Lesson 12

Intellectual Property Law

Intellectual Property Law

Intellectual property comprises of all that come out with the exercise of human
brain. It separates movable and immovable properties from the creations of the
human mind, the human intellect. Intellectual property may be seen as ideas
inventions, designs, poems, etc.

Jeremy Phillips and Alison Firth in their book “Introduction to Intellectual Property
Law” say that intellectual property has two meanings, one ordinary and the other
legal. The ordinary description is that it simply comprise of all that come out with
the exercise of human brain. The legal description is that they are rights which
are enjoyed in the produce of the mind. Generally we can say, intellectual
property means the rights resulting from the creations of the human mind. It
generally contains the rights relating to,

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(a) literary and artistic works (novel, poems, plays, film, musical works,
computer programmes, databases, drawings, paintings, photographs)
(b) performances of performing artists, sound and broadcast.
(c) inventions
(d) industrial designs
(e) trademarks, service marks, commercial names and designations.
(f) protection against unfair competition
(g) geographical indications, undisclosed information (any rights resulting from
intellectual activity).

Like any other property intellectual property can be owned, transferred, licensed,
or sold. It is an intangible property.

Traditionally intellectual property can be divided into two categories.

Industrial property (Pattern, trademark, Geographical

Indications)
Copyright (literary and artistic works)

Intellectual Property Law concerns the human creativity, their protection and
administration.

Promotion and Protection of Intellectual Property:

According to some economists a man is an economic animal. This statement

indicates the man’s driving force from stone ages to modern computer age. From
the very beginning human beings invented many new things to get their lives
comfort and easy. Innovation and invention made mankind to develop and
progress. Intellectual property is crucial to the economic, social and technological
development of any country. To give absolute monopoly to the right holder for a
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limited period of time promotes creativity and innovation. This concept of
intellectual property protection adds something to think the importance of quality
of the human resources rather than quantity, natural resources or cheap labour.
We can summarize the importance of protection of intellectual property as follows.
1. it encourages further creations
2. enhance investment
3. it has major effect of technology transfer
4. create new industries and employment
5. enhance the quality of life.
6. it attempts to achieve a balance between creators rights and interest of
society.

According to the World Intellectual Property Organization (WIPO) it is mandatory

to promote the protection of intellectual property rights among its member states.
Sri Lanka is a member of WIPO. Apart from the WIPO there are several
international organizations that have been established to protect intellectual
property rights. Some of these international bodies are,
 Universal Copyright Convention (UNESCO),
 The TRIPS Agreement (The agreement on Trade related aspect of
intellectual property)
 Paris Convention
 Nairobi Treaty.

History of Intellectual Property in Sri Lanka

Sri Lanka which acquired independence on 4 th February 1948 was a colony of

British Empire for about one and fifty years as Ceylon until it became Republic in
1972.

Therefore as many of other areas of law this part of the law were same as English
law. The laws of copyrights, patents, designs and trademarks were first

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introduced by English legislation. These laws were modified after 1948 but
continued until 1979.

As a result of long British period there is an influence of English law in many areas
of Sri Lankan law. Some laws that have been introduced in relation to Intellectual
Property Law in British period are,
1. The Merchandise Marks Ordinance No.13 of 1888
2. The Design Ordinance No. 7 of 1904
3. The Copyright Ordinance No.20 of 1912
4. The Trade Marks Ordinance No.15 of 1925

In 1977 Sri Lanka introduced an Open Market Economy with the government
representing the United National Party. With the introduction of Open Economy,
Sri Lanka updated all commercial laws to be in line with other countries.
Accordingly, the Code of Intellectual Property Act No.52 of 1979 was passed by
the Parliament. The Code consolidated revised, amended and embodied in the
form of a Code the law relating to intellectual property. This Code was based on
the WIPO Model for developing countries. Sri Lanka was one of the first countries
which adopt this model in the region.

