SRI LANKA Law and Practice Contributed by: Anomi Wanigasekera, Sabeera Shariff and Saambavi Siththananthan, Julius & Creasy
nyms, a geographical name, or exact indications con - cerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their goods and services, in so far as such use is con - fined to the purposes of mere identification or informa - tion and cannot mislead the public as to the source of the goods or services, and from using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change. This would mean that parallel imports could be restricted only if these are unlawfully imported and have not undergone any change. Section 9 (1)(f) of the IP Act states that importation of copies of the work (even where the imported cop - ies were made with the authorisation of the copyright owner) will vest with the copyright owner. Hence, the doctrine of first sale or exhaustion of rights have no application in this context. The owner of the copyright is vested with the power to prevent others from import - ing into Sri Lanka copies made with their authorisation purchased abroad. Section 170 (1) of the IP Act empowers the court to grant injunctions where a person to whom any recog - nised rights are granted under the Act proves to the satisfaction of the court that any person is threatening to infringe or has infringed their rights, or is perform - ing acts that make it likely that an infringement of a right will occur; the court is empowered to restrain any such person from commencing or continuing such infringement or from performing such acts, and may order damages and such other relief as the court may deem just and equitable. The injunction may be granted along with an award of damages, and shall not be denied only for the reason that the applicant is entitled to damages. An injunction may be interim or permanent. Under Sri Lankan law, an enjoining order can be obtained ex parte, which will be valid for 14 days if there is an urgency to refrain the infringer and the continuance of the infringing act as soon as possible. This will operate 10. Remedies 10.1 Injunctive Remedies
through continuous extensions, obtained until deter - mination of an interim injunction is made after an inter partes inquiry. The provisions of the Civil Procedure Code and the Judicature Act will apply. For an injunction to be granted, the three main factors to be considered are: • the establishment of a prima facie case; • the balance of convenience; and • equity. In order to obtain an injunction ex parte, there should be no delays, and a prima facie case has to be estab - lished. The court will look at relevant judicial precedent in deciding on the granting of the interim injunction, which will remain until the determination of the case and the granting of a permanent injunction. 10.2 Monetary Remedies The owner of the protected right can claim actual damages in an action for infringement. The court has the power to order the infringer to pay damages to the owner of the right with regard to the loss they have suffered. The court has the power to order the recov - ery of profits, if there are any. Also, there is provision for claiming statutory damages – ie, any owner of the rights protected under the IP Act may, notwithstand - ing any provision in the Act relating to the awarding of damages, elect at any time before final judgment to recover an award of statutory damages (instead of proved actual damages) for any infringement involved in the action, of a sum of not less than LKR50,000 and not more than LKR1 million, as the court may consider appropriate and just. In an action for copyright infringement, the court shall – in addition to the granting of injunctions – have the jurisdiction to order the payment by the infringer of damages for the loss suffered as a consequence of the act of infringement, as well as the payment of expenses caused by the infringement, including legal costs. The amount of damages shall be fixed, taking into account (inter alia) the importance of the mate - rial and moral prejudice suffered by the owner of the right, as well as the importance of the infringer’s prof - its attributable to the infringement. Where the infringer did not know or had no reasonable cause to know that
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