Changes to a Trademark in Sri Lanka: What You Can Alter

Sri Lanka is more permissive than its neighbours about changing a registered mark. Pakistan allows alteration only where the mark contains the proprietor’s own name or address. Sri Lanka allows an addition or alteration of any kind, provided the identity of the mark is not substantially affected — at the Director-General’s discretion.

That is a genuinely useful power. It is also narrower in practice than it reads.

Quick reference

Altering a registered mark

Section 120 lets the registered owner apply, on the prescribed form and with the prescribed fee, for leave to add to or alter the mark in any manner not substantially affecting the identity of it.

The Director-General may refuse leave, or grant it on such terms and subject to such limitations as to mode or place of use as thought fit. Where leave is granted, the mark as altered is published, and the publication includes a representation of the altered mark, the registration number, the owner’s name and address, the date of registration, the date of the grant of leave and the list of goods or services with the class.

So the power is real but discretionary, and the result is public.

The limit is the phrase “not substantially affecting the identity”. In practice that covers tidying rather than redesign — a minor change to lettering or layout, dropping a non-distinctive element, correcting a detail. It does not cover a new logo, a changed word element or a mark that now reads differently.

The honest test is whether a third party searching the register for the old mark would recognise what they found. If the alteration would have changed anyone’s clearance decision, it is a new mark.

Changing a pending application

The Regulations are narrower here than section 120 is for registrations, which catches people out.

Only two amendments to a pending application are permitted:

• a change of name or address of the applicant, provided it is not a change by assignment, transmission or otherwise; and
• an amendment of the mark by deleting a part or parts of it.

You can cut. You cannot add, and you cannot alter in the broader section 120 sense while the application is pending.

A change of ownership during prosecution is not an “amendment” at all — it is an assignment of the application, which section 123 expressly permits and which has to be recorded to have effect against third parties. See trademark assignment in Sri Lanka.

Separately, note what happens where an application has a formal defect: the applicant gets three months to rectify it, and the date of rectification becomes the date of receipt of the application. Correcting a formality is not free. See filing a trademark in Sri Lanka.

Name, address and other particulars

Section 163(1) lets the Director-General, on application by or on behalf of the registered owner, correct any error or make any change:

• in the name, address or description of the registered owner; and
• concerning any other particulars relating to the registration as may be prescribed.

The Regulations also require the register to record the name and address of any duly appointed agent, the Gazette reference for the publication of the registration, and any change in the name or address of the registered owner.

Three reasons to keep this current, and none of them is tidiness.

The office writes to the register address. For an owner resident abroad that is the postal address for service in Sri Lanka, and it is where anything time-critical arrives.

Proceedings require the right parties. Nullity, removal and licence cancellation applications must join the registered owner and every assignee, licensee or sub-licensee on record. A stale register produces proceedings served on the wrong people.

Transactions stall on it. A chain of unrecorded name changes is discovered during diligence, not before it.

Correcting the register, and the Court’s power

Section 163(2) gives the Court a wider power than the Director-General’s. On the application of a person aggrieved by:

• the non-insertion in or omission from any register of an entry;
• an entry made without sufficient cause;
• an entry wrongly remaining on a register; or
• any error or defect in an entry,

the Court may make such order for making, expunging or varying the entry as it thinks fit.

The division of labour is worth holding on to. The Director-General corrects errors and changes particulars. The Court deals with entries that should not be there — and with validity, which is nullity under section 134, not correction. See nullity and removal.

Narrowing the specification

There is no mechanism for adding goods or services to a registration. That is a new application, in the relevant class, with its own date and its own examination.

Narrowing is available. The registered owner may renounce the registration either wholly or in respect of part of the goods or services, by a declaration in writing signed by or on behalf of the owner and forwarded to the Director-General. It is recorded, published, and takes effect on the date the Director-General receives it.

One condition. Where a licence contract is recorded, the Director-General shall not accept or record the renunciation except on a signed declaration by which any assignee, licensee or sub-licensee on record consents — unless consent is expressly waived in the licence contract.

So a licensed mark cannot be given up unilaterally, and a licensor who wants that freedom has to take the waiver at the drafting stage.

A specification can also be narrowed on renewal: renewals are recorded and published specifying any removal from the lists of goods or services. See trademark renewal in Sri Lanka.

Rebranding

A refreshed mark is a new mark unless the change is genuinely cosmetic. The sensible approach in Sri Lanka:

• file the new mark in each class it needs, and treat the date as fresh;
• keep the old registrations while the old mark remains in use anywhere, including on stock and packaging;
• consider section 120 only where the change is small enough that the register entry would still be recognisable; and
• expect association. Where the new mark closely resembles one you already hold for the same goods, the Director-General may require them to be entered as associated marks, which means they can afterwards be assigned only as a whole.

Frequently asked questions

Can I change my registered trademark in Sri Lanka? Yes, with leave of the Director-General, provided the addition or alteration does not substantially affect the identity of the mark. The altered mark is then published.

Can I amend the mark in a pending application? Only by deleting a part or parts of it. Additions and broader alterations are not permitted at the application stage.

How do I update my company name on the register? By application to the Director-General, who may correct any error or make any change in the name, address or description of the registered owner.

Can I add goods to an existing registration? No. There is no mechanism for extending a specification; additional goods or services need a new application.

Can I give up part of my registration? Yes, by renunciation in respect of part of the goods or services. Where a licence contract is recorded, the consent of the recorded licensee is needed unless it was waived in the contract.

I am rebranding. Should I alter the registration or file again? File again, unless the change is small enough not to substantially affect the mark’s identity. Keep the old registration while the old mark is still in use.

Useful official resources

• National Intellectual Property Office of Sri Lanka — forms and fees
• Intellectual Property Act, No. 36 of 2003 — sections 116, 117, 119, 120, 123, 133, 163
• Intellectual Property Regulations No. 01 of 2006 — regulations 15, 23, 27, 28

See our related notes on trademark renewal in Sri Lanka, trademark assignment and nullity and removal.

Rebranding in Sri Lanka, or carrying a register that no longer matches the company? Talk to us.