Intellectual property law in Sri Lanka recently took a step forward with the promulgation of the Intellectual Property Act No. 36 of 2003 (new Act). This new Act, which came into effect on November 12 2003, repealed the Code of Intellectual Property Act No. 52 of 1979 (old Act) and all amendments made there under.
While incorporating many of the provisions of the old Act, the new Act also includes a number of new provisions designed to bring Sri Lanka's IP law into compliance with the TRIPs Agreement.
In particular, the new Act includes substantial revisions in the areas of copyright, patents and designs. The provisions relating to unfair competition have also been expanded.
Before the new Act was passed by parliament, its constitutionality was challenged in the Supreme Court by a group of health activists, namely, the Centre for Policy Alternatives, Dr Kamalika Abeyratne, chairperson of the AIDS Coalition in Sri Lanka, and Mr Nihal Fernando.
In delivering its judgement, the Supreme Court observed that several clauses in the Bill that dealt with patents were inconsistent with Article 12(1) of the Constitution, which addresses equality before the law. The Supreme Court took the view that the clauses were inconsistent with Article 12(1) of the Constitution, as the relevant provisions of the TRIPs Agreement do not apply equally to developed and developing countries without the inclusion of safeguards, as provided for in the TRIPS Agreement, with respect to the national laws of developing countries. It was the petitioner's case that mitigating features and the safeguards which were available in the TRIPs Agreement were not included in the Bill.
In particular, Articles 30 and 31 of the TRIPs Agreement permit states to make provision for the use of a patent in the domestic market without the prior authorization of the patent holder in situations of national emergency. Further, the Doha Declaration made provision for the compulsory licensing and parallel importing of any pharmaceutical drugs needed to meet national health emergencies. In the course of it judgement, the Supreme Court observed "equal protection means the right to equal treatment when similar circumstances are prevailing allowing no discrimination against two persons who are similarly circumstanced". The court observed that "producers of patented products and processes and their agents in developed nations and consumers of such products in developing countries such as Sri Lanka could not be taken as parties that are similarly circumstanced. There is ample justification to treat them differently as they cannot be put in equal footing and if they are to be treated equally such decisions should be justified by relevant criteria." The court therefore found that Clauses 62, 83, 84, 87, 90, 91, 92 and 93 of the Bill were inconsistent with Article 12(1) of the Constitution of Sri Lanka. Therefore the government amended the relevant provisions to comply with the directions of the Supreme Court and the Bill has since been passed and is now an Act.
Copyright
The new Act provides protection for literary, artistic and scientific work. The scope of scientific work includes, inter alia, computer programs. There is also provision made for economic rights and moral rights. Economic and moral rights are protected during the lifetime of the author and for 70 years thereafter. The provisions relating to fair use have been expanded. There is provision that any library or archives whose activities do not serve direct or indirect commercial gain may without the authorization of the author or other owner of copyright make a single copy of the work by reprographic reproduction where, inter alia:
- the work reproduced is a published article or other short work or short extract of work and where the purpose of the reproduction is to satisfy the request of a physical person and the library or archive is satisfied that the copy will be used solely for the purpose of such scholarship or private research; and
the act of reproduction is an isolated case occurring, if repeated, on separate and unrelated occasions.
- Provision is also made for the rights of performers, producers of sound recordings and broadcasting organizations to be protected. A performer shall have the exclusive right to `carry out or authorize any of the following acts:
* the broadcasting or other communication to the public of his performance or substantial part thereof except where the broadcasting or other communication:
* is made from a fixation of the performance;
* is a re-broadcasting, made or authorized by an organization, of initial broadcasting of the performance or substantial part thereof;
* the fixation of his unfixed performance or substantial part thereof; or
* reproduction of a fixation of his performance of substantial part thereof.
Performers also have the exclusive right to carry out the following acts:
* broadcasting or other communication to the public of his performance or substantial part thereof;
* fixation of his unfixed performance or substantial part thereof; and
* reproduction of a fixation of his performance or substantial part thereof.
A producer of sound recording shall have the exclusive right to carry out, inter alia, the following:
* a direct or indirect reproduction of the sound recording or substantial part thereof;
* importation of copies of the sound recording or the substantial part thereof, including in cases in which such imported copies were made with the authorization of the producer;
* adaptation or other transformation of the sound recording or a substantial part thereof;
* rental of a copy of the sound recording or a substantial part thereof; and
* offering to the public of the original or copies of sound or a substantial part thereof.
