The Intellectual Property Act No 36 of 2003 as amended (the “IP Act”) and regulations passed under the Act govern trade mark and copyright laws in Sri Lanka.

Common law trade marks/copyrights are recognised in Sri Lanka.

Sri Lanka is a party to the following international conventions:

• the Berne Convention for the Protection of Literacy and Artistic Works;
• the Marrakesh Treaty;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and
• the Paris Convention for the Protection of Industrial Property.

Sri Lanka is yet to accede to the Madrid Protocol.

The IP Act governs trade marks in Sri Lanka.

In Sri Lanka, a trade mark/service mark will necessarily be any visible sign serving to distinguish the goods/services of one enterprise from those of another. Therefore, non-visible signs such as sound marks and olfactory marks are not permitted for registration.

According to Section 102(3) of the IP Act, “a mark may consist in particular of 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 shapes of goods or containers”. Hence, marks consisting of a combination of arrangements of colours, shapes of goods or containers (three-dimensional) and slogans will be permitted for registration.

Section 103(1) of the IP Act states that the following marks are inadmissible for registration:

• a mark that consists of shapes or forms imposed by the inherent nature of the goods or services or by their industrial function;
• a mark that consists exclusively of a sign or indication which may serve, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, time of production or of supply, of the goods or services concerned;
• a mark that consists exclusively of a sign or indication which has become, in the current language or in the bona fide and established practices of trade in Sri Lanka, a customary designation of the goods or services concerned;
• a mark that is incapable of distinguishing the goods or services of one enterprise from those of another enterprise;
• a mark that consists of any scandalous design or is contrary to morality or public order or which, in the opinion of the Director-General of Intellectual Property or of any court to which the matter may be referred, as the case may be, is likely to offend the religious or racial susceptibilities of any community;
• a mark that is likely to mislead trade circles or the public as to the nature, source or geographical indication of the manufacturing process, or the characteristics or the suitability for their purposes, of the goods or services concerned;
• a mark that does not represent in a special or particular manner the name of an individual or enterprise;
• a mark that is, according to its ordinary signification, a geographical name or surname;
• a mark that reproduces or imitates armorial bearings, flags or other emblems, initials, names or abbreviated names of any state, any intergovernmental international organisation or any organisation created by international convention, unless authorised by the competent authority of that state or international organisation;
• a mark that reproduces or imitates official signs or hallmarks of a state, unless authorised by the competent authority of that state;
• a mark that resembles in such a way as to be likely to mislead the public, a mark, a collective mark or a certification mark, the registration of which has expired and has not been renewed during a period of two years preceding the filing of the application for the registration of the mark in question or where its renunciation, removal or nullity has been recorded in the register during a period of two years preceding the filing of the application for the mark in question;
• a mark whose registration has been sought in respect of goods or services, the trading of which is prohibited in Sri Lanka; and
• a mark that consists of any other word or definition as may be prescribed – eg, President, Prime Minister, state, government or any other word or term of similar meaning which is likely to mislead the public into believing that such mark has state patronage or authorisation.

Service marks, design marks, trade dress, collective marks, certification marks, geographic indicators and product marks can be registered in Sri Lanka subject to the provisions mentioned above.

Marks that are not registered will be protected by the provisions of unfair competition under the IP Act.

Use is not a prerequisite to obtaining registration in Sri Lanka. The IP Act does not specify or define the term “use”, and it may encompass any form of use including the selling of goods, rending services under the mark and advertising the mark. Use of an associated registered mark or a formative mark not substantially affecting the identity are also considered sufficient to prove use. Also, the use of the mark in relation to any one good/service of any given class for which it is registered shall suffice to prevent its removal.

The IP Act provides criteria in relation to the admissibility of marks for registration. The grounds of inadmissibility are set out in Sections 103 and 104; the grounds under Section 103 are commonly known as objective grounds and the others as third-party rights.

However, in relation to Section 103(1)(b), (c), (d), (f), (g) and (h), extensive use is an exception as provided by Section 103(2) of the IP Act, together with consideration of all facts and circumstances that allowed acquired distinctiveness/secondary meaning. In this respect, the length of time that the mark has been in use in Sri Lanka or in other countries, and the fact that the mark is held to be distinctive in other countries or in trade circles, would be considered.

Registration Grants Exclusive Rights

The rights of the registered owner are mentioned in Section 121 of the IP Act. According to Section 121, the exclusive rights granted for the registered owner include the right to use the mark, to assign or transmit the registration of the mark and to conclude licence contracts.

Limitation of Rights

According to Section 122 of the IP Act, the registration of the mark shall not confer on its registered owner the right to preclude third parties:

• from using their bona fide names, addresses, pseudonyms, a geographical name, or exact  indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their goods and services, in so far as such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services; and
• from using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change.

See 2.2 Essential Elements of Trade Mark Protection regarding the term “use”.

There is no requirement under statute to use a symbol to denote that a mark is registered.

However, according to Section 185 of the IP Act, false representation regarding marks is an offence.

