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Keywords:

  • trademarks;
  • TRIPS;
  • Paris Convention;
  • compatibility of domestic legislation;
  • TRIPS plus

Abstract

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography

Having been a contracting party to the General Agreement on Tariffs and Trade (GATT) since 1948, Sri Lanka ratified the Marrakesh Agreement establishing the World Trade Organization (WTO) in June 1994, and became one of its founding Members. Since then, Sri Lanka has striven to bring its local laws into conformity with the standards imposed by the WTO. In the context of intellectual property (IP), the former Code of Intellectual Property of 1979 was replaced by the Intellectual Property Act of 2003. This legislative change was particularly important in discharging Sri Lanka's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which forms one of several WTO covered agreements, to which Sri Lanka is party. The purpose of this paper is to assess the extent that the Sri Lankan trademark law is in conformity with the standards imposed by TRIPS. The focus, in particular, is on the aspects of acquisition and cancellation of trademark rights and the nature and scope of these rights.

The marriage of intellectual property (IP) with the rules of world trade through the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS) is regarded as one of the most outstanding accomplishments of the Uruguay Round of negotiations that gave birth to the World Trade Organization (WTO) in 1994. The achievement was unique, because the United States, almost single handed, convinced over 100 nations comprising the General Agreement on Tariffs and Trade (GATT) to accept the terms of the TRIPS (Drahos, 1995, p. 7). Since then, many have questioned the fertility of the trade/IP wedlock, especially from the perspective of the developing world (Gutowski, 1999). However, the reality is that any country striving to reap the benefits of global trade, dominated by the developed world, must have in place the minimum standards of IP protection envisaged by TRIPS. The failure to meet these minimum standards would result in the diversion of foreign investment to other jurisdictions that meet TRIPS standards. The purpose of this commentary is to assess the climate of TRIPS compatibility of Sri Lankan trademark law, and prospects for investment in that nation, which has begun its recovery from three decades of internal strife.

Compatibility Assessment

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography

The law governing trademarks in Sri Lanka is now found mainly in the Intellectual Property Act (IP Act) .1 Although the common law of Sri Lanka protects unregistered trademarks through the common law action of passing off, the law governing registered trademarks are found solely within the IP Act .

As such, this analysis must begin with examining the core provisions in the IP Act relating to trademarks. While part V of the IP Act exclusively deals with trademark protection, part VI deals with trade names. The discussion will focus on two aspects of trademark protection, namely, the acquisition and cancellation of trademark rights and the nature and scope of these rights.

Acquisition and Cancellation of Trademark Rights

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography

In Sri Lanka, trademark rights under the IP Act are acquired by registration as made clear by section 102(1) of the IP Act which enacts that “[t]he exclusive right to a mark conferred by this part shall be acquired, subject to the succeeding provisions, by registration”. As such, the process of registration is of paramount importance to the acquisition of exclusive trademark rights in Sri Lanka. Unlike in some jurisdictions such as the United States, 2 prior use is not a precondition to registration in Sri Lanka. It must also be borne in mind, that unregistered marks are protected by the common law of Sri Lanka, though the full protection of the IP Act is only conferred to marks registered under that Act.3

In terms of article 15:1 of TRIPS “[a]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings” becomes eligible for registration. However, this does not mean that all distinctive signs must at all times be registered by WTO Members. For instance the last sentence of article 15:1 provides that Members may require a sign to be visually perceptible in order for it to qualify for registration. Thus, a WTO Member may not be obliged to register a sign that is distinctive, yet invisible. Moreover, article 15:2 of TRIPS by providing that “[p]aragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention …” grants Members some flexibility to refuse the registration of marks despite them being distinctive (Correa, 2007, p. 180). The important point to note here is that any refusal to registration cannot derogate from the provisions of the Paris Convention on the Protection of Industrial Property of 1983 (Paris Convention) as subsequently revised and amended, and, in particular articles 6quinquies and 7.

Firstly, article 6quinquies of the Paris Convention deals with “telle quelle” marks, that is, marks that have already been registered in a Paris Union country. Article 6quinquies A(1) provides that “[e]very mark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article”. In terms of this provision, except for the specific grounds provided in article 6quinquies B, a telle quelle mark must not be refused protection. Those grounds on which marks can be refused protection are:

  1. when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;
  2. when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;
  3. when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.

Therefore, when a telle quelle mark is sought to be registered in Sri Lanka by invoking the priority provisions of the Paris Convention, grounds of denial that go beyond the scope of those specified in article 6quinquies B of the Paris Convention would stand contrary to the Paris Convention. An interesting feature of part B of article 6quinquies is its apparent permissive language resulting from its wording that begins as “[t]rademarks covered by this article may be neither denied registration nor invalidated except in the following cases”. However, when one peruses the original French version, any doubt as to the provision's effect simply perishes. The French wording which reads as “Les marques de fabrique ou de commerce, visées par le présent article, ne pourront être refusées à l'enregistrement ou invalidées que dans les cas suivants” translates as “trademarks covered by this section shall not be denied registration nor invalidated except in the following cases”. In view of article 29(c) of the Paris Convention, in the event of any discrepancy between the French and English versions, the French text shall prevail. As such, the mandatory nature of article 6quinquies B permits Paris Union countries to deny registration under the telle quelle provision only on grounds specified in part B of that provision. As such, by virtue of article 15:2 of TRIPS, any ground for denying registration that violates article 6quinquies of the Paris Convention insofar as telle quelle marks are concerned would also violate TRIPS.

Secondly, in terms of article 7 of the Paris Convention, “[t]he nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark”. This bar is also re-enacted in article 15:4 of TRIPS. As such, a sign already registered in a Paris Union country cannot be denied registration on grounds that relate to the nature of the goods. This means that:

Paris Union and WTO Members may not refuse registration of trademarks on grounds that the goods or services they designate are contrary to public order or morality, on the one hand, or that they are not of a commercial nature, on the other (de Carvalho, 2006, p. 247).

Hence, the provisions of the IP Act must be scrutinized in this backdrop.

Visual Perceptibility

At the outset, it must be noted that section 101 of the IP Act defines a trademark as “[a]ny visible sign serving to distinguish the goods of one enterprise from those of another enterprise”. This clearly means that only signs that are visually perceptible are capable of being registered to the exclusion of unconventional marks, such as, sound, smell and taste marks.

It has been readily acknowledged by psychologists that scent offers the strongest sense of memory surpassing sight and sound (Matheson, 2003). Currently, several scent marks have been registered in the United States,4 though across the Atlantic, in Europe, there has been less enthusiasm in this regard.5 There is also debate on the registrability of sound and taste marks given the difficulty of representing them with precision for the purposes of registration. In these circumstances, although in the Sri Lankan context, a sign must in itself be visible in order to be protected, in foreign jurisdictions, especially countries party to the Paris Convention may allow registration of non-visual signs (as in the United States). In such an event, the question arises whether the Sri Lankan IP office would be obliged to register and protect such non-visual signs (which are proven to be distinctive) in terms of article 6quinquies of the Paris Convention. The issue is whether the flexibility granted to WTO Members in terms of the last sentence of article 15:1 (on visual perceptibility) is overridden in light of article 6quinquies of the Paris Convention. This is contentious owing to article 2 of TRIPS which provides that:

  1. In respect of parts II, III and IV of this Agreement, Members shall comply with articles 1 through 12, and article 19, of the Paris Convention.
  2. Nothing in parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.

As such, article 6quinquies of the Paris Convention obliges Convention States to offer protection to telle quelle marks unless the grounds of denial expressly provided for in part B of the said provision are satisfied. It is noteworthy that the lack of visual perceptibility is not a ground for denial under this scheme. Clearly, a telle quelle mark irrespective of its visual characteristics must be granted protection, and the absolute requirement under Sri Lankan law of visual perceptibility is contrary to the Paris Convention insofar as telle quelle marks are concerned, and therefore, is also inconsistent with TRIPS. Accordingly, although visual perceptibility may be required for ordinary marks, insofar as telle quelle marks are concerned, such a requirement cannot form a hindrance to registration. Thus, a special exception to visual perceptibility must be created for telle quelle marks.

