Chapter XXXIII of the Intellectual Property Law No. 36 of 2003 makes provision for the protection of geographical indications.

Geographical Indications (GI) are off shoots of indications of source and appellations of origin which were first accorded recognition in the Paris Convention. Indications of source is a broad concept and designates a country or place situated in that country from where the particular product in question originates.  Accordingly expression such as made in Sri Lanka would fall into this category.

Appellations of origin is a geographical names of a country or place in that country. The product just necessarily have its characteristics and quality linked with the geography of the place by way of for instance agro climatic conditions and human factors.

Geographical indications are indications identifying a particular good as originating in a country or locality in that country.  The quality of characteristics or reputation of such goods must be essentially attributable to the geographic origin.  Definitions would include not only geographical names but also any non-traditional names which have acquired significance.  Ceylon Tea would fall into this category.

There are has been no uniform approach by various countries in respect of protection of geographical indications. Some countries have enacted specific “sui generics” to protect GI’s.  Other protect GI’s under existing laws and still others afford protection by a combination of both.  For protection of GI’s Unfair Competition, Consumer Protection Laws protecting tradenames and marks and passing off and laws relating to false and misleading trade practices would also be relevant.

As far as international treaties and agreements are concerned the protection of GI’s are concerned they began with the Paris Convention for the protection of industrial property in 1883 where protection was afforded to appellations of origin.  In the recent past the TRIPS Agreement the WTO afforded protection of GI’s by promoting a standard definition of GI’s and prescribing certain minimum standards by which they should be legally protected by all WTO member States.  Some of the more important international agreements relating to GI’s are –

1. Convention for the protection of Industrial property 1883
2. Madrid Agreement for the repression of false or deceptive indications of source on goods 1891
3. General Agreement on tariffs and trade (GATT) 1947
4. Lisbon Agreement for the protection of appellations of origin and their international registration 1958
5. Agreement on trade related aspects of intellectual property right 1995.

Section 161 provides as follows –

“(1)     Any  interested  party shall be entitled to prevent –

• the use of any means in the designation or presentation of goods that indicates or suggests that the goods including an agricultural product, food, wine or spirit in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of goods; or
  

• any use of a geographical indication which constitute an act of unfair competition within the meaning of section 160;
  

• the use of a geographical indication identifying goods including an agricultural product, food, wine or spirit not originating in the place indicated by the geographical indication in question or identifying goods not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expression such as kind, type, style or imitation or the like.
  

(2)      The protection accorded to geographical indications under sections 103, 160 and 161 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.

(3)      In the case of homonymous geographical indications for goods including an agricultural product, food, wine or spirit, protection shall be accorded to each indication, subject to the provisions of subsection (2) of this section. The Minister in case of permitted concurrent use of such indications, shall determine by prescribed practical conditions under which the homonymous indications in question will be differentiated from each other, taking into consideration the need to ensure equitable treatment of the producers concerned and the protection of consumers from false or deceptive indications.

(4)      The Court shall have power and jurisdiction to grant an injunction and any other relief deemed appropriate to prevent any such use as is referred to in this section.  The provisions of Chapter XXXV of the Act shall mutatis mutandis, apply to such proceedings.

(5)      For the purposes of this section “geographical indications” shall have the same meaning as in section 101. “

At present in Sri Lanka whilst there is a provision for the protection of GI’s including injunctive relief, the form of registration of GI’s is generally in the form of certification marks.  For instance as far as Ceylon Tea is concerned Sri Lanka Tea Board grants a certification mark subject to the provisions contained in the Intellectual Property Act in respect of certification marks.  However there are other produce of Sri Lanka which may not be eligible at present for the grant of certification marks because there is no authority to grant such rights under the provision of Chapter XXIX.

