TRIPS Compatibility of Sri Lankan Trademark Law

Published date01 January 2012
DOIhttp://doi.org/10.1111/j.1747-1796.2011.00430.x
Date01 January 2012
AuthorAlthaf Marsoof
The Journal of World Intellectual Property (2012) Vol. 15, no. 1, pp. 51–72
doi: 10.1111/j.1747-1796.2011.00430.x
TRIPS Compatibility of Sri Lankan Trademark Law
Althaf Marsoof
State Counsel, Attorney General’sDepartment of Sri Lanka
Having been a contracting party to theGeneral Agreement on Tariffs and Trade (GATT) since 1948, Sri Lanka
ratif‌ied the MarrakeshAgreement establishing the World Trade Organization (WTO) in June 1994, and became
one of its founding Members. Since then, Sri Lanka has strivento 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 PropertyAct of 2003. This legislative change was particularly
important in discharging Sri Lanka’sobligations 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.
Keywords trademarks;TRIPS; Paris Convention; compatibility of domestic legislation; TRIPS plus
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 havequestioned the
fertility of the trade/IP wedlock, especially from the perspective of the developing world (Gutowski,
1999). However, the reality is that anycountry 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 trademarklaw, and prospects forinvestment
in that nation, which has begun its recovery from three decades of internal strife.
Compatibility Assessment
The law governingtrademarks in Sri Lanka is now found mainly in the Intellectual Property Act (IP
Act) 2003.1Although 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 2003.
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.
C2011 Blackwell PublishingLtd 51
Althaf Marsoof TRIPS Compatibility of Sri Lankan Trademark Law
Acquisition and Cancellation of Trademark Rights
In Sri Lanka, trademark rights under the IP Act are acquired by registrationas made clear by section
102(1) of the IP Act which enacts that “[t]he exclusiveright to a mark conferred by this part shall be
acquired, subject to the succeeding provisions, by regist ration”. 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, 2prior 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 2003 is only conferred to marks registered under
that Act.3
In terms of article 15:1 of TRIPS “[a]ny sign, or any combinationof signs, capable of distinguish-
ing 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
providingthat “[p]aragraph 1 shall not be understood to prevent a Member from denyingregistration
of a trademark on other grounds,provided that they do not derogate fromthe 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 hereis that any refusal to regis-
tration 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, thatis, 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 bythird 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 tradeof 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 contraryto the Paris Convention.
An interesting feature of part B of article 6quinquies is its apparent permissive language resultingfrom
its wording thatbegins as “[t]rademarks covered by this article may be neither denied registration nor
invalidatedexcept in the following cases”. However,when one peruses the original French version, any
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C2011 Blackwell PublishingLtd
The Journal of World IntellectualProperty (2012) Vol. 15, no. 1

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