1.

Interpretations
Historically marks were used as an indicator for the goods as to where they
originated from eg- sheep. It has moved from that to a indicato
In todays competitive economy there are a range of products available for a
consumer. Trade marks A mark- trademark or service mark- is a visible sign that is capable of
distinguishing the goods or services of different enterprises. A trademark relates to goods whereas a
service mark relates to services.

Trademarks have a variety of functions. Cornish summarizes the functions

into three broad categories: o

Origin Function marks deserve protection so that they may operate

as indicators of the trade source from which goods or services come or
are in some other way connected.

Quality or Guarantee Function marks deserve protection because

they symbolize quality associated by consumers and certain goods or
services and guarantee that the goods or services measure up to
expectation.

Investment or Advertising Function marks are ciphers around which

investment in the promotion of a product is built and that investment is
a value, which deserves protection as such, even when there is no
abuse arising from misrepresentation either about origin or quality.

enables the owner to reach the customers

helps the consumers to make the choice in the market,

promote initiative and enterprise worldwide by rewarding the owners of

trademarks with recognition and financial profit
2.

Top

Bainbridge main purposes.

a. protect business reputation and goodwill
b. to protect consumers from deception, that is to prevent the public
purchasing inferior goods or services in the mistaken belief that they
originate from another trader. In regard to Consumer Protection the law
becomes an effective weapon against counterfeit and inferior goods,
which is considerably strengthened by the criminal sanctions imposed
in regard to the fraudulent applications of Trademarks.

Justification for protection of Trade marks

Creativity

Protection of labour, which is involved in the creation of such rights.

bases of the concept of unfair competition.
Justice Breyer in the US Supreme

Court in the case of Qualitex v Jacobson Products 11 that trademark law helps to
assure a producer that it (and not an imitating competitor) will reap the financial
reputation and related awards associated with a desirable product.

Information
A trade mark carries information which is useful for consumers to make an
informed decision. It entails a qulity of the product consumers can not inspect. For
an example when people see the trade mark Levis, they are immidetly become
away that levis manufactures jeans of good quality.
In turn Trademarks encourage manufactures to maintain consistent quality
Brown maintains that advertising depends on the remote manipulation of symbols,
most importantly of symbols directed at a mass audience through mass media or
imprinted on mass protected goods13. Brown drew a distinction between persuasive
and informational advertising and maintained that the only justification for
advertising was informational and persuasive functions of marks is of dubious social
utility.

Ethical justification
It is argued that by adopting anothers trademark a person is taking advantage
ofthe goodwill generated by the original trademark owner and therefore on the
principle that a person should not reap what he has not sown trademarks should be
protected. It is on this basis that objections were made in respect of comparative
advertising and the principle of dilution of trademarks justified.

Another way of justifying the system of Trademark is that it gives effect to

the concept of Unfair Competition, which has in Sri Lanka been statutorily
recognized. The overriding purpose of Trademark Law is to ensure that
Trademarks serve to distinguish the goods or services of one undertaking
from those of another and consumer protection however desirable it may
be is only a little more than a by-product of Trademark Law. This was
emphasized by Lord Nicholls in Scandcor Developments A B v Scandcor
Marketing A B 3 when he stated, inherent in this definition is the notion
that distinctiveness as to business source (the goods of one undertaking)
is the essential function o fa Trademark.
16
0

Unfair
competitio
n and
undisclose
d
information

Any act or practice in the course of commercial or

industrial activity contrary to honest practice is an act
of unfair competition
Any act or practice causing confusion with another
enterprise is an act of unfair competition. Confusion is
caused with respect to mark, trade name, identifier,
appearance, presentation or celebrity
Any act that damages anothers enterprises goodwill or
reputation is unfair competition
Any act thats misleads the public is unfair competition.
Misleading in advertising or promotion of manufacturing
process, suitability of product for purposes, quantity
and quality, geographical indication, conditions of offer
or price
Any false or unjust allegation to discredit anothers
enterprise is unfair competition on above grounds
Disclosure of any undisclosed information of other is
unfair completion if it leads to industrial espionage,
breach of contract or confidence, inducement to commit
acts, etc.
Any aggrieved party may institute proceeding and claim
damages worth of five hundred thousand and six
months imprisonment

The basis of a Trademark is to show a connection between the

undertakings and their goods or services and to distinguish them from
other undertakings. This concept has far reaching implications
particularlyin regard to Character Merchandising and in relation to
memorabilia in Elvis Presley (1997) RPC 543. In this case Laddie J when a
man buysposter or a cup bearing an image of a star he is buying a
likeness, not a product from a particular source. Similarly the purchaser of
any one of the myriad of cheap souvenirs of the Royal Wedding bearing
pictures of Prince Charles and Diana Princesses of Wales wants
mementoes with likenesses, is likely to be indifferent to the sources 4