A person shall be deemed to represent a mark as registered if, in connection with the mark, they use the word “registered” or any word or sign expressing or implying that registration has been obtained for the mark.

Hence, any person shall commit an offence who, for industrial or commercial purposes, makes a representation:

• with respect to a mark not being a registered mark to the effect that it is a registered mark;
• to the effect that a registered mark is registered in respect of any goods or services regarding which registration has not been carried out; or
• to the effect that the registration of a mark gives an exclusive right to the use thereof in any circumstances, in which, having regard to limitations recorded in the register, the registration does not give that right.

Trade marks may also be protected by copyright in the case of logos or composite marks.

The IP Act and regulations passed thereunder govern copyright in Sri Lanka.

According to Section 6(1) of the IP Act, the following works are protected:

• books, pamphlets, articles, computer programs and other writings;
• speeches, lectures, addresses, sermons and other oral works;
• dramatic, dramatic-musical works, pantomimes, choreographic works and other works created for stage productions;
• stage production of works specified in paragraph (c) and expressions of folklore that are apt for such productions;
• musical works, with or without accompanying words;
• audio-visual works;
• works of architecture;
• works of drawing, painting, sculpture, engraving, lithography, tapestry and other works of fine art;
• photographic works;
• works of applied art; and
• illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Original intellectual creations in the literary, artistic and scientific domain shall be protected. Originality, expression of ideas, content, quality, purpose, formalities and fixation are the basic norms to be considered.

However, no protection shall be extended to:

• any idea, procedure, system, method of operation, concept, principle, discovery or mere data, even if expressed, described, explained, illustrated or embodied in a work;
• any official text of a legislative, administrative or legal nature, as well as any official translation thereof; and
• news of the day published, broadcast or publicly communicated by any other means.

Definition of an Author

As defined under the IP Act, “author” means the physical person who has created the work, and “work of joint authorship” means a work to the creation of which two or more authors have contributed, provided the work does not qualify as a “collective work”.

Original Ownership of Economic Rights

According to Section 14(1), the author who created the work shall be the original owner of economic rights. However, note the following.

In respect of a work of joint authorship, the co-authors shall be the original owners of the economic rights. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the economic rights in respect of the part that they have created.

In respect of a collective work, the physical person or legal entity at the initiative and under the direction of whom or which the work has been created shall be the original owner of the economic rights.

In respect of a work created by an author employed by a physical person or legal entity in the course of their employment, the original owner of the economic rights shall be the employer, unless provided otherwise by way of a contract. If the work is created pursuant to a commission, the original owner of economic rights shall be the person who commissioned the work, unless otherwise provided in a contract.

In respect of an audio-visual work, the original owner of the economic rights shall be the producer, unless otherwise provided in a contract. The co-authors of the audio-visual work and the authors of the pre-existing works, included in, or adapted for, the making of the audio-visual work shall, however, maintain their economic rights in their contributions or pre-existing works, respectively, to the extent that those contributions or pre-existing works can be the subject of acts covered by their economic rights separately from the audio-visual work.

Presumption of Authorship and of Representation of the Author

Section 15(1) states that the physical person whose name is indicated as the author on a work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the author of the work. The provisions of this section shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author. Additionally, Section 15(2) states that the physical person or legal entity whose name appears on an audio-visual work shall, in the absence of proof to the contrary, be presumed to be the producer of said work.

Economic rights and moral rights are recognised in Sri Lanka.

Economic Rights

As per Section 9(1) of the IP Act, the owner of copyright of a work shall have the exclusive right to carry out or to authorise the following acts in relation to the work:

• reproduction of the work;
• translation of the work;
• adaptation, arrangement or other transformation of the work;
• the public distribution of the original and each copy of the work by sale, rental, exportation or otherwise;
• rental of the original or a copy of an audio-visual work, a work embodied in a sound recording, a computer program, a database or a musical work in the form of notation, irrespective of the ownership of the original or copy concerned;
• importation of copies of the work (even where the imported copies were made with the authorisation of the owner of the copyright);
• public display of the original or a copy of the work;
• public performance of the work;
• broadcasting of the work; and
• other communication of the work to the public.

Economic rights can be transferred, and the transfer should be written and signed by the parties. According to Section 16(1), the owner of a copyright may:

• grant a licence to a physical person or legal entity to carry out all or any of the acts relating to the economic rights referred to in Section 9; and
• assign or transfer in whole or any part of the economic rights referred to in Section 9.

Moral Rights

According to Section 10(1), the author of a work shall, independently of their economic rights and even where they are no longer the owner of those economic rights, have the following rights:

• the right to have their name indicated prominently on the copies and in connection with any public use of their work, as far as is practicable;
• the right to use a pseudonym and not have their name indicated on the copies and in connection with any public use of their work; and
• the right to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, their work which would be prejudicial to their honour or reputation.

Section 13(1) of the IP Act states that, subject to the provisions of Section 13(2) to 13(5), the economic and moral rights shall be protected during the life of the author and for 70 years after their death.

