Intellectual Property Act 2003 · As enacted · Part V · Chapter XIX Marks and Trade Names
142. Certification marks
Official English translation. Where it differs from the Sinhala or Tamil text, the Act itself says which text prevails.
Official translationFrom Department of Government Printing, unchanged
Subject to the provisions of this Chapter, provisions relating to marks shall apply to certification marks.
In relation to a certification mark the reference in section 101 (signs of which a trade mark or service mark may consist) to distinguish goods or services of one enterprise from those of another enterprise shall be construed as a reference to distinguish goods or services which are certified from those which are not certified.
Notwithstanding the provisions of section 103, a certification mark which consists of a sign or indication which may serve in trade to designate the geographical origin of the goods and services may be registered :
Provided, however, the owner of such mark is not entitled to prohibit the use of such sign or indication in accordance with honest practices in industrial or commercial matters and in particular by a person who is entitled to use a geographical name.
An application for registration of a certification mark shall not be filed unless in the application the mark is designated as a certification mark and is accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.
The conditions shall indicate the name of the person authorised to use the mark, the characteristics to be certified by the mark, how the owner is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes. They may in addition contain further prescribed requirements under this section.
A certification mark shall not be registered—
if the owner of the certification mark carries on a business involving the supply of goods or services of the kind certified ; and
unless the conditions governing the use of the mark,—
comply with the provisions of subsection (5) and any other requirement imposed by regulations made under that subsection ; and
are not contrary to public policy or accepted principles of morality.
In infringement proceedings brought by the owner of the registered certification mark any loss suffered, or likely to be suffered, by any authorised user shall be taken into account ; and the Court may give such directions as it thinks fit as to the extent to which the owner is to hold the proceeds of any pecuniary remedy on behalf of such users.
Apart from the grounds of removal of a mark provided for in section 136, the registration of a certification mark may be removed on the ground—
that the owner has commenced such a business as is mentioned in paragraph (a) of subsection (6) ;
that the manner in which the mark has been used by the owner has caused it to become liable to mislead the public as to the character of significance of the mark ;
that the owner has failed to observe, or to secure observance of, the conditions governing the use of the mark ;
that the owner is no longer competent to certify the goods or services for which the mark is registered ;
that an amendment of the conditions have been made so that the conditions—
no longer comply with the provisions of subsection (5) and any other condition imposed by regulations ;
are contrary to public policy and order or to the accepted principles of morality.
Apart from the grounds of nullity provided in section 134 the registration of a certification mark may be declared null and void if it was registered contrary to the provisions of subsections (3), (4) and (5).
Registration of a certification mark shall be in such part of the register as the Director-General may decide, and a copy of the conditions, governing the use of the mark, shall be appended to such registration.
The publication of an application of a certification mark shall be in accordance with subsection (9) of section 111, which shall include a summary of the conditions to be appended to the registration.
A certification mark registered under subsection (4)
shall be deemed for all purposes be a registered mark.
The conditions governing the use of a certification mark shall be open for public inspection in the same manner as the register.
The registered owner of a certification mark shall notify the Director-General in prescribed manner of any changes or amendments effected to the conditions governing the use of the mark.
Any notification of such changes and amendments shall be recorded in the register on the payment of prescribed fee. Any change or amendment of conditions shall come into force only if they have been so recorded.
The Director-General shall cause to be published in the Gazette a summary of the changes or amendments so recorded in the register.