Global IP Matrix - Issue 2

TRADEMARKS
ENFORCEMENT OF INTELLECTUAL
Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has
established itself on rich tradition and the highest professional principles. Julius and Creasy’s
wealth of expertise and experience in a wide range of specialized fields of Law enables it to offer
innovative legal and business solutions to a diverse, sophisticated and high profile clientele.
PROPERTY RIGHTS
IN SRI LANKA
Our firm from its inception has been involved in intellectual property work. We are presently
handling over 50,000 files of which about 15,000 are current and intellectual property involves
both contentious and non-contentious matters. We file a large number of trademark
applications for overseas clients being instructed by our associates in several countries
In compliance with the TRIPS
including UK, European Union, USA , India,
Anomi
Singapore,
I Wanigasekera
Hongkong, Australia
– Partner
,
&
New
Head
Zealand,
of Intellectual Property
Agreement the Intellectual
Japan and Korea.
www.juliusandcreasy.com
Property Act No. 36 of 2003
In (IP contentious Act) makes matters provision we represent and clients both at the National Intellectual Property Office in
opposition lays the foundation proceedings for and effective in infringement proceedings before Courts, Infringement
proceedings enforcement are of instituted Intellectual in the Commercial Illegal High acts Court of and where necessary criminal
proceedings Property are rights. also instituted The system in the Magistrate’s Court.
for enforcement entails a counterfeiting
Although combination our practice of judicial
To strongly deter illegal acts of counterfeiting s.
is to a great extent trademarks we have substantial portfolio of patents as
186 (2) of the IP Act creates the sale, possession
well. remedies A large civil part of and this criminal, portfolio is related to PCT applications filed in Sri Lanka,
High Court
We also
against
file
such decision.
for sale or any purpose of trade or manufacture,
number administrative of design applications and remedies for at overseas goods clients or things in to Sri which Lanka any forged and Mark for Sri Lankan clients
or false trade description is applied, or any
overseas common through law. our associates in various countries. We also advise Sri Lankan The and cross overseas border
Mark so nearly resembling a registered Mark
companies Accordingly, on civil copy action right can be issues instituted including so as to reviewing be likely to mislead, of copyright is falsely applied, agreements and advise
publishers before the both Commercial in Sri Lanka High Court and overseas. of Sri as an offence. Criminal proceedings can
Lanka to combat infringement or imminent
infringement and for protection against
Unfair Competition in relation to Intellectual
Ms. Property. Anomi The Wanigasekera, Act provides for holder injunctive of LL.M or by (Wales) a Plaint filed and by Diplomas the Police. A in complaint Intellectual Property Law,
International
relief and damages
Trade Law,
for loss
Banking
resulting
and
from
Insurance
can be lodged
Law of
by
Institute
the right
of
holder
Advanced
with the
Legal Studies of the
infringement or unfair competition. In Commercial Crimes Division of the CID, upon
Incorporated addition, Court Council is vested of with Legal power Education to order heads investigation the Intellectual may institute proceedings Property Division before of our firm. Ms
Sandamali the impounding Kottachchi, and disposal holder of of infringing LL.B the (Colombo), Magistrate Court. Master of Arts – International Relations ,
Diploma
goods outside
in Forensic
the channels
Medicine
of commerce
& Science
and
and Diploma in Computer System Design is a senior
grant such other relief the court deems just and A special Anti-Piracy and Counterfeit unit
professional equitable. Provisional associate protection in the Firm’s in the Intellectual form attached Property to the Division Criminal and Investigation there are 8 other professional
associates of Enjoining attached Orders to and the Interim Intellectual Injunctions Property Department Division. (CID) of the Sri Lanka Police has
exist to maintain the status quo and prevent
further violations until conclusion of the main
judicial proceedings.
Infringement of copyrights
& other registered
intellectual property rights
Infringement of copyright and other registered
intellectual property rights, willfully or
knowingly, also constitute a criminal offence
liable for conviction before the Magistrate
Court under Chapter XXXVIII of the IP Act.
Sanctions are in the form of imprisonment and
fine, with a maximum penalty of rupees five
hundred thousand or imprisonment for period
of six months or both. Second or subsequent
convictions will give rise to a penalty
double the amount of such fine or period of
imprisonment. Criminal sanctions are further
imposed under s. 475 of the Penal Code for
misappropriation of property.
be instituted on these grounds before the
Magistrate Court by the right holder, assignee
or licensee, directly by way of a Private Plaint
been set up for investigation and curtailment
of piracy and counterfeiting. Over the years
Tel.94 11 4335159 Fax:
the CID
94 11
has
24466
taken
663,
active
+94
initiative
11 2435 451
to raid and
Email: jacey@sltnet.lk;
prosecute
pts@juliusandcreasy.lk
a considerable number of traders
Internet:
engaged
www.juliusandcreasy.com
in illegal reproduction of songs of
popular local music groups and singers before
Magistrate’s Courts for selling, possessing and
displaying for sale counterfeit CDs and DVDs.
Increasing public
awareness
While stringent enforcement of Intellectual
Property Rights is clearly visible under the
criminal law, a strong desire to increase public
awareness as to infringement of Intellectual
Property Rights has come to the fore.
Publication of cautionary notices in the print
media and reporting of raids in the media are
some of the means adopted by the Sri Lanka
Police to deter acts of infringement.
In the realm of Copyright Infringement, s. 22
(3) of the IP Act entitles the rightful owner
aggrieved by any infringement of his rights to
www.gipmatrix.com
make an application to the Director General
of Intellectual Property. An inquiry will be
conducted and the decision of the Director
General shall be binding on all parties. An
appeal can be preferred to the Commercial
protection of Intellectual
Property Rights
The cross border protection of Intellectual
Property Rights is predominantly governed by
the Customs Ordinance No. 83 of 1988.
S. 125 A of the Ordinance prohibits
importation and exportation of counterfeit
trademark goods, pirated copyright goods
and any other goods which contravene the
provisions of the IP Act. Violation shall
entitle the customs authorities to forfeit the
goods and dispose outside the channels of
commerce. Under s. 125 B of the Ordinance
the owner of any registered trademark or
holder of copyright or any other Intellectual
Property rights may make an application to
the Director General of Customs requesting to
suspend clearance of imported/exportation of
goods that are suspected of being counterfeit
or pirated. If a prima facie case of infringement
is established to the satisfaction of the Director
General of Customs the release of goods shall
be suspended.
The Customs may also on its own initiative
suspend the clearance of importation or
exportation of goods in respect of which it
has acquired prima facie evidence that an
intellectual property right has been, or may
be infringed. To facilitate performance of this
ex-officio action in enforcement of Intellectual
Property rights, the Customs Department has
established an Intellectual Property Rights
Enforcement Unit where right holders who
are desirous of safeguarding their rights could
register with, by furnishing information and
documentary evidence of their rights.
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