SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
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 assign - ee, licensee or sub-licensee on record must be made party to the application. 5.4 Opposition or Revocation/Cancellation Procedure Opposition Procedure Where any person considers that the mark is inad - missible 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 jurisdic - tion 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. 5.5 Legal Remedies Against the Decision of the Trade Mark Office 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 par - ties 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. 5.6 Amendment in Revocation/Cancellation Proceedings 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.)
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