On examination of Sri Lankan legislation, specific mention of collective management organisations (CMOs) is found in Section 25 of the IP Act.

Section 25(1) aims to simplify the operations of CMOs by imposing a general limitation on their activities, subject to the subsequent provisions of the Act. Notably, Section 25(1)(c) grants the Director-General of Intellectual Property the authority to permit the initiation or continuation of businesses related to the collective management of copyrights and associated rights. This provision delineates the legal framework governing the Director-General’s responsibilities, functions and powers concerning the oversight of CMOs. Additionally, Section 25(2)(b) states that such organisations are permitted to enter into agreements with foreign societies or entities that manage copyrights and related rights.

According to Section 25 of the IP Act, only a collective society registered with the National Intellectual Property Office of Sri Lanka (NIPO) is authorised to commence or carry on the business of issuing or granting licences in respect of copyright and related rights of music artists or owners who are members of their societies. Such provision was made necessary and introduced as there can be multiple organisations claiming rights over the same musical work, and it would be impossible for broadcasters to ascertain who actually owned such copyright.

The Authors, Composers & Publishers Organisation of Sri Lanka (ACPO) and the Outstanding Song Creator’s Association (OSCA) are the two organisations currently functioning as CMOs. Technically, ACPO functions on behalf of lyricists, musical composers and publishers, while OSCA acts on behalf of singers to collect royalties from relevant institutions.

Extraordinary Gazette No 1687/28, dated 5 January 2011, declared minimum payments that should be paid to lyricists, musicians and singers of songs, for broadcasts of their songs or substantial parts thereof. However, the aforesaid Extraordinary Gazette was repealed by Extraordinary Gazette No 2128/6, dated 17 June 2019 (Intellectual Property Regulation (Songs and Musical Work) No 1 of 2019), which for the first time introduced regulations with regard to the use of copyright-protected songs in music and song-related competitions (reality shows) organised by television media.

Extraordinary Gazette No 2164/70, dated 28 February 2020, introduced the “minimum payment to be paid as royalty to a lyricist, musician or singer” as LKR20 per radio broadcast and LKR100 per television broadcast.

There is no registration system for copyright in Sri Lanka under the IP Act.

However, the works of Sri Lankan authors are protected in all the member countries of the Berne Convention for the Protection of Literary and Artistic Works, and the national law of the particular country is applicable.

This topic is not applicable. There is no registration system for copyright in Sri Lanka under the IP Act.

This topic is not applicable. There is no registration system for copyright in Sri Lanka under the IP Act.

Copyright can also be protected by trade mark law – ie, device marks, composite marks.

Under the IP Act (specifically Chapter II), rights of performers, producers of sound recordings, and broadcasting organisations are protected as “related rights/neighbouring rights”.

Section 17 deals with rights of performers, and Section 18 deals with rights of producers of song recordings. Section 20 deals with rights of broadcasting organisations.

Registration grants exclusive rights and prima facie proof of ownership of a mark.

The rights of the registered owner are mentioned in Section 121 of the IP Act. According to Section 121, the exclusive rights granted for the registered owner are the right to use the mark, to assign or transmit the registration of the mark and to conclude licence contracts.

It is not mandatory to register a mark in Sri Lanka. However, if a mark is registered, it will be protected against unfair competition and infringement (statutory protection).

Unregistered marks are protected by the provisions of unfair competition under the IP Act.

There is a trade mark register at the NIPO. (See Section 113 of the IP Act.)

Searches can be conducted before filing the application at the NIPO. This will help the applicant understand the probability of registration of the proposed trade mark. Searches are not mandatory before filing the application.

The registration is valid for ten years and can be renewed in consecutive periods of ten years, indefinitely. (See Section 119 of the IP Act.) If the renewal is not made at the correct time, the applicant has to file a fresh application for the trade mark.

Renewal of registration of a mark shall not be subject to any further examination of the mark by the Director-General or to opposition by any person. The renewal fee should be paid within the 12 months preceding the date of expiry of the period of registration – provided, however, that a six-month grace period shall be allowed for the payment of the fee after the date of such expiry, upon payment of such surcharge as may be prescribed.

Multi-class applications are not accepted in Sri Lanka; only single-class applications are accepted.

The processing time of an application could take six to eight months, while the filing of the application until completion can take two to three years.

The following documentation will be required to file a trade mark application in Sri Lanka:

• a clear image of the proposed logo that is of high resolution, either in .jpg or .pdf format, and details of the applicant’s name and address and of the goods/services to be filed;
• power of attorney; and
• priority document.

If the mark claims priority, an original certified priority document is needed. This can be submitted within three months from filing the mark. If the priority document is not in English, an English translation certified by a sworn translator is also required (if the sworn translation is not available, a notarised translation is acceptable).

Official charges remain the same; however, agent fees can vary.

Applications should be filed through registered agents.

Use is not a prerequisite to filing a trade mark application in Sri Lanka.

If the applicant wishes to claim prior rights at the time of filing the application, such rights can be claimed.

