest cases.

How a registration can be lost

A registration is not secure simply because the renewal fees have been paid.

Under section 136(1)(a) the court may remove a mark from the register where the owner has, without valid grounds, failed to use it in Sri Lanka, or to have it used under a licence, during the five consecutive years immediately preceding the application to court. Section 136(2) permits the court to take account of non-use caused by circumstances beyond the owner's control, but expressly excludes lack of funds as a ground.

Section 136(3)(a) offers some protection. Use of the mark in a form differing in elements that do not alter its distinctive character is not a ground for removal, so refreshing a logo does not by itself restart the clock.

Section 136(1)(b) addresses genericide. Where the owner has caused, provoked or tolerated the transformation of the mark into a generic name for the goods or services, so that its significance as a mark has been lost in trade circles and in the eyes of the public, the mark may be removed.

Practical points

• Search before committing to branding. Sections 103 and 104 are applied on examination, and a refusal after packaging has been printed is an expensive way to learn the mark was unavailable.
• File early. The right is allocated by filing date under section 102(2), and a competitor who files first will generally prevail.
• Keep evidence of use as you go. Five consecutive years of non-use is a removal ground, and contemporaneous records are far easier to assemble than reconstructed ones.
• Diarise the renewal. The window is the twelve months before expiry, with six months of grace after it on payment of a surcharge.

Registration is the step that converts a name a business has been using into a right it can enforce. The Act sets out the route clearly enough, and most of the difficulty in practice comes from timing: filing later than a competitor, missing the three-month opposition window, or allowing a registration to sit unused for five years.