Sri Lanka’s well-known mark provision is one of the more carefully drafted in the region. It is not a general declaration of protection — it sits inside the inadmissibility grounds, and it comes with a statutory list of criteria and a definition of whose knowledge counts.
It also protects trade names, not only marks, which is easy to miss.
Quick reference
| Where it sits | Section 104(1)(d), as a ground of inadmissibility |
| Sri Lankan registration required? | No, for identical or similar goods |
| For dissimilar goods | The mark must be well known and registered in Sri Lanka |
| Covers | A mark or a trade name |
| Also catches | A translation, transliteration or transcription of the mark |
| Criteria | Nine statutory factors, expressly not exhaustive |
| Relevant public | Consumers, distribution channels, and persons dealing with the goods or services |
| Where used | Refusal, opposition and nullity |
The two limbs
Section 104(1)(d) makes a mark inadmissible in two situations, and the difference between them is the thing to get right.
Identical or similar goods. A mark is inadmissible if it is identical with, misleadingly similar to, or constitutes a translation, transliteration or transcription of a mark or trade name which is well known in Sri Lanka for identical or similar goods or services of a third party.
No Sri Lankan registration is needed for this limb. Well-known status in Sri Lanka is enough.
Dissimilar goods. The mark is also inadmissible where the well-known mark or trade name is well known and registered in Sri Lanka for goods or services that are not identical or similar — provided that use of the later mark would indicate a connection between those goods or services and the owner of the well-known mark, and the interests of the owner are likely to be damaged by that use.
So protection beyond the goods of interest requires a Sri Lankan registration as well as fame. That is the practical argument for registering a famous mark in Sri Lanka even where it is not yet traded there: it is what unlocks the cross-category protection.
Translations and transliterations
The provision expressly catches a mark that constitutes a translation or transliteration or transcription of the well-known mark or trade name.
In a market with Sinhala and Tamil alongside English, that is not a technicality. A transliterated version of a famous Latin-script brand is within the ground, and so is a translation of a word mark into a local language.
Trade names too
The subsection refers throughout to a “mark or trade name which is well known”. A business trading under a well-known name, without a registered mark, is within the protection.
Sri Lanka also protects trade names separately under Part VI of the Act, independently of registration.
The nine criteria
Section 104(2) sets out what is taken into account in determining whether a mark is well known:
- particular facts and circumstances relating to each mark;
- any fact or circumstance from which it may be inferred that the mark is well known;
- the degree of knowledge or recognition of the mark in the relevant sector of the public;
- the duration, extent and geographical area of use of the mark;
- the duration, extent and geographical area of promotion, including advertising or publicity and presentation at any fair or exhibition;
- the duration and geographical area of registration, or of applications for registration, to the extent that they reflect use or recognition;
- the record of successful enforcement of rights in the mark, in particular the extent to which it has been recognised as well known by a Competent Authority;
- the value associated with the mark; and
- the criteria are expressly stated not to be exclusive nor exhaustive.
Two of these repay attention when building a case.
Criterion 6 counts registrations and applications to the extent that they reflect use or recognition. A wall of defensive registrations in countries where the mark has never traded does not do much; a registration portfolio that tracks actual trading does.
Criterion 7 counts the enforcement record, and in particular prior recognition as well known by a competent authority. Determinations obtained elsewhere are evidence here. A brand that has been recognised as well known in India, or has a record of successful actions across the region, should be putting those determinations in rather than starting from first principles.
Who the relevant public is
The Act defines the relevant sector of the public, and the definition is wider than end consumers. It includes:
- actual or potential consumers of the types of goods or services to which the mark applies;
- persons involved in channels of distribution of those goods or services; and
- any person or body of persons dealing with that type of goods or services.
So recognition among the trade counts, not only among the public at large. For a business-to-business brand, or an ingredient brand, or one sold through a specialist distribution network, that is the limb to plead — the question is recognition in the circles that deal with these goods, not high-street fame.
The Act also defines Competent Authority as an administrative, judicial or quasi-judicial authority competent to determine whether a mark is well known or to enforce the protection given to one.
Where you can use it
Section 104 is a list of grounds on which the Director-General shall not register a mark. That makes well-known status available:
- as an objection in examination, where the Director-General cites it;
- as a ground of opposition within the three months from publication — and remember the evidence goes in with the notice, which for a well-known case means the file has to be assembled before you file; and
- as a ground of nullity in Court, subject to the five-year limit from the issue of the certificate that applies to all section 104(1) grounds.
That five-year limit is the one to watch. A brand owner who discovers a conflicting Sri Lankan registration has five years from the certificate to attack it on well-known grounds. See nullity and removal.
And in enforcement
Well-known status also does work outside the register. Section 160 makes it an act of unfair competition to cause confusion with, or damage the goodwill or reputation of, a mark whether registered or not, a trade name or a business identifier — expressly including by dilution.
A well-known mark with no Sri Lankan registration is therefore not without a remedy against use, as well as against registration. See unfair competition in Sri Lanka.
Building the file
Because status is proved case by case against the nine criteria, what matters is having the material ready before it is needed:
- registrations worldwide with dates, and the trading that sits behind them;
- advertising and promotion reaching Sri Lanka, including regional and online material and any fair or exhibition presence;
- valuations supporting the value criterion;
- the enforcement record, especially findings of well-known status by authorities elsewhere; and
- evidence of recognition in the trade, not only among consumers.
Frequently asked questions
Do I need a Sri Lankan registration to rely on well-known status? Not for identical or similar goods — well-known status in Sri Lanka is enough. For dissimilar goods the mark must be both well known and registered in Sri Lanka.
Does Sri Lanka protect well-known trade names? Yes. Section 104(1)(d) refers throughout to a mark or trade name which is well known, and trade names are separately protected under Part VI.
Does the protection cover a translation of my mark? Yes. A translation, transliteration or transcription of the well-known mark or trade name is within the ground.
Whose recognition counts? The relevant sector of the public, which the Act defines as actual or potential consumers, persons in the channels of distribution, and any person dealing with that type of goods or services. Trade recognition counts.
Does a finding of well-known status in another country help? Yes. The record of successful enforcement, and in particular recognition as well known by a competent authority, is one of the statutory criteria.
How long do I have to attack a conflicting registration? Five years from the issue of the certificate of registration, since well-known status is a section 104(1) ground and nullity claims on those grounds carry that limit.
Useful official resources
- National Intellectual Property Office of Sri Lanka
- Intellectual Property Act, No. 36 of 2003 — sections 104, 134, 160
- WIPO Paris Convention
See our related notes on marks that cannot be registered, trademark opposition and unfair competition.
Protecting a brand that is famous elsewhere but not yet registered in Sri Lanka? Talk to us.