Section 107 of the IP Act deals with the right of priority. If the applicant wishes to avail themselves of the priority of an earlier application filed in a convention country, they should, within six months of the date of such earlier application, append to their application a written declaration indicating the date and number of the earlier application, the name of the applicant and the country in which they or their predecessor in title filed such application. Within a period of three months from the date of the later application filed in Sri Lanka, they should furnish a copy of the earlier application certified as correct by the appropriate authority of the country where such earlier application was filed.

Section 108 provides for temporary protection of a mark exhibited at an international exhibition.

Clerical errors can be filed during the examination of the application. However, it is not possible to include new specifications in the goods/services list.

The following amendments to the application for registration may be permitted.

• change of name or address of the applicant, provided there is no such change by assignment, transmission or otherwise; and
• subsequent amendment of the mark by deleting a part or parts of the mark.

Alterations of registered marks are allowed under Section 120 with the leave of the Director-General, to add to or alter such mark in any manner not substantially affecting the identity thereof; the Director-General may refuse or grant such leave.

There is no provision under the IP Act for dividing a trade mark application in Sri Lanka.

The NIPO will issue a defect notice in connection with the incorrect information. This should be corrected within three months from the issuing of the defect notice.

Section 103(1) of the IP Act identifies certain grounds of inadmissibility, and Section 104 recognises grounds of inadmissibility by reason of third-party rights.

For the absolute grounds of refusal, see 2.1 Types of Trade Marks.

The refusal may be addressed by filing written submissions within one month from the date of the refusal letter or by requesting a hearing.

This is not applicable as Sri Lanka is yet to accede to the Madrid system.

Timeframes for Filing an Opposition

In Sri Lanka, an opponent (a party) can file an opposition against a trade mark application within three months from the date of publication of the mark in the Government Gazette.

Extensions for Filing an Opposition

If the opponent requests an extension of time to file an opposition, under Section 111(14) of the IP Act, the Director-General of Intellectual Property may allow a reasonable extension period for the parties (generally three months).

Possibility of a Cooling-Off Period for Amicable Resolution

There is no statutory provision regarding a cooling-off period between the opponent and the applicant. An extension of time to oppose is sought pending discussions.

Statutory Time Limits for Cancellation of Trade Marks

Removal of a mark for non-use

A mark may be removed where the registered owner has, without valid grounds, failed to use the mark within Sri Lanka or caused it to be used within Sri Lanka by virtue of a licence, during five consecutive years immediately preceding the date of the application to the court for the removal of the mark.

Nullity of registration

An application for a declaration of nullity based on any of the grounds specified in Section 104(1) must be made within five years from the date of the issuance of the certificate of registration of the mark. The IP Act does not specify any period of time for making an application for nullity based on the grounds set out in Section 103. The general law of limitation will govern such applications.

The following are legal grounds for filing an opposition to a trade mark:

• misleading similarity;
• misleading resemblance to a used and unregistered mark;
• misleading resemblance to a used trade name;
• well-known marks or trade names;
• other third-party rights and unfair competition;
• lack of distinctiveness; and
• descriptiveness.

Filing an Opposition: Eligibility, Trade Mark Ownership and Representation

Eligibility

Any person who considers that the mark is inadmissible on one or more of the grounds specified in Sections 103 or 104 of the IP Act may file an opposition.

Trade mark ownership

The opponent does not need to hold a trade mark registration to file an opposition. The IP Act does not deny the interests of the owners of unregistered marks.

Well-known marks, though not registered, have been accorded effective protection under Section 104(1)(d) of the Act by prohibiting the registration of a mark which is identical with or misleadingly similar to, or constitutes a translation, transliteration or transcription of, a well-known mark in Sri Lanka.

Similarly, Section 104(1)(e) of the Act, which denies the registration of a mark that infringes any third-party rights or is contrary to the provisions relating to unfair competition, is also useful in this regard.

Representation

Where the ordinary residence, or principal place of business, of the applicant is outside Sri Lanka, they shall be represented by an agent registered under Section 175 of the Act.

Official and Professional Fees for Filing an Opposition

Prescribed official fees will be applicable, and agent fees will differ.

Who Initiates the Cancellation Proceeding?

A cancellation action can be filed on an application by any person showing a legitimate interest or by any competent authority, including the Director-General.

The registered owner of the mark and every assignee, licensee or sub-licensee on record must be made party to the application.

Opposition Procedure

Where any person considers that the mark is inadmissible on one or more of the grounds specified in Section 103 or 104 of the IP Act, they may, within a period of three months from the date of publication of the application, give to the Director-General in the prescribed form, and together with the prescribed fee, notice of opposition to such registration, stating their grounds of opposition accompanied by evidence to substantiate such grounds.

Where, within the period specified in Subsection (10) of this Section, notice of grounds of opposition in the prescribed form is received by the Director-General, together with the prescribed fee, he shall serve a copy of such grounds of opposition on the applicant and shall request them to present their observations on those grounds in writing, accompanied by evidence to support their application within a period of three months.

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

• no appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision; and                 
• an appeal is preferred against his decision, upon the determination of such appeal.

