NATIONAL INTELLECTUAL PROPERTY OFFICE OF SRI- LANKA
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MARKS
| What is a mark? | What constitutes a mark?| Functions of a mark |Registered and unregistered marks |
Why register? | Registrable marks | Flowchart of the Registration Procedure
|How to register? | Who can register? | Fees | Period of validity and renewal | Protection abroad | Trade names | Agents |
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What
is a mark?
A mark- trademark or service mark- is a visible sign that
is capable of distinguishing the goods or services of
different enterprises. A trademark relates to goods whereas
a service mark relates to services. In addition, there
are two more kind of marks – certification marks
and collective marks. A certification mark is a mark which
meets a defined standard of the goods or services as certified
by the owner of the mark who licenses others to use it.
A collective mark is a mark serving to distinguish the
origin or any other common characteristic of goods or
services of different enterprises which use the Mark under
the control of the registered owner.
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What
constitutes a mark?
A mark may consists of a word, a symbol, a device, letters,
numerals, a name, surname or geographical name, a combination
or arrangement of colors and shapes of goods or containers
etc. The visible sign must always be capable of distinguishing
the goods or services of different enterprises (it must
be distinctive)
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Functions
of a mark
It has several functions such as: (a) distinguishes the
goods or services of its owner from those of others (b)
indicates the source of the goods or services (c) individualizes
the goods or services of the owner (d) enables the owner
to reach the customers (e) helps the consumers to make the
choice in the market etc.
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Registered
and unregistered marks
A registered mark is a mark registered under the law and
with National Intellectual Property office. You can use
a mark even without registration. Unregistered marks can
be protected under the unfair competition law or common
law action for passing off.
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Why
registered?
It is highly recommended that you register your mark.
The registration of the make gives its owner exclusive
right to use it, assign it and license it. You can enforce
these rights easily and effectively through court- civil
or criminal or both. You can retrain others from
using your mark or a mark deceptively resembling your
mark. You are even entitled to claim damages.
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Registrable
marks
The marks which are not inadmissible under sections 103
and 104 of the Intellectual Property Act No: 36 of 2003 can be registered.
A mark is inadmissible if it is, for example, descriptive
of the goods or services concerned, if it is not capable
of distinguishing your goods or services from those of
others and if it is deceptively similar to the other registered
or well known marks.
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Flowchart
of the Registration Procedure
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How
to register?
Make the application using the Form M1. The processing
of the application involves a number of work steps. The mark
is examined to see whether it complies with formal requirements
and whether it is not inadmissible under sections 103
and 104 of the Act. If the IP Office refuses it you can
make submissions against the decision and ask for a hearing
within one month from the refusal. If it is still refused
you can challenge the decision in Court ( The Commercial
High Court).
The mark is first accepted for the publication in the
Gazette. A period of 3 months is given to the public
for opposition after the publication. If there is any
opposition the IP Office will send you a copy of it.
You are required to forward your observations of the
grounds of opposition. The IP Office will conduct an
inquiry into the opposition with the participation of
you and the opponent . After on the inquiry, your mark may
be accepted or
refused. If it is refused you can challenge the decision
in Court. If it is accepted the registration will be
effected upon the payment of the registration fee.(
please refer to Part V of the Act and regulations made
under that Act.)
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Who
can register?
Any person or body of persons corporate and unincorporated
( individual (s), company, partnership, association etc).
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Fees
Please refer to the fee schedule.
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Period
of validity and renewal
The registration is valid for a period of 10 years from
the date of application and is renewable on the payment
of the fee for further periods of 10 years. For the fee
please refer to the fee schedule.
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Protection
abroad
Marks registered in Sri Lanka are valid only in Sri Lanka.
If you do business in other countries it is advisable
for you to register the mark in those countries. You have
to make applications in each country where you seek the
protection under the respective national law. ( Sri Lanka
is not a member of the Madrid System under which you may
make one international application for all the member countries.)
However, you can claim priority under the Paris Convention
for the protection of Industrial Property in its member
countries. ( within 6 months from the date of application
in Sri Lanka).
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Trade
names
A trade name is the name under which you do your bossiness-
your name, partnership name etc. Your trade name can be
protected under the IP Act. However, it can be registered
as a mark only. Thus, it is advisable to register your trade
name as a mark.
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Agents
There are registered agents who can undertake to attend
to your application or the registered mark on your behalf
and any other application such as patent and industrial
designs (
refer to the list of Agents).
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NATIONAL INTELLECTUAL PROPERTY OFFICE OF SRI- LANKA
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