Developments in trademark law in Sri Lanka

As brand identification moves beyond traditional realms and into ever more interesting spheres of influence, staying abreast of trends and changes to law in the Asian region is imperative

A trademark is the most valuable asset of a company. It is the way a business shows its customers who they are and what product or services they provide, and it distinguishes competitors’ goods.

The law relating to registration of trademarks in Sri Lanka is governed by the Intellectual Property Act No. 36 of 2003. The act defines a trademark as any visible sign serving to distinguish the goods of one enterprise from those of another. Thus, an audible sign, olfactory sign, or any other non-visual sign does not fall within the definition of a mark in Sri Lanka.

Trademarks are used to identify and distinguish the source of the goods of one party from those of others in the course of trade. For registration of marks, Sri Lanka uses the same classification as the Nice Agreement, even though it is not a party to it. This classification consists of 45 classes, of which 34 are in respect of goods and 11 in respect of services.

The exclusive right to a mark can be acquired through registration. It is important to note that, unlike in other jurisdictions, “use” is not a requirement for registration of a trademark in Sri Lanka. Registration of a mark may be granted to the party that fulfills the conditions of a valid application first, or validly claims the earliest priority for an application.

The director-general will not register a mark that is likely to mislead the public, or an unregistered mark used earlier in Sri Lanka by a third party in connection with, or identical to, similar goods or services if the applicant was aware, or could not have been unaware, of such use. The act prohibits the registration of marks that are identical or similar to well-known marks and trade names. Marks will not be registered if they are identical or sufficiently similar to, or constitute a translation, transliteration or transcription of, third-party marks for identical or similar goods or services. It is immaterial whether the well-known mark is registered in Sri Lanka.

A mark will not be registered if it consists of shapes or forms imposed by the inherent nature of the goods or services, or their industrial function. Examples of these types of shapes are standard wine bottles for wines, or a cylindrical mug shape with a standard handle for coffee mugs. When a shape is claimed as a trademark, the test is whether the shape claimed is capable of distinguishing the goods or services of one trader from the similar goods or services of another. The relevant question is whether the shape is one which other traders are likely in the ordinary course of their business, and without any improper motive, to desire to use upon or in connection with their goods.

Section 103(1)(b) of the act states that a mark that consists exclusively of a sign or indication that may serve in the course of trade to designate the type, quality, quantity, intended purpose, value, place of origin or time of production or supply of the goods or services concerned, is not admissible. The determination of the “descriptiveness” largely depends on the relevant facts and circumstances.

A mark that consists exclusively of a sign or indication that has become, in the language or bona fide and established trade practice in Sri Lanka, a customary designation of the goods or services concerned is not admissible.

A mark that is incapable of distinguishing the goods or services of one enterprise from those of another is also inadmissible. This provision acts as a blanket provision to cover all signs and indications that are incapable of distinguishing the goods or services of different enterprises. It is fact-sensitive.

For example, a single letter is too simple to serve as a mark. By contrast, a relatively long slogan may be too complicated to indicate the origin of the goods. However, in Viacom International Inc v The Maharaja Organization Ltd, the court held that even a single letter can constitute a valid mark under special circumstances. Hence, the letter “M” was allowed in combination with the letters “T” and “V” for television services.

Another example is colours. A combination or arrangement of colours can constitute a lawful mark. However, a colour per se cannot constitute a valid mark unless it is a colour other than a basic or common colour. The best example is Cadbury purple.

Cadbury has famously battled over its rights to monopolize the color purple for chocolate products. It has used a particular shade of purple to package a range of products for more than 100 years and believes the colour alone distinguishes its milk chocolates. It successfully trademarked Pantone 2685C in several countries including the UK and Australia.

It does not give Cadbury general ownership of all uses of that particular shade of purple. But it allows them to prevent competitors from using that shade, or a confusingly similar shade, for packaging chocolate products.

A mark that consists of any scandalous design, is contrary to morality or public order, or, in the opinion of the National Intellectual Property Office director-general or any court to which the matter may be referred, is likely to offend the religious or racial susceptibilities of any community, is not admissible.

Section 103(1)(f) denies registration to a mark that is likely to mislead trade circles or the public as to the nature, source, geographical indication, manufacturing process, characteristics, or suitability for the purpose of the goods or services concerned. The misleading character of a mark in these instances is intrinsic and inherent in the mark itself, and differs from the likelihood of misleading caused by an identical or similar mark.

Whether a mark is inherently misleading or not depends on the surrounding facts and circumstances of each case. An objection raised under this section may be successfully dislodged if there is enough evidence to show that the public or trade circles are not, in fact, misled.

A mark that does not represent in a special or particular manner the name of an individual or enterprise should not be registered. The expression “special or particular manner” has been held to mean an uncommon manner of expression that strikes the eye, rendering the mark distinctive.

A mark that is, according to its ordinary signification, a geographical name or surname is not admissible as a mark. The phrase “according to its ordinary signification” may mean the understanding of the ordinary people of the country. Words that function solely as geographical names, and which have some obvious or potential connection with the goods or services, have no inherent adaptation to distinguish.

However, a geographical name can constitute a valid mark if a trader can establish, because of the extent to which the trademark has been used, that it does distinguish the applicant’s goods or services from those of other traders. “Ceylon Tea” is Sri Lanka’s best known geographical indication. Surnames are generally not admissible as trademarks.

The commonness of a surname is an indicator of the extent to which the trademark is inherently adapted to distinguish the applicant’s goods or services. Still a signature is accepted as a trademark. An example would be luxury brand PIERRE CARDIN for watches.

A mark that reproduces or imitates armorial bearings, flags or other emblems, initials, names or abbreviated names of any state, intergovernmental international organization, or organization created by an international convention, unless authorized by the competent authority of that state or international organization, shall not be registered.

A mark that reproduces or imitates official signs or hallmarks of a state, unless authorized by the competent authority of that state, shall not be registered.

A mark that resembles in such a way as to be likely to mislead the public about a mark, collective mark or certification mark whose registration has expired and not been renewed during the two years preceding the filing of the application for the registration of the mark in question, or where its renunciation, removal or nullity has been recorded in the register for two years preceding the filing of the application for the mark in question, is not admissible.

A mark shall not be registered in relation to goods or services that are prohibited in Sri Lanka. When a mark consists of a certain word or definition, such as “President”, “Prime Minister”, “Minister”, “State”, “Government”, or any other similar word or term that is likely to mislead the public into believing that such a mark has state patronage or authorization, such marks are not admissible.

Registering a trademark gives the owner the exclusive rights to that mark. It gives the owner an exclusive right to use, license and sell the mark. Most importantly, registration makes it easier to take legal action to prevent others from using a mark. Registration alone is not sufficient. A trader must actively use the mark in the course of trade. If not, it can be removed on the grounds of non-use.