Jurisdiction for Cancellation Actions: Trade Mark Office Versus Civil Courts

In terms of Section 134(1), the court has the jurisdiction to declare the registration of a mark null and void.

Only the court is competent to order the removal of a mark. (See Section 136.)

Partial cancellation

The nullity of the registration of a mark may be either total or partial. (See Section 134(2).)

All cases in relation to IP matters will be heard at the Commercial High Court of Colombo, including actions for removal and nullity.

Decisions of the Director-General

Any person aggrieved by any decision made by the Director-General of Intellectual Property under any provisions of the IP Act may appeal therefrom to the court.

Appealable Period

An appeal from a decision of the Director-General can be made within a period of six months from the date of such decision.

Where to File an Appeal, and the Finality of Decisions in Trade Mark Matters

The Commercial High Court is the court where parties should file appeals against the decisions of the Director-General.

Any party dissatisfied with any order made by the court is entitled to appeal to the Supreme Court of Sri Lanka.

Amendments to pleadings are possible before the matter is fixed for pretrial conference. The general law – ie, provisions of the Civil Procedure Code – will apply. (See Section 93.)

Upon application made to it before the day first fixed for pretrial conference of the action, in the presence of or after reasonable notice to all the parties to the action, the court shall have full power of amending, in its discretion, all pleadings in the action, by way of addition, alteration or omission.

On or after the day first fixed for pretrial conference of the action and before final judgment, no application for the amendment of any pleadings shall be allowed unless the court is satisfied, for reasons to be recorded by the court, that grave and irremediable injustice will be caused if such amendment is not permitted, on no other ground, and that the party so applying has not been guilty of laches.

Revocation/cancellation are regular actions and are inter parte.

Generally, infringement matters are coupled with ex parte interim relief being sought. Court actions take four to five years. 

Forgery of a Mark

Wherever there is evidence that the accused forged the mark of another registered owner, the offence is made out. There should be positive evidence that the act of forgery was committed by the accused.

It may be relevant to consider the provisions of Section 190 of the IP Act at this point. This section is extremely helpful in identifying the circumstances where a mark is deemed to be forged.

Lack of assent of the owner of the mark makes that mark, or a mark so nearly resembling that mark, as likely to mislead, or falsifies any genuine mark, whether by alteration, addition, effacement or otherwise; any mark so made or falsified is in this respect referred to as a forged mark.

In any prosecution for forging a mark, the burden of proving the assent of the owner shall lie on the accused.

False Application of a Mark and Related Offences

Section 186(1)(b) identifies the provisions pertaining to the false application of a mark or any other mark nearly resembling an existing mark.

The prosecutor is required to establish the existence of a valid mark and the forgery of such mark by the accused.

Procedures, requirements or restrictions apply to assigning a trade mark and copyright.

Trade Marks

An assignment or transmission must be made in writing and signed by or on behalf of the contracting parties.

Any person becoming entitled by assignment or transmission to an application for the registration of a mark, or to the registration of a mark, may, according to Section 123(3) of the IP Act, apply to the Director-General in the prescribed manner to have such assignment or transmission recorded in the register of marks.

Assignment or transmission has no effect against third parties unless it is properly recorded in the register of marks.

Copyright

Economic rights

In Sri Lanka, every such assignment or transfer of economic rights must be in writing, signed by the parties. (See Section 16(2).)

Also, an assignment or transfer in whole or in part of any economic right must not include or be deemed to include in the assignment or transfer in respect of any other rights not expressly referred to therein.

Moral rights

Moral rights are not transmissible during the life of the author; therefore, they cannot be either assigned or transferred. However, the right to exercise any of the moral rights is transmissible by testamentary disposition or by operation of law, subsequent to the death of the author.

Partial Assignments of Trade Marks or Copyright

An application for the registration of a mark, or the registration of a mark, may, in terms of Section 123(1), be assigned or transmitted independently of the transfer of all or part of the enterprise using the mark, in respect of all or part of the goods or services for which the application is filed or for which the mark is registered.

The economic rights may be assigned or transferred in whole or in part.

Procedures, requirements or restrictions apply to licensing a trade mark or copyright.

Trade Marks

A licence contract must be made in writing and must be signed by the contracting parties or their authorised agents.

On a written request signed by or on behalf of the contracting parties, the Director-General is obligated to record in the register of marks such particulars relating to a licence contract as the contracting parties are willing to have recorded.

The parties are not required or bound to disclose or have recorded any other particulars relating to the contract.

The Director-General records such particulars only upon payment of the prescribed fee.

Copyright

The owner of copyright may grant a licence to any person – natural or legal – to exercise economic rights (any or all). Every licence contract must be made in writing and signed by the licensor and the licensee.

A licence contract does not cover any right that is not expressly referred to therein.

It should be noted that Sri Lankan copyright law does not provide for non-voluntary or compulsory licensing of copyright.

Types of Licences

Trade marks

A licence can be either exclusive or non-exclusive.

