SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions for trade mark or copyright proceedings, and all proceedings will occur under the IP Act. There is no specialised court for handling IP matters in Sri Lanka. All IP matters are heard by the Commercial High Court of Colombo, which is presided over by a High Court Judge. Currently, four divisions of the Commercial High Court are operational. 8.2 Effect of Registration Registration of a trade mark is prima facie proof of ownership of a mark, and grants certain exclusive rights to the owner. Also, if the mark is not used for five years, it may become vulnerable to cancellation for non-use on an application being made. Holding a registration therefore has litigation benefits in proving ownership. Copyright cannot be registered in Sri Lanka. Regard - ing copyright, the physical person whose name is indicated as the author on a work in the usual man - ner shall, in the absence of proof to the contrary, be presumed to be the author of the work. The physi - cal person or legal entity whose name appears on an audio-visual work shall, in the absence of proof to the contrary, be presumed to be the producer of said work. 8.3 Costs of Litigating Infringement Actions The work involved and the time spent determines the cost, along with the professional fees payable for an external counsel team, if retained. Generally, up to the time of filing an action (including studying documents and drafting initial pleadings), the cost will range between USD10,000 and USD25,000, excluding disbursements and applicable taxes.
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The following defences (inter alia) can be pleaded by the defendant – the IP Act does not separately provide for defences for trade mark infringements: • non-infringement; • nullity; • contractual limitations; • genericness; • non-use; • estoppel; • laches; • lack of likelihood of confusion; and • prior use or registration. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The IP Act does not define the expression “fair use”. However, Section 11 (1) of the Act provides that fair use of a work, including such use by reproduction in copies or by any other means specified by that Sec - tion, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, shall not be an infringement of copyright. Section 11 (2) of the IP Act provides for factors to be considered in determining whether the act is fair use or not, as follows: • the purpose and character of the use, including whether such use is of a commercial nature or is • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and • the effect of the use on the potential market for, or the value of, the copyrighted work. 9.3 Exhaustion Exhaustion of trade mark rights is, to a certain extent, recognised under Section 122 of the IP Act. Accord - ingly, the registration of the mark shall not confer on its registered owner the right to preclude third parties from using their bona fide names, addresses, pseudo - for non-profit educational purposes; • the nature of the copyrighted work;
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