The Intellectual Property Act splits refusal into two sections. Section 103 is about the mark itself — what it is, what it says, whether it can distinguish anything. Section 104 is about other people — earlier marks, earlier use, well-known marks, and agents who filed without permission.
The division matters because the two sections behave differently. Several section 103 grounds can be answered by showing the mark has been used and is recognised. Section 104 grounds are generally answered by consent, or not at all.
Quick reference
| Ground | Where | Can it be overcome? |
|---|---|---|
| Shapes imposed by the nature of the goods or their industrial function | 103(1)(a) | No |
| Exclusively descriptive signs | 103(1)(b) | Yes — on the factual circumstances |
| Customary designations in the trade | 103(1)(c) | Yes — same route |
| Incapable of distinguishing | 103(1)(d) | Yes — same route |
| Scandalous, contrary to morality or public order, or likely to offend religious or racial susceptibilities | 103(1)(e) | No |
| Likely to mislead as to nature, source or characteristics | 103(1)(f) | Yes — same route |
| A name not represented in a special or particular manner | 103(1)(g) | Yes — same route |
| A geographical name or surname in its ordinary signification | 103(1)(h) | Yes — same route |
| State or international emblems, flags, official signs | 103(1)(i), (j) | Only with authorisation |
| Resembling a mark removed or lapsed within the last two years | 103(1)(k) | No |
| Goods whose trading is prohibited in Sri Lanka | 103(1)(l) | No |
| Earlier filed or registered mark | 104(1)(a) | By consent |
| Earlier unregistered mark used in Sri Lanka, where the applicant knew | 104(1)(b) | By consent |
| Earlier trade name used in Sri Lanka, where the applicant knew | 104(1)(c) | By consent |
| Well-known mark or trade name | 104(1)(d) | By consent |
| Third-party rights or unfair competition | 104(1)(e) | By consent |
| Filed by an agent or representative without authorisation | 104(1)(f) | If the agent justifies the filing |
What a mark may consist of
Before the bars, section 102(3) says what is in principle registrable, and the list is broad: arbitrary or fanciful designations, names, pseudonyms, geographical names, slogans, devices, reliefs, letters, numbers, labels, envelopes, emblems, prints, stamps, seals, vignettes, selvedges, borders and edgings, combinations or arrangements of colours, and shapes of goods or containers.
So colour combinations and product shapes are within the scope of what a mark can be. Whether a particular one gets through section 103 is the separate question.
The objective grounds
Functional shapes. A mark consisting of shapes or forms imposed by the inherent nature of the goods or services, or by their industrial function, is not registrable. There is no saving for recognition acquired through use.
Descriptive and customary signs. A sign consisting exclusively of an indication serving in trade to designate kind, quality, quantity, intended purpose, value, place of origin or time of production or supply is barred, as is one that has become a customary designation in the current language or the established practices of trade in Sri Lanka.
Incapable of distinguishing. The general distinctiveness requirement.
Names, geographical names and surnames. Two grounds here are more restrictive than most regional systems and are easy to overlook.
A mark is inadmissible if it does not represent in a special or particular manner the name of an individual or enterprise. And a mark is inadmissible if it is, according to its ordinary signification, a geographical name or a surname.
So a plain company name in ordinary type, or a founder’s surname, starts from a position of inadmissibility. The route through is presentation — a stylised or distinctive representation — or evidence.
Deception. A mark likely to mislead trade circles or the public as to the nature, source, geographical indication, manufacturing process, characteristics or suitability of the goods or services.
Scandal, morality and susceptibilities. A mark consisting of any scandalous design, or contrary to morality or public order, or which in the opinion of the Director-General or the Court is likely to offend the religious or racial susceptibilities of any community.
This is not curable, and it is assessed in context. A name or image that is unremarkable elsewhere can be refused outright, so it is a question to settle before a brand is committed to in Sri Lanka.
Emblems. Reproducing or imitating armorial bearings, flags or other emblems, initials, names or abbreviated names of a State or an intergovernmental or convention-created international organisation, or official signs or hallmarks of a State, unless authorised by the competent authority.
Recently lapsed marks. A mark resembling, so as to be likely to mislead, a mark, collective mark or certification mark whose registration expired and was not renewed during the two years preceding the application — or whose renunciation, removal or nullity was recorded during those two years.
This is a two-year quarantine on a lapsed competitor’s mark. A brand owner who spots a lapse and files immediately may meet this ground rather than an empty register.
Prohibited goods. Registration sought for goods or services whose trading is prohibited in Sri Lanka.
