2014 APAA Trademark Committee Special Topic
"Protection of Non-Traditional Trademarks in Sri Lanka
Anomi Wanigasekera
Background
The prevailing law on Trademarks in Sri Lanka is encapsulated in the Intellectual Property
Act No 36 of 2003 (hereinafter referred to as “IP Act”).
Admissibility of marks for registration in Sri Lanka is governed by s 102 of the “IP Act”
Admissibility of Marks
In terms of s 102 (2) read with s 101 of the IP Act any visible sign which serves to
distinguish goods/services of one enterprise from those of another is broadly capable of
qualifying for registration in Sri Lanka.
By definition the IP Act statutorily excludes from registration sound, olfactory, texture and
taste marks on the basis that they are not capable of perception by sight.
S 102 (3) by way of example provides a non-exhaustive list of visually perceptible signs
admissible for registration under the IP Act.
S 102 (3) A mark may consist in particular of,
arbitrary or fanciful designations, names, pseudonyms, geographical names, slogans, devices,
reliefs, letters, numbers, labels, envelopes, emblems, prints, stamp, seals, vignettes, selvedges,
borders, and edgings, combinations or arrangements of colours and shapes of goods or
containers
Accordingly, 3D shapes and combinations or arrangements of colours are specifically
identified as admissible to registration.
With regard to the admissibility of single colours, it is questionable whether the general rule
of exclusion in interpretation of statutes will apply to impliedly exclude admissibility of
single colours due to the express mention of combinations or arrangement of colours.
In interpreting this section it must be remembered that the prevailing IP Act has been drafted
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to align trademark law in Sri Lanka with the international obligations created by the
Agreement on Trade-Related aspects of Intellectual Property (TRIPS).
Article 15 of the TRIPS recognizes any sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from those of other undertakings, as
capable of constituting a trademark.
By way of example a non-exhaustive list of signs is given which specifically include
“combinations of colours” similar to s 102 (3) of the IP Act in Sri Lanka. Article 15 of TRIPS
has however been recognized as not ruling out protection of single colours.
Since s 102 (3) of the IP Act is substantially similar to Article 15 of the TRIPS a similar
approach in interpreting s 102 (3) of the IP Act may be desired.
In Sri Lanka the minimum threshold for admissibility of a mark can thus be considered as the
“visual perceptibility” of the sign.
Note: Even though sound, olfactory, texture and taste marks are not eligible for protection
through the system of Trademark Registration in Sri Lanka such non-traditional signs may
receive some protection through court litigation under the chapter on Unfair Competition
[chapter XXXII IP Act], depending on the manner and context of exploitation of same by
third parties.
Registrability of a Mark
Registrability of a visual yet non-traditional mark will depend on whether it is excluded from
registration under s 103 (objective grounds) and s 104 (third party rights) of the IP Act.
In particular registration of a non-traditional mark is more prone to be denied on public
policy grounds under s 103 (1) (a), (b), (c), (d),(g) of the IP Act and also under s 104 (1) (e)
for constituting an act of unfair competition.
S 103 (1) A mark shall not be registered:
(a) which consists of shapes or forms imposed by the inherent
nature of the goods or services or by their industrial function ;
(b) which consists exclusively of a sign or indication which may serve, in the
course of trade, to designate the kind, quality, quantity, intended purpose,
value, place of origin or time of production, or of supply, of the goods or
services concerned ;
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(c) which consists exclusively of a sign or indication which has become in the current
language of in the bona fide and established practices of trade in Sri Lanka, a
customary designation or the goods or services concerned ,
(d) which, is incapable of distinguishing the goods or services of one enterprise from
those of another enterprise ;
(g) which does not represent in a special or particular manner the name of an
individual or enterprise ,
S 104 (1) The Director General shall not register a mark:
(e) which infringes other third party or rights or is contrary to the provisions of
Chapter XXXII relating to the prevention of unfair competition ,
S 103 (2) confers the ability to overcome an objection under the s 103 (1) (b), (c), (d) and (g)
by presenting strong evidence indicating prior use in Sri Lanka or in other jurisdictions
supporting the conclusion that the visual yet non-traditional mark is distinctive in trade or that
it is held to be distinctive in other jurisdictions.