In the Common Law before the Trademark Registration Acts were

introduced Trademarks were considered an aspect of property In GETm5
Lord Diplock observed:
The right of property in a Trademark has special characteristics.
One, which it shared with Patents and Copyrights, was that it was a
monopoly, that is to say it was a right to restrain other persons from using
the mark. But it was an adjunct of the goodwill of a business and
incapable of separate existence dissociated from that goodwill
since the only right of the proprietor of a Trademark was to prevent its use

by other persons, the original remedy for the protection of his right was an
injunction to restrain infringement.
The right of property of this character calls for an accommodation
between the conflicting interest of the owner of the monopoly, of the
general public as purchases of goods to which the Trademark is affixed
and of other traders.
The interest of the general public requires that they should not be
deceived by the Trademark. It ought not to tell a lie about the goods. Two
main kinds of deception had been the subject of consideration. They were
misrepresentations (a) of the character of the goods to which the
Trademark was attached and (b) as to the origin i.e. that they were the
product of some other manufacturer.
2. Categories
s.101
Mark means trademark or service mark

Trade mark means visible sign to distinguish similar goods between enterprises

Trade name is to identify and enterprise of a natural or legal person

Service marks- means any visible sign serving to distinguish the services of
one enterprise from those of an other enterprise

Collective marks-

Certification mark - mark which meets a defined standard of the goods or services as certified by the

mark serving to distinguish the origin or any other common characteristic of

goods or services of different enterprises which use the Mark under the control of the registered
owner. (Art. 7 bis of the Paris Convention) eg- CA charter accountants

They may be granted to anyone who can

certify that the products involved meet certain established standards. The
internationally accepted "ISO 9000" quality standards are an example of such widelyrecognized certifications. (
owner of the mark who licenses others to use it.

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, where a given quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin

S.102 Admissibility of marks-Registration of mark granted to the first person to fulfill conditions of a valid
application or claim earliest priority

Marks can include letters, slogans, numbers, pictures, etc.

Trade mark also includes the dress of a trade- eg how its made, quality, the coutry its made in, the stuff
that was used to make it

Article 15
Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative elements
and combinations of colours as well as any combination of such signs, shall be eligible for
registration as trademarks. Where signs are not inherently capable of distinguishing the
relevant goods or services, Members may make registrability depend on distinctiveness
acquired through use. Members may require, as a condition of registration, that signs be
visually perceptible.

Electrix v Electro Lux A word does not become non- descriptive by being misspellt.
Hall v Roe- A word which is not descriptive may be shown by evidence to be descriptive.

* If a mark is purely descriptive it is not registerable even though there is evidence of

extensive use; Electrix v Electro Lux

10
3

Marks
inadmissibl
e on
objective
grounds

Marks cant include shapes

showing the inherent industrial
function of goods, a sign
indicating product quality,
quantity, etc.; scandalous
design, customary signs, flags,
emblems, etc.

this section deals with

-

deceptive similarity of the propounded

mark
to another registered or pending mark
AND

identical or similar good and services

10
4

Marks
inadmissibl
e due to
third party
rights

GD shall not register

marks which already
resemble a registered
mark, old but
unregistered mark,
trade name already in
use which misleads
public and leads to
unfair competition

Criteria to be
considered in judging
marks are facts of each
mark, fact making mark
well known, public
recognition, duration,
extent, geographical
area, etc.

Where the use of mark is likely to mislead the public

Likely to mislead the public similar to term deceiving the public

* if there is a possibility of deceiving it can be refused
* not necessary to show there was intention on the part of the person using the mark.
* to determine if there is misleading similarity intention of party not important
* if mark is likely to mislead the public the propounded mark is not admitted even if user
of mark is innocent.

To determine deceptive similarity - judicial decisions important

1.

meaning of likely
* generally means a probability of confusion
- applicant not expected to show possible instances where confusion can
arise
- if there is a probability of confusion mark can be refused
Berlei v Bali Brassiere Co. a phonetic resemblance was held to exist
between Berlei and Bali for Brassieres

- Andal rejected because it bore a striking similarity and sounded like

Ambal both for snuff.

2.

each case has to be decided on its own facts

Suby and another v T suby- the trade mark consisted a bust of a cowboy with
sprigs of tea leaves below it and the words cowboy brand for tea and
cardamoms . it resembled the figure of the boy in the opponents registered trade
mark.
Held it could deceive ultimate purchaser.
( central feature figure of the boy)

* likely to deceive does not necessarily mean there is an intention to deceive.

Sahib v Muthalip a registered mark consisting of 2 ovals and the word

Moulana . Applied to sarongs

Held accuseds mark forged the complainants mark. Thus calculated to deceive.
Trade Nark was so like the other that it was likely to deceive the public.