This Code was amended by Act No.30 of 1980 (granting the Registrar discretion to
issue a valid certificate for patent applications), Act No.2 of 1983 (expanding the
Registrar’s power) Act No. 17 of 1990 (appointing an Advisory Commission). The
last amendment was Act No. 40 of 2000 introduced software protection under the
copyright regime.

Intellectual Property Act No. 36 of 2003

The code was in operation for about 23 years. The current Law, the Intellectual
Property Act No.36 of 2003 came into operation in Sri Lanka from 12 th November
2003. This Act mainly based on the Trade Related Aspects of Intellectual Property
Rights (TRIPS) Agreement. The new Act consists of 11 parts, 43 chapters and 213
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sections. There are some very important provisions in the Act considered to really
add value to the development of Intellectual Property Law in Sri Lanka.

Intellectual Property Act No. 36 of 2003 with its amendments currently governs
the intellectual property system of Sri Lanka. The National Intellectual Property
office of Sri Lanka has been established under this Act. This government
department is responsible for the administration of the intellectual property
system in Sri Lanka.

Law Relating to Trade Marks in Sri Lanka

Introduction

It is believed that marking began with branding of cattle and other animals.

In ancient times inscriptions were found on pottery, brick, stone, metal, etc. With
the industrial revolution it is believed that the introduction of modern trade mark
began in the 19th Century.

A mark is a visible sign that serves to distinguish the goods or services of different
enterprises. Currently, marks have very important role in business. Generally, a
mark is a word, a symbol, a device, letters, numerals, a name, surname,
geographical name, picture or any combination of these. Mainly there are four
types of marks namely trade marks, service marks, collective marks and
certification marks.

Trade marks – means any visible sign serving to distinguish the goods
of one enterprise from those of another enterprise

Service marks - means any visible sign serving to distinguish the

services of one enterprise from those of an other enterprise
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 Collective marks - marks serving to distinguish the origin of goods or
services of different enterprises which use under the control of the registered
owner.

Certification marks- Marks which meet a defined standard of the goods or

services as certified by the owner of the mark who licenses others to use it.

‘Trade name’ means the name or designation identifying the enterprise of a

natural or legal person.

Function of a Mark

Section 101 of the Act defines ‘mark’ as a trade mark or service mark.

The main functions of a mark can be summarized as follows.

1. Identification – Distinguishes the goods or services when offered by more
than one manufacturer.
2. Guarantee – Symbol of quality
3. Advertising
4. Indicates the source of goods or services.

Registration

An application for registration of a mark shall be made to the Director General in

the prescribed form. The following should be contained in the form.
1. A request for the registration of the mark
2. The name and address of the applicant
3. Five copies of a representation of the mark
4. A clear and complete list of the particular goods

Whether a mark is registrable or not to be determined on the basis of objective

grounds and on grounds of third party rights. Sec.102 of the Act states that
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exclusive rights to a mark can be acquired by registration. That Section further
states the requirements of the valid application of trade mark.

Even without registering a mark can be used and be protected. It can be

protected under the common law or unfair competition law. But registered mark
gives its owner exclusive rights. In a criminal or civil case a registered mark can
be easily enforced by court. And others can be retrained from using that mark.
The owner may claim damages too. Any person, body of persons, corporate or
unincorporated body can make an application to register a mark under the law
with NIPO.

Application form is called Form M. There are a number of steps to process the
application. The mark is subject to be examined. It must be complied with formal
requirements. Intellectual property office may refuse a mark under section 103
and 104 of the Act. If refused, the owner can make submissions against the
decision. In the nearing if it is still refused that decision can be challenged in the
Commercial High Court.

