WHO CAN FILE A TRADEMARK
Any natural person or a Legal entity can file a trademark application in selected specification of goods or services. The Applicant for trademark under Sri Lankan Trademark law can also be foreign national and/or Legal entity as well.
SELECTING A TRADEMARK
While selecting a trademark, the two factors to be kept in mind are the mark itself and the specification of goods and services the marks intends to cover.
An ideal mark should be distinctive and unique in nature, and should be not similar to an already registered mark. For selecting goods and services, it is important to understand the class under which the trademark would fall; At the moment, under NICE classification goods and services can be classified as 45 different types of goods and services. Classifications 1–34 are for products, and 35–45 are for services. It is to be noted that in Sri Lanka, Multiclass Applications are NOT allowed.
Once you have successfully chosen a suitable mark for your company, a trademark search at the Sri Lankan Trademark Office (NIPO) should be conducted to assess the feasibility of the selected mark being registered. A Trademark search is not mandatory, but is highly advised. Request for an official search can be made with the prescribed fee.
FILING OF TRADEMARK
trademark registration in sri lanka can be obtained typically within 24 – 36 months (In case no objections are received). An application for trademark is to be submitted by physical filing only, unless any specific instructions are issued by NIPO. Following are the particulars to be kept in mind:
- Name and Address of Applicant;
- Name of Trademark, (if it is a stylized mark, logo or device, the actual stylized mark, logo or device);
- Complete and Concise Description of the Mark;
- International Classification (Nice Classification: 11th Edition) of the Goods and/or Services;
- Enumeration of the Goods and/or Services;
- Translation and Transliteration of Characters (if not in English), certified as correct by Sworn Translator;
- If Claiming Convention Priority, a Certified Copy of the Home Trademark Application;
- Specification of Colors, if any;
- Power of Attorney, Signed and Sealed;
- Usage Date of Mark, if any.
Certified Copy Claiming Convention Priority, Hard copy of Power of Attorney, and document of Usage can be submitted within 1 months from filing date.
EXAMINATION OF TRADERMARK
The trademark application goes into the examination stage after the issuance of the filing number. It takes approx. 12 – 15 months for the examination of the TRADEMARK application which goes through a formal examination in which distinctiveness with prior and similar marks is being checked. In the examination report trademark may get accepted or will get objected.
- Publication of Trademark: In case the trademark is in compliance, the trademark is accepted and trademark gets published in the NIPO’s Gazette once the trademark is accepted, and it may take 2 – 3 months. The opposition period in Sri Lanka is 3 months from the publication of the trademark in the gazette.
- Objection of Trademark: The applicant needs to file the trademark reply within 1 month after the objection has been raised in the examination report. Even after the reply of the objection the NIPO may refuse to provide the trademark or may go into hearing.
It is to be noted that the timeline may vary depending on the backlog at the registry.
REGISTRATION OF TRADEMARK
The certificate of registration will be issued after successfully completion of opposition period. This will be valid for a period of 10 years, after which a request for renewal can be filed. In Sri Lanka, the trademark can be renewed for each consecutive term of 10 years. NIPO allows the grace period of 6 month after expiration of trademark with the prescribed late fee.