It must be noted that the obligation imposed in terms of article 6quinquies of the Paris Convention is such that every mark duly registered in the country of origin must be accepted for filing and protected “as is” in the other countries of the Paris Union, subject to the express grounds of denial stated in that provision. The WTO's Appellate Body in United States—Section 211 Omnibus Appropriations Act of 199820086 considered the meaning of “telle quelle” appearing in article 6quniquies and found that the French term meant “as is”, that is “in the existing state”.7 It was observed by the Appellate Body (citing the Panel in this case) that:

The ordinary meaning of the term “as is” and read in its context and as confirmed by the negotiating history indicates that Article 6quinquies A(1) addresses the form of the trademark; that is, those trademarks duly registered in one country, even when they do not comply with the provisions of domestic law of a Member concerning the permissible form of trademarks, have nevertheless to be accepted for filing and protection in another country (United States-Section 211 Omnibus Appropriations Act of 1998, paragraph 127).8

Therefore, an important question that ought to be raised is whether visual perceptibility of a sign concerns the form of a trademark. If the answer is in the affirmative, notwithstanding domestic legislation that limits registrability to purely visible signs (such as in Sri Lanka), a non-visual telle quelle mark must be accepted for registration. The WTO's Appellate Body in United States—Section 211 cited an expert who suggested the following:

… whenever a trademark is duly registered in the country of origin, the other countries of the Union are obliged to accept and protect it, even if, as regards its form, that is, with regard to the signs of which it is composed, such trademark does not comply with the requirements of the domestic legislation, subject to the additional rules, particularly the grounds for refusal or invalidation of any mark, considered on its individual merits, established in the Article. This rule will therefore apply to trademarks consisting of numbers, letters, surnames, geographical names, words written or not written in a certain language or script, and other signs of which the trademark is composed (Bodenhausen, 1968, pp. 110–1).

Therefore, it could be argued that just as the form of a mark relates to the letters and numbers by which a sign is composed, the non-visual elements of an unconventional trademark, such as a sound mark, would no doubt concern its form. Therefore, any limitation as regards the registrability of a non-visual sign predicated on its invisibility clearly is a prohibition that relates to the form of the mark sought to be registered.

Commenting on the Trade and Service Mark Act of 1986 (TMA) of Tanzania (which limits registrability to visible signs as in Sri Lanka), it has been observed that:

Article 6quinquies of the Paris Convention may, therefore, be seen as a conduit pipe for the circumvention of the TMA. Imagine the following scenario: company Z established in the EU has been able to secure registration of a sound mark (in the form of a musical tune) as a CTM, by observing the requirements set out by the ECJ in the Shield Mark decision. Furthermore, imagine that on the basis of novel means of representation which have as yet not been tested by the ECJ (e.g. a chromatogram), the same company has even succeeded to register an odour mark. On the basis of Art. 6quinquies Paris Convention, the authorities in other countries which, like Tanzania, have excluded trade mark registration for non-visible marks would be obliged to accept that company Z's marks cannot be barred per se from registration on the basis of their domestic rules, but only if the sign falls short of the requirements listed in Part B of Art. 6quinquies (Jaconiah, 2009, p. 780).

Thus, it would follow that if ICICI Bank's jingle (a sound mark) that was successfully registered recently in India9 was sought to be registered in Sri Lanka under article 6quinquies of the Paris Convention, the Sri Lankan IP Office would be bound to register it despite the limitation under Sri Lankan law restricting registrability to only visible signs.

However, there is one important point that must be considered. This relates to the specific reading of article 15:2 and therefore requires to be reproduced. Article 15:2 that reads as follows:

[p]aragraph 1 [of Article 15] shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967) (emphasis added).

Accordingly, a sign eligible for registration can be denied registration “on other grounds” only if such denial does not derogate from the provisions of the Paris Convention. The use of the words “on other grounds” implies that the grounds of denial that must not derogate from the provisions of the Paris Convention are those other than what is specified in article 15:1. Visual perceptibility as a precondition for registration is a ground that may be imposed by a WTO Member in terms of article 15:1 and therefore is not any “other ground” that is referred to in article 15:2. It perhaps can be argued that if a Member elects to impose the requirement of visual perceptibility as a precondition for registration, such a requirement supersedes the telle quelle provisions of the Paris Convention. If this argument is accepted, non-visual signs can be refused registration even when sought to be registered under the telle quelle provisions of the Paris Convention. Thus, if that was the case, the Sri Lankan IP Office would not be obliged to register non-visual telle quelle marks.

Another argument that could be put forward by Sri Lanka, if it were to deny the registration of non-visual marks sought to be registered under the priority provisions of the Paris Convention, is that signs which lack visual perceptibility, inherently lack distinctiveness, and therefore, forms the second ground for denial under article 6quinquies B of the Paris Convention, namely, of signs that are “devoid of any distinctive character”.

Objective Grounds for Denying Trademark Registration

Section 103(1) of the IP Act lists 13 grounds on which an application to register a sign can be rejected. As stated above, TRIPS article 15:2 permits Members to deny registration on “other grounds, provided that they do not derogate from the provisions of the Paris Convention”. Although the Paris Convention in article 6 provides that “[t]he conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation”, article 6quinquies dealing with telle quelle marks impose specific conditions upon which protection can be denied.

Given the absence of a special provision in the IP Act that is applicable to telle quelle marks, one must assess each of the grounds for denial found in section 103(1) and determine whether the grounds go beyond the scope of article 6quinquies B (i)–(iii) or any other provision of the Paris Convention. If a ground runs afoul of any provision of the Paris Convention, by virtue of TRIPS article 15:2 read with article 2:2, the ground also would be contrary to TRIPS.

At the outset, it can be stated with confidence that grounds (b)–(f) in section 103(1) dealing, respectively, with descriptive signs, signs that have become customary in the current language or in the bona fide and established practices of trade in Sri Lanka, signs that are non-distinctive and signs that are contrary to public morality or public order and signs that are intended to deceive or mislead the trade circles or the public, fall within the scope of article 6quinquies B (i)–(iii). Therefore, the above grounds, be it for ordinary marks or telle quelle marks, are compliant with the Paris Convention and therefore the TRIPS. However, some of the other grounds raise some compatibility issues.

Firstly, ground (a) which disentitles signs “which consists of shapes or forms imposed by the inherent nature of the goods or services or by their industrial function” from being registered raises some interesting questions. This is an important ground to maintain fair competition, because if one registers a sign that comprises the natural shape of the product to which it attaches, it would effectively curtail competition. The registration of the shape of a banana as a trademark for bananas may be cited as a suitable example. Such a situation would entitle only the owner of the banana shape mark to trade in bananas, as none other could legally use the sign (i.e. the shape of a banana) in business, as it would be identical/similar to the natural shape of the product (bananas) itself. As such, preventing the registration of marks that consist of signs essentially forming the natural shape of a product must be prevented to avoid market monopolization.

A similar argument may be made in relation to signs that entail technical functions. For instance, if a sign is registered which forms a shape or design that is required to achieve a certain technical result, trademark registration would effectively eliminate anyone but the owner of the mark from using the means of attaining that technical result, thus, creating a monopoly over the technology. In other words, trademark protection would serve as a surrogate for enterprises whose patents have expired. Philips v Remington, a dual that evoked global interest, serves as an ideal example for this situation. Given these policy reasons, ground (a) in section 103(1) plays a crucial role in maintaining fair competition.

However, it is important to note that article 6quinquies dealing with telle quelle marks does not permit marks duly registered in a Paris Union country to be denied registration on the lines of ground (a) in section 103(1). Thus, if a mark, which comprises entirely of a sign that is required to achieve a technical result, is registered in a Paris Union country and is subsequently sought to be registered in Sri Lanka, ground (a) of section 103(1) cannot be invoked to deny protection as it would stand contrary to article 6quinquies B of the Paris Convention. This situation is not entirely impossible given the Australian decision in Koninklije Philips Electronics NV v Remington Products Australia Pty Ltd, which ruled that Remington did not infringe Philips's trademark, because the “sign” used by Remington was “…nothing other than the product itself”, and therefore there was no trademark use by Remington.10 The Court did not make a pronouncement on the validity of the registration of the shape mark by Philips, which meant that the registration continued. However, it was not disputed that the shape of the three-headed razor performed a technical function. As such, in theory, it is possible for a valid registration of a shape mark to exist in a Paris Union country notwithstanding the fact that the shape attains a technical result. If that is so, Sri Lanka would have to honour the validity of the foreign registration and ground (a) of section 103(1) cannot be a bar for registration. The only manner in which Sri Lanka could seek to justify ground (a) is to make avail of the qualification to the scope of article 6quinquies B by virtue of the last sentence in that article which provides that “[t]his provision is subject, however, to the application of article 10bis”. Article 10bis dealing with unfair competition mandates that:

  1. the countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition;
  2. any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.