Nevertheless an objection under s 104 (1) (e) is more difficult to overcome in the absence of a
strong legal justification for granting protection to non-traditional marks, as a monopoly over
matters which ought to remain in the public domain will be contrary to the interest of the
public.
The above position is most compelling in case of single colour marks, for this reason
despite the statutory position the current Trademark Practice does not recognize single
colours as admissible for protection under the IP Act.
--------------------------------------------------------------------------------------------------------------II. Questions per Theme
1. Protection of Non-Traditional Trademarks
First of all, we would like to review the types of non-traditional trademarks that are
protected or are under discussion to be introduced in your country, and also the realistic
evaluation on the introduction of non-traditional trademarks.
(1) Introduction of Protection by Registration of Non-Traditional Marks
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 Please check whether each type of the non-traditional trademarks below are
recognized as registrable trademarks, or under discussion for protection in your
country.
Type
Classification
Recognized
3D
marks
*Color
per se
marks
Yes
Hologram
marks
Yes
Position
marks
Sound
marks
Scent
marks
Taste
marks
Texture
marks
No
No
No
No
Others
Yes
No
Unrecognized
Movement
marks
No
Under
discussion
(1) Basis of the Protection
We would like to know whether non-traditional trademarks are protected under your
Trademark Act, etc., or protected through precedents or examination practice.
 Please check the basis for recognizing each of the non-traditional trademarks
below that are protected in your country.
Type
3D
marks
Ground
Yes
Trademark Act
Precedent
Trademark
Examination
Guidelines/Practice
Actual
business
circumstances
Color
per se
marks
n/a
n/a
Hologram
marks
Movement
marks
Position
marks
Sound
marks
Scent
marks
Taste
marks
Texture
marks
Yes
n/a
n/a
Yes
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
n/a
Others
(2) Status of Application for/Registration
 Please state the number of application for/registration of non-traditional
trademarks that have been filed or granted in your country in the table below.
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Others
Type
Statistics
3D
marks
No. of marks
filed/registered
Color
per se
marks
Hologram
marks
Movement
marks
n/a
Position
marks
Sound
marks
Scent
marks
Taste
marks
Texture
marks
n/a
n/a
n/a
n/a
Others
Note: The Intellectual Property Office in Sri Lanka does not maintain separate statistics for nontraditional trademarks. It is not practically possible for us to obtain the requested information.
(3) Discussions on the Introduction
 Please describe the current discussions regarding the introduction of nontraditional trademarks in future.
No such discussions at present.
 What is the perception in your country on the introduction of new non-traditional
trademarks? Is it positive or negative? What are the grounds or reasons for such
perception? This matter has not been considered as important at present.
2. Actual Status of the System for Protecting Non-traditional Trademarks
In relation to the protection system of non-traditional trademarks in operation in your
country, we would like to review the application/registration system, the practical
application, and post-registration effect, of non-traditional trademarks overall.
(1) Application, Public Announcement, and Registration
If an application/registration system for non-traditional trademarks exists in your
country, we would like to review how an application is filed, how an application is
published and how registration is granted.
 How are non-traditional trademarks specified and applied for registration?
 The Application process for non-traditional marks is identical to that
adopted for traditional trademarks.
 3D marks- Application for completion is identical to traditional
trademarks. However in relation to 3D marks the application must
contain:
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i.
ii.
an indication that it is a 3D mark and
the representation must comprise at least two aspects of the mark
which illustrate the shape and features of the mark. [section 13
Intellectual Property Regulations No. 01 of 2006]
 In particular, in case of a non-visual trademark, is the writing of a visual
representation required for the specification of the mark?
 There is no provision for registration of non-visual marks in Sri Lanka.
