Brand protection through registering trademarks with the Sri Lanka customs

Trademarks play a vital role as an indicator of the source or origin of a product or service while distinguishing the goods or services of different enterprises. There is no doubt that trademarks have become an asset of tremendous value to any form of business. In this context, instances of stealing or attempts of piggy backing on reputed trademarks have drastically grown – especially the counterfeiting of trademarks.
 
The Intellectual Property Act, No. 36 of 2003 (IP Act) is the law applicable to all aspects of Intellectual Property in Sri Lanka. Section 121 of the IP Act grants a registered owner of a trademark certain exclusive rights such as use of the mark, transfer of ownership of a mark as well as licencing a mark. Apart from these, an owner of a registered mark could restrain any form of unauthorised use of a registered mark subject to the provisions of the IP Act.
 
A registered owner of a trademark could enhance the protection of its trademark – especially against counterfeiting by registering the trademark with the Sri Lanka Customs – as importation and exportation of counterfeit trademark goods is expressly prohibited under the provisions of the IP Act.
 
When the IP Act was enacted in 2003, provisions of the Customs Ordinance were amended through the IP Act, which introduced two new sections as Section 125A and 125B. Through Section 125A, the importation and exportation of counterfeit trademark goods are prohibited. Consequently, such goods are included in Schedule B of the Customs Ordinance as prohibited goods. Section 125B deals with making applications to the Sri Lanka Customs to suspend the importation and exportation of goods suspected to be counterfeit trademark goods.
 
As per the definition provided under the IP Act, “Counterfeit trademark goods” mean “any goods including packaging, bearing without authorisation a trademark which is identical to a trade mark validly registered in respect of such goods or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark recognised by the act”.
 
The Consumer protection unit of the Sri Lanka Customs which was established in 2011 plays a crucial role in combating counterfeit trademark goods. An owner of a validly subsisting registered trademark could file an application with this unit together with the prescribed documentation to register the trademark with the Sri Lanka Customs.
 
Regulations passed under Section 101 of the Customs Ordinance, for prohibiting of importation and exportation of counterfeit trademark goods in contravention of the IP Act, specifically through Article 9, confers the power on Customs officials to Ex. Officio suspend the clearance of importation or exportation of goods in respect of which it has acquired prima facie evidence, that an intellectual property right has been, or may be infringed.
 
Hence, the benefit of a customs registration is that, if there is doubt as to genuineness of a product of which the mark is registered with the Sri Lanka Customs, the Customs officials could on its own initiative suspend the clearance of importation as well as exportation of such products. If Customs determine these products to be counterfeits, they shall be disposed of outside the channels of commerce. Or, if such disposal damages the interests of the registered owner, the goods shall be destroyed in accordance with statutory regulation.
 
In conclusion, apart from traditional methods of enforcement of trademark rights through costly and lengthy court proceedings, enforcement of trademark rights through border control is both highly effective and recommended.
 
Anomi Wanigasekera – LLM Wales, Attorney at Law
Senior Partner and Head of Intellectual Property Division
 
Mrs Anomi Wanigasekera, LLM (Wales), Attorney-at-Law is the Senior Partner of the firm and heads the Intellectual Property Group. She holds Diplomas in Intellectual Property Law, International Trade Law, Banking and Insurance Law of Institute of Advanced Legal Studies of the Incorporated Council of Legal Education. She has extensive experience in the full range of enforcement, opinions on all aspects of intellectual property, including patents and copyright; management and transactional matters pertaining to intellectual property law, including representing clients before the NIPO; acting for multinationals as well as Sri Lankan conglomerates in respect of infringement actions; and applying for injunctions, and search and/or seizure orders. She also overlooks the drafting and reviewing of contracts and advises on regulatory compliance matters (food, drugs, cosmetics, tobacco & narcotics, etc.).
 
Sabeera Shariff – LLM, University of Colombo, Attorney-at law
Senior Associate
 
Ms Sabeera Shariff, Attorney-at-Law is a Senior Associate of M/s. Julius and Creasy and holds a LL.M from the University of Colombo. Ms Sabeera is attached to the Intellectual Property division of the firm and is well experienced in enforcement matters in relation to Intellectual Property including Civil and Criminal prosecution. She provides opinions on all aspects of Intellectual Property to local and foreign clients. Sabeera has contributed to several international journals and guides. She is also engaged in drafting submissions/oppositions/observations in relation to trademarks, drafting cease and deist letters, drafting cautionary notices and advising on regulatory compliance matters.