Protecting a trade mark

Check both kinds of objection

The Act lists objective grounds for refusing a mark, including lack of distinctiveness and misleading signs. It also protects earlier third-party interests, including specified earlier registered or used marks and trade names. A name being available for a company does not answer all of these trade-mark questions. Read both sets of grounds before assuming a sign is registrable.

Intellectual Property Act s 103

Intellectual Property Act s 104

Preparing an application

The application provision calls for the prescribed form, applicant details, a representation of the mark and a clear list of the relevant goods or services and classes. Applications made through an agent require a power of attorney. The cited publication gives the legal requirements; check current forms, fees and submission procedures separately.

Intellectual Property Act s 106

Examination and opposition

The Act provides for examination against the refusal grounds and written reasons for refusal. It also provides for publication and an opportunity for opposition, with procedures for the applicant’s response and a decision. Filing an application is therefore distinct from obtaining registration. Read notices carefully because the statutory process contains time limits.

Intellectual Property Act s 111

Rights have boundaries

A registered owner has rights to use the mark, transfer the registration and license it, subject to the Part’s other provisions. The Act restricts certain misleading uses by third parties. It also contains limits on the owner’s rights, including specified identifying uses and dealings in unchanged goods lawfully put into circulation in Sri Lanka under the mark. Registration has a duration. The Act also provides a renewal procedure. Read the scope and renewal provisions before assuming protection is unlimited or permanent.

Intellectual Property Act s 121

Intellectual Property Act s 122

Intellectual Property Act s 118

Intellectual Property Act s 119

Responding to an examination notice

The cited text allows written submissions against a notified refusal within one month from the notification. Publication then creates a distinct opportunity for opposition: a person opposing registration has three months from publication to give the prescribed notice, grounds and supporting evidence. If opposition is received, the applicant is asked for written observations and evidence within three months. The section also permits reasonable extensions of prescribed periods. Keep examination, publication and opposition notices separate; they concern different stages and should not be treated as a single filing deadline.

Intellectual Property Act s 111

Keep renewal separate from registration

Registration may be renewed for consecutive periods of ten years on payment of the prescribed fee. The renewal fee is payable during the twelve months before expiry, with a six-month grace period after expiry subject to the prescribed surcharge. Renewal does not involve a further examination of the mark or opposition by another person. The Director-General removes the mark from the register if the fee is not paid within the applicable period. Record the registration and renewal documents together, and check current fee arrangements before acting on this as-enacted timetable.

Intellectual Property Act s 119

Scope of this guide

This guide explains the cited as-enacted publication. Check later amendments, commencement orders and current procedures before relying on it for a particular situation. It does not determine your eligibility, liability or the outcome of a case.