Sec. 103 and 104 of the Act deals with inadmissibility of Mark. Sec. 103 of the Act
defines the objective grounds. Accordingly a mark that consists of shapes or
forms imposed by the inherent nature of the goods can be registered, but a shape
or form imposed by the inherent nature of the goods or services shall not be
admissible for registration. (Example- a shape of a loaf of bread). Director
General has power not to register mark under Sec. 104 of the Act if third party
rights are involved. Trusts whether expressed, implied or constructive are
inadmissible under Section 105 of the Act and the Director General shall not
receive any such notice for registration. Section 104 of the Act protect well known
marks and used mark in Sri Lanka. According to Section 104 of the Act there is a
criteria to be taken into account in determining whether a mark is well known.
(Sec. 102 (2) of the Act). According to Sec.118 of the Act, the duration of
registration of a mark is 10 years from the date of its registration. Sec. 119 of the
Act says registration of a mark may be renewed for consecutive period of 10 year
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each on payment of the prescribe fee.

License Contracts

Section 124 of the Act specifies that license contract means any contract by which
the “the licensor” (registered owner of a mark) grants to “the licensee” (another
person or enterprise) a license to use the mark for all or part of the goods or
services in respect of which the mark is registered. Use of the mark by the
licensee shall be deemed to be the use of the mark by registered owner.

Section 126 of the Act deals with the rights of the licensee, wherein it states that
the licensee shall be entitled to use the mark within the territory of Sri Lanka,
during the period of registration of the mark, including renewals, in respect of all
the goods or services for which the mark is registered, but shall not be entitled to
assign or transmit his rights under the license contract or grant sub-licenses to
third parties.

Patents

Invention of new things began from the very beginning of human history. There
were different type of systems to recognize these innovations. There are some
evidence that in ancient Greek one year exclusive right was granted for a new
food recipe. First patent law was recognized in the world in 1474 as “inventor by
laws” promulgated in Venice. The Act does not define the word patent. By means
of patent the government gives the exclusive right to the owner of the patent for
a period of 20 years. The right excludes others from using, selling, making the
qualified invention. Section 62 of the Act defines the invention as a practiced
solution to a problem in the field of technology. According to Section 62(2) of the
Act an invention may relate to a product or process. Patents protect inventions
and give its benefit to the inventors. It also encourage and promote inventions,
which play key role in economic and technological development. Patent
documents are available for anyone to refer.
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According to the Section 63 of the Act, an invention is patentable if it is new,
involves an inventive step and is industrially applicable.

Section 67 states the right to a patent. Patent right may belong to persons jointly.
Section 67(3) of the Act introduced for priority to be given to the earliest filing
date.

Application procedure and requirements of applications are set out in chapter XIII
under Section 71-82 of the Act.

Duration of patent is 20 years as set out of Section 83 of the Act. This added
benefit is based on Article 33 of the TRIPS Agreement. The patent should be
renew annually from the expiration of the second year paying a relevant fee.

Rights of owner of patent default in Section 84 of the Act. According to the

Section 99 the Court may declare the patent null and void on any one or more of
the ground set out in that section. A patent is only valid in the country where it is
granted. Under the Paris convention which Sri Lanka is a member, Sri Lankan can
apply to obtain patents for all the member countries under the national law of
that particular country. Alternatively, Sri Lankans can apply for a patent in
member countries of PCT (Patent Cooperation Treats) through a single application
made to WIPO.

Copyright

Copyright is a form of protection given by law to the creators for their original
works. As the creator who has certain legal rights. According to the Act there are
mainly two types of rights.
1. Economic rights (Section 9)
2. Moral rights (Section 10)

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From the moment a Sri Lankan Person writes a book, it belongs to him from that
moment and will exist for age plus seventy years.

Economic rights include reproduction, translation, adaptation, arrangement, public

distribution, rental, importation, public performance, broadcasting, etc. Moral
rights includes the right to claim the authorship, the right to as a pseudonym and
to object to any distortion mutilation or other modification. One of the very
important rights is the right to prohibit others from copying original work without
the permission of original author.

Advantage of Protection

Copyright protects the rights of the authors of literary and artistic works. Below
are some importance of the protection.
1. give the recognition
2. ensures economic benefit.
3. promote creativity
4. promote investment.

In the Act, chapter 1 Section 5 – 16 deal with copyright whole chapter 11 deals
with related rights.

