Mahtta & Co. strives to make the the trademark registration process smooth. We offer to conduct an official trademark search for your proposed mark to give you an idea of how registrable your mark is in the country/ countries you’d like to file.
Ensuring Trademark Availability
Before submitting a trademark application in Sri Lanka, it is essential to perform an index trademark search encompassing both word marks and device marks. This search is crucial to determine the existence of potentially confusing or similar trademarks on the register. By conducting a thorough trademark search, you can proactively identify and avoid potential objections or oppositions based on pre-existing marks, safeguarding the smooth registration of your trademark.
02. PREPARING YOUR APPLICATION
If the search results are positive and the mark looks registrable, we can start preparing your trademark application.
To help us prepare your application, we’ll need to know:
- Name of the Mark/ Logo/ Device prints or Visual Representation
- Name of the Applicant
- Address and Nationality of the Applicant
- Status of the Applicant i.e. Merchandisers/ Manufacturers/ Service Providers
- Specification of Goods/ Services and Class
- User date of the mark (whether the mark is in use or proposed to be used in Srilanka)
- General/ Specific Power of Attorney may be required
03. FILING YOUR APPLICATION
- Next your application will be filed with the Colomobo Trademark office and we will drop you an email confirmation of the filing.
- You will receive a trademark application number, You can check the status of your application anytime on the National Intellectual Property Office of Sri Lanka website with this application serial number. application anytime on the website with this application serial number.
Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products.
After an application is filed, it is examined by the Trademark Registry, Colomobo so as to ascertain its registrability and/ or any similarity with exisisting marks. If an objection to a registration is raised, an official examination report will be issued by the Trademarks Registry.
The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in Sri Lanka can be refused/ objected by the Registrar on the following grounds:
- A mark is similar/ identical to an earlier trademark for the same or similar goods/ services.
- A mark is similar/ identical to an earlier trademark in respect of different goods/ services.
The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.
Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within 30 days. The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing.
05. JOURNAL PUBLICATION
After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement/ publication in the Trademarks Journal. An application is advertised in the Trademarks Journal for a period of 3 months from the date of publication, so as to invite the public for filing opposition against the registration of the mark.
06. OPPOSITION OF THE MARK
When a trademark is published in the Trademark Journal, any individual has the opportunity to oppose its registration. This is done by submitting a notice of opposition within a specified period of 3 months from the date of publication in the Journal.
Grounds for Opposition:
Opposition to a trademark application in Sri Lanka can be based on grounds outlined in Section 103 and 104 of the Intellectual Property Act no. 36 of 2003. Section 103 identifies reasons for a mark to be ineligible for registration, while Section 104 deals with marks that may be excluded due to third-party rights.
Response by Applicant:
Once an opposition is lodged, the trademark registry serves a copy of the notice of opposition to the applicant. The applicant is then required to provide their response to the grounds of opposition within three months. Failure to do so may result in the application being deemed abandoned.
Request for Evidence:
Subsequently, the Registrar may request written evidence from both the opposing party and the applicant.
If the dispute remains unresolved, a hearing is scheduled to address the matter.
Following the hearing, the Registrar will make a determination on whether the trademark should be registered or not.
If the Registrar decides to register the trademark, there is a specific period within which an appeal can be lodged against this decision. After the appeal is resolved, the Registrar will take appropriate action accordingly.
07. REGISTRATION OF THE MARK
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favour of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued.
Now that your trademark is registered, you can put registered mark symbol : ®
08. TERM AND RENEWAL
The trademark can be renewed from time to time for 10 years by payment of renewal fees, failing which the marks becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.