As such, it may be argued that the ground for denial in section 103(1)(a) of the IP Act is for the purpose of preventing unfair competition and therefore does not contravene article 6quinquies B of the Paris Convention. In the alternative, the registering authority may declare that the public would not perceive a shape mark to be distinctive but merely as being functional or descriptive. If the above arguments can be sustained, the registering authority may be able to deny registration of a functional sign or a sign comprising the natural shape of a product in terms of ground (a) of section 103(1) without violating article 6quinquies B of the Paris Convention and therefore TRIPS.

Secondly, ground (g) of Section 103(1), which is rather ambiguous, denies the registration of a sign “which does not represent in a special or particular manner the name of an individual or enterprise”. In the absence of any clarification in this regard, the Sinhalese11 text of the Sri Lankan IP Act may provide some useful insight. Given that where there is any inconsistency the Sinhalese text of the IP Act would prevail over the English text,12 it perhaps is necessary to inspect section 103(1)(g) of the Sinhalese version of the IP Act. An examination seems to reveal that, perhaps, the intention of the legislature was to impose a requirement for a trademark registrant to establish the link between himself (or itself, in the case of a legal entity) and the manufacturer of the goods or the provider of the services in relation to which the mark will be used. As such, a mark that does not represent any commercial linkage to an individual or enterprise engaging in business would be incapable of being registered. This may be a positive step in eliminating mala fide registrations by persons not engaging in any business or trade in an attempt to prevent others from lawfully registering a mark. Such malicious forms of registration of marks, akin to cyber-squatting, are commonplace, especially for those contemplating entering a niche market in the future. Thus, the requirement as to “ownership” is regarded as a safeguard to limit trademark registration to bona fide businesses. However, as far as telle quelle marks are concerned, can such an ownership requirement be imposed? Given that this requirement does not form the grounds for denying registration under article 6quinquies B of the Paris Convention, it may seem to contravene the Paris Convention and thus the TRIPS. However, a perusal of the WTO's Appellate Body decision in United States—Section 211 Omnibus Appropriations Act of 1998 tends to show that a ground for denial based on the ownership requirement may still form a valid basis for denying the registration of telle quelle marks. This WTO dispute concerned a provision of US law on the requirement of ownership for trademark registration. As discussed above under the heading “Visual perceptibility”, unlike the visibility requirement that relates to the form of the mark sought to be registered, the ownership requirement does not relate to the characteristics of the mark. Instead, it relates to an existing link between the mark, the registrant and the manufacturer of the goods or services that do not concern the characteristics or form of the mark. As such, the Appellate Body concurred with the Panel in the above referenced WTO dispute which concluded that:

… as we noted above in our examination of Section 211(a)(1) in relation to Article 15.1 of the TRIPS Agreement, Section 211(a)(1) is a measure that regulates ownership and does not deal with the form of the signs of which the trademark is composed. For these reasons, Section 211(a)(1) is not inconsistent with Article 6quinquies A(1) of the Paris Convention (1967) (United States-Section 211 Omnibus Appropriations Act of 1998, paragraph 127).13

Accordingly, given that the ownership or similar requirement as probably envisaged by section 103(1)(g) of the Sri Lankan IP Act does not relate to the form of the mark to be registered, the lack of proper ownership even as regards telle quelle marks can form a valid basis of a ground for denying registration in the country concerned, in this case being Sri Lanka.

Thirdly, ground (h) prevents the registration of signs “which [are], according to its ordinary14 signification, a geographical name or surname”. This implies that any sign which in its ordinary signification indicates a geographical name or a surname cannot be registered. This perhaps is a measure aimed at maintaining fair competition, the underlying purpose being the preservation of the possibility for traders to utilize geographical names and surnames freely to indicate the origin of their products or services or the affiliation of an individual to the provision of goods or services.

In the case of geographical names, however, not always do they imply the origin of the product concerned. Therefore, at times, geographical names can legitimately be used as trademarks as indicating trade origin. This was the primary contention in Windsurfing Chiemsee Produktions—und Vertriebs GmbH v Boots—und Segelzubehor Walter Huber, where the claimant was the seller of sporting clothes close to the banks of the Chiemsee, the largest lake in Barvaria. The claimant used a picture mark “Chiemsee” for its products. The defendant also a manufacturer of sporting clothes used the mark “Chiemesee” for its products and was situated in almost the same area adjoining the Chiemesee lake. The claimant filed action for inter alia trademark infringement and the defendant took up the position that Chiemesee being a geographical name must be free for all to use as an indicator of the geographical origin of the products. The European Court of Justice (ECJ) held that the exclusion from registration of “geographical names” in article 3(1)(c) of the European Union Trademarks Directive prohibits the registration of geographical names as trademarks not only where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question, but also applies to geographical names that are liable to be used in future by the undertakings concerned as an indication of geographical origin of that category of goods. However, Court went on to qualify this prohibition by stating that:

In that connection, Article 3(1)(c) [of the Directive] does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons or at least unknown as the designation of a geographical location or of names in respect of which, because of the type of place they designate (say, a mountain or lake), such persons are unlikely to believe that the category of goods concerned originates there (Windsurfing, at paragraph 33).

The ECJ, thus, opined that merely because a mark amounted to a geographical name that did not necessarily mean that it cannot be registered as a trademark. As such, there is no absolute prohibition on the registration of geographical names as trademarks.

It is in this light that ground (h) of section 103(1) of the Sri Lankan IP Act must be interpreted. Given that ground (b) of this section explicitly precludes the registration of signs that may inter alia serve to designate the place of origin of the product, ground (h) insofar as it relates to geographical names seems to be superfluous and repetitive. The aim of this aspect of ground (h) could very well be carried out by ground (b) of section 103(1). Further, if ground (h) is interpreted as an absolute restriction on the registration of geographical names, this surely falls short of the accepted norms pertaining to geographical names and distinctiveness in other jurisdictions. Further, given the possibility of geographical names being registered as trademarks in other jurisdictions, including Paris Union countries, it is always possible for geographical names to form part of telle quelle marks that must be registered pursuant to Sri Lanka's obligations under the Paris Convention.

An example includes Montblanc being registered as a trademark for pens despite the fact that Mont Blanc meaning “white mountain” also denotes the highest mountain in the Alps range. If such a mark is registered in a Paris Union country, which undoubtedly in its ordinary signification denotes a geographical name, such a mark would be incapable of being registered in Sri Lanka as a result of section 103(1)(h). This clearly would violate the provisions of the Paris Convention where the only ground for denying registration of a geographical name is where the same denotes the place of origin of that type of goods. Thus, where a mark sought to be registered comprises a geographical name, unless the type of goods in contention is actually manufactured or designed in the geographical area concerned, such a mark must be registered, notwithstanding the fact that it is a geographical name, so long as the requirement as to distinctiveness is satisfied. As such, given the existence of ground (b), the geographical aspect of ground (h) is not only superfluous, but also is contrary to the Paris Convention and therefore the TRIPS.

The second aspect of ground (h) regarding surnames also does not fail to raise some interesting concerns. It must be noted that surnames have and do form distinctive trademarks capable of performing the function of trade origin. Some examples include Cadbury, T.M. Lewins and even most renowned hp (Hewlett Packard). These are trademarks that originate from surnames of the individuals who worked towards the establishment of their businesses. As such, an absolute denial of a mark from being registration on the ground that it forms a surname cannot withstand the test of common legal sense. In Nichols plc v Registrar of Trade Marks, the ECJ observed that the distinctive character of personal names and common surnames must be assessed in relation to the goods or services involved and to the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria that are utilized in the assessment of distinctiveness of any other mark. Therefore, marks consisting of personal names are to be assessed on the same footing as any mark, thus, re-iterating that names too can form valid trademarks provided that they are distinctive. Furthermore, even though the “ordinary signification” of a mark is to denote a surname, in cases where such a surname is uncommon, the possibility of it being recognized as the origin of goods or services is significantly higher.

