Types of Trademarks in Sri Lanka: What a Mark Can Be

Section 102(3) of the Intellectual Property Act does something many trademark statutes avoid: it lists, in terms, what a mark may consist of. The list is long and deliberately varied, and it is the starting point for anything unconventional.

Quick reference

The statutory list

The breadth of section 102(3) is the point. Alongside the obvious categories it names slogans, labels, envelopes, seals, vignettes, selvedges, borders and edgings — the vocabulary of packaging and textiles rather than of word marks.

Two entries carry real weight.

Combinations or arrangements of colours. Colour is expressly within what a mark may consist of, as a combination or arrangement rather than a single colour in the abstract.

Shapes of goods or containers. Product and packaging shapes are registrable in principle.

Being within the list is not the end of it. Every mark still has to get past the objective grounds in section 103, and for shapes there is a specific exclusion: a mark consisting of shapes or forms imposed by the inherent nature of the goods or services, or by their industrial function, is inadmissible — with no saving for recognition acquired through use.

So decorative or arbitrary shapes have a route. Functional ones do not, however well known they become. See marks that cannot be registered.

Three-dimensional marks

The Regulations deal with these explicitly. Where the mark is three-dimensional the application must contain an indication to that effect, and the representation must comprise at least two aspects of the mark, sufficient to illustrate its shape and features.

A single photograph of a product will not do. The filing has to define what is being claimed from more than one angle.

Words, devices and language

Ordinary word and device marks work as expected. The language requirements are where Sri Lankan filings differ.

Where the mark contains words in a language other than Sinhala, Tamil or English, a translation into English must accompany the application, certified by a sworn translator.

And the well-known mark provision expressly catches a translation, transliteration or transcription of a well-known mark — which cuts both ways. A transliterated version of someone else’s famous brand is barred; a transliterated version of your own may be worth filing in its own right in a market with three working scripts.

Names, surnames and geographical names

Two of the objective grounds bear directly on what kind of mark is worth filing.

A mark is inadmissible if it does not represent in a special or particular manner the name of an individual or enterprise. And a mark is inadmissible if it is, according to its ordinary signification, a geographical name or a surname.

So a plain company name in ordinary type, or a founder’s surname, starts from inadmissibility. The two routes through are presentation — a stylised or otherwise distinctive representation, which is what the “special or particular manner” wording invites — and evidence under section 103(2), which allows the Director-General to weigh use and distinctiveness in Sri Lanka or in other countries.

For a brand built on a surname, the practical answer is usually to file the stylised form.

Collective marks

A collective mark distinguishes the goods or services of the members of an association from those of other enterprises. The provisions relating to marks apply, subject to the collective mark chapter.

The distinguishing feature is procedural: an application must be accompanied by the conditions governing the use of the collective mark, and changes to those conditions have to be notified. The association owns the mark; the members use it under the conditions.

Certification marks

A certification mark indicates that goods or services are certified in respect of origin, material, mode of manufacture, quality, accuracy or other characteristics. Again the general provisions apply, subject to the certification mark chapter, and the application must be accompanied by the conditions governing use.

The conceptual shift in both cases is the same: the reference to distinguishing the goods of one enterprise from another’s is read instead as distinguishing members from non-members, or certified goods from uncertified ones.

The work in either filing is the conditions document. An application that arrives with thin conditions stops there.

Associated marks

Not a type of mark you choose, but a status the office can impose.

Where an application is made for a mark identical with or closely resembling a mark already on the register in the same applicant’s name for the same goods or services, or the same description, such that use by another person would be likely to mislead or cause confusion, the Director-General may require as a condition of registration that they be entered as associated marks.

Two consequences, one helpful and one restrictive.

Associated marks are assignable or transmissible only as a whole. A brand family that has been associated cannot be split and sold off.

But where use of a registered mark must 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. For a family of marks where only some are actively used, that is valuable.

Trade names

Part VI protects trade names separately, and without registration. A name or designation is not admissible as a trade name if, by reason of its nature or the uses to which it may be put, it is contrary to morality or public order.

Trade names also appear throughout the mark provisions:

• a mark resembling a trade name already used in Sri Lanka by a third party is inadmissible, where the applicant was aware or could not have been unaware of that use;
• a well-known trade name is protected on the same footing as a well-known mark; and
• the unfair competition provisions cover confusion with, and damage to the goodwill of, a trade name.

So a business trading under a name in Sri Lanka has protection even without a trademark registration. See unfair competition in Sri Lanka.

Well-known marks

A mark that is well known in Sri Lanka occupies a category of its own, because its protection does not depend on registration there. It is dealt with separately in well-known trademarks in Sri Lanka.

Frequently asked questions

Can I register a slogan in Sri Lanka? Slogans are expressly within what a mark may consist of under section 102(3), subject to the usual distinctiveness and other objective grounds.

Can colours be registered? Combinations or arrangements of colours are expressly listed as something a mark may consist of.

Can I register the shape of my product or packaging? Shapes of goods or containers are within the statutory list, but a shape imposed by the inherent nature of the goods or by their industrial function is inadmissible, and that exclusion cannot be overcome by evidence of use.

How do I file a three-dimensional mark? The application must say that the mark is three-dimensional, and the representation must show at least two aspects sufficient to illustrate the shape and features.

Can I register a surname? Not in its ordinary signification. A special or particular presentation, or evidence of use and recognition including in other countries, is the route through.

Do I need to register a trade name? No. Trade names are protected under Part VI without registration, and they are also recognised in the inadmissibility, well-known and unfair competition provisions.

Useful official resources

• National Intellectual Property Office of Sri Lanka
• Intellectual Property Act, No. 36 of 2003 — sections 101 to 104, 116, 117, 138, 142, 143
• Intellectual Property Regulations No. 01 of 2006 — regulations 11 to 14

See our related notes on marks that cannot be registered, filing a trademark in Sri Lanka and well-known trademarks.

Not sure which form of protection fits the mark you are taking into Sri Lanka? Talk to us.