SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Timeframes for Filing an Opposition In Sri Lanka, an opponent (a party) can file an oppo - sition 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 applica- tion 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.
5.2 Legal Grounds for Filing an Opposition or Cancellation The following are legal grounds for filing an opposition to a trade mark: • misleading similarity; • misleading resemblance to a used and unregis - tered 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. 5.3 Ability to File an Opposition or Revocation/Cancellation Filing an Opposition: Eligibility, Trade Mark Ownership and Representation Eligibility Any person who considers that the mark is inadmis - sible on one or more of the grounds specified in Sec - tions 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 transcrip - tion 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.
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