It is noteworthy that in cases of both geographical names and surnames, the IP Act does not set out the scope within which the “ordinary signification” must be assessed. Is it a global test that is to be applied? On the other hand given that trademark protection is territorial in nature, must a localized test be applied? As the European cases cited above demonstrate, it is possible for geographical names and surnames to be registered as trademarks, and where registration of such a mark is sought in Sri Lanka under the privilege conferred by article 6quinquies of the Paris Convention, the blanket prohibition against registering geographical names and surnames as trademarks found in section 103(1)(h) in the IP Act seems to run contrary to a country's obligation under the Paris Convention and hence the TRIPS.

Fourthly, grounds (i)–(k) in section 103(1) must be considered. They include the denial of registration of signs that reproduce or imitate armorial bearings, flags or other emblems, initials, names or abbreviated names of any State or any intergovernmental international organization,15 which reproduces or imitates official signs or hallmarks of a State, unless authorized by the Competent Authority of that State,16 or which resembles in such a way as to be likely to mislead the public, a mark or a collective mark or a certification mark the registration of which has expired and has not been renewed.17 These may be treated as natural extensions to ground (f) of section 103(1). In terms of ground (f), the registering authority may deny the registration of marks “which [are] likely to mislead trade circles or the public as to the nature, the source, geographical indication, the manufacturing process, the characteristics or the suitability for the purposes of the goods of services concerned”. Given that ground (f) could be easily couched within the third ground of denial in article 6quinquies B it could be said that ground (f) as well as grounds (i)–(k) are compatible with the Paris Convention and therefore TRIPS.

Finally, signs “the registration of which has been sought in respect of goods or services the trading of which is prohibited in Sri Lanka” must be denied registration in terms of section 103(1)(l). Insofar as telle quelle marks are concerned, it may be stated without doubt that such a ground cannot form a valid ground for denial under article 6quinquies and hence stands contrary to the Paris Convention. Even in relation to ordinary marks that are sought to be registered by direct registration (instead of seeking priority under the Paris Convention) does ground (l) in section 103(1) contravene the express provisions of both the Paris Convention and TRIPS? Both the Paris Convention in article 7 and the TRIPS in article 15:4 stipulate that the nature of the goods for which the mark is to be applied cannot form a reason for denying registration of a mark. Any decision by the Sri Lankan Government prohibiting the trading of particular goods or the provision of particular services would in all probability be made considering the nature of the goods or services.

For example, if the nature of certain goods is such that they harm the environment or would be contrary to public morality, the trading of such goods no doubt would be prohibited in Sri Lanka. Therefore, the decision to prohibit the trading of goods or services in most instances would relate to the nature of the goods or services. Therefore, by virtue of section 103(1)(l), if the denial of trademark registration is based on an existing ban on trading of the relevant goods/services, it is logical to conclude that such a denial directly (or at least indirectly) would relate to the nature of the goods/services. As such, denying the registration of a sign on the basis that the goods/services to which it relates is banned in Sri Lanka, cannot be a valid ground for denial if the basis of trade prohibition relates to the nature of the goods/services. Therefore, section 103(1)(l) if invoked in a manner described hitherto would be contrary to both the Paris Convention and TRIPS.

Despite it being somewhat outside the purview of this paper, it may be interesting to consider the rationale behind article 7 of the Paris Convention (re-enacted in article 15:4 TRIPS). If the goods/services are prohibited in a country, why permit the registration of marks that relate to such prohibited goods/services? The rationale for this provision is to eliminate discrimination with regard to the availability of trademark protection based on the types of products or services involved. Correa (2007, p. 182) suggests that “…article 15:4 [of TRIPS] would not allow a Member to deny registration of trademarks for products which are not in the public interest, such as being harmful to health”. The position pertaining to trademarks must be contrasted with that of patents, where Members are allowed to deny patent protection in cases where the prevention of commercial exploitation is necessary in the interest of inter alia morality of ordre public.18 Therefore, from this discussion, the conclusion leaves no doubt that section 103(1)(l) is contrary to the letter and spirit of both the Paris Convention and TRIPS.

How then could a country such as Sri Lanka prevent the use of trademarks in relation to goods/services that the trading of which is prohibited in the country. The answer lies in the nature of trademark rights. Unlike in the case of patents, where the right explicitly guarantees the enjoyment of patent rights (article 27:1, TRIPS), trademark rights are negative in nature. That is, article 16:1 of TRIPS confers the owner of a trademark the right to exclude any third party from utilizing the protected trademark. The provision does not confer a right to use the mark. As such, the strategy Sri Lanka could adopt in keeping with the norms of TRIPS is to permit the registration of marks while disallowing the use of those marks in cases where the products concerned are prohibited in Sri Lanka. However, the possibility of such an approach must be considered in the light of the right to use a trademark expressly conferred by section 121 of the IP Act. Therefore, an exception to the right to use one's trademark must be incorporated in order to avoid any apparent conflict and for public policy and morality to be restored.

Trademark Registration and Third Party Rights

In addition to the aforesaid objective grounds for denying trademark registration, it is also an accepted practice to deny registration when an application for registration conflicts with existing rights of third parties. It is important to note that nothing in TRIPS or the Paris Convention obliges parties to provide for a mechanism to oppose trademark registration. Article 15:5 of TRIPS provides that:

Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed (emphasis added).

It is clear from the above that although a Member must provide a mechanism for a registered mark to be cancelled if in conflict with third party rights or on the basis of any objective ground for denying registration, it is optional for a country to provide for opposition during the application process for registration. In fact in terms of article 16:1, the exclusive rights of a trademark owner extends only to the prevention of third parties using a mark identical or similar to that of the owner's but does not explicitly grant a right to challenge or oppose the registration of a mark.

Opposition to Trademark Registration

In the case of Sri Lanka, section 104 provides that the Director General of IP shall not register signs that inter alia resemble registered or unregistered marks of third parties as well as well-known marks. In addition, section 111(10) of the IP Act provides that:

Where any person considers that the mark is inadmissible on one or more of the grounds specified in section 103 or 104 he may, within a period of three months from the date of publication of the application, give to the Director-General in the prescribed form, and together with the prescribed fee, notice of opposition to such registration stating his grounds of opposition accompanied by evidence to substantiate such grounds (emphasis added).

The mechanism specified in section 111(10) clearly enables a registered trademark owner to prevent a conflicting mark from being entered in the trademarks register. Hence, Sri Lanka provides for the optional benefits that article 15:5 of TRIPS contemplates in favour of trademark owners. One must also consider the position in relation to well-known marks. Does TRIPS oblige Members to provide a mechanism for well-known mark owners to oppose conflicting trademark registration? The obligation arises on a reading of TRIPS with the Paris Convention. In particular, article 16:2 of TRIPS make article 6bis of the Paris Convention relevant, by extending the scope of the latter to “services” as well. Article 6bis(1) of the Paris Convention reads as follows:

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods (emphasis added).

It is clear that the design of section 111(10) of the Sri Lankan IP Act enables any person to protest against a mark from being registered in terms of the grounds specified in sections 103 and 104. Since, section 104 envisages a situation where a mark conflicts with a well-known mark, by virtue of section 111(10), a well-known mark owner can apply to have a conflicting mark refused registration. An important question that must be posed is as to when a mark is regarded as a well-known mark. The second sentence of TRIPS article 16:2 has caused some confusion in this regard rather than providing any guidance, when it states that:

In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

First point to note is knowledge “in the relevant sector of the public” is required for a mark to be well known. TRIPS, however, fails to define the terms “relevant sector of the public” leaving it to the discretion of Members (Stoll et al., 2006, p. 324). The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Joint Recommendation), though a piece of soft law, has attempted to bring some clarity to the process of identifying a well-known mark. Article 2(2)(a) of the Joint Recommendation provides that the relevant sectors of the public shall include, but shall not necessarily be limited to:

  1. actual and/or potential consumers of the type of goods and/or services to which the mark applies;
  2. persons involved in channels of distribution of the type of goods and/or services to which the mark applies;
  3. business circles dealing with the type of goods and/or services to which the mark applies.