A new provision has been made for the Director General of Intellectual Property (Director) to settle disputes without the necessity of resorting to litigation. The new Act provides that upon an application made in the prescribed form and manner by a person aggrieved by any of his copyrights being infringed or in any other manner affected, the Director may after such inquiry as he thinks fit decide any question that may be necessary or expedient to decide in connection with such parties until the matters are finally decided by a court.
Copy right owner/Perfomer/Producer have the right to receive a payment for authorizing to carryout any acts under the Act. (sections 9, 17, 18 and 20. Regulation No.01 of 2005)
In order to protect the rights of local performers, provision has been made for the establishment of a Performance Rights Society.
The Act also protects the copyright in computer programs and protects folklore.
Industrial Designs
The new Act provides for more detailed examination of design applications. When the Director considers that an industrial design is not registerable, he should give his grounds for refusal. Any dissatisfied person can make representations to the Director within a period of one month of this decision and the Director could thereafter fix the matter for hearing. If after a hearing, the application is again refused, the applicant can ask for the reasons for such refusal and thereafter an appeal to the courts is available. There is also provision for opposition proceedings for designs and where a person considers that an industrial design is not registerable, he may, within two months from the date of publication, file a notice of opposition with the prescribed fee and the matter will become the subject of an inquiry.
Patents
A patent is valid for a period of 20 years from the date of application. Where an international-type search report has not been tendered by the applicant, the Director could refer the application to a local examiner and, prior to the grant of the patent, will publish a notice informing the public that such a patent will be granted at the expiration of three months from the date of publication.
The Director will then grant the patent referred to in such notice upon the expiration of three months from the date of publication unless he is restrained from doing so by a court order. In a patent infringement action, the burden of proof of establishing that an alleged infringement is not obtained by the patented process is on the infringer.
Trade marks
The new Act provides for both certification marks and collective marks. Special provisions have been introduced with regard to geographical indications. There is also provision for the protection of well-known marks and the criteria that should be taken into account in determining whether a mark is well known. Among other things, these criteria include:
* the particular facts and circumstances relating to each mark;
* any fact or circumstances from which it may be inferred that the mark is a well-known mark;
* degree of knowledge or recognition of the mark by the relevant sector to the public;
* duration, extension and geographical area of the use of the mark and the value associated with the mark.
In respect of well-known marks, marks shall not be registered if they are identical to or sufficiently similar to constitute a translation or transliteration of: i) marks for identical or similar goods or services of a third party; or ii) marks well-known or registered in Sri Lanka for goods or services which are not identical to or similar to those in respect of which registration has been applied for.
Under the new Act a mark shall not be registered in respect of goods or services the trading of which is prohibited in Sri Lanka.
Unfair competition
The New Act expands the provisions relating to unfair competition. Any act in relation to any goods or marks in the course of industrial or commercial activity which is contrary to honest practice shall constitute unfair competition and these provisions shall apply independently and in addition to the other provisions of the Act.
The provisions also cover acts which could potentially cause confusion or damage or dilute another's goodwill, misleading advertisements or promotions which discredit competitors and disclosure of undisclosed information.
In particular, the following constitute unfair competition:
* confusion (confusion may in particular caused with respect to, inter alia, a mark whether registered or not);
* damaging another's goodwill;
* any act or practice which misleads or is likely to mislead the public in respect of another enterprise or its activities;
* any false or unjustifiable allegation in the course of industrial or commercial activity which discredits or is likely to discredit another's enterprise;
* any act or practice in the course of industrial or commercial activity that results in the disclosure, acquisition or use by others of undisclosed information without the consent of the person lawfully in control of that information; and
* any act or practice in the course of industrial or commercial activity will be considered unfair competition if it consists or results in unfair commercial use of secret test or other data, the collection of which involves considerable effort and which has been submitted to a competent authority for the purpose of obtaining approval in the marketing of pharmaceutical, agricultural or chemical products which utilize new chemical entities, or disclosing of such data, except where necessary to protect the public.