The factual circumstances rule
Section 103(2) is the escape route, and it is drafted more generously than the equivalent in most of the region.
In applying the descriptive, customary, non-distinctive, misleading, name-presentation and geographical-name-or-surname grounds, the Director-General shall have regard to all the factual circumstances and in particular:
- the length of time the mark has been in use in Sri Lanka or in other countries; and
- the fact that the mark is held to be distinctive in other countries or in trade circles.
The reference to use and distinctiveness in other countries is the valuable part. A mark that is descriptive on its face but has been registered and used internationally has a real argument, supported by the statute, that does not depend on Sri Lankan use alone.
Note also the limits. The ground is not available for functional shapes, scandalous or offensive matter, emblems, the two-year quarantine, or prohibited goods.
State patronage
The Regulations add a further bar. The Director-General shall not register any mark bearing terms or words such as “President”, “Prime Minister”, “Minister”, “State”, “Government” or any other word of similar meaning likely to mislead the public into believing the mark has state patronage or authorisation.
The third-party grounds
Section 104 covers conflict, and the drafting is about misleading the public rather than a formal confusion test.
Earlier marks. A mark resembling, in such a way as to be likely to mislead the public, a mark already validly filed or registered by a third party — or subsequently filed by a person validly claiming priority — for identical or similar goods or services.
Earlier unregistered use. A mark resembling an unregistered mark used earlier in Sri Lanka by a third party for identical or similar goods or services, if the applicant is aware, or could not have been unaware, of such use.
Earlier trade names. The same, for a trade name already used in Sri Lanka, on the same knowledge condition.
The knowledge condition is what makes these two usable. A prior user without a registration is not helpless, but the case is built on showing what the applicant knew or must have known — which in practice means prior dealings, a terminated distributorship, a former employee, or a market small enough that ignorance is implausible.
Well-known marks. A mark identical with, misleadingly similar to, or a translation, transliteration or transcription of a mark or trade name well known in Sri Lanka for identical or similar goods — or, where the well-known mark is also registered in Sri Lanka, for dissimilar goods, provided use would indicate a connection and the owner’s interests are likely to be damaged. See well-known trademarks in Sri Lanka.
Other rights and unfair competition. A mark infringing other third-party rights, or contrary to the unfair competition provisions. See unfair competition and passing off.
The agent’s filing. A mark filed by the agent or representative of a third party who owns the mark in another country, without that owner’s authorisation, unless the agent justifies the action.
This is the provision for the distributor who registered your brand locally. It is a ground of refusal, a ground of opposition and a ground of nullity, and it does not require you to have any Sri Lankan registration of your own.
Consent. Section 104(3) requires the Director-General, in applying grounds (a) to (e), to have regard to the fact that the third parties concerned have consented to the registration.
Answering an objection
Where the mark is inadmissible, the Director-General notifies the applicant with the grounds in writing, and the applicant has one month to make written submissions, with a hearing available. The Director-General may refuse, accept absolutely, or accept subject to conditions, amendments, modifications or limitations as to the mode or place of use.
Where there is a refusal or a conditional acceptance, the applicant may require the grounds of the decision in writing within three months. See examination and objections.
Frequently asked questions
Can a surname be registered as a trademark in Sri Lanka? Not in its ordinary signification, as a starting point. The route through is a special or particular presentation, or evidence under section 103(2) — which expressly allows the Director-General to consider use and distinctiveness in other countries.
Does foreign use help with a distinctiveness objection? Yes. Section 103(2) directs the Director-General to have regard to the length of time the mark has been used in Sri Lanka or in other countries, and to its being held distinctive in other countries or trade circles.
Can I register a mark similar to one that was recently removed from the register? Not if it resembles that mark in a way likely to mislead and the earlier registration expired, was renounced, removed or declared null within the two years before your application.
My distributor registered my brand in Sri Lanka. Is there a ground for that? Yes. Section 104(1)(f) covers a mark filed by an agent or representative of the foreign owner without authorisation, unless the agent justifies the filing.
Can an unregistered earlier user stop my application? Yes, if their mark was used earlier in Sri Lanka for identical or similar goods and you were aware, or could not have been unaware, of that use.
What about marks containing words like “Government” or “Minister”? The Regulations bar them where they are likely to mislead the public into believing the mark has state patronage or authorisation.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — sections 102, 103, 104, 111
- Intellectual Property Regulations No. 01 of 2006 — regulation 22
See our related notes on examination and objections, well-known trademarks and trademark opposition.
Holding a Sri Lankan refusal and deciding whether to argue it? Talk to us.