Article 2(2)(b) further provides that “[w]here a mark is determined to be well known in at least one relevant sector of the public in a Member State, the mark shall be considered by the Member State to be a well-known mark”. Thus, for example, when applying this formula, a Competent Authority when assessing the degree of knowledge in the relevant sector of the public under section 104(2)(iii) of the Sri Lankan IP Act, a finding that persons involved in channels of distribution of the type of goods concerned possess a significant degree of knowledge of the relevant mark by itself would suffice for a determination that the mark is well known.

Secondly, the use of the terms “including knowledge in the Member concerned” in article 16:2 of TRIPS hints that even knowledge outside the jurisdiction could be considered in determining the famousness of a mark. However, according to article 2(3)(ii) of the Joint Recommendation, knowledge of the mark in other jurisdictions cannot be a condition precedent to a determination of the Competent Authority that a mark is well known.

Thirdly, a mark could be considered as well known although it is not registered in the country concerned, and in fact, even if it had never been used in commerce in that country. Since in terms of article 16:2 of TRIPS, knowledge of a well-known mark may be acquired “… as a result of the promotion of the trademark”, it can be concluded that, “… it is not enough to consider only knowledge resulting from domestic advertisement. Also “incidental promotion” and “spill-over advertisement” need to be considered (Stoll et al., 2006, pp. 324–5). In Sri Lanka, section 104(2)(v) which enacts that “the duration, extent and geographical area of promotion of the mark, including advertising or publicity and the presentation at any fair or exhibition of the goods or services to which the mark applies” can be considered in determining whether a mark is well known, seems to fully comply with TRIPS article 16:2 and the soft law guidance.

While noting that the provisions pertaining to the opposition of trademark registration are in conformity with the international standards, it must be noted that the flexibility granted to the Competent Authority in Sri Lanka19 to determine whether a mark is well known can be utilized fruitfully and in a manner that achieves the principles of TRIPS and guiding international instruments, such as the Joint Recommendation. Therefore, it is important for the Competent Authority in Sri Lanka to apply the proper test in determining whether a mark is well known, when any person, including the owner of a well-known mark, applies to have an application for trademark registration refused.

Cancellation of a Registered Trademark

Both article 15:5 of TRIPS and article 6bis(1) of the Paris Convention (read with article 16:2 of TRIPS) require Parties to provide for a cancellation mechanism. This contemplates a situation where a conflicting mark has already been registered and requires to be annulled on the application of an affected party. Under the Sri Lankan IP Act, provision for annulment is found in section 134. Section 134(1) reads as follows:

The Court may on the application of any person showing a legitimate interest, or of any competent Authority including the Director-General, to which the registered owner of the mark and every assignee, licensee or sub-licensee on record shall be made party, declare the registration of the mark null and void if its registration is precluded under the provisions of sections 103 and 104.

An important distinction between the provision for opposition [section 111(10)] and the above is that unlike in the former, where any person is entitled to oppose the registration of a mark, only a person showing a “legitimate interest” is entitled to apply to court to have a registered mark annulled. In other words, the scope of the annulment provision is limited to persons having a legitimate interest. This is particularly interesting in the light of European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs where a WTO Panel dealt with the meaning of “legitimate interests” in the context of exceptions to trademark rights under article 17 of TRIPS. Accordingly, the Panel citing with approval Canada—Patent Protection of Pharmaceutical Products concluded that:

To make sense of the term “legitimate interests” in this context, that term must be defined in the way that it is often used in legal discourse – as a normative claim calling for protection of interests that are “justifiable” in the sense that they are supported by relevant public policies or other social norm (emphasis added) (European Communities-Protection of Trademarks and Geographical Indications, paragraph 7.69).

One possible explanation for the limitation in scope of section 134(1) vis-á-vis section 111(10) is that section 134(1) affords a second opportunity for challenging the existence of a conflicting mark. While any person could oppose a mark being registered, once registered only those with legitimate interests could have it annulled. This limitation, however, cannot be said to detract from the requirement imposed by article 15:5 of TRIPS that compels all Members to provide a “reasonable opportunity” for petitions to cancel the registration of conflicting marks. Section 134(1) also can serve for the benefit of well-known mark owners, thus fulfilling obligations under TRIPS article 16:2 read with article 6bis of the Paris Convention. Therefore, the provisions in the Sri Lankan IP Act pertaining to the cancellation of a registered trademark conform to standards envisaged by the Paris Convention and TRIPS.

Nature and Scope of Trademark Rights

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography

The discussion now turns to the nature and scope of trademark rights capable of being enjoyed in Sri Lanka. The Paris Convention is ambiguous and less than explicit as to the scope of trademark rights, though TRIPS in article 16:1 has made explicitly clear the minimum standards of rights that must be made available by Members to owners of trademarks. Article 16:1 provides that:

The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

As stated earlier, the above standards envisage negative rights. That is, the trademark owner's right to prevent third parties from using an identical or similar mark. However, an analysis of section 121 of the Sri Lankan IP Act reveals that Sri Lankan law in this regard sets TRIPS plus standards. In addition to entitling right holders to eliminate any misleading use of a similar mark by a third party,20 section 121 also grants express rights to use the mark.21

Despite certain TRIPS plus standards being set by section 121(1), an important question that needs to be addressed is whether the minimum standards envisaged by article 16:1 is met by section 121. To this analysis, section 121(2)(a) is of crucial importance. The said provision is reproduced as follows:

[A]ny use of the mark, or a sign resembling it in such a way as to be likely to mislead the public, for goods or services in respect of which the mark is registered or for similar goods or services in connection with which the use of the mark or sign is likely to mislead the public (emphasis added).

The international standards set out in article 16:1 of TRIPS require the following obligations to be fulfilled. Firstly, Members must ensure that trademark owners are entitled to prevent third parties not being owners of the mark or a person authorized thereof from using an identical or similar mark in relation to identical or similar goods in circumstances that leads to consumer confusion. Secondly, in cases where an identical mark is used in relation to identical goods/services, confusion shall be presumed.

Accordingly, the first comment in relation to the Sri Lankan provision concerns the absence of the term confusion. Instead the provision bans the use by third parties marks in a manner that would mislead the consuming public. Thus, the crucial question is, whether misleading use is equivalent to confusing use. If the scope of the former is of a limited degree, and more difficult to prove than confusing use, then the Sri Lankan provision clearly would fall short of the minimum standards. To put it another way, would the burden of establishing misleading use by a third party be higher than that of having to establish confusing use. It is common to find Sri Lankan courts making reference to a standard dictionary with the intent of ascertaining the ordinary meaning of words appearing in various statutes.22 It is also noteworthy that Dispute Settlement Panels and the Appellate Body of the WTO incessantly refer to the dictionary to discover the ordinary meaning of words in WTO texts.23 Thus, it may be useful to ascertain the dictionary meanings of the terms “confuse” and “mislead”, as the answer to the question raised above depends on the scope of the two terms. The definition for “confuse” in the Concise Oxford English Dictionary is “… [to] identify wrongly”.24 On the other hand, “mislead” is defined as “… cause to have a wrong impression about … something”.25 It might therefore seem that to establish infringement under Sri Lankan law requires a slightly higher burden that what is imposed by international standards. If that is the case, the Sri Lankan IP Act does not meet the standards envisaged by TRIPS as it imposes a higher burden on trademark owners in proving infringement by third parties.

However, it might be argued that confusion arises when a consumer is led to the mistaken belief that a counterfeit product originated from the trademark owner. In other words, consumer confusion would arise when a consumer is misled as to the exact origin of the product. For instance, under the Canadian Trademark Act, confusion arises “…if it is likely that the hypothetical purchaser—the casual consumer somewhat in a hurry—will be led to the mistaken inference that “the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class”…”.26 Similarly in the United States, the phrases “confuse” and “mislead” have been used almost interchangeably. For instance, in Toys “R” Us, Inc. v Feinburg and Guns are We27 in determining that there was no likelihood of confusion, the court indicated that it is unlikely that a prudent consumer would be misled into thinking that Toys “R” Us had sponsored a small gun shop website targeting primarily gun dealers. Accordingly, the concept of confusion can be easily read into section 121(2) for the IP Act in order to bring it in line with minimum TRIPS standards. Thus, the Sri Lankan courts and the Competent Authority dealing with trademark infringement must treat misleading use as synonymous with confusing use.

