2020 Nov 23
Did you know that 75% of the market value of a business can be based on non-physical assets such as IP (Intellectual Property) rights?
As a lawyer passionate about the topic, I truly become excited when young entrepreneurs approach me for legal advice on how to protect their creations. It is my honest belief that the burst of youthful energy emerging through creations, be it a drawing, song, video, app or a business, is navigating the country onto a new path.
Even though we are surrounded by Intellectual property (IP) in our day to day life, little does one know about the types of IP rights and how to gain legal protection in Sri Lanka.
Indeed, IP Law is geared towards not only protecting but also rewarding creative endeavours of any Sri Lankan citizen, business or foreign national or foreign business.
The most popular types of IP are copyright, industrial designs, patents, and trademarks. Copyrights grants legal protection to a creator of ‘original’ work in the fields of literary, artistic or scientific works such as songs, books, music, software etc. Industrial Designs protect the shape or ‘look’ of a product with proof of ‘novelty’ in the 2D/3D design. Patents protect an invention (either a product or a process or combination of product & process) that is industrially applicable and is a solution to a technical problem. A patent protects the way something works and originality is essential for legal protection.
Trademarks or Brands are, by far, the most popular IP type in Sri Lanka. While other types of IP rights are essential to protecting the creative works of an individual or a business, brands are the most protected by businesses in Sri Lanka. In fact, a brand would speak volumes on the recognition, popularity and quality of products or the standard of service.
In order to gain legal protection, a brand or the ‘trademark’ must bear distinctiveness as it is ‘any visible sign serving to distinguish the goods of one enterprise from those of another enterprise’. The brand may consist of a symbol, word or combination of words, pictorial/device with letters, numbers, labels, borders, colours etc. In other words, a distinctive mark guides the consumer to identify the goods/services of the owner from someone else’s.
Now let us see how to obtain a registered Trademark in Sri Lanka. The first is to search if an identical or similar mark has been applied for or registered with the National Intellectual Property Office of Sri Lanka (NIPO) in Colombo. The proposed applicant may seek the assistance of a registered IP Agent to conduct the search and seek professional guidance avoiding rejection of the mark.
An application for registration of the mark is made to the Director-General of NIPO in the prescribed form. Each application is based on an internationally accepted classification of goods and services (‘NICE Classification’), which allows the applicant to select the applicable classes for its product and/or services related to the actual or potential use of the brand in the market.
Once the application/s is submitted to NIPO, the trademark application may be either accepted for registration or rejected by the NIPO.
NIPO may refuse an application either based on the mark itself or if concerned with third-party rights (such as existing marks in the same class of goods/services).
Once the mark is accepted by NIPO, upon payment of the publication fee to NIPO, the mark will be gazetted. Within three months from gazetting, any third party may make an objection to NIPO of the registrability of the mark. If no objections have been raised within 3 months from gazetting, a certificate of registration will be issued to the applicant.
The registered TM can be renewed every 10 years indefinitely.
The whole process of TM registration until the certificate stage may take more than twelve months, as the NIPO claims to have a backlog of applications. It is the author’s considered opinion that the technology could be availed of, by allowing the applicants or registered IP Agents to conduct searches for similar brands at NIPO before lodging the application and thereafter to submit TM applications, track the status until registration and renew the trademark via an online platform.
The registered owner of a mark has the exclusive right to the use; assign the mark, to grant licenses and to preclude third parties from unauthorized use of the mark as specified by law.
What if a brand is so popular but not registered? In fact, well-known brands (with strong evidence of user) can legally prevent others from using an identical or similar mark in connection with identical or similar goods/services that could potentially give rise to confusion in the average consumer. Such a business can take legal action against the infringers by relying on the common law action of ‘passing off’.
IP rights are territorial, which means that the brand has to be registered in each country/target market where protection is needed. Currently, a Sri Lanka applicant must individually approach lawyers or IP agent in each country and register their brands in the respective territories. Alternatively, a Sri Lankan applicant can lodge an application via Centralised International TM Registration system known as ‘Madrid System’ by establishing a personal or business connection in any such country that is part of the Madrid System.
In fact, Sri Lanka is exploring the option of becoming part of the Madrid System that would allow a Sri Lankan applicant to directly lodge one application in one language by paying one set of fees to gain brand protection up to 123 countries.
Written by Thilani Gamage, Attorney-at-Law
Attorney-at-Law & Notary Public
Registered IP Agent (A10459)
Founder of Legalite Corporate Consultancy Services (www.legalite.co)