Where the licence is exclusive, the licensor is not competent to grant further licences to third parties unless otherwise agreed in the contract.

Copyright

The licence for copyright may take the form of an exclusive or non-exclusive licence agreement.

An exclusive licence can sometime be interpreted as an assignment.

If a trade mark assignment is not recorded, the change of ownership will not be reflected at the NIPO.

Recording of the licence contract at the NIPO is not mandatory.

The IP Act is silent on the limitation of time in civil litigation. The provisions of the Prescription Ordinance are therefore applicable.

In terms of Section 9 of the Prescription Ordinance, where the damages are claimed as a remedy, the action must be commenced within two years from the time when the cause of action arose.

In contrast, where the damages are not claimed as a remedy, the action must be commenced within three years from the time when such cause of action arose.

Undue delay is a preliminary objection generally taken by a defendant.

In Sri Lanka, both a registered and unregistered mark can be protected.

Civil as well as criminal action could be filed for infringement of trade marks/copyright.

Unfair competition could be a second cause of action in infringement matters.

Section 170 of the IP Act deals with infringement, and, in terms of Section 170(1), the owner of a protected right may seek three remedies – namely:

• injunctions;
• damages; and
• such other relief as the court may deem just and equitable.

Certain matters relating to the first and second remedies warrant special reference.

Infringement of copyright and powers of court are dealt with separately under Section 22 of the IP Act.

Any person who infringes or is about to infringe copyright-protected work may be prohibited from doing so by way of an injunction, and may be liable to damages. The owner of such rights is entitled to seek such other remedy as the court may deem fit.

Section 170 of the IP Act identifies “infringement” in a broader sense, covering actual, threatened and possible acts of infringement. Accordingly, the owner of any IP right is entitled to seek judicial intervention where:

• any person has actually infringed the right;
• any person is threatening to infringe the right; or
• any person is performing an act which makes it likely that infringement of the right will occur.

Generally, a cease-and-desist letter would be sent prior to filing a court action. However, the IP Act provides for a court action for a declaration of non-infringement. In some cases, the other party may resort to this after the relevant letter is sent, which may be detrimental to the plaintiff. Therefore, sending a letter will be decided on accordingly.

Section 172(1) states that, on the application of any person showing a legitimate interest to which the registered owner of the industrial design, patent or mark or any other matter provided for under the Act (as the case may be) shall be made party, the court may declare that the threatened performance or performance of a specific act does not constitute a threatened infringement or infringement of said industrial design, patent or mark or any other matter provided for under the Act.

Section 170(1) clearly states that where the owner of any IP right proves to the satisfaction of the court that a person is threatening to infringe, or has infringed, any of their rights, or is performing an act which makes it likely that infringement will occur, the court may grant an injunction restraining any such person from commencing or continuing such infringement or performing such act.

Courts and Tribunals for Initiating Trade Mark or Copyright Infringement Proceedings in Sri Lanka

The first-instance jurisdiction in respect of IP lies with the High Court of Provinces, established under Article 154 P of the Constitution and empowered with civil jurisdiction by the order published in the Gazette under Section 2 of the High Court Provinces Act No 10 of 1996. All IP actions under the IP Act will be filed at the Commercial High Court in Colombo (all-island jurisdiction).

All appeals from the Commercial High Court will be directly to the Supreme Court of Sri Lanka.

Cease-and-desist letters, investigations, notarisation and legalisation of powers of attorney may arise.

Representation

An attorney-at-law has to be appointed by way of a proxy to appear on behalf of a party to an action in a court. Generally, in the case of a foreign party, a power of attorney is obtained first and the power of attorney holder may appoint an attorney-at-law by way of a proxy.

Territorial Limits

IP rights are always only effective within the territory of the country. The IP Act has no extraterritorial effect. International instruments – such as the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works or the TRIPS Agreement – enable the owner of any IP right in Sri Lanka to protect the particular right in any of the member states of the respective international instrument under the law of such country. Therefore, a local registration is required for an infringement matter, or provisions of unfair competition or common law actions will be available.

The IP Act provides for provision of a court action for a declaration of non-infringement. In some cases, the infringing party may resort to this after a cease-and-desist letter is sent.

See 7.4 Prerequisites and Restrictions to Filing a Lawsuit.

The proceedings for a declaration of non-infringement may be instituted concurrently with the proceedings for declaring the registration in dispute null and void (brought as a counterclaim).

This topic is not applicable.

In relation to copyright infringement, a person may make a complaint to the Director-General of Intellectual Property as provided for in Section 22(3) of the IP Act.

The Director-General may, on an application being made in the prescribed form and manner by a person aggrieved by any of their rights (copyright) being infringed or in any other manner affected, and after such inquiry as he thinks fit, determine any question that may be necessary or expedient in connection with such application, and such decision shall be binding on the parties.

Any person aggrieved by the decision of the Director-General may make an appeal to the court, and, unless the court issues an interim order staying the operation of the decision of the Director-General, such decision shall continue to be in force until the matter is decided by the court.

The decisions of the Trade Mark Office are appealed to the Commercial High Court.