Coca-cola Co. V Pepsi-cola- In Coca-cola, Coca was a distinctive feature and in

Pepsi-cola Pepsi was a distinctive feature. Thus there was no deceptive similarity
between the two trade names.

3.

to determine if there is any misleading similarity from one mark to another

depends on judicial ear or eye
( decision is matter of court)

4.

owner of mark can use his mark in any colour or size of his choice

British petroleum v European Petroleum

Stassen Export Ltd v Ms Hebtulabhoi & CO. Ltd there was a phonetic
resemblance between registered trade marks Rabea fro tea and words
Chai
El Rabea for the same product.

5.

Confusion can occur in diverse areas of trading activity

(good or services, trade origin, trade connection)
Sahib v Muthalip

6.

Comparison of two competing marks side by side not allowed because the purchaser
doesnt usually have the two marks before him for comparison. *The purchaser may
only know only one mark

Singer v Registrar of Trade Marks

7.

Idea of Mark is important,

*the idea of left in the mind of the purchaser by the two competing marks can be
the same although it shows some differences.
*Person who has seen 1st mark doesnt carry all the details in his mind. He may
remember only its main idea.

8.

to determine deceptive similarity

* law requires mark to considered as a whole ( to totality of it must be considered)
Lukmanjee v Aktiebalage held : although there were some differences of detail of
marks applicants mark which had 3 cups with the words Three cups was
calculated to deceive purchasers that they were buying goods carrying the
opponents trade mark, which was 3 stars with words three stars therefore
registration refused.

9.

Meticulous comparison of two marks not permitted

* not a matter for microscopic inspection
should be considered in a general point of view
Walfing v Sipla

10.

phonetical and visual version of rival marks should get attention.

Stassen v Hebtulabhoy

11.

Issue of deceptive similarity

* should be looked at from business and common sence point of view

Suby v Suby Ltd.

12.

When comparing two marks

* court must not leek at mark side by side but as it would appear in actual use when
fairly and honestly used.
Sahib v Huthalip

13

Judicial view
* ordinary unwary customer is material NOT a skilled person, expert or person with
knowledge of actual facts.
Cheesborough Manufacturing Co. v Kudhoos- dealt with registration of Gold
grain. Held 2 marks should be looked at as they appear on the register and then
decide if there was confusion.
this was a narrow test
better if mark is seen and remembered in actual used and not necessarily in the
form it appears in the register.

FIshcer CJ- in form an opinion, if mark of appellant resembles mark of

respondent that ordinary purchaser purchasing with ordinary portion are likely
to be misled
Court could take an ordinary person into account not fools or idiots.
Singer v Wilson
Person with average intelligence and imperfect recollection should get attention
of court.

Sec 104 (1)(b)

A mark which resembles in such a way
that is likely to mislead the public
of an unregistered mark used earlier in SL by 3rd party
or identical or similar goods or services
if applicant is aware or couldnt be unaware of such use

mark will not be reigtered.

3. Theory of priority/right to priority

A theory highlighted in the Paris convention for the Protection of Industrial
Property.
If a first regular application is filed in one of the contracting states within 12
months the applicant can apply for protection in any other contracting state
and that subsequent application will be considered to have been placed on the
same day as the first application
In other words, they will have priority (hence the expression "right of priority")
over applications filed by others during the said period of time for the same
invention,
.Moreover, these subsequent applications, being based on the first application,
will not be affected by any event that takes place in the interval, such as the
publication of an invention or the sale of articles bearing a mark or
incorporating an industrial design.
Practical advantages
o
applicants seeking protection in several countries are not required to
present all of their applications at the same time but have 6 or 12 months to
decide in which countries they wish to seek protection,
o
to organize with due care the steps necessary for securing protection
4. Rights of a registered owner
102. (1) The exclusive right to a mark conferred by this Part shall be acquired,
subject to the succeeding provisions, by registration. Article 16 Of TRIPS,

URUGUAY rounds
12
1

Rights of
registered
owner

To use , assign or
transmit the mark and
conclude license
contracts
Take legal action on
those that using a
similar mark to mislead
the public

Limitation of registered
ownerss rights.
122. The registration of the mark shall not confer on its registered owner the
right to preclude third parties
(a) from using their bona fide names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality, quantity, destination,
value, place of origin or time of production or of supply of their goods and
services, in so far as such use is confined to the purposes of mere

identification or information and cannot mislead the public as to the source of

the goods or services ;
(b) from using the mark in relation to goods lawfully manufactured, imported,
offered for sale, sold, used or stocked in Sri Lanka under that mark, provided
that such goods have not undergone any change.
5. A brief understanding about the registration procedure
In an application of registration of trademark the onus is always on the applicant to
establish that the mark is registered; Mohamed Oomer v. Noordeen.

