In Sri Lanka, registration is compulsory in order to be granted rights to a trademark, as this jurisdiction is “first-to-file”. However, in exceptional cases, well-known trademark can be protected even if they have not been filed yet. The trademark applications must be filed with the National Intellectual Property Office of Sri Lanka (NIPO).
It is not necessary for a trademark to be in use in Sri Lanka in order for it to register. However, it is necessary to file a statement indicating whether the mark has been use or is proposed to be used at the moment of filing.
If you register a combined trademark (which includes both word elements and figurative elements) in Sri Lanka, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.
Opposition actions may be filed by interested third parties against a trademark application within a period of three (3) months following its publication in the Sri Lanka Trademarks Journal. The probabilities of success for an opposition will vary in each case depending on the circumstances.
Although a trademark does not have to be in use in order for it to register, it must not go unused for longer than five years after registration or it will become vulnerable to cancellation actions based on lack of use of the trademark.
The term of validity of a registered trademark in Sri Lanka is of ten (10) years from the application date. It can then be renewed indefinitely for successive periods of ten years. There is a grace period of six (6) months after the expiration date during which it is still possible to request the trademark renewal upon payment of additional fees.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Sri Lanka (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.