SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
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 Conven - tion 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 interna - tional instrument under the law of such country. There - fore, a local registration is required for an infringement matter, or provisions of unfair competition or common law actions will be available. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants 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). 7.7 Small Claims This topic is not applicable. 7.8 Effect of Trade Mark and Copyright Office Decisions In relation to copyright infringement, a person may make a complaint to the Director-General of Intellec - tual 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 per - son 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 provi - sions 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.) 7.9 Counterfeiting and Bootlegging Civil as well as criminal action can be filed for coun - terfeiting of a trade mark/copyright. Furthermore, the Customs Ordinance has been amended in order to combat counterfeiting of trade marks/copyright. Accordingly, importation and expor - tation of counterfeit trade mark goods, pirated copy - right 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 per - son who wilfully infringes the rights of any regis - tered 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 exceed - ing 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.
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