Several exporters have pointed out to the Government that when seeking protection of Sri Lanka produce in foreign countries they find it easier and more convenient if Sri Lankan authorities could certify that the mark is in fact registered in Sri Lanka as a GI.  The Spice Council of Sri Lanka representing the exporters of spices and Export Development Board have constantly drawn the attention of the authorities that early measurers must be taken in this regard.  Accordingly the authorities have agreed on principle to make interim provisions relating to Ceylon Cinnamon and certain other products taking into account the provisions of Section 204 of the Act which enables the Minister from time to time to make regulations for the purpose of carrying out or giving effect to the principles of the Act and sub-section 2 provides that without prejudice to the generality of the powers conferred by subsection 1 the Minister may make regulations in respect of the matters referred therein –

Subsection 2 refers to 8 such matters . In terms of section 2 (2) the Director General shall be vested with the powers of the implementation of the provisions of this Act control and superintendence of the registration and administration of industry designs, patents, marks and any other matters as provided by the Act and the supervision and control of all persons appointed for or engaged in the implementation of the provisions of this Act. As provisions relating to GI’s are contained in Part IX of the Act the regulations could be made in respect of GI’s as well.  Accordingly the Government is expected to make regulations for the better protection of Ceylon Tea and Ceylon Cinnamon. Consideration is also being given as to whether a new Act should be enacted in respect of registration of GI’s.  Meanwhile regulations as an interim measure referred to are expected to be enacted early and this would at least to some extent further protect the exporters of Ceylon Tea and Ceylon Cinnamon and other spices.

In Sri Lanka Intellectual Property is protected by the provisions of the Intellectual Property Act No 36 of 2003 which replaced the Code of Intellectual Property Act No. 52 of 1979. The 1979 Statute was based on the WIPO Model Law. Prior to the 1979 Statute the Sri Lankan law was governed by the Trademarks Ordinance No. 15 of 1925 which was based on the pre 1938 English Law. Prior to the Code of Intellectual Property Act No. 52 of 1979 there were several Statutes relating to Patents, Designs, such as the Trademark Ordinance, Merchandise Ordinance, and Designs Ordinance. One of the earliest Statutes was the Invention Ordinance No. 6 of 1859 which was replaced by the Inventions Ordinance No. 16 of 1892 which in turn was replaced by the Patents Ordinance No. 15 of 1906. The first Ordinance relating to the trademarks was Trademarks Ordinance No. 14 of 1888 which was replaced by the Trademark Ordinance No. 15 of 1925. The first law relating to Industrial Designs was the Designs Ordinance no. 7 of 1904. The first Copyright Law of Sri lanka was the Copyrights Ordinance of 1908. The Copyrights Ordinance No. 20 of 1912 supplemented the English Copyright Act of 1911. The Ceylon Independence Act 1947 made the English Copyright Act 1911 applicable in Sri Lanka after independence. Sri Lanka is also a party to several international treaties such as the Madrid Agreement for Repression of false or deceptive indication of source on goods, Nirobi Treaty for protection of Olympic symbol, the Patent Co-operation Treaty the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright Convention, The Convention establishing the World Intellectual Property Organisation, The Agreement on Trade related aspects of Intellectual Property Rights (the TRIPS Agreement) and the Trademark Law Treaty.

There is provision under the Statute for registrations of Patents, Industrial Designs and Trademarks. There is no provision relating to registration of Copyrights in Sri Lanka and the copyright holder would have to establish his rights. There is also no separate provision for registration of Geographical Indications in Sri Lanka although Geographical Indications are protected under the Intellectual Property No. 36 of 2003.

Article 41 of the TRIPS requires every WTO member contracting state to provide effective means of enforcing intellectual property rights. In compliance with this provision the Statute makes a provision for effective enforcement of Intellectual Property rights. , the foundation for a stringent enforcement mechanism is created by the Intellectual Property Act to provide effective protection to all categories of Intellectual Property Right holders.

The current system for enforcement entails a combination of judicial remedies both civil and criminal, administrative remedies and remedies at common law.

 

Judicial Remedies

The statutory mechanism for enforcement is mainly based on the Intellectual Property Act No 36 of 2003.

Civil action can be instituted before the Commercial High Court[1] of Sri Lanka to combat infringement or imminent infringement of Intellectual Property Rights under s 170, and to protect acts against Unfair Competition in relation to Intellectual Property under s 160 (7) of the Act.

The Act makes provision to obtain injunctive relief and claim damages for loss resulting from acts of infringement or unfair competition. In addition, court is vested with power to order the impounding[2], and disposal of infringing goods outside the channels of commerce[3] and grant such other relief the court deems just and equitable.

Provisional protection in the form of Enjoining Orders and Interim Injunctions exist to maintain the status quo and prevent further violations until conclusion of the main judicial proceedings[4].

