2011 APAA Trademark Committee Special Topic “How to use a registered Trademark against a non-use cancellation and registration notice requirement etc” SRI LANKA – Anomi Wanigasekera The law relating to Trademarks/Service marks is embodied in the Intellectual Property Act No. 36 of 2003 (hereinafter referred to as the Act). The exclusive rights to a mark can be acquired under the Act by registration. (Sec. 102 (1) of the Act) Only the registered marks can be accorded full protection under the Act. User Although use is not a pre-requisite to register a Trademark in Sri Lanka, a mark may be removed when the registered owner has without valid grounds, failed to use the mark within Sri Lanka or caused to be used within Sri Lanka, during five consecutive years immediately preceding the date of the application to the Courts. (Sec. 136 (1)(a) of the Act). Markings There is no requirement under Sri Lankan law to indicate markings against a mark upon its registration. However if a marking is made on a brand which is not registered it amounts to false representation which is a punishable offence under the Act (Sec.185 of the Act). -2Trademark use on the Internet Issue 1: - Can use of a Trademark on the internet be considered as “trademark use” enough to defend against a non-use cancellation action? Yes, it is possible. The nature of the use of a mark is not specifically stated in the Act. The “use” may encompass any form of use including the selling of goods or rendering services under the mark and the acts of advertising the mark in respect of goods/services. Issue 2: - Requirement of availability for trademark use on the Internet - Yes To establish user in this scenario, proof of user by Sri Lankans as referred to in the explanation will certainly be necessary. Issue 3: - Requirement of language for trademark use on the Internet Language is not material. Though there is no specific reference with regard to the form of user, Sec. 104(1)(d) of the Act denies the registration of mark in the light of well known marks and tradenames which is identical with or misleadingly similar to or constitutes a translation, transliteration or transcription of a mark or tradename of a third party which is well known in Sri Lanka for identification or similar goods …etc. Hence our law recognizes rights of well known marks in its different forms which include translations. Issue 4: - Trademark use on the internationally circulated magazine Use of the trademarks in internationally circulated magazines will be considered user provided the magazines are available in Sri Lanka. -3Issue 5: - Image advertising Since Sri Lanka recognizes the concept of well-known marks image Advertising on brands without reference to a product may by considered user and this will depend on facts and circumstances of each case. Issue 6: - Trademark Registration Notice In Sri Lanka there is no requirement to mark ® on registered trademarks. However Section 185 of the Act refers to false representationsSection 185 provides:(1) Any person who, for industrial or commercial purposes, makes a representation – (a) with respect to a Mark not being a registered Mark to the effect that it is a registered Mark; (b) to the effect that a registered mark is registered in respect of any goods or services regarding which registration has not been carried out; …etc. shall be guilty of an offence and shall on conviction after trial before a Magistrate be liable to a fine not exceeding five hundred thousand rupees or to imprisonment for a term not exceeding six months or to both such fine and imprisonment. The use of ® in the given scenario if not registered in Sri Lanka will amount to false representation. -4- Issue 7: - Penalty for false indication (1) Imprisonment – not exceeding 06 months (2) Fine – not exceeding Rupees Five thousand (3) < 50%. Issue 8: - R in circle mark litigation Marking is not a requirement under our law and hence not applicable. Issue 9: - R in circle litigation Not applicable -5- 2011 APAA Trademark Committee Special Topics Chart "How to use a registered trademark against a non-use cancellation and registration notice requirement." November 13, 2011 7 1 Australia Bangladesh Hong Kong India Indonesia Japan Korea Malaysia New Zealand Pakistan Philippines Singapore Sri Lanka Taiwan Thailand Vietnam Y 2 Y 3 N 4 M [Note]: 1) “Y” means “YES” 2) “N” means “NO” 3) “M” means “YES” and “NO” 4) “N/A” means “Not Applicable” 5 6 (1) (2) Y N Y Y (3) (a) 8 9 N/A N/A