ASIAN PATENT ATTORNEYS ASSOCIATION
RECOGNIZED GROUP OF SRI LANKA
REPORT TO THE ANTI -COUNTERFEITING COM M ITTEE
THE 64 TH AND 65 TH COUNCIL M EETING
08 – 11 NOVEM BER 2015
OKINAW A, JAPAN
1.
APPLICABLE STATUTE
The Law relating to Intellectual Property is governed by the Intellectual Property Act No.
36 of 2003.
2.
PROVISIONS IN THE ACT
There has been no change in the law by way of amendment.
3.
PROCEDURE
Crim inal
Action is instituted by way of a Private plaint and in some instances through the
Commercial Crimes Division of the CID which has been specially set up to deal with
these matters.
Civil
Action is instituted by way of a plaint in the Commercial High Court.
4.
•
SIGNIFICANT CASES DURING THE PAST YEAR
A raid action was conducted with the assistance of (CCD) Colombo Crimes Division on
behalf of Calvin Klein Inc. operating under PVH Corp. on 17th March 2015 against an entity
named Star Fashion (Pvt) Ltd at their business premises and factory. Approximately 9449
men’s briefs with the Calvin Klein trademarks were seized. The complaint for the matter was
recorded on 13.03.2015 and the search warrant was obtained on 16.03.2015. Accordingly,
the raid was conducted under the supervision and instructions of Director Colombo Crimes
Division (CCD).
All three individuals present at the time of raid were taken to the CCD to record statements
along with the seized goods. The owner of the business entity as recorded in the police
statement was produced before the Magistrates Court of Mahara on 18.03.2015. He was
granted bail under heavy bail conditions of LKR 100,000 surety bail, LKR 10,000 cash bail
and was asked to report to the CCD every Sunday.
The matter is currently pending in Courts and was formally fixed for Trial on 02.12.2015. The
sale of counterfeit goods is an infringement under the Intellectual Property Act No. 36 of
2003. Under the said Act, if a person and/or persons are convicted, a fine of up to Rs.
500,000 and/or six months imprisonment may be imposed.
The quantity seized during this raid is the largest garment Seizure for the entire year.
Moreover, the Accused was involved in the business of manufacturing counterfeit Calvin
Klein men’s briefs and was a primary supplier to the entire market. Accordingly, there has
been a notable decline in counterfeit Calvin Klein garments in the market as a consequence
of the successful raid action.
•
Two raid actions were initiated on behalf of Ralph Lauren Corporation against an entity
named RV Fashion at both their outlets in Battaramulla and Ja Ela and seized
approximately 350 counterfeit garments in total.
Upon a complaint being lodged, the search warrants were obtained on 15th June 2015.
Thereafter, the raid was successfully conducted on 17th June 2015 under the supervision
and instructions of the Director Colombo Crimes Division (CCD) and his team. The raid
actions against both locations were conducted simultaneously despite being in two
jurisdictions and were successfully coordinated to ensure that all the counterfeit goods were
seized from both locations.
Given the locations of the stores, two different jurisdictions apply.
Ja – Ela Location
Upon completion of the raid, the Manager of the stores was produced before the Magistrate
Court on 18/06/2015. The accused was granted bail on the following conditions: Rs. 50,000
cash bail to be paid, 2 sureties for Rs. 500,000 and with an income revenue certificate to be
furnished. The accused was unable to comply with the bail conditions on the said date itself
but was released on bail at a later date.
Battaram ulla Location
Upon completion of the raid, the matter was produced before the Magistrate Court on
18/06/2015. The accused was granted bail on the following conditions: Rs. 50,000 cash bail
to be paid and 2 sureties for Rs. 500,000. However, the accused was unable to place bail at
that time and was only released on bail at a later date.
It was made evident during the raid that the entity was clearly riding on the goodwill and
reputation of the brand owner in violation of the intellectual property rights of the brand
owner. Both matters are currently pending in the Courts.
•
A civil action was filed on behalf of Red Bull AG in the Commercial High Court of Sri Lanka
against an entity named Amila Enterprises. It was discovered through investigations that this
entity was in fact distributing, promoting, advertising and selling the Thai Red Bull drink Krating Daeng - Gold Can - to Sri Lanka, which, according to the terms of the agreement
between the Thai TCPI Company and Red Bull, cannot be imported to or sold in Sri Lanka.
It was discovered that Amila Enterprises distributes, promotes, advertises and sells by
transporting such goods in a vehicle which has been decked out with colourful images of the
Red Bull trademarks, including use of images of a brand ambassador of Red Bull AG on the
said vehicle. It was argued that the use of this combination of images is undoubtedly an
attempt to usurp the goodwill and reputation of the Red Bulls Silver Can product and the
Red Bull Trademarks and an attempt to mislead the general public as to the source of the
Gold Can product.