 Please describe if there are any unique methods in applying for a non-traditional
trademark, and sample requirements, if any. - No
 How a non-traditional trademark application is publicly announced in your
country?
 Public announcement by publication of the non-traditional mark, as
represented in the Trademark Application, in the Government Gazette.
 How is a non-traditional trademark indicated in the trademark registry after being
registered?
 Similar to that of traditional trademarks.
 In case of a non-visual trademark which it is hard to publicly announce, is there
any procedure to access the sample of the trademark applied for or registered?
 Non-visual trademarks are not permitted for registration in Sri Lanka.
(2) Requirements for Registration
1) Distinctiveness
 What view does your country have on the inherent distinctiveness of nontraditional trademarks? n/a
 Is a higher-level of distinctiveness required for non-traditional trademarks than
traditional trademarks? Yes
 Non-traditional trademarks are more likely to be challenged for
inadmissibility under s 103 of the IP Act (objective/absolute grounds).
Particularly, s 103 (1) (b) descriptiveness, s 103 (1) (c) customary in
trade, s 103 (1) (d) non-distinctiveness, s 103 (1) (g) for not representing
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in a special or particular manner the name of an individual or enterprise
 Also under s 104 (1) (e) for infringement of third party rights or as
constituting an act of unfair competition
 In this regard, is registration difficult if the acquisition of secondary meaning
cannot be established? Yes
 To prove the acquisition of secondary meaning through usage for the registration
of a non-traditional mark, what level of proof is required?
 Strong evidence indicating prolonged and consistent use of the nontraditional mark in Sri Lanka
 Evidence indicating effort taken by the Applicant to make consumers in
Sri Lanka aware of the non-traditional mark as an indicator of source.
(advertising and promotional campaigns)
 Evidence indicating public recognition of the non-traditional mark as an
indicator of source in Sri Lanka (newspaper article and other media
reports)
 Registration of the non-traditional mark in other jurisdictions
2) Functionality
 Does your country have regulations that exclude the registration of nontraditional trademarks that are functional? Yes
 S 103 (1) (a) of the IP Act renders unregistrable a 3D shape imposed by
the inherent nature of the goods or by their industrial function.
 s 104 (1) (e) of the IP Act, aspects as to functionality will be un
registrable on the basis that it is contrary to the public interest thus
amounting to unfair competition.
3) Determining the Similarity
 Does your country have separate criteria for determining the similarity between
non-traditional trademarks?
 In traditional marks the criteria for similarity requires consideration of the
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visual, aural and conceptual similarities between competing marks.
 In case of non-traditional visual marks, the overall visual impression will
be pivotal in determining similarity.
In particular, how does your country judge similarity between non-visual marks
such as sound marks and scent marks? n/a
(3) Enforcement
 After registration, does a non-traditional trademark have the same scope of rights
as that of a traditional trademark? Yes
For example, for traditional trademarks, if the scope of the registered right
extends to marks similar to the registered trademark, do non-traditional
trademarks have a similar scope of rights? Yes
 For non-traditional trademarks, are there any special regulations concerning
infringement of trademark rights? No
 For non-traditional trademarks, are there special regulations restricting the scope
of trademark rights? No
 After the registration of a non-traditional trademark, have regulations been
adjusted to prevent interference and overlap with previous trademark rights,
design rights, and copyrights, etc.?
 S 29 of the IP Act imposes a requirement of novelty for registration of an
industrial design under Chapter III of the Act.
 To meet the threshold for novelty s 31 (1) of the IP Act requires the design
to,
“not been made available to the public anywhere in the world and at any
time whatsoever through description, use or in any other manner before
the date of an application for registration of such industrial design or
before the priority date validly claimed in respect thereof.
 If registration is obtained for non-traditional mark such as a 3D shape by
submitting evidence of prior use, the 3D shape in question will fail the
statutory requirement of novelty in case of industrial designs preventing
any overlap between trademark rights and industrial design rights.
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