The structural fact about attacking a Sri Lankan registration is the forum. The Director-General registers marks and decides oppositions, but nullity and removal are matters for the Court — the Commercial High Court of the Province.
That makes a post-registration challenge a materially bigger undertaking than an opposition, which is a reason to take the opposition window seriously.
Quick reference
| Nullity | Removal for non-use | |
|---|---|---|
| Section | 134 | 136 |
| The claim | Registration was precluded under sections 103 or 104 | The mark has not been used |
| Forum | Court | Court |
| Who may apply | Any person showing a legitimate interest, or a competent Authority including the Director-General | The same |
| Period | Five years from issue of the certificate, for section 104 grounds | Five consecutive years immediately preceding the application |
| Effect | Null and void from the date of registration | From a date the Court determines |
| Partial | Yes, for the affected goods or services | Yes — but see the class rule below |
Who has to be a party
Both sections carry the same procedural requirement, and it is easy to get wrong.
The application is made to Court by any person showing a legitimate interest, or by any competent Authority including the Director-General — and the registered owner and every assignee, licensee or sub-licensee on record must be made a party.
So the first step in either proceeding is a register search for recorded interests. A licensee on the record who is not joined is a defect in the proceedings, not an afterthought.
It also tells a licensee something useful: if your licence is recorded, you get notice and a seat. If it is not, you may learn about the loss of the mark you depend on after the event. See trademark licensing in Sri Lanka.
Nullity
The Court may declare a registration null and void if registration was precluded under section 103 (the objective grounds) or section 104 (the third-party grounds).
Three qualifications matter.
Grounds must exist at the date of the application to Court. Section 134(1) provides that grounds of nullity which do not exist on that date shall not be taken into account. A ground that has fallen away — a cited mark that has since lapsed, a descriptiveness objection overtaken by acquired distinctiveness — is not available.
Partial nullity. Where the grounds exist for only part of the goods or services, nullity is declared for that part only.
A five-year limit on the third-party grounds. An application for a declaration of nullity based on any of the grounds in section 104(1) must be made within five years from the date of issue of the certificate of registration.
That limit is the one to diarise. The section 104 grounds are the commercially important ones — earlier marks, earlier unregistered use, earlier trade names, well-known marks, other third-party rights, and the unauthorised filing by an agent or representative. A brand owner who discovers that a distributor registered their mark in Sri Lanka has five years from the certificate to bring a nullity claim on that ground.
The section 103 objective grounds are not subject to that limit.
The effect is retroactive. On a final decision declaring total or partial nullity, the registration is deemed to have been null and void, totally or partially, from the date of such registration — which, given that the date of registration is the date the application was received, reaches back to filing.
Removal for non-use
The Court may remove a registered mark where:
- the registered owner has, without valid grounds, failed to use the mark within Sri Lanka or cause it to be used under a licence, during five consecutive years immediately preceding the date of the application to Court; or
- the owner has caused, provoked or tolerated the transformation of the mark into a generic name for goods or services for which it is registered, so that its significance as a mark has been lost in trade circles and in the eyes of the public.
Three rules then govern what counts.
Circumstances beyond the owner’s control may be taken into account — but the Act states expressly that the Court shall not take into account the lack of funds of the registered owner as a ground for non-use. That closes off the most commonly pleaded excuse.
Use in a varied form counts. Use in a form differing in elements that do not alter the distinctive character of the mark is not a ground for removal.
Use of one item saves the class. Use in connection with one or more of the goods or services belonging to any given class for which the mark is registered suffices to prevent removal in respect of all the other goods or services of the same class.
That last rule is unusually generous and it changes the arithmetic of a non-use attack. Within a class, there is no stripping out of unused goods — if the owner is trading in anything in that class under the mark, the whole class survives. A non-use challenge in Sri Lanka therefore succeeds or fails class by class, and research has to establish an absence of use across the whole class, not just the goods you care about.
Because Sri Lanka registers one class per application, that still leaves a real route against a portfolio filed defensively across classes the owner never entered.
Licensed use counts as the owner’s use. Section 124(2) provides that use of the mark by a licensee is deemed to be use by the registered owner, so a mark worked through a local licensee is not vulnerable on that account.
The date the registration ceases
Section 137 gives the Court a discretion worth asking it to exercise. On a final decision removing a mark, the Court may, taking into account the date of the events and other circumstances which occasioned the removal, determine the date on which the registration is deemed to have ceased to have legal effect.
Where there is a parallel infringement claim, or a conflicting application of your own waiting behind the registration, the backdating is not a formality — it decides what the registration could be used against in the intervening period.
Renunciation
The third route off the register is voluntary. The registered owner may renounce the registration wholly or in part by a signed declaration to the Director-General, which takes effect on the date the Director-General receives it.
One condition protects recorded interests. 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 mark with a recorded licence cannot simply be given up, and a licensor negotiating a licence should decide deliberately whether to take that waiver.
Correcting the register
Separately from all of this, the Director-General may on application correct an error or make a change in the name, address or description of a registered owner, or in other prescribed particulars. And the Court may, on the application of a person aggrieved by an entry made without sufficient cause, an entry wrongly remaining, or an error or defect in an entry, order it to be made, expunged or varied.
Correction is for errors. Validity is for nullity.
Frequently asked questions
Who decides whether a Sri Lankan registration is cancelled? The Court — the Commercial High Court of the Province. The Director-General registers marks and decides oppositions, but nullity and removal are judicial.
How long do I have to bring a nullity claim? Within five years of the issue of the certificate of registration where the claim is based on the section 104 third-party grounds. The section 103 objective grounds are not subject to that limit.
How much non-use is needed to remove a mark? Five consecutive years immediately preceding the application to Court, without valid grounds. Lack of funds is expressly not a valid ground.
Can I remove just the unused goods from a registration? Not within a class. Use of the mark on one item in a class prevents removal for all the other goods or services in that class. Across classes you can, because each class is a separate registration.
Does use by a licensee protect the registration? Yes. Use of the mark by a licensee is deemed to be use by the registered owner.
Who has to be joined to the proceedings? The registered owner and every assignee, licensee or sub-licensee on record. A register search for recorded interests is the first step.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — sections 124, 133 to 137, 163
- High Court of the Provinces (Special Provisions) Act, No. 10 of 1996
See our related notes on trademark opposition in Sri Lanka, marks that cannot be registered and trademark licensing.
Facing a Sri Lankan registration that should not be there? Talk to us.