SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
• 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 com - munity; • 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 significa - tion, a geographical name or surname; • a mark that reproduces or imitates armorial bear - ings, flags or other emblems, initials, names or abbreviated names of any state, any intergovern - mental international organisation or any organisa - tion 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 applica - tion 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 defini - tion 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. 2.2 Essential Elements of Trade Mark Protection 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 includ - ing 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 admis - sibility of marks for registration. The grounds of inad - missibility 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 con - sideration 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. 2.3 Trade Mark Rights 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.
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