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Trade mark Usage
Infringement v Non Use - how do they compare
SRI LANKA
Introduction
The primary function of a mark is to distinguish itself from goods or services of others. The Sri Lankan statute provides the registered owner with the exclusive right to use the mark.[1] If there is proof of non user the Court is empowered to remove the mark from the register.[2]
Scope of Protection
The registered owner of a mark shall have the exclusive rights in relation to the mark:
§ to use the mark,
§ to conclude license contracts.
§ to assign or transmit the registration of a mark.[3]
The application of a mark or any sign resembling such mark or sign in a such away to be likely to mislead the public by way of printing, painting or affixing in connection with the goods which the mark has been registered, whether such goods are for sale in Sri Lanka or for export from Sri Lanka is prohibited under the Act.[4]
When a person uses a mark identical to the registered mark for identical goods or services in respect of which the mark is registered, it is presumed that there is a likelihood of misleading the public.[5]
Limitation of rights
The registered owner of a mark cannot preclude third parties:
a) from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their goods and services, in so far as such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services;
b) from using the mark in relation to goods lawfully manufactured, imported , offered for sale, sold, used or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change[6]- parallel imports.
Removal of a mark for non user
While the exclusive use of a mark remains with the registered owner, the right to appeal to a Court for removal of a mark lies under Section 136 (1) of the Act, with any person showing a legitimate interest or any Competent Authority including the Director General.
(1) if the registered owner has, without valid grounds, failed to use the mark within Sri Lanka or cause it to be used within Sri Lanka by virtue of a licence, during five consecutive years immediately preceding the date of the application to Court:
(2) if the registered owner has caused, provoked or tolerated the transformation the mark into a generic name for one or more of the goods or services in respect of which the mark is registered so that in trade circles and in the eyes of the public its signature as a mark has been lost[7].
Defenses against removal
If non use of the mark was due to circumstances beyond the control of the registered owner, such mark should not be removed. However the court shall not take into account the lack of funds of the registered owner as a ground for non-use of the mark.
The use of a mark in a form differing in elements which do not alter the distinctive character of the mark from the form in which it was registered is not a ground for removal of a mark[8]. This point was upheld in the case of Stassen Exports Ltd. v. Hebtulabhoy & Co. Ltd.,[9] It was held that the registered owner is entitled to use the mark in any size, shape, form or colour in the case of a word mark, and even in a visually dissimilar shape or form, dissimilarity only arising if a competing word mark with one or more different letter is used.
Further the use of the mark in respect of one or more of the goods or services belonging to any given class in respect of which the mark is registered shall suffice to prevent the removal of the mark in respect of all the other goods or services of the same class.
Concurrent Use
The Act does not refer to honest concurrent use but instead permits use by third parties after obtaining the owners consent, of similar marks or signs “likely to mislead” the public or of such marks, signs or tradenames likely to prejudice the owner’s interests. This is a negative exercise of a right and is described in Sec. 121 (2) a & b of the Act.
Infringement of marks
Any person who willfully infringes the rights of any registered owner, assignee or licensee of a mark is guilty of an offence and is liable on conviction after trial before a Magistrate to a fine not exceeding Sri Lanka Rupees.500,000/- or to imprisonment for a term not exceeding six months or both, and in the case of a second or subsequent conviction the above find or terms of imprisonment or both may be doubled[10].
With the recognition of the offence of infringement, Sec. 170 of the Act stipulates the civil law sanctions, namely the granting of an injunction, awarding of damages and or the declaration that the registration of the mark be declared null and void and/or such other relief.
The registered owner of a mark may institute an infringement action not only where its rights are infringed but also when they are threatened with infringement Sec. 170 also entitled the trademark owner to pray for two remedies - injunction and damages. The defendants may in the proceedings request the Court to declare the registrations of mark or any other registrations provided for under the Act as the case may be, or any part of it null and void. It is further provided that in such an event the provisions of subsection 135[11] & 136[12] of the Act apply.
Infringement proceedings can also be instituted by or at the request of a licensee[13] .
Forging marks
A person shall be deemed to forge a Mark who either –
(a) without the assent of the owner of the Mark make that Mark, or a Mark so nearly resembling that mark as to be likely to mislead; or
(b) falsifies any genuine Mark, whether by alteration, addition, effacement or otherwise,
Comparison - Infringement v Non user
The word ‘use’ is not defined in the Act. It is hard to define use as it covers varying and diverse circumstances. Trading activities are ever changing and multi faceted. The use of a mark amounting to infringement always depends upon the facts of each case. Therefore use may encompass different forms such as affixation to goods or to other objects such as containers and packing material and introduction of goods or services under the mark by advertisement and the like[14].
§ If an infringement action is instituted by a registered owner of a trademark, a defendant can file a counter claim for removal of the said mark if the registered owner has not used the mark for a period of 05 years.
§ If the registered mark has been allowed to be transformed in to a generic by the registered owner such mark can be removed from the register by filing an application to court.
§ If a mark has been wrongfully registered (which should not have been registered in terms of Sec 103- marks inadmissible on subjective grounds & 104- marks inadmissible by reason of third party grounds) an application can be made to court for nullity of the registered mark.
Anomi Wanigasekera – Sri Lanka Group
6
[1].Intellectual Property Act No.36 of 2003 - Sec. 121
[2] Ibid Sec 136
[3] Ibid Sec.121 (1)
[4] Ibid Sec. 121( 3)
[5] Ibid Sec 121 (4 )
[6] Ibid Sec 122
[7] Intellectual Property Act No. 36 of 2003 - Sec. 136
[8] Intellectual Property Act No. 36 of 2003 – Sec. 136 (2)(a)
[9] SC Appeal No. 20/89 decided on 31st March 1994
[10] Intellectual Property Act No. 36 of 2003 – Sec. 184
[11] Nullity on third party rights
[12] Removal for non user
[13] Intellectual Property Act No. 36 of 2003 – Sec. 117
[14] Dr. D.M. Karunaratne – A Guide to Law of Trademarks and Service Marks in Sri Lanka pg. 131