Infringement of copyright and other registered intellectual property rights, willfully or knowingly, also constitute a criminal offence liable for conviction before the Magistrate Court under Chapter XXXVIII of the Intellectual Property Act. Sanctions if found guilty are in the form of imprisonment and fine, with a maximum penalty of rupees five hundred thousand or imprisonment for period of six months or both. Second or subsequent convictions will give rise to a penalty double the amount of such fine or period of imprisonment. Criminal sanctions are further imposed under s 475 of the Penal Code for misappropriation of property-marks.

To strongly deter illegal acts of counterfeiting s 186 (2) of the Act creates the sale, possession for sale or any purpose of trade or manufacture, goods or things to which any forged Mark or false trade description is applied, or any Mark so nearly resembling a registered Mark so as to be likely to mislead, is falsely applied, as an offence. Once convicted will be liable to a fine not exceeding rupees five hundred thousand or imprisonment for a term of two years or both, with double the sentence for each subsequent conviction.

Criminal proceedings can be instituted on these grounds before the Magistrate Court by the right holder, assignee or licensee, directly by way of a Private Plaint[5] or by a Plaint filed by the Police. A complaint can be lodged by the Intellectual Property Right holder with the Commercial Criminal Division of the CID who upon investigation may institute proceedings before the Magistrate Court.

A special Anti-Piracy and Counterfeit unit attached to the Criminal Investigation Department (CID) of the Sri Lanka Police was set up in 2010 for investigation and curtailment of piracy and counterfeiting.

Over the years the CID has taken active initiative to raid and prosecute considerable number of traders engaged in illegal reproduction of songs of popular local music groups and singers before Magistrate’s Courts for selling, possessing and displaying for sale counterfeit CD’s and DVD’s.

To curb software piracy the CID has conducted successful raids across the country. Notably in 2010 the CID raided a limited liability company suspected of infringing the intellectual property rights of the Business Software Alliance members, Adobe, Autodesk and Microsoft by using pirated and unlicensed software in the course of running its business. The joint raid which took place in Ratmalana and Horana involved the seizure and examination of over seventy computers installed with an estimate of over 120 copies of pirated software valued at an alleged amount of Sri Lanka Rupees Ten Million (Rs 10,000,000).

Similarly the same year a successful raid was conducted by the CID with the assistance of Perkins who has the largest population of diesel engines in Sri Lanka. A large quantity of 1,698 counterfeit Perkins oil filters, crank shafts etc were seized. The offenders appeared in court and thereafter pleaded guilty to the charges and were imposed with a fine. A large sum of money was paid to Perkins as compensation under the Intellectual Property Act by the accused. A second phase of raids was conducted by the CID, in Kurunegala, Matara and Hambantota and a quantity of 496 counterfeits were seized.

In 2012 the CID took action to minimize the circulation of counterfeit merchandise during the ICC World Twenty20 held in Sri Lanka. Series of raids were conducted on retailers in the Pettah and Boralesamuwa areas who were producing large quantities of fake team “event” shirts. The raids followed a complaint to the police filed by the ICC relating to the protection of registered trademarks and logos associated with the ICC World Twenty20 Sri Lanka 2012[6].

In 2013 a large scale computer retailer situated at a leading IT mall in Colombo was raided for selling branded laptop computers installed with suspected pirated software. A number of devices installed with suspected pirated software were taken into custody and were produced before court.

Up to 2013 a total of 102 cases on Intellectual Property Rights were filed before courts citing software piracy[7].

More recently the Police successfully conducted several raids against distributors, re-sellers and importers of counterfeit Microsoft certificates of authenticity (‘COA’). The raids led to the seizure of over 500 copies of counterfeit Microsoft Windows 7 COAs[8].

The largest ever raid carried out in Sri Lanka was upon a complaint made by Disney Enterprises Inc. A warehouse and two other retail shops were raided by the CID for selling and distributing pirated Disney Products in Colombo and several counterfeit stationery items with Disney characters including stickers, pencil cases, bags amounting to nearly 45,000 articles were seized[9].

While stringent enforcement of Intellectual Property Rights is clearly visible under the criminal law, a strong desire to increase public awareness as to infringement of Intellectual Property Rights has come to the fore. Publication of cautionary notices in the print media and reporting of raids in the media are some of the means adopted by the Sri Lanka Police to deter acts of infringement.