Furthermore, TRIPS in article 16:1 presumes infringement when the conflicting mark is identical with the registered mark and is used in relation to identical goods/services as the trademark owner's. Such a presumption is lacking in the Sri Lankan legislation. A good example where the presumption has been incorporated is the European Trademark Directive that has been followed by many European jurisdictions. Under article 5 of the Directive, where there is a sign/mark identity coupled with the use of identical goods/services, infringement is found even without the proof of confusion. This is because, confusion is presumed. In fact, the Advocate General of the ECJ in LTJ Diffusion SA v Sadas Vertbaudet SA28 observed that:

[w]here rigorously identical signs or marks are used in the course of trade for identical goods or services, it is difficult if not impossible to conceive of circumstances in which all likelihood of confusion could be ruled out. In such cases, it would be both redundant and extravagant to require proof of that likelihood … I take the view that the protection afforded to trade mark proprietors under the relevant provisions is predicated essentially on the existence of a likelihood of confusion, proof of which is superfluous where both the marks (or the mark and the sign) and products covered are not merely similar but identical … since likelihood of confusion can be presumed without further investigation29 (emphasis added) (LTJ Diffusion SA, paragraphs A36–39).

The subsequent judgement of the ECJ in LTJDiffusion SA v Sadas Vertbaudet SA30 seems to have followed the reasoning of the Advocate General, albeit in a slightly tacit fashion. It has been suggested that “article 5(1)(a) of the directive does not require evidence of such a likelihood in order to afford absolute protection in the case of identity of the sign and the trade mark and of the goods or services” (Griffiths, 2007, p. 319). This presumption is of vital significance as it shifts the burden of proof to the defendant in infringement cases involving “double identity” (Stoll et al., 2006, p. 319). Of course, this does not mean that the presumption cannot be rebutted. For instance the “own name” defence31 which limits trademark rights could rebut the presumption of likelihood of confusion.32 All this highlights the need for a presumption where the third party's mark and goods are identical to that of the trademark owner's. In the absence of express recognition of this presumption in the Sri Lankan IP Act (as in the European Trademark Directive), unless the Competent Authority or the Commercial High Court of Sri Lanka33 that exercises exclusive jurisdiction over IP matters is mindful of this presumption, Sri Lanka once again would clearly be in loggerheads with its obligations under TRIPS.

Well-Known Marks

Reference to well-known marks has only been made in one instance in the Sri Lankan IP Act. The reference concerns the grounds for refusing the registration of trademarks. As stated earlier, this ground for denying registration of a mark fulfils Sri Lanka's obligation pursuant to articles 15:5 and 16:2 of TRIPS. However, the total lack of making available rights to well-known mark owners is a mighty slip in Sri Lanka's TRIPS obligation.

Article 16:2 of TRIPS read with article 6bis of the Paris Convention, in addition to obliging Members to provide a mechanism to prevent the registration of a conflicting mark and the cancellation of a conflicting registered mark, is also required to prevent the use of marks that conflict with well-known marks. The first sentence of article 16:2 provides that “article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services…”

In terms of article 6bis of the Paris Convention, “[t]he countries of the Union undertake, […] at the request of an interested party, […] to prohibit the use, of a trademark which constitutes a reproduction, an imitation or a translation, liable to create confusion …” of a well-known mark. In this respect, it must be noted that section 121 which makes trademark rights available applies only to registered trademarks. As such, although a registered trademark owner is entitled to prohibit the use of conflicting identical or similar marks, the owner of a well-known mark cannot avail himself of the benefit of this section unless the well-known mark is registered in Sri Lanka. However, it must be emphasized that, unlike under article 16:1 of TRIPS, protecting the interests of well-known mark owners against the confusing use of identical or similar marks does not depend on registration. As such, the application of section 121 to only registered trademarks contravenes TRIPS article 16:2 read with article 6bis of the Paris Convention.

In addition to protecting well-known marks against confusing use, TRIPS also obliges Members to grant protection against damage that may be caused to the interests of well-known mark owners. Article 16:3 of TRIPS provides that:

Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

Under this scheme, the right of a well-known mark owner is extended to situations that involve use of a conflicting mark by a third party in relation to dissimilar goods. On an ex facie reading of section 121 (2), it is obvious that the acts prohibited by paragraphs (a) and (b) of that section apply only in relation to registered trademarks. Furthermore, since paragraph (a) applies specifically with regards to the use by third parties of a conflicting mark in relation to identical or “similar” goods, the only provision in the Sri Lanka IP Act that could be utilized in discharging Sri Lanka's article 16:3 obligation under TRIPS is section 121(2)(b). Therefore, one must assess whether section 121(2)(b) discharges Sri Lanka's obligations in relation to the protection of the interests of well-known mark owners against the likelihood of damage. Section 121(2) enacts that:

Without the consent of the registered owner of the mark third parties are precluded from the following acts

  1. [misleading use – this has been dealt with in detail previously];
  2. any other use of the mark, or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interests of the registered owner of the mark.

Accordingly, the primary question is whether by requiring marks to be registered in order to benefit from the protection afforded by section 121(2)(b), Sri Lanka's obligation pursuant to article 16:3 of TRIPS remain unfulfilled. The answer to this lies in identifying the exact obligations under article 16:3 of TRIPS. It must be noted that in article 16:3, reference has been made to an “owner of a registered trademark”. Hence, does this imply that for a well-known mark to be conferred the privileges under article 16:3 of TRIPS such mark must be registered in the country concerned? If the answer to this is “yes”, then by requiring the mark to be registered to benefit from section 121(2)(b), Sri Lanka does not fall short of its obligation in relation to well-known marks. Carlos Correa (2007, p. 192) is of the view that the well-known mark concerned must be registered to be entitled to protection under article 16:3. This is undoubtedly a significant departure from TRIPS article 16:2 as well as article 6bis of the Paris Convention both of which do not require well-known marks to be registered. It is observed that the registration requirement in article 16:3 cannot be treated as a drafting mistake (Correa, 2007, p. 193). If this is the case, providing protection in the lines of section 121(2)(b) to only registered trademarks does not offend TRIPS article 16:3.

The further requirements of a trademark owner having to establish that the third party's use of the conflicting mark was “without just cause” and that it was “prejudicial to the interests of the registered owner of the mark” seem to meet the tests of infringement set out in article 16:3. There is no doubt that any use of a well-known mark without just cause and to the prejudice of the owner clearly would create a “connection between [the third party's] goods or services and the owner of the registered trademark” and also is likely to cause damage to the interests of the owner. Therefore, the rights conferred by section 121(2)(b) to registered well-known mark owners is without doubt in conformity with TRIPS article 16:3.

Also noteworthy is the use of the phrase “mutantis mutandis” in article 16:3 of TRIPS when it refers to article 6bis of the Paris Convention. It has been suggested that since reference is made to article 6bis of the Paris Convention, the “connection” between the goods of the third party and the registered owner of the mark must lead to a “likelihood of confusion”.34 However, since section 121(2)(b) of the IP Act makes no reference to the “likelihood of confusion”, the protection granted by that section is no doubt wider than what is required under TRIPS article 16:3. Moreover, the application of section 121(2)(b) is not limited to well-known marks. It is applicable to any registered mark be it well known or otherwise. As such, the rights conferred under section 121(2)(b) go beyond the obligations needed to be discharged under article 16:3 and therefore, it may be stated that Sri Lanka in this light sets TRIPS plus standards.

Conclusion

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography

The discussion above dealt in great detail with certain aspects of Sri Lankan trademark law, that is, acquisition of trademark rights and its nature and scope. Although article 6 of the Paris Convention read with TRIPS article 16:2 permits countries to refuse trademark protection on almost any ground, marks that are validly registered in a Paris Union country, when seeking to be registered under the priority provisions of the Paris Convention, cannot be denied registration except under a ground stipulated in article 6quinquies B of the Paris Convention. Therefore, such “telle quelle” marks must be registered “as is”. Pursuant to United States—Section 211 Omnibus Appropriations Act of 1998, it is clear that article 6quinquies relates to the form or the characteristics of the mark concerned, and not to other elements such as ownership. As such, so long as a ground for denying registration relates to the characteristics of a telle quelle mark, only then it must be compatible with article 6quinquies B.