Unfair competition and undisclosed information
The new Act provides for the protection of undisclosed information. In particular, the following provisions are made:
- Any act or practice in the course of industrial or commercial activity, that results in the disclosure, acquisition or use by others of undisclosed information without the consent of the person lawfully in control of that information (referred to here as "the rightful holder") in a manner contrary to honest commercial practices shall constitute an act of unfair competition.
- Disclosure, acquisition or use of undisclosed information by others without the consent of the rightful holder may, in particular, result from:
i) industrial or commercial espionage;
ii) breach of contract;
iii) breach of confidence;
iv) inducement to commit any of the acts referred to in sub-paragraph i) to iii); or
v) acquisition of undisclosed information by a third party who knows or was grossly negligent in failing to know that an act referred to in sub-paragraph i) to iv) was involved in the acquisition.
i) For the purpose of the Act, information shall be considered "undisclosed information" if:
i) it is not, as body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question;
ii) it has actual or potential commercial value because it is secret; and
iii) it has been subject to reasonable steps by the rightful holder to keep it a secret.
- The undisclosed information for the purpose of the Act shall include:
i) technical information related to the manufacture of goods or the provision of services; or
ii) business information which includes the internal information which an enterprise has developed to be used within the enterprise.
Registered agents
Another new feature of the new Act is that provisions have been made regarding the recognition of registered agents.
Trade description
In the case of the sale of any goods to which a trade description applies, the vendor shall be deemed to warrant that the mark is genuine and that the trade description is not false.
Geographical indications
Any interested person shall be entitled to prevent the use of any means which designate, indicate or suggest that the goods in question (including agricultural products, good, wine, or spirit) originate in a geographical area other than the true place of origin, in a manner which misleads the public as to the geographical origin of the goods or which constitutes unfair competition.
Appeals
Appeals against any order of the Director should be made to a court within a period of six months. The appropriate court would be the high court of a province empowered with civil jurisdiction or, where no such high court is established, the High Court of the Western Province (commonly called the Commercial High Court).
Infringement
In civil proceedings for infringement, the court is entitled to grant both damages and an injunction and the fact that damages could be awarded will not be a bar to the issue of an injunction. The court has the power to order the infringer to pay damages that are adequate to compensate the intellectual property owner for the loss suffered by reason of any infringement in addition to the recovery of any profits, and can order that the infringing goods be distributed outside the channels of commerce to be destroyed without the payment of compensation. The court may also take into account the seriousness of the infringement and order the infringer to inform the intellectual property right holder of the identity of the persons involved in the production and distribution of the infringing goods and the channels of distribution.
Layout designs of integrated circuits
The new Act provides for the protection of layout designs of integrated circuits and the Director now maintains a register of layout designs.
Customs
Provisions have also been made in regard to Customs whereby an intellectual property rights-holder who has valid grounds to believe that importation of counterfeit goods or pirated copies contravene his rights, may make an application to the Director General of Customs for the release of the goods from Customs to be suspended. The rights holder should provide the Director General of Customs with prima facie proof of infringement and a sufficiently detailed description of the goods. The Director General could require the applicant to provide security sufficient to protect the defendant and to prevent abuse. When the Director General suspends the release of any goods, he must ensure that the importer is promptly notified. Director General may order the release of the goods after 10 working days from the date on which the alleged infringer has been informed unless proceedings against the alleged infringer have been instituted and provisional relief has been granted by the court.
Offences
Where an offence under the new Act has been committed by a body corporate, every person who at the time of the commission of the offence was a director, general manager, secretary or other similar officer of that body, or was obliged to act in any such capacity, shall be deemed to be guilty of such offence unless he can prove that the offence was committed without his consent of connivance and that he exercised all due diligence to prevent the commission of the offence having regard to the nature of his functions in that capacity and to all the circumstances.
In criminal proceedings, the penalties for IP-related offences have been increased to a fine of SLR500,000/= approximately (US$5,000/=) and/or imprisonment for up to two years.
