Intellectual Property (Amendment) Act 2022

This Act may be cited as the Intellectual Property

(Amendment) Act, No. 8 of 2022.

Section 2 of the Intellectual Property Act, No.36 of 2003 (hereinafter referred to as the “principal enactment”) is hereby amended in paragraph (a) of subsection (2), by the substitution for the words “administration of Industrial

Designs, Patents, Marks and of any other matter” of the words

“administration of Industrial Designs, Patents, Marks,

Geographical Indications and of any other matter”.

Section 4 of the principal enactment is hereby amended as follows:-

in subsection (1), by the substitution for the words

in subsection (2), by the substitution for the words

Section 101 of the principal enactment is hereby amended by the repeal of the definition of the phrase

“geographical indication”.

Section 160 of the principal enactment is hereby amended as follows:-

in paragraph (b) of subsection (1), by the substitution for the words “protecting inventions, industrial designs, marks, trade names,” of the words

by the repeal of subparagraph (iv) of paragraph (b)

The following new section is hereby inserted immediately after the heading “GEOGRAPHICAL

INDICATIONS” in PART IX of the principal enactment and shall have effect as section 160A of that enactment:-

160A. For the purposes of this Part, unless the context otherwise requires–

“authorized user” means a user of a geographical indication registered under this Part of this Act;

“control plan” means the method as to how the verification of compliance with product specification is carried out;

“geographical indication” means an indication which identifies any goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin;

“Definitions

“goods” means any manufactured or naturally available agricultural products, food, wines, spirits or any item of handicraft or industry;

“producer” in relation to goods, means any person who–

if such goods are agricultural products, wines or spirits, produces such goods or processes or packages such goods;

if such goods are natural goods, exploits such goods; or

if such goods are handicrafts or industrial goods, makes or manufactures such goods; and

Section 161 of the principal enactment is hereby amended by the repeal of subsections (4A) and (5) thereof.

The following new sections are hereby inserted immediately after section 161 of the principal enactment and shall have effect as section 161A, 161B, 161C, 161D and 161E of that enactment:-

161A. Where, any geographical indication–

that does not comply with the definition of geographical indication as specified in section 160A;

the use of which is contrary to law, morality, religion, accepted customs or public order;

that is not or that ceases to be protected in the country of origin as a geographical indication, or which has fallen into disuse in such country;

that is identical with the term customary in common language as the common name of the relevant good;

that misleads or deceives the public as to the characteristics, nature, quality, place of origin and production process of the good or its use; or

which constitutes the name of a plant variety or an animal breed, shall not be registered under this Act.

Upon receipt of an application, the

Where the geographical indication intended to be registered is not admissible for registration in terms of section 161A, the

Any applicant whose application has been refused under subsection (3), may if not satisfied with the reasons specified by the

The Director-General may, upon receipt of such submissions, if he considers a hearing is necessary, inform the applicant of a date, time and place for the hearing of the matter relating to such submissions.

The Director-General may, after such hearing refuse to register such application or register the application as it is or subject to such conditions, amendments or limitations as to the mode or place of use of such geographical indication as the Director-General may consider appropriate.

Where the Director-General refuses to register any application or register an application subject to any conditions as specified in subsection (6), the Director-General shall if the applicant requests so, furnish the reasons for such refusal or conditional acceptance for registration.

Where the Director-General is of the opinion that the geographical indication sought to be registered is admissible under section 161A, he shall upon receipt of the fee as shall be prescribed for the publication of the application publish such application in the

The Director-General shall when publishing the application under subsection (1) set out the following:-

the name and address of the applicant;

the date of application;

the representation of the geographical indication;

the goods for which the geographical indication sought to be registered;

the summary of the specification and the map of the geographical area; and

if the applicant is resident outside

Where any person considers the geographical indication published under section 161C is inadmissible in terms of section 161A, such person may within a period of three months from the date of such publication send notice of opposition to the registration of the geographical indication so published, by post or by hand delivery to the Director-General in the prescribed form together with the prescribed fee. The person who gives the notice of opposition shall also specify the grounds on which such notice of opposition is made and shall submit necessary information and evidence to substantiate such grounds.

If any notice of opposition has not been received by the Director-General within the period as specified in subsection (1), the

Where any notice of opposition has been received by the Director-General in the prescribed form together with the prescribed fee and accompanied by the evidence or information to substantiate the grounds specified in such notice, within one month from the date of such notice, the Director-General shall serve a copy of such notice on the applicant and require him to make his observations on such grounds accompanied by evidence or information to support his application within three months from the date of receipt of such notice.

Upon receipt of the observation of the applicant, the Director-General shall after hearing the parties if he considers such hearing necessary, decide as expeditious as possible whether such geographical indication shall be registered or not. If the Director-General decides that it shall be registered, then the Director-General shall –

where no appeal is preferred under section 173 against his decision, upon the expiry of the period within which an appeal may be preferred against his decision; or

where an appeal is preferred under section 173 against his decision, upon the dismissal of such appeal, as the case may be, register such geographical indication subject to any conditions, requirements or to such amendments or modifications.