There is no involvement of the Trade Mark Office in trade mark infringement cases, and there are no provisions for this. In the case of a declaration of nullity of a trade mark by the court, the court will inform the Trade Mark Office of the court’s decision. (See Section 135.)

Civil as well as criminal action can be filed for counterfeiting of a trade mark/copyright.

Furthermore, the Customs Ordinance has been amended in order to combat counterfeiting of trade marks/copyright. Accordingly, importation and exportation of counterfeit trade mark goods, pirated copyright goods or any other goods in contravention of the provisions of the IP Act is prohibited.

According to Section 184 of the IP Act, any person who wilfully infringes the rights of any registered owner, assignee or licensee of a mark shall be guilty of an offence and shall, on conviction after trial before a magistrate, be liable to a fine not exceeding LKR500,000 or to imprisonment for a term not exceeding six months, or to both, and in the case of a second or subsequent conviction to double the amount of such fine or term of imprisonment, or to both.

Specific offences are defined under the IP Act and may be applied accordingly in cases of counterfeiting and bootlegging.

There are no special procedural provisions for trade mark or copyright proceedings, and all proceedings will occur under the IP Act.

There is no specialised court for handling IP matters in Sri Lanka. All IP matters are heard by the Commercial High Court of Colombo, which is presided over by a High Court Judge. Currently, four divisions of the Commercial High Court are operational.

Registration of a trade mark is prima facie proof of ownership of a mark, and grants certain exclusive rights to the owner. Also, if the mark is not used for five years, it may become vulnerable to cancellation for non-use on an application being made. Holding a registration therefore has litigation benefits in proving ownership.

Copyright cannot be registered in Sri Lanka. Regarding copyright, the physical person whose name is indicated as the author on a work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the author of the work. The physical person or legal entity whose name appears on an audio-visual work shall, in the absence of proof to the contrary, be presumed to be the producer of said work.

The work involved and the time spent determines the cost, along with the professional fees payable for an external counsel team, if retained.

Generally, up to the time of filing an action (including studying documents and drafting initial pleadings), the cost will range between USD10,000 and USD25,000, excluding disbursements and applicable taxes.

The following defences (inter alia) can be pleaded by the defendant – the IP Act does not separately provide for defences for trade mark infringements:

• non-infringement;
• nullity;
• contractual limitations;
• genericness;
• non-use;
• estoppel;
• laches;
• lack of likelihood of confusion; and
• prior use or registration.

The IP Act does not define the expression “fair use”. However, Section 11(1) of the Act provides that fair use of a work, including such use by reproduction in copies or by any other means specified by that Section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, shall not be an infringement of copyright.

Section 11(2) of the IP Act provides for factors to be considered in determining whether the act is fair use or not, as follows:

• the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• the nature of the copyrighted work;
• the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use on the potential market for, or the value of, the copyrighted work.

Exhaustion of trade mark rights is, to a certain extent, recognised under Section 122 of the IP Act. Accordingly, the registration of the mark shall not confer on its registered owner the right to preclude third parties from using their bona fide names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their goods and services, in so far as such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services, and from using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change. This would mean that parallel imports could be restricted only if these are unlawfully imported and have not undergone any change.

Section 9(1)(f) of the IP Act states that importation of copies of the work (even where the imported copies were made with the authorisation of the copyright owner) will vest with the copyright owner. Hence, the doctrine of first sale or exhaustion of rights have no application in this context. The owner of the copyright is vested with the power to prevent others from importing into Sri Lanka copies made with their authorisation purchased abroad. 

Section 170(1) of the IP Act empowers the court to grant injunctions where a person to whom any recognised rights are granted under the Act proves to the satisfaction of the court that any person is threatening to infringe or has infringed their rights, or is performing acts that make it likely that an infringement of a right will occur; the court is empowered to restrain any such person from commencing or continuing such infringement or from performing such acts, and may order damages and such other relief as the court may deem just and equitable. The injunction may be granted along with an award of damages, and shall not be denied only for the reason that the applicant is entitled to damages.

An injunction may be interim or permanent. Under Sri Lankan law, an enjoining order can be obtained ex parte, which will be valid for 14 days if there is an urgency to refrain the infringer and the continuance of the infringing act as soon as possible. This will operate through continuous extensions, obtained until determination of an interim injunction is made after an inter partes inquiry. The provisions of the Civil Procedure Code and the Judicature Act will apply.

For an injunction to be granted, the three main factors to be considered are:

• the establishment of a prima facie case;
• the balance of convenience; and
• equity.

In order to obtain an injunction ex parte, there should be no delays, and a prima facie case has to be established. The court will look at relevant judicial precedent in deciding on the granting of the interim injunction, which will remain until the determination of the case and the granting of a permanent injunction.