FEES PAYABLE TO THE DIRECTOR
(Intellectual Property Regulations published in Gazette Extraordinary No. 60/20 of 31st October 1979 as amended by regulations published in Gazette Extraordinary No. 579 of 08th February, 1990 and Gazette Extraordinary No. 873/10 of 2nd June 1995, Gazette Extraordinary No. 994 dated 19th September 1997, Gazette Extraordinary No. 1207/35 dated 26' October 2001 and 1252/13 of 3rd September 2002.)
| SUBJECT MATTER |
FEES |
| On application for registration each design |
Rs. |
300.00 |
| For issue of Certificate upon registration of an Industrial Design |
Rs. |
230.00 |
| For inspection of application |
Rs. |
60.00 |
| To obtain a copy thereof by the creator or a person named as the creator (per one page) |
Rs. |
60.00 |
| (i) For Inspection of the register |
Rs. |
60.00 |
| (ii) For inspection of the relevant Industrial Design File |
Rs. |
60.00 |
| (i) For obtaining an extract of the Industrial Design (per page) register - |
Rs. |
20.00 |
| (ii) For obtaining and extract of the application |
Rs. |
110.00 |
| For publication in the Gazette of the registration of the Industrial Design |
Rs. |
95.00 |
| For 1 st renewal of registration |
Rs. |
1000.00 |
| For 2nd renewal of registration |
Rs. |
2000.00 |
| Payment of surcharge for late payment |
|
18% |
| On request for Certificate of Registrar for legal proceedings or other specific purpose |
Rs. |
230.00 |
| On request to enter name of subsequent proprietor by assignment or transmission |
Rs. |
300.00 |
| On request to correct clerical error |
Rs. |
60.00 |
| On request to enter new address |
Rs. |
85.00 |
| Application for recording particulars of licence contract or sub-licence |
Rs. |
300.00 |
| Application for recording the renunciation expiration or termination of a licence contract or sub-licence |
Rs. |
85.00 |
|
MARKS - FEES
SUBJECT MATTER |
FEES |
| On application for registration of each - |
|
|
| (a) Mark |
Rs. |
460.00 |
| (b) Collective mark |
Rs. |
900.00 |
| On application to Director to State grounds of decision |
Rs. |
530.00 |
| On notice of opposition for registration of a mark |
Rs. |
1100.00 |
| On observations of applicant in answer to notice of opposition |
Rs. |
370.00 |
| On the hearing of opposition by applicant and opponent respectively |
Rs. |
735.00 |
| For registration of a mark and issue of Certificate |
Rs. |
735.00 |
| Upon each entry in the register of a note that mark is associated with a newly registered mark |
Rs. |
110.00 |
On application to register a subsequent proprietor in cases of
assignment or transmission - |
|
|
| (a) For a single mark |
Rs. |
1000.00 |
| (b) For every additional mark, the devolution being identical in each case and if made in one application |
Rs. |
110.00 |
| On application to change the name of proprietor where there has been no alteration of proprietorship - |
|
|
| (a) For a single mark |
Rs. |
230.00 |
| (b) For every additional mark, the change being the same in each case and if made in one application |
Rs. |
110.00 |
| Renewal of registration |
Rs. |
1900.00 |
| Surcharge |
Rs. |
230.00 |
| On application to alter the address of registered proprietor of licence - |
|
|
| (a) For a single mark |
Rs. |
230.00 |
| (b) For every additional mark the alternation being the same in each case and if made in one application |
Rs. |
110.00 |
| For every entry in the register of rectification thereof or an alteration therein not otherwise changed. |
Rs. |
230.00 |
| For cancelling the entry or part of the entry of a mark upon the register |
|
|
| on the application of the owner of such mark |
Rs. |
230.00 |
| On an application to the Director for leave to add or to alter a mark or collective mark |
Rs. |
600.00 |
| for publication in the Gazette of mark or collective mark if leave is granted (per an inch) |
Rs. |
95.00 |
| For inspecting register, application, notice of opposition, observation or decisions, or any other document related to documents enumerated above |
Rs. |
60.00 |
| For obtaining copies of documents or Trade or service mark files A4 size page or part thereof |
Rs. |
110.00 |
| Each additional page or part thereof |
Rs. |
20.0\0 |
| For a page of documents not specified in 16 above (page or a part thereof) |