According to Section 6 of the Act copyright covers original literary and artistic
works including and in particular writings, oral works, stage productions, musical
works, audiovisual works, fine arts, photographic works, etc. Database and
translation are also being protected.

Section 13 of the Act states about the duration of copyright. Accordingly

economic and moral rights shall be protected for use time plus seventy years.

If further states, in the case of work of applied art, economic and moral right shall
be protected for 25 years.
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Section 11 of the Act, provide for details the fair use of a work. It state that use of
a work for purposes such as criticism, comment, news reporting teaching,
scholarship or research shall not be an infringement of copyright.

In determining whether it is a fair use or not the following will be considered.

1. The purpose and character of the use.
2. Commercial use or non-profit use.
3. The nature of the copyright work.
4. The amount
5. The effect of their use.

Chapter 11 of the Act covers the related rights. This includes protection of rights
of performers, producers of sound recording and broadcasting organization.
These provisions can be found in TRIPS Agreement (Article 9 – 13). These related
rights protect the contributions of person who add value to the original literary
and artistic works. E-commerce, digital network and internet are also protected by
above rights. Internet has become very commonly used machine. Intellectual
Property Law of Sri Lanka provide strong, effective rights with fair exceptions.

Geographical Indications (GI)

The provisions relating to geographical indications (GI) are set out in part IX
(Chapter XXXIII) Section 161 protects the GI. These provisions introduced by the
Act are new to Sri Lanka and are based on Article 22 of the TRIPS Agreement.
Article 22, 23 and 24 of the TRIPS Agreement are about GI. This is a beneficial
introduction to Sri Lankan product like Ceylon Tea ….. etc.)

Section 101 defines the GI as follows.

“Geographical indication” means an indication which identifies any goods as

originating in the territory of a country, or a region or locality in that territory,
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where a given quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin.

GI may be a name or sign which indicate that the good have special quality
character or reputation because of special place they come from. Some examples
for GI are Ceylon Tea, Ceylon Sapphire, Ruhunu Curd, etc.

The misrepresentation as to GI, is an offence, because the abuse or

misrepresentation are harmful to owners of GI and the consumers too.

The court can issue injunction to prohibit the use of goods which are not
originating from the respective place. Section 161 says any interested party shall
be entitled to protect the GI. In Sri Lanka GI can be protected under unfair
competition, certification mark or collective mark. Even they can be protected
without registration.
GI of Sri Lanka can register in other countries under their respective law or as a
certificate mark.

Industrial Design

Industrial design is the ornamental or aesthetic aspect of an article. Part IV of the

Act is about industrial design. Section 30 defines the industrial design as follows.

Under the Act protection only provides to new industrial design. According to
Section 31 a design is new if it has not been made available to the public
anywhere before application date. If the Director General or any court is in the
opinion that the industrial design is likely to offend the religions or racial
susceptibilities of any community protection will not apply under this act.
Protection will not apply to the followings too.
1. Consisting of any scandalous design.
2. Contrary to morality.
3. Contrary to public order / interest.
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An industrial design can be protected upon registration with the intellectual
property office currently the registration form is called form industrial design.
Requirement of application and procedure has been laid in chapter V of the Act.
Once registered it is protected for 5 years as in Section 45 and renewable for two
more periods of five years (Sec. 46).

Advantage of Protection

1. Increase the commercial value

2. Increase the marketability
3. Assures fair return on creativity and investment.
4. Promotes creative works.
5. Expands commerce
6. Help more job opportunities.

If the registered owner of an industrial design wants worldwide protection he may

register in other countries under their national law. Anyhow a registered owner
can claim priority under the Paris convention among its member countries.

According to Section 47 the registered owner has the following exclusive rights.
1. Reproduce and embody.
2. Import, offer for sale, sell
3. Stock
4. Assign or transmit the registration of the industrial design.
5. Conclude license contracts
and the right against unauthorized coping or imitation.

Section 48 limits the registered owners’ rights.

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