- Examination Procedure
Once the application is filed with the National Intellectual Property Office, Sri Lanka, it undergoes substantive examination process as per the provisions of the Intellectual Property Act. Normally, it takes between 9-12 months from the date of application for examination depending on the back log.
A trademark application may be refused at the examination stage if:
- The mark comprises of or consists of any scandalous or obscene matter;
- The use of the mark would be contrary to any law for the time being in force;
- The use of the mark would be likely to deceive or cause confusion;
- The mark consists of any matter likely to hurt the religious susceptibilities of any community in Sri Lanka;
- The mark is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any state or international organization created by an international convention, charter or other instruments, unless authorized by the competent authority of that state or the international organization;
- The mark would otherwise be disentitled to protection in a court;
- The trademark application is made in bad intention and faith;
- The trademark is a name of a commonly used and accepted name of any single chemical element or single chemical compound, and the Applicant intends to use the same in respect of a chemical substance or preparation;
- The trademark resembles the mark registered by a third party or a mark in prior use that may or may not be in connection of identical or similar goods;
- The trademark is identical or misleadingly similar to a translation or transliteration of a well-known mark in Sri Lanka.
- Infringes third party rights in Sri Lanka in any way prescribed by the Act no. 36 of 2003
The Examiner at the IP Office shall examine the application on the basis of the aforesaid and may accept or refuse the application for the registration of the mark.
Where application is refused by the Examiner, the applicant is required to file a reply to examination report within a period of 01 month (extendable for a period of three (03) months) from the date of issuance of examination report and thereafter the Learned Examiner may list the application for hearing on the stipulated date and time if he deems it fit.
On the other hand, if the application is accepted by the Examiner, he would order for advertisement of application in the Trade Marks Gazette.
- Publication in the Trademark Journal
After examination and acceptance of the trade mark application, the mark is advertised in the Trademarks Gazette within a period of 10-12 months from the date of the acceptance by the IP Office for opposition by third party(ies) depending upon the back log of applications at NIPO.
Notice of Opposition can be filed within a period of 3 months (extendable for a period of three months) from the date when the Trademark Gazette was made available to public.
- Opposition Proceedings
Once a mark is published in the Gazette, opposition proceeding may be initiated against the application for registration of the proposed mark by any person who believes that the proposed mark is in conflict with their existing mark.
Therefore, any person who believes his or her rights in a mark will be affected by the registration of a mark may file an opposition with the competent authority in response to the publication of the mark in the Gazette.
On publication of a trademark in the Trademark Journal, any person can file an opposition against registration of the said trademark by filing a Notice of Opposition within the prescribed period of three (3) months from the date on which the mark was published in the Journal.
A trademark application can be opposed in Sri Lanka on grounds given under Sections 103, and 104 of the Intellectual Property Act No. 36 of 2003. Section 103 of the Act specifies the grounds on which mark is not registrable and Section 104 provides for marks inadmissible by reason of third party rights.
Once an opposition is filed against a trademark a copy of Notice of Opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to present his observation on grounds of opposition within 3 months, failing which the application shall be treated as abandoned.
Thereafter the registrar will request for evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.
After hearing the parties, the Registrar shall decide whether the trademark shall be registered or not. If the registrar decides to register the mark, then if –
- No appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision;
- An appeal is preferred against his decision, upon the determination of such appeal;
The registrar shall accordingly register the mark.
Where the application for the proposed mark is not opposed by a third party (ies) or the opposition is successfully overcome, the mark proceeds to registration which is effective from the date of its application.
A trade mark is registered in Sri Lanka for a period of 10 years from the date of its application and not from the date of issuance of registration certificate.
A trade mark registration can be renewed from time to time by filing the requisite fees with the National Intellectual Property Office, Sri Lanka.
A trademark can be renewed in Sri Lanka from time to time for an unlimited period upon payment of the renewal fee, failing which the mark becomes liable to be removed from the register on account of non-renewal. Each renewal term spans for a period of 10 years.
A request to renew a trademark in Sri Lanka can be filed within 12 months before the expiry of the registration or the renewal term if accompanied by the requisite renewal fees on the prescribed form.
Request to renew a trademark in Sri Lanka can be filed within 6 months after the expiry of the registration/ renewal term if accompanied by the requisite renewal fees on the prescribed form.