Visual perceptibility of a sign relates to the form or characteristic of a mark. Therefore, in the absence of a ground for denying registration of non-visual signs in article 6quinquies B, insofar as telle quelle marks are concerned, the very definition of a “sign” in the Sri Lankan IP Act seems to contravene article 6quinquies B of the Paris Convention, and therefore the TRIPS. It must also be noted that requiring signs to be visually perceptible may hinder the registration of non-visual, yet distinctive, signs that are commonplace in the modern business world.

As regards the objective grounds of refusing trademark registration under section 103(1) of the Sri Lankan IP Act, several grounds contravene both the Paris Convention and TRIPS. While grounds (b)–(f), (g) and (i)–(k) are in conformity with the Paris Convention and TRIPS, grounds (a), (h) and (l) stand contrary to the said instruments, especially the provisions pertaining to telle quelle marks. Therefore, certain grounds for denial found in section 103(1) of the IP Act must be amended in such a way that they would not be made applicable to telle quelle marks. Ground (l) on the other hand must be done away with totally, and instead a prohibition on the use of trademarks in relation to goods/services the trading of which has been banned may be imposed.

On opposition and cancellation procedures, the Sri Lankan IP Act is in conformity with TRIPS standards. Section 111(10) of the IP Act dealing with opposition preceding registration and section 134(1) pertaining to annulment apply to both registered as well as well-known marks. The fact that the cancellation procedure is limited to persons having a “legitimate interest”, as opposed to “any person” being entitled to oppose registration, does not detract from the requirement imposed by article 15:5 of TRIPS requiring Members to grant a “reasonable opportunity” to tender petitions seeking cancellation of conflicting marks. As such, the provisions in the IP Act dealing with opposition and cancellation of marks meet TRIPS (as well as Paris Convention) standards.

Thence, the investigation turned to the nature and scope of trademark rights in Sri Lanka. It was discovered that the rights conferred by the Sri Lankan IP Act contained both TRIPS plus and minus features. Section 121 of the IP Act deals with trademark rights. In addition to the right to prevent misleading use of similar marks [section 121(2)(a)], the conferring of a right to use a registered mark [section 121(1)(a)] exemplifies TRIPS plus standards. Similarly, section 121(2)(b) which extends a right to registered trademark owners to prevent the use by third parties of an identical or similar mark without just cause in manner prejudicial to the interests of the registered owner of a mark, clearly applies to situations where the third party's mark is used in relation to goods of a dissimilar description to which the registered mark is used for. As such, section 121(2)(b) aims to fulfil Sri Lanka's obligation on the protection of well-known marks pursuant to TRIPS article 16:3. The fact that section 121(2)(b) applies to any registered mark be it well known or otherwise is yet another TRIPS plus feature.

However, the use of the phrase “likely to mislead” as opposed to the usual “likely to confuse” in section 121(2)(a) arguably stands short of Sri Lanka's TRIPS obligation under article 16:1. Also, the structure of section 121(2)(a) does not provide for a presumption of infringement (as required by the last sentence of TRIPS article 16:1) where a third party uses an identical mark in relation to identical goods/services for which a mark has been registered. These deficiencies exemplify some of the TRIPS minus features.

Accordingly, it may be concluded from the above analysis that while several positive features of Sri Lankan Trademark law go beyond Sri Lanka's obligations under TRIPS, certain others radically fall short of TRIPS standards. Therefore, the provisions pertaining to trademarks in the Sri Lankan IP Act must be reviewed and revised in order to bring them in line with the minimum standards imposed by TRIPS. Furthermore, advancements in technology and changes in consumer perception and behaviour must be considered in developing a more futuristic Sri Lankan trademark law.

Notes
  1. 1

    IP Act No. 36 of 2003.

  2. 2

    In the United States, trademark rights at common law are obtained through adoption and use in commerce. Use is a precondition for registration in the United States (see, section 1 of the Lanham Act; see also, Bouchoux (2009, p. 23) who suggests that “[i]n most foreign countries, trademark rights arise from registering the mark with a governmental entity. The law in the United States is quite different: trademark rights arise from adoption and use of a mark, not from registration.”)

    This does not mean that in the US trademark rights cannot subsist in unregistered trademarks. However, certain additional rights might ensue to those who have their marks registered. For instance, exclusive national use is a right granted to a registered trademark, whereas common law rights only permit exclusive use within the locality in which the mark is being commercially used.

  3. 3

    For instance, no trademark can be registered under the IP Act of 2003 if such mark conflicts with an unregistered mark (see, section 103(1)(b) of the IP Act 2003). This is a subtle way in which the IP Act itself provides protection to unregistered marks. However, an action for infringement under the IP Act cannot be brought unless the protected mark is registered under the Act. In cases of unregistered marks, a common law action based on the tort of passing off would provide a plausible cause of action.

  4. 4

    US Registration No. 1,639,128 issued March 1991 for “a high impact, fresh floral fragrance reminiscent of plumeria blossoms” for sewing thread and embroidery yarn; cancelled in 1997 under section 8 for failure to file continued evidence of use; US Registration No. 2,463,044, registered 26 June 2001 on the supplemental register for a “cherry scent” for oil-based metal cutting fluid and oil-based metal removal fluid; US Registration No. 2,568,512, registered 10 August 2001 on the supplemental register for a “bubble gum scent” for lubricants and motor fuels for land vehicles; US Registration No. 2,463,044, registered 26 June 2001 on the supplemental register for a “grape scent” for synthetic lubricants for high performance racing and recreational vehicles; US Serial No. 75/404,020, published for opposition 11 August 1998, abandoned 6 July 1999, for an “almond scent” for lubricants and motor fuels for land vehicles, aircraft and watercraft; US Serial No. 75/360,106, published for opposition 28 July 1998, abandoned 21 April 1999, for a “tutti frutti scent” for lubricants and motor fuels for land vehicles, aircraft and watercraft; US Serial No. 75/360,105, published for opposition 28 July 1998, abandoned 6 July 1999, for a “citrus scent” for lubricants and motor fuels for land vehicles, aircraft and watercraft; US Serial No. 75/788,312 for the mark ORCHARD FRUITS and a “fragrance intended to evoke the scent of various orchard fruits” for fragrances sold as an integral component of preparations for cleaning, polishing, moisturizing and protecting furniture, panelling, wood and other hard surfaces.

  5. 5

    Although initially olfactory (smell) marks were registered in countries such as the United Kingdom (see e.g. Sumitomo Rubber Co's trademark for “a floral fragrance of roses as applied to tyres” in 1996 and the “strong smell of bitter beer applied to flights for darts” a trademark registered by Unicorn Products), the ruling of the European Court of Justice in Sieckmann v Deutsches Patent- und Markenamt highlights that smell marks are virtually impossible to be represented graphically, and thus cannot be registered as technology stands today. However, this does not mean that the situation will remain the same forever, and the future may present the possibility of representing smell marks graphically so as to fulfil the registration requirement.

  6. 6

    United States—Section 211 Omnibus Appropriations Act of 1998.

  7. 7

    United States—Section 211 Omnibus Appropriations Act of 1998, paragraph 137.

  8. 8

    Citing the Panel Report [WTO dispute WT/DS176/R] at paragraph 8.83.

  9. 9

    According to a news item published in the The Economic Times (13 March 2011).

  10. 10

    See also, Honey and Sinden (2000).

  11. 11

    Sinhalese is the official language of legislation in Sri Lanka.

  12. 12

    IP Act, section 213.

  13. 13

    Citing the Panel Report [WTO dispute WT/DS176/R] at paragraph 8.83.

  14. 14

    The original text of the Sri Lankan IP Act uses the term “ordinal”. Ordinal is defined in the Concise Oxford Dictionary as: “…a number defining a things position in a series such as “first” or “second”.” As such, I presume what was intended was “ordinary” and not ordinal.

  15. 15

    IP Act, section 103(1)(i).

  16. 16

    IP Act, section 103(1)(j).

  17. 17

    IP Act, section 103(1)(k).

  18. 18

    See, TRIPS, article 27:2; order public mean more than public order. It is more akin to public policy.

