Trademark Infringement in Sri Lanka: Rights, Remedies and the Forum

Sri Lanka gives a registered owner a broader right than the standard confusion test, and then hands them a presumption in the clearest cases. It also sets out, unusually plainly, what the registration does not let you stop.

Quick reference

What the registration gives you

Section 121(1) lists the owner’s exclusive rights: to use the mark, to assign or transmit the registration, and to conclude licence contracts.

Section 121(2) then sets out what third parties are precluded from doing without the owner’s consent, and it has two limbs:

• any use of the mark, or a sign resembling it in such a way as to be likely to mislead the public, for the goods or services the mark is registered for, or for similar goods or services where the use is likely to mislead; and
• any other use of the mark, or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interests of the registered owner.

The second limb is the broad one. It is not tied to similar goods and it does not require the public to be misled. It asks whether the use is without just cause and whether the conditions are likely to prejudice the owner’s interests — which reaches reputational harm and dilution-style conduct that the first limb would not catch.

The presumption

Section 121(4): the Court shall presume the likelihood of misleading the public where a person uses a mark identical to the registered mark for identical goods or services.

In the clearest cases, then, the claimant does not have to prove the central element. That matters most in counterfeiting, where the issue is identification of the defendant and the goods rather than the likelihood of confusion.

Applying the mark, including for export

Section 121(3) deems a particular act to be prohibited: the application or affixing in Sri Lanka by a third party — by printing, painting or otherwise — of the mark or a resembling sign on or in connection with goods for which the mark is registered, whether those goods are intended for sale in Sri Lanka or for export from Sri Lanka.

That closes the gap a manufacturer-for-export would otherwise rely on. Production in Sri Lanka for a foreign market is within the prohibition.

What you cannot stop

Section 122 states the limitations, and they are worth knowing before a demand letter goes out.

Honest identification and information. The registration does not let the owner stop third parties using their bona fide names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or supply of their goods and services — so far as the use is confined to mere identification or information and cannot mislead the public as to the source.

Exhaustion. The owner cannot stop third parties using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka under that mark, provided those goods have not undergone any change.

The exhaustion rule is drafted around goods lawfully put on the market in Sri Lanka, and the condition that the goods are unchanged is the point of attack where repackaged or altered product is in issue.

Where to sue

“Court” in the Act means a High Court established under Article 154P of the Constitution for a Province, empowered with civil jurisdiction — in practice the Commercial High Court — determined by where the defendant resides or where the cause of action arose.

All the substantive trademark proceedings under the Act run there: infringement, nullity, removal, and cancellation of licence contracts.

Criminal liability

Section 184 makes wilful infringement of the rights of a registered owner, assignee or licensee of a mark an offence, triable before a Magistrate, with a fine of up to five hundred thousand rupees or imprisonment up to six months or both — and double on a second or subsequent conviction.

Alongside it sit the forgery and false-application offences, and section 185, which makes it an offence to represent for industrial or commercial purposes that a mark is registered when it is not, or that a registration covers goods it does not, or that it gives exclusive rights it does not given the limitations on the register. Using the word “registered” or any word or sign implying registration is deemed to be such a representation.

That is a genuine trap for a brand arriving from a market where premature use of the registered symbol carries no penalty. In Sri Lanka it is an offence.

Search and seizure. On information of an offence, a Magistrate may issue a summons or a warrant for arrest, and on information on oath may issue a warrant allowing a police officer or named person to enter, search and seize goods or things by means of or in relation to which the offence was committed. Seized goods are brought before the Magistrate’s Court to determine whether they are liable to forfeiture.

For counterfeiting, that criminal route is usually the faster lever, for the same reasons it is elsewhere in the region: it reaches stock and premises, and it works against defendants with no assets worth a civil decree.

Customs. The Act amended the Customs Ordinance to allow for prohibiting the importation and exportation of counterfeit trademark goods, so border measures form part of the picture.

Unregistered marks

A registration is not a precondition for every remedy. The unfair competition provisions in section 160 apply to confusion with, and damage to the goodwill of, a mark whether registered or not, along with trade names, business identifiers, product appearance and presentation.

See unfair competition and passing off.

Before you write the letter

Two practical checks specific to Sri Lanka.

Is your own registration safe? A defendant will look at nullity under section 134 and removal for non-use under section 136, both of which go to the same Court. A registration you cannot support with use in the relevant class is a weaker base than it looks. See nullity and removal.

Is the use actually caught? Section 122 protects honest descriptive and identifying use and goods lawfully on the market in Sri Lanka. A complaint aimed at either is a complaint that will not go anywhere.

Frequently asked questions

What counts as infringement in Sri Lanka? Use of the mark or a resembling sign for the registered or similar goods where it is likely to mislead the public — and, separately, any other use of the mark or a resembling sign or trade name without just cause in conditions likely to be prejudicial to the owner’s interests.

Do I have to prove the public would be misled? Not where the sign and the goods are both identical to the registration. In that case the Court presumes the likelihood of misleading the public.

Can I stop goods made in Sri Lanka purely for export? Yes. Applying or affixing the mark in Sri Lanka is deemed a prohibited act whether the goods are intended for sale in Sri Lanka or for export.

Can I stop a competitor using my brand name descriptively? No, where the use is confined to mere identification or information through bona fide names, addresses or exact descriptive indications and cannot mislead as to source.

Where are trademark cases heard? In the Court as defined by the Act — the High Court of the Province with civil jurisdiction. Criminal offences are tried before a Magistrate.

Is it an offence to use the registered symbol before registration? Yes. Falsely representing that a mark is registered is an offence, and using the word “registered” or any word or sign implying registration is deemed to be such a representation.

Useful official resources

• National Intellectual Property Office of Sri Lanka
• Intellectual Property Act, No. 36 of 2003 — sections 121, 122, 160, 184 to 186, 197
• High Court of the Provinces (Special Provisions) Act, No. 10 of 1996

See our related notes on unfair competition and passing off, nullity and removal and well-known trademarks.

Dealing with infringement or counterfeit product in Sri Lanka? Talk to us.