The registration of any geographical indication, unless it is cancelled earlier shall be valid for ten years from the date of application.

The registration of any geographical indication may be renewed by the owner of such geographical indication for consecutive periods of ten years each on making an application together with the prescribed fee for such renewal to the Director-General within six months prior to its expiration:

Renewal of registration shall not be subject to any further examination of the geographical indication by the Director-General or to opposition by any person.

The Director-General shall record in the register of the renewal of such geographical indication and cause it to be published in the

Where an application has not been sent for renewal along with the renewal fee by the applicant as specified in subsection (2), the

The following new Chapters are hereby inserted immediately after section 161E in the principal enactment and shall have effect as Chapters XXXIIIA, XXXIIIB,

XXXIIIC, XXXIIID and XXXIIIE of that enactment:-

“CHAPTER XXXIIIA

ISSUE OF CERTIFICATE OF REGISTARTION AND THE

REGISTER OF GEOGRAPHICAL INDICATION

161F. If any application has duly been registered by the Director-General under this

Part, he shall upon receipt of the prescribed fee for the certificate, issue a certificate of registration to the applicant who shall be the owner of the geographical indication

(hereinafter referred to as the “registered owner”) in the prescribed form.

161G. (1) The Director-General shall keep and maintain a register in the Office called the

“Register of Geographical Indications” in which all registered geographical indications

Issue of certificate of registration

Register of

Geographical

Indication shall be recorded in the order of their registration.

The following particulars shall be included in the Register of Geographical

the geographical indication;

number of registration;

the name and address of the registered owner and if the registered owner is outside Sri Lanka, a postal address for service in Sri Lanka;

the date of application and registration;

the list of goods in respect of which the registration of geographical indication has been granted;

the summary of the specification;

the map of the geographical area; and

specifications and associated control plan.

Any person may examine the Register of

in respect of goods of the same kind as those to which the geographical indication applies –

any direct or indirect use , misuse, imitation or evocation of a geographical indication identifying goods including an agricultural product, food, wine or spirit or handicraft manufactured and natural goods not originating in the place indicated by the geographical indication in question or not complying with any other applicable requirement for using the geographical indication, even where the true origin of the goods is indicated or the geographical indication is used in translated form or accompanied by expression

any direct or indirect use, misuse, imitation or evocation of a geographical indication which constitutes an act of unfair competition within the meaning of section 160 of the Act; or

any other practice likely to mislead consumers as to the true origin, provenance or nature of the goods including an agricultural product, food, wine or spirit or handicraft manufactured and natural goods;

for goods that are not of the same kind as those to which the geographical indication applies –

any direct use, misuse, imitation or evocation of the geographical indication in respect of goods that are not of the same kind as those to which the geographical indication applies including an agricultural product, food, wine or spirit or handicraft manufactured, and natural goods in question, if such use would indicate or suggest a connection between those goods, and the owners of the geographical indication and would be likely to damage their interests, or where applicable because of the reputation of the geographical indication such use would be likely to impair or dilute in an unfair manner, or take unfair advantage of that reputation;

any direct use, misuse, imitation or evocation of the geographical indication in respect of goods that are not of the same kind as those to which the geographical indication applies including an agricultural product, food, wine or spirit or handicraft manufactured, and natural goods in question amounting to its imitation, even if the true origin of the goods is indicated, or if the geographical indication is used in translated form or is accompanied by expression

any other practice likely to mislead consumers as to the true origin, provenance or nature of the goods.

any goods registered as geographical indications lose their special characteristic as geographical indication goods;

the registered owner fails to comply with the conditions and requirements, if any, subject to which such geographical indication is registered;

the registered owner of such geographical indication requests the

the registered owner fails to renew the registration of a geographical indication as specified in section 161E.

Section 162 of the principal enactment is hereby amended as follows:-

in subsection (1), by the substitution for the words

in subsection (8) -

Section 168 of the principal enactment is hereby amended by the substitution for the words “Patent or

Mark or” of the words “Patent, Mark or Geographical

Indication or ”.

Section 170 of the principal enactment is hereby amended in subsection (2), by the substitution for the words

“Patent, Mark or any other registration” of the words “Patent,

Mark, Geographical Indication or any other registration”.

Section 172 of the principal enactment is hereby amended as follows:-

in subsection (1), by the substitution for the words

in subsection (2), by the substitution for the words

in subsection (3), by the substitution for the words

The following new section is hereby inserted immediately after section 186 of the principal enactment and shall have effect as section 186A of that enactment:-

186A. The provisions relating to offences and penalties in respect of Marks as specified in this Part shall mutatis mutandis apply in respect of geographical indications.”.

Section 212 of the principal enactment is hereby amended in the definition of the term “Convention”, by the substitution for the words “Patents, Marks and any other matter” of the words “Patents, Marks, Geographical

Indications or any other matter”.

In the event of any inconsistency between the Sinhala and Tamil texts of this Act, the Sinhala text shall prevail.

“Offences relating to geographical indications