 

Administrative Remedies

Intellectual Property Act

In the realm of Copyright Infringement, s 22 (3) of the Intellectual Property Act entitles the right owner aggrieved by any infringement of his rights to make an application to the Director General of Intellectual Property. An inquiry will be conducted and the decision of the Director General shall be binding on all parties. An appeal can be preferred to the Commercial High Court against such decision.

In Trademark matters, s 111 (10) entitles any person to contest the registration of a Trademark by filing a Notice of Opposition based on s 103 (objective grounds) and s 104 (prior rights) of the Intellectual Property Act.

Under s 104 any registered owner of a Trademark with prior rights or owner of an unregistered mark having prior use or mark known in Sri Lanka can contest such registration.

A Notice of Opposition must be filed within the statutory period of opposition (three months from publication of the contested mark). Once received, the Director General shall issue notice to the Applicant of the contested mark to file Observations and thereafter fix an inter-parte inquiry before the Director General. This decision will be final and binding. An appeal can be preferred to the Commercial High Court.

This mechanism is beneficial to international brand owners in protection of their rights. Several opposition proceedings are instituted before the National IP Office each year, some of them proceed to the inquiry stage.

 

Customs Ordinance

The cross border protection of Intellectual Property Rights is predominantly governed by the Customs Ordinance No 83 of 1988.

To comply with the international obligations created by ratification of the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods and the TRIPs Agreement new provisions were introduced by the Intellectual Property Act.

S 125 A of the Customs Ordinance prohibits importation and exportation of counterfeit trademark goods, pirated copyright goods and any other goods which contravene the provisions of the Intellectual Property Act. Violation shall entitle the customs authorities to forfeit the goods and dispose outside the channels of commerce.

Under s 125 B of the Ordinance[10] the owner of any registered trade mark or holder of copy right or any other Intellectual Property rights may make an application to the Director General of Customs requesting the Customs to suspend clearance of imported/exportation of goods that are suspected of being counterfeit or pirated. A prima facie case of infringement must be established to the satisfaction of the Director General of Customs.

If the Application for suspension is accepted the customs shall suspend the release of goods. The detention shall remain in force initially for a period of fourteen (14) days and extended at the option of the Director General of Customs[11]. If within a period of fourteen working days after the applicant has been served notice of the suspension, the Director General of Customs is not informed of the institution of court proceedings in respect of the release of any goods suspended the goods shall be released[12].

The Customs may on its own initiative 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.

To facilitate performance of this ex-officio action in enforcement of Intellectual Property Rights, the Customs Department has established an Intellectual Property Rights Enforcement Unit.

Intellectual Property Right holders who are desirous of safeguarding their rights could register with the aforesaid Unit of the Sri Lanka Customs Department by furnishing information and documentary evidence to establish Intellectual Property Right ownership. This registration process was introduced in 2010, 42 trademark owners have registered with the Customs from 2010 to 2012[13].

Remedies at Common Law

In recent times cease and desist letters have proved to be an effective and expedient means of combating minor Copyright and Trademark infr

[1] High Court of the Provinces (Special Provisions) Act No 10 of 1996, Section 2; Intellectual Property Act No 36 of 2003, Section 205

[2] Intellectual Property Act No 36 of 2003, Section 22(2) (a) (ii)

[3] Ibid., Section 22 (2) (c) (d) and 170 (3)

[4] Ibid., Section 170 (6); Judicature Act No 2 of 1978 (as amended), Section 54; Civil Procedure Code 12 of 1895 (as amended), Section 662-667

[5] Code of Criminal Procedure Act No 15 of 1979 (as amended), Section 136 (1) (a)

[6] http://www.icc-cricket.com/world-t20/news/2012/media-releases/74350/icc-move-against-counterfeit-merchandise

[7] http://www.sundaytimes.lk/130224/business-times/wipo-pledges-to-assist-sri-lankas-ipr-protection-initiatives-33793.html

[8] http://www.sundaytimes.lk/140406/business-times/police-seize-fake-microsoft-goods-in-raids-91205.html

[9] http://www.thesundayleader.lk/2013/09/29/largest-ever-fake-disney-raid-in-sri-lanka/

[10] Regulations published in Gazette Extraordinary No 1523/22 15^th November 2007

[11] Ibid., Article 4 and 5

[12] Ibid., Article 6

[13] http://www.sundaytimes.lk/130224/business-times/wipo-pledges-to-assist-sri-lankas-ipr-protection-initiatives-33793.html