A common misconception among businesses is that a trademark cannot be used until it has been formally registered.

This is not necessarily the case.

A business does not generally have to wait for the trademark registration process to be completed before commencing use of its mark. Once a trademark application has been filed, the business may proceed with using the mark while the application is being examined and processed.

For businesses launching a new product, service or brand, this distinction can be particularly important. A business may wish to begin marketing and commercialising its brand while its trademark application is still pending.

Filing an application does not mean waiting for Registration

Trademark registration is a process. An application is examined by the National Intellectual Property Office of Sri Lanka (“NIPO”) and, where applicable, proceeds through publication and an opportunity for opposition before registration is granted.

As this process can take time, businesses do not necessarily need to delay their commercial activities simply because their trademark application is pending.

For example, after filing an application for a new brand, a business may commence using the mark on its products, packaging, website, social media platforms, advertising and other commercial materials while the application continues through the registration process.

The fact that an application is pending does not, by itself, prevent the business from using the mark.

Filing and Registration are not the same thing

While a business can use its mark while an application is pending, it is important to distinguish between using a trademark, filing a trademark application and having a registered trademark.

Filing an application starts the registration process. It does not mean that the mark has already been registered, nor does it guarantee that registration will ultimately be granted.

Registration provides the registered proprietor with statutory rights in relation to the trademark as per the Intellectual Property Act No. 36 of 2003 (“the Act”). Until registration is obtained, the applicant does not have all the rights and remedies available to a registered proprietor.

This distinction is particularly important where a third party begins using or applying for a similar mark while an application is pending.

Does an Unregistered Trademark Have Any Protection?

The fact that a trademark is not yet registered does not necessarily mean that it has no legal protection.

Depending on the circumstances, an unregistered mark may receive protection through areas of law such as unfair competition and passing off.

However, the protection available to an unregistered mark is different from the statutory protection provided by registration. For businesses that are investing in developing a brand, relying solely on the protection available to an unregistered mark may therefore create unnecessary uncertainty.

Registration remains an important step in securing and strengthening protection for a brand.

If a business does not have to wait for registration before using its mark, why should it file an application early?

The answer is priority.

Trademark applications are generally dealt with based on the filing date and applicable priority rights. This means that delaying an application can potentially create difficulties if another party files an application for the same or a similar mark in the meantime.

Although the law recognises certain circumstances involving earlier use of an unregistered mark, prior use does not necessarily provide the same certainty as having an application filed at an early stage.

For this reason, businesses should consider their trademark position before making significant investments in a new brand.

A business may spend considerable time and resources developing its name, logo, packaging, advertising, website and customer recognition. Filing early can help reduce the risk of having to reconsider the brand after substantial investment has already been made.

Early filing can therefore form part of a broader strategy to establish and protect the brand, rather than being treated simply as an administrative step to be completed after the business has already become successful.

Do You Need to Wait Before Launching Your Brand?

In practical terms, a business does not necessarily have to choose between filing for trademark protection and launching its brand.

The two can proceed alongside each other.

A business can consider conducting appropriate searches, filing its trademark application and then commencing or continuing its commercial use of the mark while the application proceeds through the registration process.

The important point is that filing an application does not require the business to keep its brand unused until registration is granted.

At the same time, businesses should understand that filing does not guarantee registration. A trademark application may be subject to examination issues or opposition, which is why assessing the proposed mark before significant commercial investment can be valuable.

What Should Businesses Keep in Mind?

Businesses should distinguish between three separate concepts:

• Using a trademark – putting the mark into commercial use.

• Filing a trademark application – applying to NIPO for registration of the mark.

• Registering a trademark – obtaining registration and the statutory rights associated with a registered trademark.

These are not interchangeable.

A business can use a mark while its application is pending. However, it should not represent an unregistered mark as a registered trademark, and it should understand that the rights associated with registration arise upon registration rather than merely upon filing.

Before adopting and investing in a new brand, businesses should consider whether the proposed mark is available and suitable for registration. 

Trademark searches can assist businesses in identifying potential conflicts and assessing the prospects of registration. The appropriate approach will, however, depend on the nature of the business, the proposed mark and the markets in which the business intends to operate.

The Takeaway

A trademark can become one of a business's most valuable intangible assets as the brand gains recognition, its value may extend far beyond the original name or logo. So protecting the brand should therefore form part of the business strategy from the beginning.

For businesses launching a new brand in Sri Lanka, the key message is simple, you do not necessarily have to wait for trademark registration to use your brand, but you should consider protecting it before you build significant commercial value around it.

Therefore, for a business launching a new brand, a practical approach may therefore be:

Search → File → Use → Continue the registration process.

Businesses considering adopting a new trademark should obtain appropriate advice on the availability, registrability and protection of the proposed mark.