SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
7.2 Legal Claims for Infringement Lawsuits and Their Standards 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 rem - edies 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 cop - yright-protected work may be prohibited from doing so by way of an injunction, and may be liable to dam - ages. The owner of such rights is entitled to seek such other remedy as the court may deem fit. 7.3 Factors in Determining Infringement Section 170 of the IP Act identifies “infringement” in a broader sense, covering actual, threatened and possi - ble 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. 7.4 Prerequisites and Restrictions to Filing a Lawsuit Generally, a cease-and-desist letter would be sent pri - or 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 reg - istered 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 perfor - mance of a specific act does not constitute a threat - ened 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. 7.5 Lawsuit Procedure 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 Arti - cle 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
558 CHAMBERS.COM
Powered by FlippingBook