106

108

112

113

114
116
118

Article
18

Requireme
nts of
application
Temporary
protection
of mark
Non
completion
of
registratio
n
Register
and issue
of marks
Publicatio
n of marks
Associated
marks
Duration
of
registratio
n

Application for registration of mark to DG must include a request,

name and address, five copies of the mark, list of products under
the mark
If application is made and prior to registration the mark is shown
temporary protection will be given from moment first exhibited

Renewal

Once you register your mark until the lapse of 10 year duration
the mark owner will have NO expenses regarding the
maintenance of the mark and every 10 year he has to renew the
registration by the payment of the renewal fee through his
Attorney/Agent.
Owner of mark can add or alter mark in prescribed way and price
without affecting the identity

Transmission and assigning can be done by signing or on

behalf of contracting parties
Assignment and transmission are invalidated if public is

Term of
Protectio
n

119

120

Alteration
of marks

123

Assignmen
t and
transmissi

If the application for registration is incomplete twelve months

after its handed to the DG it is abandoned

DG shall maintain a register of marks

On registration owner of mark will be issue a certificate of
registration
DG shall publish all registered marks in the Gazette
Registering marks identical to those on the register are associated
marks
In Sri Lanka trademarks are registered for 10 year periods, which
run from their date of application. Unlike the other intellectual
property Trade marks Registration can be renewed for any
number of times and if the prescribed fee is paid in time ,could
remain in force for an indefinite period of time.

143
144

145

124. (1)

on of
application
s and
marks
Trade
names
Protection
of trade
name
Assignmen
t and
transmissi
on of trade
names
licence
contract

mislead

A name will not be admissible if its if against morality or public

order, misleads traders and offends religions and races
Protection against unlawful act committed by third party prior or
without registration
Any trade name can be assigned or transmitted as per the trade
marks

A ctt which a registered owner of a mark grants to

another person or enterprise a licence to use the mark for
all or part of the goods or services in respect of which the
mark is registered.
entitled to use the mark within the territory of Sri Lanka, during
the entire period of registration of the mark, including renewals,
in respect of all the goods or services for which the mark is
registered
Licencer can give a third party the license as well unless the ctt
was an exclusive licence

Unregistered marks can be protected under the unfair competition law or common law action for passing off.

Stassen Exports Limited v Brooke Bond

Ceylon Tobacco Company Vs. Minister of Health- Here a new regulation was brought
forward to cover 80% of cigarette packets with pictorial warnings, CTC sought to
quash this regulation by a writ of certiorari. CA held that practical issues arise
whether remaining 20 % is reasonably sufficient to exhibit the trademark of CTC
IP act gives owner positive rights over the trade mark and even the NATA recognize
the owners right to use trademarks.

Thus held that 20% is insuffient to display their trade mark and even consumers
need to recognize the goods. The CA downgraded the limit to 60% Warning signs
giving 40% to display trademarks. The writ of certiorari was not granted.

Coca cola company V Pet packagingMy cola V coco cola

An interim injunction sought by the multinational and its local unit Coca-Cola
Beverages Sri Lanka (Pvt) Ltd against Pet Packaging (Pvt) Ltd makers of My Cola
On the basis
(a)

(b)
(c)

using contoured bottles identical and/or similar to the contoured bottles

used by the makers of Coca-Cola specifically for using them for packaging
1.5 litre bottles,
using labels, advertising and promotional material similar to the marks,
labels and advertising material used by the 'Coca-Cola' brand and
pasting 'My Cola' stickers over the 'Coca-Cola' trade mark/name in CocaCola display racks.

My cola won

Infringement of rights -22. (1) Any person who infringes or is about to infringe any
of the rights protected under this Part may be prohibited from doing so by way of an
injunction and be liable to damages. The owner of such rights is entitled to seek
such other remedy as the court may deem fit.
22. (2) (b) damages for the loss suffered as a consequence of the act of
infringement, as well as the payment of expenses caused by the infringement,
including legal costs.
The amount of damages shall be fixed taking into account inter alia, the importance
of the material and moral prejudice suffered by the owner of the right, as well as the
importance of the infringers profits attributable to the infringement.
Where the infringer did not know or had no reasonable cause to know that he or it
was engaged in infringing activity, the court may limit damages to the profits of the
infringer attributable to the infringement or to pre established damages.
170. (1) Where a person to whom any recognised rights granted under this Act,
proves to the a stisfaction of the Court that any person is threatening to infringe or
has infringed his rights or is performing acts which makes it likely to infringe a right
under this Act, will occur, the Court may grant an injunction restraining any such
person from commencing or continuing such infringement or performing such acts
and may order damages and such other relief as the Court may deem just and

equitable. The injunction may be granted along with an award of damages and shall
not be denied only for the reason that the applicant is entitled to damages.