The owner of the protected right can claim actual damages in an action for infringement. The court has the power to order the infringer to pay damages to the owner of the right with regard to the loss they have suffered. The court has the power to order the recovery of profits, if there are any. Also, there is provision for claiming statutory damages – ie, any owner of the rights protected under the IP Act may, notwithstanding any provision in the Act relating to the awarding of damages, elect at any time before final judgment to recover an award of statutory damages (instead of proved actual damages) for any infringement involved in the action, of a sum of not less than LKR50,000 and not more than LKR1 million, as the court may consider appropriate and just.

In an action for copyright infringement, the court shall – in addition to the granting of injunctions – have the jurisdiction to order the payment by the infringer of damages for the loss suffered as a consequence of the act of infringement, as well as the payment of expenses caused by the infringement, including legal costs. The amount of damages shall be fixed, taking into account (inter alia) the importance of the material and moral prejudice suffered by the owner of the right, as well as the importance of the infringer’s profits attributable to the infringement. Where the infringer did not know or had no reasonable cause to know that they were engaged in infringing activity, the court may limit damages to the profits of the infringer attributable to the infringement or to pre-established damages. (See Section 22(2)(b).)

In a civil action, the court may award costs at the conclusion of the suit. Generally, taxed costs are granted, which will be calculated according to the provided structure.

In a criminal action, the court may order costs to be paid to the accused by the prosecutor or to the prosecutor by the accused, having regard to the information given by, and the conduct of, the accused and prosecutor, respectively; the sum so awarded as costs shall be recoverable as if it were a fine.

See 10.2 Monetary Remedies regarding copyright infringement.

As mentioned in 10.1 Injunctive Remedies, under Sri Lankan law an enjoining order can be obtained ex parte, which will be valid for 14 days if there is an urgency to restrain the infringer and the continuance of the infringing act as soon as possible. This will operate through continuous extensions, obtained until determination of an interim injunction is made after an inter partes inquiry. The provisions of the Civil Procedure Code and the Judicature Act will apply.

Trade marks registered with the NIPO can be recorded with customs.

Two new sections have been introduced into the Customs Ordinance – eg, Section 125A and 125B for prohibiting importation and exportation of counterfeit trade mark goods, pirated copyright goods or any other goods in contravention of the provisions of the IP Act.

The Sections are briefly summarised as follows:

• 125A(1) – the importation of counterfeit trade mark goods, pirated copyright goods or any other goods in contravention of the provisions of the IP Act shall be prohibited, and such goods shall be included among the goods the importation of which are prohibited under Section 43 of the Customs Ordinance and included in Schedule B of the Ordinance as prohibited goods;
• 125A(2) – the exportation of the goods referred to above in this Section shall be prohibited, and such goods shall be included among the goods the exportation of which are prohibited as if they were referred to in Section 44 of the Customs Ordinance and included in Schedule B of the Ordinance as prohibited goods;
• 125A(3) – the prohibited goods referred to above shall be disposed of outside the channels of commerce or, if such disposal damages the interests of the owner of any right protected under the IP Act, shall be destroyed; and
• 125B(1) – a right-holder, who has valid grounds to believe that the importation of counterfeit trade mark goods, pirated copyright goods or any other goods in contravention of the right-holder’s rights under the IP Act is taking place, may make an application in writing to the Director-General of customs, requiring him to suspend the release of such goods into free circulation.

Customs officials have the power to act ex officio as well as on a complaint made.

The provisions of Sections 125A and 125B shall not apply to small quantities of goods of a non-commercial nature contained in a traveller’s personal luggage or forwarded in small consignments.

Parallel imports are not illegal as long as the goods are original and have not undergone any change.

Any person who is dissatisfied with any order made by the Commercial High Court may prefer an appeal to the Supreme Court against such order for the correction of any error in fact or in law, with the leave of the Supreme Court first being obtained. The petition has to be filed with 14 days calculated, excluding the day of the order, the day when the application is presented, and Sundays and public holidays.

Every such appeal to the Supreme Court should be made as nearly as may be in accordance with the procedure prescribed by the rules of the Supreme Court, with respect to special leave to appeal to the Supreme Court.

In the case of a final judgment of the Commercial High Court, the notice of appeal has to be filed first within 14 days, and the petition of appeal within 60 days, both at the Commercial High Court; papers will thereafter be forwarded by the Commercial High Court to the Supreme Court for listing (provisions of the Civil Procedure Code and Supreme Court rules will apply).

Any person who is dissatisfied with any order or judgment made by the Commercial High Court may prefer an appeal to the Supreme Court for the correction of any error in fact or in law.

A trial court case may take four to five years (or more) to be concluded.

Although AI is used, there are no specific rules governing or regulating its application in relation to IP, and no amendments have been made to the IP Act in respect of AI.

Although not directly related to AI, the Personal Data Protection Act (PDPA) No 9 of 2022 (enacted in March 2022) provides a basis for data governance, which is crucial for AI applications.

Furthermore, the Ministry of Digital Economy is working on a National AI strategy for Sri Lanka.

It is advisable to register trade marks to ensure stronger protection and better avenues for enforcement against online infringement. There are no specific laws addressing the issue of online infringement. Generally, the policy adopted by the service provider will apply in takedown requests following a complaint being made.