Sri Lanka protects trademarks under a single consolidated statute, the Intellectual Property Act, No. 36 of 2003, which covers everything from copyright to layout designs. Marks sit in Part V, and the office that administers them is the National Intellectual Property Office in Colombo, headed by the Director-General.
The structural point to understand first: the Director-General registers marks and decides oppositions, but cancelling a registration is a matter for the Court — and “Court” here means the Commercial High Court of the Province.
Quick reference
| Governing law | Intellectual Property Act, No. 36 of 2003 |
| Office | National Intellectual Property Office, Colombo |
| Classification | The international classification; one class per application |
| Priority | Six months from the first Convention filing |
| Priority certificate | Within three months of the Sri Lankan application |
| Submissions against refusal | One month from the notification |
| Opposition | Three months from publication of the application |
| Counter-observations | Three months from service of the grounds |
| Term | Ten years from the date of registration — which is the date the application was received |
| Renewal | Within the twelve months before expiry, with a six-month grace period and surcharge |
| Non-use removal | Five consecutive years, on application to Court |
| Madrid Protocol | Sri Lanka is not a member |
Registration is what creates the right
Section 102 is explicit: the exclusive right to a mark is acquired by registration. Registration is granted to the person who is first to fulfil the conditions of a valid application, or first to validly claim the earliest priority.
That is a first-to-file rule, softened by the inadmissibility grounds. A mark will not be registered if it resembles an unregistered mark already used in Sri Lanka by a third party where the applicant is aware, or could not have been unaware, of that use — which gives a prior user a route to stop an opportunistic filing, but a route that depends on proving the applicant’s knowledge.
The practical reading for a brand entering Sri Lanka is the ordinary one: file early, because the register decides most contests.
Filing
An application goes to the Director-General on the prescribed form and must contain a request for registration, the applicant’s name and address, five copies of a representation of the mark, and a clear and complete list of the goods or services with the corresponding class.
Two requirements catch foreign applicants.
An address for service in Sri Lanka is mandatory for an applicant resident outside the country, and it goes on the register.
An agent must be local. The Act requires a registered agent to be a citizen of Sri Lanka, ordinarily resident there, and either an Attorney-at-Law of the Supreme Court or a person holding the prescribed qualifications. Where an application is filed through an agent, a power of attorney accompanies it.
Applications are single class. The Regulations are explicit that an application may relate to goods or services of any one class, so a brand needing four classes files four applications. See trademark classes in Sri Lanka.
Priority
An applicant claiming priority from an earlier Convention filing must file in Sri Lanka within six months of that earlier application and append a written declaration giving the date, number, applicant and country.
The certified copy of the earlier application then has to be furnished within three months of the Sri Lankan filing date. Miss that and the Director-General simply makes no reference to the priority claimed — the application survives, the earlier date does not.
Sri Lanka is a Paris Convention member and has been since 1952. It is not a member of the Madrid Protocol, so there is no designation route. See international protection from Sri Lanka.
Examination
Examination runs in two stages. First the formalities, where a defect must be rectified within three months of notification — and the date of rectification becomes the date of receipt of the application, which can move your priority position.
Then the substance, against the objective grounds in section 103 and the third-party grounds in section 104. 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 after that.
The Director-General may allow a reasonable extension of a prescribed period, but one month is a short default and it runs from the notification. See examination and objections.
Publication and opposition
Acceptance is followed by payment of a publication fee and publication of the application. Any person may then oppose within three months of publication, on the section 103 or 104 grounds, with evidence filed alongside the notice of opposition rather than later.
The applicant answers with observations and supporting evidence within three months of service. The Director-General decides, after a hearing if one is considered necessary.
There is also a hard stop on the applicant’s side: where registration is not completed within twelve months of the application by reason of the applicant’s default, the application is treated as abandoned after a notice allowing three months to complete.
Term and renewal
Registration expires ten years after the date of registration — and section 118(2) deems the date of registration to be the date the application was received. So the ten years runs from filing, not from the certificate.
Renewal is for consecutive ten-year periods, and the fee is paid within the twelve months preceding expiry, with a six-month grace period afterwards on payment of a surcharge. Renewal is not subject to any further examination of the mark or to opposition.
There is no evidence-of-use requirement at renewal in Sri Lanka. Use matters, but it is tested through removal proceedings in Court rather than at the renewal counter. See renewal in Sri Lanka.
Losing a registration
Three routes, and all three run through the Court.
Nullity — the Court may declare a registration null and void where registration was precluded under sections 103 or 104. A nullity application based on the section 104 third-party grounds must be made within five years of the issue of the certificate of registration. The declaration is retroactive to the date of registration.
Removal for non-use — the Court may remove a mark where the owner has, without valid grounds, failed to use it in Sri Lanka for five consecutive years immediately preceding the application. Lack of funds is expressly not a valid ground. But use on one item within a class is enough to save the whole class.
Renunciation — the owner gives the registration up, wholly or partly.
See nullity and removal.
Enforcement
The registered owner’s exclusive rights cover use of the mark or a resembling sign for the registered goods or services or similar ones where the use is likely to mislead the public — and, separately, any other use without just cause in conditions likely to be prejudicial to the owner’s interests, which is a broader hook than most infringement provisions in the region.
Where the sign is identical and the goods identical, the Court presumes the likelihood of misleading the public.
Alongside that sits a substantial statutory unfair competition provision covering confusion, damage to goodwill including dilution, misleading and discrediting practices, and undisclosed information — and it applies to unregistered marks. See unfair competition and passing off.
Wilful infringement of a mark is also an offence, triable before a Magistrate. So is falsely representing a mark as registered — which is worth saying plainly, because using the registered symbol before registration is granted carries a penalty in Sri Lanka rather than being merely unwise.
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 needs its own application and fee.
When does the ten-year term start? On the date the application was received. The Act deems that date to be the date of registration, so the term is not calculated from the certificate.
How long do I have to oppose a Sri Lankan application? Three months from publication of the application, and the evidence substantiating the grounds goes in with the notice.
Do I have to prove use to renew? No. Renewal is on payment of the fee within the twelve months before expiry, and is not subject to further examination or to opposition. Use is tested in removal proceedings in Court instead.
Who can act as my agent in Sri Lanka? A registered agent, who must be a Sri Lankan citizen ordinarily resident in Sri Lanka and either an Attorney-at-Law or a person with the prescribed qualifications. A foreign applicant also needs an address for service in Sri Lanka.
Is Sri Lanka in the Madrid System? No. Protection is obtained by a national application, with Paris Convention priority available from an earlier Convention filing.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — WIPO Lex
- Intellectual Property Regulations No. 01 of 2006
See our related notes on filing a trademark in Sri Lanka, examination and objections and trademark opposition.
Protecting a brand in Sri Lanka, or dealing with a mark that got there first? Talk to us.