  19. 19

    IP Act, section 104(2)(ix)—“the criteria specified in this subsection to determine whether a mark is well known or not shall not be exclusive nor exhaustive”. Therefore, Sri Lankan law is flexible enough to be applied in a manner that fulfils Sri Lanka's obligations under TRIPS.

  20. 20

    IP Act, section 121(2)(a).

  21. 21

    IP Act, section 121(1)(a).

  22. 22

    See for example Cornel & Company Limited v Mitsui and Company Limited and others; Thirunavakarasu v Siriwardena and others; Wimalaratne v Linganathan and another.

  23. 23

    See for example United States-Continued Existence and Application of Zeroing Methodology; European Communities-Measures Affecting the Approval and Marketing of Biotech Products.

  24. 24

    Concise Oxford English Dictionary, s.v. “confuse”.

  25. 25

    Ibid., s.v. “mislead”.

  26. 26

    Mattel, Inc. v 3894207 Canada Inc.

  27. 27

    Toys “R” Us, Inc. v Feinburg and Guns are We; see also, Interstellar Starship Services Limited v Epix, Inc.

  28. 28

    LTJ Diffusion SA v Sadas Vertbaudet SA (Advocate General's opinion).

  29. 29

    LTJ Diffusion SA v Sadas Vertbaudet SA (Advocate General's opinion), at paragraphs A36–39. See also, de Carvalho (2006, p. 352).

  30. 30

    LTJ Diffusion SA v Sadas Vertbaudet SA (ECJ Judgement), paragraphs 48–49.

  31. 31

    IP Act, section 122.

  32. 32

    See, Correa (2007, p. 187) who suggests that “article 16:1 further stipulates that in cases of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The text does not clarify whether this presumption may or may not admit proof to the contrary, unlike article 34.1 of the Agreement, relating to process patents. However, there is no reason to think that an alleged infringer could not prove that such a likelihood does not exist. Hence, this provision may be interpreted as only requiring juris tantum presumption. Further, given the freedom to choose the method of implementation of TRIPS obligations, the presumption may be established by law (like in the case of Germany, Australia, New Zealand, India, etc) or applied through courts’ interpretation, as in the case of United States and Japan” (footnotes omitted).

  33. 33

    See, High Court of the Provinces (Special Provisions) Act No. 10 of .

  34. 34

    Correa (2007, p. 193) suggests that “however, given that article 6bis of the Paris Convention applies “mutantis mutandis” article 16.3 of the TRIPS read in conjunction with the said article of the Paris Convention may be interpreted as requiring both that the use indicates a connection to the trademark owner and that a likelihood of creating confusion exists” (footnotes omitted).

References

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography
  • Agreement on the Trade Related Aspects of Intellectual Property Rights (1994) (TRIPS)
  • Bodenhausen, G. H. C. (1968, reprinted in 1991) Guide to the Application of the Paris Convention for the Protection of Industrial Property. WIPO Publication 611, Geneva.
  • Bouchoux, D. (2009) Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets, 3rd edition. Delmar Cengage Learning, New York.
  • Canada—Patent Protection of Pharmaceutical Products WT/DS114/R (17 March 2000).
  • Concise Oxford English Dictionary (2009) 11th edition. Oxford University Press, New York.
  • Cornel & Company Limited v Mitsui and Company Limited and others [2000] 1 Sri LR 57.
  • Correa, C. M. (2007) Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement. Oxford University Press, Oxford.
  • de Carvalho, N. P. (2006) The TRIPS Regime of Trademarks and Designs. Kluwer Law International, the Netherland.
  • Drahos, P. (1995) ‘Global Property Rights in Information: The Story of TRIPS at the GATT’, Prometheus, 13(1), 619.
  • European Communities—Measures Affecting the Approval and Marketing of Biotech Products WT/DS291/R, WT/DS292/R, WT/DS293/R (29 September 2006).
  • European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs WT/DS174/R (15 March 2005).
  • European Union Trademark Directive 1988 formally known as the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) [European Union].
  • Griffiths, A. (2007) ‘The Trade Mark Monopoly: An Analysis of the Core Zone of Absolute Protection under Art. 5(1)(a)’, Intellectual Property Quarterly, 3, 312349.
  • Gutowski, R. J. (1999) ‘The Marriage of Intellectual Property and International Trade in the TRIPS Agreement: Strange Bedfellows or a Match Made in Heaven?’, Buffalo Law Review, 47, 71361.
  • Honey, R. and Sinden, P. (2000) ‘The Interface between Trademark, Designs and Passing Off under Australian Law: The Philips Case’, Murdoch University Electronic Journal of Law, 7(4), [online]. Available at http://www.murdoch.edu.au/elaw/issues/v7n4/sinden74.html [Accessed in April 2011].
  • High Court of the Provinces (Special Provisions) Act No 10 of 1996 [Sri Lanka].
  • Intellectual Property Act No 36 of 2003 [Sri Lanka].
  • Interstellar Starship Services Limited v Epix, Inc., 184 F.3d 1107 (9th Cir., 19 July 1999).
  • Jaconiah, J. (2009) ‘The Requirements for Registration and Protection of Non-Traditional Marks in the European Union and in Tanzania’, IIC, 40(7), 75680.
  • Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO, 20–29 September 1999 [WIPO/Paris Union Joint Recommendation].
  • Koninklije Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 44 IPR 551.
  • Lanham Act 15 U.S.C. [United States].
  • LTJ Diffusion SA v Sadas Vertbaudet SA (Advocate General's opinion) C-291/00, [2002] E.T.M.R. 40.
  • LTJ Diffusion SA v Sadas Vertbaudet SA (ECJ Judgement) C-291/00, [2003] E.T.M.R. 83.
  • Mattel, Inc. v 3894207 Canada Inc. 2006 SCC 22, [2006] 1 SCR 772.
  • Matheson, J. A. (2003) ‘The Sweet Smell of a Successful Registration’, Intellectual Property Counselor, [online]. Available at http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=d28c44ca-6b7a-440b-a97d-ee09588e9c02 [Accessed in April 2011].
  • Nichols plc v Registrar of Trade Marks C-404/02, [2005] 1 W.L.R. 1418.
  • Paris Convention for the Protection of Industrial Property (1883) as revised in 1900, 1911, 1925, 1934, 1958 and 1967 and amended in 1979.
  • Philips v Remington C-299/99, [2003] Ch. 159.
  • Sieckmann v Deutsches Patent- und Markenamt C-273/00, [2003] Ch. 487.
  • Stoll, P., Busche, J. and Arend, K. (eds.) (2006) WTO–Trade-Related Aspects of Intellectual Property Rights. Martinus Nijhoff Publishers, Germany.
  • The Economic Times (13 March 2011). ‘ICICI Bank Trademarks Corporate Jingle’. Available at http://articles.economictimes.indiatimes.com/2011-03-13/news/28685973_1_trademarks-jingle-sound-marks [Accessed in April 2011].
  • Thirunavakarasu v Siriwardena and others [1981] 1 Sri LR 185.
  • Toys R Us, Inc. v Feinburg and Guns are We 1998 WL 760219, Oct. 28, 1998, (SDNY).
  • United States—Continued Existence and Application of Zeroing Methodology WT/DS350/R (1 October 2008).
  • United States—Section 211 Omnibus Appropriations Act of 1998 WT/DS176/AB/R (2 January 2002).
  • United States—Section 211 Omnibus Appropriations Act of 1998 WT/DS176/R (6 August 2001) [Panel Report].
  • Wimalaratne v Linganathan and another [1984] 1 Sri LR 247.
  • Windsurfing Chiemsee Produktions—und Vertriebs GmbH v Boots—und Segelzubehor Walter Huber C-108/97, [2000] Ch. 523.

Biography

  1. Top of page
  2. Abstract
  3. Compatibility Assessment
  4. Acquisition and Cancellation of Trademark Rights
  5. Nature and Scope of Trademark Rights
  6. Conclusion
  7. References
  8. Biography
  • Althaf Marsoof holds a B.Sc. degree in Information Technology from the Curtin University of Technology, Australia and an LL.M. degree in Commercial Law from the University of Cambridge, United Kingdom. Having been admitted as an Attorney-at-Law of the Supreme Court of Sri Lanka in 2007, he currently serves as a State Counsel attached to the Attorney General's Department of Sri Lanka; e-mail: althaf.marsoof@gmail.com