Trademark Opposition in Sri Lanka: Evidence Goes In With the Notice

Most opposition systems let you file a notice first and the evidence later. Sri Lanka does not. Section 111(10) requires the notice of opposition to be accompanied by evidence to substantiate the grounds, which changes how the three months before it have to be used.

Quick reference

The window

Publication of the accepted application opens the opposition period. Any person who considers the mark inadmissible on one or more of the grounds in section 103 or 104 may give notice of opposition within three months of the date of publication, in the prescribed form, with the prescribed fee.

The Act contains no specific extension of the opposition period, although section 111(14) gives the Director-General a general power to allow a reasonable extension of a prescribed period. That is a discretion to ask for, not a deadline to plan around.

Where no notice is received within the three months, the Director-General shall register the mark. There is no further gate.

Evidence with the notice

The requirement is in the statute: the notice states the grounds of opposition and is accompanied by evidence to substantiate such grounds.

This front-loads the work. An opposition cannot be filed as a placeholder while the case is assembled, which is the common practice elsewhere in the region. By the time the three months expire you need:

• the grounds properly identified against sections 103 and 104;
• the evidence that makes them out — registrations, use in Sri Lanka, reputation, knowledge of the applicant, or whatever the particular ground requires; and
• the fee and the form.

For an overseas opponent that means watching publications and starting the file when the publication appears, not when the deadline approaches. Where the ground is earlier unregistered use under section 104(1)(b), or an earlier trade name under 104(1)(c), the evidence has to go further still: those grounds require showing that the applicant was aware, or could not have been unaware, of the earlier use.

What you can oppose on

Any ground on which the mark is inadmissible — which means the full section 103 list (functional shapes, descriptiveness, customary signs, incapacity to distinguish, scandalous or offensive matter, deception, names and surnames, emblems, the two-year quarantine on recently lapsed marks, prohibited goods) and the full section 104 list (earlier filings and registrations, earlier unregistered use, earlier trade names, well-known marks, other third-party rights and unfair competition, and the unauthorised filing by an agent or representative).

The grounds are set out in marks that cannot be registered.

Two of them are worth singling out for opponents.

The well-known mark ground does not require a Sri Lankan registration of your own, and the Act gives a detailed list of criteria for establishing well-known status. See well-known trademarks in Sri Lanka.

The agent’s filing ground covers the mark filed by an agent or representative of the foreign owner without authorisation — unless the agent justifies the action. For a brand owner whose distributor filed first, this is usually the cleanest route.

The applicant’s answer

Where a notice is received in time with the fee, the Director-General serves a copy of the grounds on the applicant and requests the applicant to present observations in writing, accompanied by evidence to support the application, within three months.

So the applicant’s position is also evidenced rather than merely pleaded, and on the same three-month rhythm.

The decision

On receipt of the observations, the Director-General decides — after hearing the parties, if a hearing is considered necessary — as expeditiously as possible, whether the mark should be registered.

Where a hearing is held, the Regulations direct that evidence shall be given by affidavit unless the Director-General otherwise directs, and that after the evidence the parties file written submissions simultaneously on a date fixed by the Director-General.

Simultaneous written submissions are worth preparing for. Neither side sees the other’s case before filing, so the submissions have to anticipate rather than respond.

After the decision

If the Director-General decides the mark can be registered, registration follows — but not immediately. The Act waits for the appeal position to settle:

• where no appeal is preferred, registration follows on the expiry of the period for appealing; and
• where an appeal is preferred, registration follows on the determination of that appeal.

So a successful applicant does not get the certificate the moment the decision issues, and an opponent who intends to appeal preserves the position by doing so.

Opposition is not the only route

If the three months pass, the mark is registered and the grounds still exist, the registration can be attacked — but the forum changes. Nullity is a matter for the Court, not the Director-General, and an application based on the section 104 third-party grounds must be brought within five years of the issue of the certificate.

That is a longer runway than the opposition window but a more expensive one. See nullity and removal.

Watching for publications

Because the window is short and the evidence has to be ready, the practical defence of a Sri Lankan portfolio is a watch on publications rather than a reaction to them.

For a brand owner with no Sri Lankan registration at all, that is still worth doing. The section 104 grounds — earlier use with the applicant’s knowledge, well-known status, the unauthorised agent — are all available to someone with no registration of their own, but only if they see the publication in time.

Frequently asked questions

How long is the opposition period in Sri Lanka? Three months from the date of publication of the application. The Act provides no specific extension, though the Director-General has a general power to allow a reasonable extension of a prescribed period.

Do I have to file evidence with my notice of opposition? Yes. The notice must be accompanied by evidence substantiating the grounds, so the case has to be assembled within the three months rather than afterwards.

Who can oppose a Sri Lankan application? Any person. There is no requirement to hold a Sri Lankan registration, and several grounds are available to a party with no registration at all.

How long does the applicant have to respond? Three months from service of the grounds, with observations in writing accompanied by supporting evidence.

Is there a hearing? If the Director-General considers it necessary. Evidence at a hearing is by affidavit unless otherwise directed, and the parties then file written submissions simultaneously.

What if I miss the opposition window? The mark will be registered. The registration can still be attacked, but through nullity proceedings in Court, and a nullity application on the section 104 grounds must be brought within five years of the certificate.

Useful official resources

• National Intellectual Property Office of Sri Lanka — the Gazette and forms
• Intellectual Property Act, No. 36 of 2003 — sections 103, 104, 111, 134
• Intellectual Property Regulations No. 01 of 2006 — regulation 20

See our related notes on marks that cannot be registered, nullity and removal and well-known trademarks.

Watching a Sri Lankan publication with three months to act? Talk to us.