Most common law systems leave the owner of an unregistered mark to the tort of passing off. Sri Lanka codified the subject instead, and section 160 of the Intellectual Property Act is considerably wider than the tort it replaced.
It applies independently of, and in addition to, the rest of the Act — so it runs alongside a registration rather than instead of one.
Quick reference
| What section 160 covers | Registration needed? |
|---|---|
| Any act contrary to honest practices in industrial or commercial activities | No |
| Causing confusion with another’s enterprise, products or services | No |
| Damaging another’s goodwill or reputation, including by dilution | No |
| Misleading the public about an enterprise or its products | No |
| False or unjustifiable allegations discrediting a competitor | No |
| Disclosure, acquisition or use of undisclosed information | No |
The general rule
Section 160(1)(a) states it plainly: any act or practice carried out in the course of industrial or commercial activities that is contrary to honest practices constitutes an act of unfair competition.
And section 160(1)(b) makes clear this applies independently of, and in addition to, the other provisions of the Act protecting inventions, industrial designs, marks, trade names and copyright works.
So the question is not whether you have a registration. It is whether the conduct is contrary to honest practices in trade.
Confusion
Section 160(2) makes an act of unfair competition of anything that causes, or is likely to cause, confusion with another’s enterprise or its activities, in particular its products or services.
The Act then lists what the confusion may relate to, and the list is broad:
- a mark, whether registered or not;
- a trade name;
- a business identifier other than a mark or trade name;
- the appearance of a product;
- the presentation of products or services; and
- a celebrity or a well-known fictional character.
Product appearance and presentation cover the trade dress territory that is often hard to plead elsewhere. And the explicit inclusion of a celebrity or well-known fictional character gives a route against unauthorised association that has no equivalent in most of the region.
Damage to goodwill, including dilution
Section 160(3) goes further than confusion. Any act that damages, or is likely to damage, the goodwill or reputation of another’s enterprise is an act of unfair competition — whether or not it actually causes confusion.
Damage may in particular result from dilution of the goodwill or reputation attached to a mark (registered or not), a trade name, a business identifier, product appearance, presentation, or a celebrity or well-known fictional character.
The Act defines dilution as the lessening of the distinctive character or advertising value of those things.
This is the provision to reach for where a mark is being used on unrelated goods in a way that erodes it without confusing anyone. It does not require registration, and it does not require a likelihood of confusion.
Misleading the public
Section 160(4) covers acts that mislead, or are likely to mislead, the public about an enterprise or its products or services. Misleading may arise out of advertising or promotion, and may relate to:
- the manufacturing process of a product;
- its suitability for a particular purpose;
- quality, quantity or other characteristics;
- the geographical indication of products or services;
- the conditions on which they are offered; and
- the price, or the manner in which it is calculated.
Discrediting a competitor
Section 160(5) makes an act of unfair competition of any false or unjustifiable allegation that discredits, or is likely to discredit, another enterprise or its activities — again, typically arising out of advertising or promotion, and covering the same list of subjects including price.
So comparative advertising that misstates a rival’s product or pricing is actionable in its own right, with no mark and no confusion required.
Undisclosed information
Section 160(6) is Sri Lanka’s trade secrets provision.
Any act or practice in the course of industrial or commercial activities resulting in the disclosure, acquisition or use of undisclosed information without the consent of the rightful holder, and in a manner contrary to honest commercial practices, is an act of unfair competition.
It may in particular result from:
- industrial or commercial espionage;
- breach of contract;
- breach of confidence;
- inducement to commit any of those; and
- acquisition by a third party who knew, or was grossly negligent in failing to know, that such an act was involved.
Information is undisclosed information where it is not generally known among or readily accessible to persons in the circles that normally deal with that kind of information, has actual or potential commercial value because it is secret, and has been subject to reasonable steps by the rightful holder to keep it secret.
The third limb is the one that decides cases. A business that has never taken identifiable steps to protect the information — no confidentiality terms, no access controls, no marking — has difficulty establishing that it was undisclosed information at all.
How this fits with registration
Three practical points.
It is a route for a brand with no Sri Lankan registration, including one whose application is pending or has been refused.
It is a ground of refusal and of nullity. Section 104(1)(e) makes a mark inadmissible where it infringes third-party rights or is contrary to the unfair competition provisions, so section 160 is available in opposition and in nullity proceedings as well as in a standalone claim.
It does not make registration optional. A registration gives you the section 121 rights, the statutory presumption where sign and goods are identical, criminal remedies and customs recordal. Section 160 is what you fall back on, and what covers the conduct no registration would have caught.
Where these claims go
To the Court as defined by the Act — the High Court of the Province with civil jurisdiction, determined by where the defendant resides or where the cause of action arose. See trademark infringement in Sri Lanka.
Frequently asked questions
Can I sue in Sri Lanka without a trademark registration? Yes, under the unfair competition provisions in section 160, which cover confusion with an unregistered mark, damage to goodwill, misleading and discrediting conduct and misuse of undisclosed information.
Does Sri Lanka protect against dilution? Yes. Section 160(3) covers acts damaging goodwill or reputation whether or not they cause confusion, and expressly includes dilution — the lessening of the distinctive character or advertising value of a mark, trade name, business identifier, product appearance or presentation.
Is trade dress protected? The appearance of a product and the presentation of products or services are both listed as things confusion and damage may relate to, so the territory is covered without a separate trade dress doctrine.
Does Sri Lanka protect trade secrets? Yes, as undisclosed information under section 160(6) — information not generally known, with commercial value because it is secret, and subject to reasonable steps to keep it secret.
Can I stop a competitor making false claims about my product? Yes. A false or unjustifiable allegation that discredits another enterprise or its products, including as to price, is an act of unfair competition.
Does unfair competition help in opposition proceedings? Yes. A mark that is contrary to the unfair competition provisions is inadmissible under section 104(1)(e), so it is available as a ground of opposition and of nullity.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — sections 104, 160
- High Court of the Provinces (Special Provisions) Act, No. 10 of 1996
See our related notes on trademark infringement in Sri Lanka, well-known trademarks and marks that cannot be registered.
Holding goodwill in Sri Lanka without a registration? Talk to us.