The Plaintiff informed court that the infringing product was not being lawfully imported,
distributed or sold in Sri Lanka. It was also argued that Red Bull has been present and
active in the Sri Lanka market since 1999 and Red Bull has emerged as the market leader in
the energy drink category in Sri Lanka and that the acts of Amila Enterprises in dealing in
the counterfeit product in Sri Lanka without the consent of Red Bull AG would cause and/or
are likely to cause confusion, would damage and/or dilute the goodwill and reputation of Red
Bull AG and mislead the public with respect to the quality and/or source of the product.
Upon satisfaction of documents and annexures filed, the Colombo High Court issued
enjoining orders against Amila Enterprises. The action was filed under the terms of the
Intellectual Property Act No 36 of 2003 and the matter was concluded upon terms of
settlement being tendered and undertakings given by the Defendant Company.
•
A Civil Action was instituted in the Commercial High Court on behalf of Vision Care Optical
(Private) Limited, a market leader in Sri Lanka in the business of providing total eye care
solutions. In this action the Plaintiff submitted to Court that the Trademark and Trade name
“VISION CARE“ which was registered by the Plaintiff has acquired tremendous goodwill
and the consumer identifies the Plaintiff’s products and services through the distinctive
trademark and therefore was a well known trademark in Sri Lanka, the Defendant was
carrying out its business under the name “KANDY VISION CARE” with the intention of
fraudulently and unlawfully using the goodwill and reputation of the Plaintiff and was
passing off its business as a branch of the Plaintiff. Upon the matter been supported in
Court, an Enjoining Order was granted against the Defendant. Thereafter an undertaking
given by the Defendant the matter was subsequently settled.
•
A complaint was made on behalf of Blount Inc, the brand owner of the globally renowned
Oregon products on Sunday 13.09.2015 against an entity named Somasiri Stores operating
at Ranna Road, Angunakolapalessa in the Southern Province, for the sale of counterfeit
Oregon products. The raid was conducted on the same day the complaint was made for
minimal leakage of information. Further, this was a novel situation whereby the raid action
was instituted without a search warrant. This would prove to be an important development
for enforcing intellectual property rights of brand owners. This development demonstrates
the increased recognition of brand owner’s rights and the ability of the law to safeguard
these rights successfully in an inventive manner in Sri Lanka.
A team of lawyers and support staff together with the Police SCIB (Special Crimes
Investigations Bureau) Tangalle conducted the raid under the supervision of Deputy
Inspector General of Police (Southern Province) Mr. Sumith Edirisinghe and seized 369
Counterfeit Oregon goods of loop boxes, Guide bars, packs of Counterfeit Stickers with the
Oregon logo, and Chain Saws.
The Accused who is the owner of Somasiri Stores Private Limited, was produced before
court with the counterfeit goods seized at the raid. He was thereafter given Police bail and
instructed to be present in Court on 14.09.2015. A statement was also recorded from the
local distributor on behalf of the brand owner confirming the items to be counterfeit.
When the matter was taken up before the Magistrates Court of Angunakolapalessa
the Police from SCIB (Tangalle) filed the Plaint and the Charge sheet in terms of section
186 (2) and 184 of the Intellectual Property Act No 36 of 2003. Once the above charges
were read in Open Court, the Accused pleaded guilty and asked for a mitigation and a
reduced fine, but the Judge severely warned the Accused and was adamant to give a
heavy fine due to the gravity of the matter and imposed a fine of LKR 100,000/- (approx.
USD 725) for both charges. This quantum of fine is a substantial amount, considering the
fact that it is a rural Court in the Southern Province. The case was concluded thereafter.
Tabulated below are som e of the Principal brands and the num ber of item s
seized during the past year.
Tradem ark
Type of Case
Goods involved
Num ber of
item s seized
Calvin Klein
Criminal
Garments – Men’s
Briefs
Polo by Ralph
Criminal
Garments – T-shirts,
Lauren
Polo by Ralph
Men’s Briefs
Criminal
Lauren
Red Bull
Garments – T-shirts.
Men’s Briefs
Civil
Kratingdaeng Gold
Can Energy Drink
Vision Care
Civil
Sunglasses, Glasses
Oregon by Blount
Criminal
Chain saw , Guide
Inc.
bars, Oregon loop
9449
150
195
N/A
N/A
362
boxes, Oregon sticker
packets
Sudath Perera Associates