Rs. |
15.00 |
| For certifying office copies or printed matter |
Rs. |
130.00 |
| Every additional page or a part thereof |
Rs. |
30.00 |
| For publication of Trade or service mark (per inch) |
Rs. |
95.00 |
| Application on request for recording particulars of licence contract or sub-licence |
Rs. |
1000.00 |
| Application for recording the expiration or termination of a licence Contract |
Rs. |
230.00 |
| Application for renunciation of the registration of any goods or services for which a mark is registered Either wholly or in respect of part of the or services |
Rs. |
230.00 |
| For publication in the Gazette of the renunciation of registration (per inch) |
Rs. |
95.00 |
| Application of change in the conditions governing the use of a collective mark |
Rs. |
600.00 |
| For publication in the Gazette of the notification of change (per inch) |
Rs. |
95.00 |
| For certificate underhand or the Director as to any entry, a matter or thing which he is authorised to make. |
Rs. |
230.00 |
|
PATENTS - FEES
| On application for the grant of a patent |
Rs. |
2,650.00 |
| On request to refer an application to a local examiner |
Rs. |
850.00 |
| On inspection by the inventor of the application |
Rs. |
60.00 |
| to obtain a copy thereof by the inventor, per page (Subject to a minimum fee of Rs.120.00) |
Rs. |
60.00 |
| For the preparation of an abstract by the Director |
Rs. |
370.00 |
| For a copy of the Patent together with the search report (per page) |
Rs. |
60.00 |
| For a certified extract of the Register of Patents (per page) |
Rs. |
110.00 |
| On application for the assignment or transmission, of a patent application or patent |
Rs. |
1,500.00 |
| On request for recording particulars of |
|
|
| (a) a licence contract or of any assignment, transmission, sub-license, amendment, renewal |
Rs. |
1,000.00 |
| (b) expiration or termination thereof |
Rs. |
250.00 |
| (i) For an amendment of the application |
Rs. |
1,000.00 |
| (ii) On application for the entry of new address or the rectification of any clerical error |
Rs. |
300.00 |
| (iii) For a divisional application |
Rs. |
2,650.00 |
| (iv) For any amendment there of |
Rs. |
1,000.00 |
| (i) For inspection of the Register of Patents in respect of each patent |
Rs. |
60.00 |
| (ii) For inspection of the classified abstracts in respect of each class |
Rs. |
60.00 |
| For inspection of the file relating to the Patent after the grant of the Patent or with the permission of the applicant before the grant |
Rs. |
60.00 |
| For obtaining abstract of the application relating to the Patent, per page (Subject to a minimum fee of Rs.240.00) |
Rs. |
60.00 |
| For divulging permissible information before the grant of the Patent by the Director |
Rs. |
60.00 |
| In order to keep the Patent in force |
|
|
| (a) for the 1st extension |
Rs. |
3,500.00 |
| (b) for the 2nd extension |
Rs. |
3,500.00 |
| (c) for the 3rd extension |
Rs. |
5,300.00 |
| (d) for the 4th extension |
Rs. |
5,300.00 |
| (e) for the 5th extension |
Rs. |
6,200.00 |
| (f) for the 6th extension |
Rs. |
6,200.00 |
| (g) for the 7th extension |
Rs. |
6,200.00 |
| (h) for the 8th extension |
Rs. |
12,500.00 |
| (i) for the 9th extension |
Rs. |
12,500.00 |
| (j) for the 10th extension |
Rs. |
12,500.00 |
| (k) for the 11th extension |
Rs. |
12,500.00 |
| (l) for the 12th extension |
Rs. |
12,500.00 |
| (m) for the 13th extension |
Rs. |
12,500.00 |
|
|
|
|
| Surcharge on late applications for extensions fee due |
|
18% |
NOTE:
By the Code of Intellectual Property (Amendment) Act No. 13 of 1997 certified on 21st July 1997 changes have been made to the following offices or designations and the references in this Chapter to the old offices/descriptions should be read thus:
Before the Amendment |
As Amended |
Registry of Patents and Trade Marks |
National Intellectual Property Office of Sri Lanka |
Registry |
Office |
Registrar of Patents and Trade Marks of Sri Lanka |
Director of Intellectual Property |
Deputy Registrar of Patents and Trade Marks |
Assistant Director of Intellectual Property |
Registrar |
Director |
Deputy Registrar |
Deputy Director |
Assistant Registrar |
Assistant Director |
|
