Sri Lanka classifies goods and services on the international classification, set out in a schedule to the Regulations. An application may relate to one class only, which is the rule that shapes the economics of a Sri Lankan portfolio.
There is a second rule, in the removal provisions, that pulls in the opposite direction and is unusually generous to proprietors. Both are worth knowing before the specification is drafted.
Quick reference
| Classification | The international classification, in the Fourth Schedule to the Regulations |
| Classes per application | One |
| Same mark, four classes | Four applications, four registrations, four renewals |
| Non-use removal | Use of the mark on one item in a class prevents removal for all the goods in that class |
| Associated marks | The Director-General may require closely resembling marks of the same owner to be entered as associated |
One class per application
Regulation 16 is short: the application for registration of a mark may relate to goods or services of any one class of the international classification.
Section 106 requires the application to give a clear and complete list of the particular goods or services with an indication of the corresponding class. There is no multi-class application and no multi-class registration.
The consequences are the familiar ones. Official fees multiply by class at every stage. Renewal dates multiply and may drift apart where one class was added later or held up by an objection. Assignments and licences are recorded against each registration separately.
And a registration lost in one class leaves the others standing — which limits the damage from a successful attack, and equally lets an opponent pick off the classes you cannot support.
The rule that works in your favour
Section 136(3)(b) is unusual, and it matters more than the one-class rule in the long run.
On an application to remove a mark for non-use, use of the mark in connection with one or more of the goods or services belonging to any given class in respect of which the mark is registered suffices to prevent the removal of the mark in respect of all the other goods or services of the same class.
Read that carefully. Within a class, genuine use of one item protects the whole specification for that class. There is no partial removal of unused goods inside a class in the way most systems allow.
So in Sri Lanka a broad specification within a class you are actually trading in is well protected. A broad specification across classes you are not trading in is not protected at all — each of those is a separate registration standing on its own use.
The planning rule follows directly: be generous inside a class you will use, and disciplined about which classes you file in.
Section 136(3)(a) adds the usual companion: use in a form differing in elements that do not alter the distinctive character of the mark is not a ground for removal.
Who decides the class
The office does, in the first instance, through examination of the list of goods and services. Where a specification is unclear or spans classes, that surfaces as a formal objection at the first stage of examination rather than as a substantive refusal.
Since a formal defect rectified later resets the date of the application to the date of rectification, a specification that needs fixing is not a harmless slip. See filing a trademark in Sri Lanka.
Associated marks
Section 116 gives the Director-General a power that has no equivalent in several neighbouring systems.
Where an application is made for a mark identical with or closely resembling a mark the same applicant already has on the register for the same goods or services, or the same description, such that use by another person would be likely to mislead, the Director-General may require as a condition of registration that the marks be entered as associated marks.
Association has two effects.
They become assignable and transmissible only as a whole, not separately. A family of associated marks cannot be broken up and sold off piece by piece, which is a real constraint on a brand disposal.
And where use of a registered mark has to be proved for any purpose, the Director-General may accept use of an associated registered mark, or of the mark with additions or alterations not substantially affecting its identity, as equivalent.
So association trades flexibility for evidential convenience. It is imposed by the office rather than chosen, but it is worth anticipating where a brand is being filed in several closely related forms.
Drafting the specification
Three practical rules for Sri Lanka specifically.
Be accurate about the class. A misclassified specification is a formal defect, and a formal defect moves your filing date.
Be generous within the class. The one-item-saves-the-class rule means breadth inside a class you trade in costs nothing in non-use exposure.
Be honest about the number of classes. Each one is a permanent, recurring commitment, and a class with no use in it is a standalone registration with nothing holding it up.
Frequently asked questions
Can I file a multi-class trademark application in Sri Lanka? No. The Regulations limit an application to goods or services of any one class, so each class is a separate application and registration.
Does unused breadth in my specification put the registration at risk? Not within a class you are using. Use on one item in a class prevents removal for all the other goods or services in that same class. Across classes it does, because each class is its own registration.
What classification does Sri Lanka use? The international classification, set out in the Fourth Schedule to the Intellectual Property Regulations.
What are associated marks? Closely resembling marks of the same owner that the Director-General requires to be entered as associated. They can only be assigned as a whole, and use of one can be accepted as use of another.
If I lose one class, do I lose the others? No. Each class is a separate registration, so an attack succeeds or fails class by class.
How should I decide how many classes to file in? By where the brand will genuinely trade. Breadth inside a class is cheap and well protected; an extra class is a separate registration with its own fees, its own renewals and its own exposure.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — sections 106, 116, 117, 136
- Intellectual Property Regulations No. 01 of 2006 — regulation 16 and the Fourth Schedule
See our related notes on filing a trademark in Sri Lanka, nullity and removal and trademark fees.
Working out how many Sri Lankan applications a brand actually needs? Talk to us.