TRADE MARKS AND

SERVICE MARKS

Maxwell Ranasinghe- Attorney at Law

These are governed by Intellectual Property Act
Definitions of Trade Marks and Service Marks
A trademark is any visible sign serving to distinguish the goods of one
enterprise from those of others enterprises.
A service Mark is any visible sign to distinguish the services of one
enterprise from those other enterprises
Trade marks are attached to products and Service marks are
attached to services.
Other than that there is no practical difference in both. Same
principles of Law are applicable for both.
• Functions of a trade mark
– It serves to distinguish goods or services of different enterprises .
– It indicates the source and quality of the goods and services to the
consumer
– It enables the owners to individualize the mark and promote the product to
consumers
– It allows the owner to improve the quality of the product bearing the mark
to have an advantage over the competitive products.
– Marks significantly assists consumer to make their choices
• Exclusive right to a mark
• Upon proper registration one will get an exclusive right to use the mark
• The law does not make registration compulsory
• Even a non registered mark may seek legal redress under other laws such as unfair
competition. Under Common law “Passing off”( pretence of one person that his goods are
those of another).
• But it is always better to be registered under IPA to get better protection and rights
• What constitutes a mark { sec 102(3)}
• Any visible sign capable of distinguishing goods or services of different enterprise can generally constitute a lawful mark. A
mark may consists of
– Arbitrary or fanciful designations
– Names
– Geographical names
– Slogans
– Devices
– Letters
– Numbers
– Labels
– Combination or arrangements of colours and shapes of goods or containers etc.
• Admissibility of a mark
• A mark is admissible if it is not inadmissible under section 103 and 104
– 103 under objective grounds
• Shapes and forms imposed by inherent nature e.g.. Head as the trade mark for a cap
• Descriptiveness – if the mark resembles sign or indication which may in the ordinary
trade /life designate the kind , quality, purpose, value, place of origin, time of
production or supply of goods e.g.. Ruhune meekiri as a trade mark for curd
• Sec 103 (1) b
• Generic signs or indications
– If a mark resembles a sign that has become in the current language or established trade in
SL , a customary designation of the good. Then it cannot be given as an exclusive trade
mark.
– E.g.. All soft drinks sold by roadside venders on pavement are generally called
“Saruwath”. One may not be able to register “Saruwath” as his or her trade mark under
this provision, as it is the customary designation of the goods.
– Word does not become non descriptive by being misspelt. E.g.. Electrix for electical
apparatus
– However, descriptive word with other elements association of the product may be given .
E.g.. Mobitel , Celltel, Dialog etc.
◦ Marks incapable of distinguishing goods or services
A mark should always have a distinctive character. If not
it cannot serve as a mode of distinguishing the goods or
services of different enterprises. E.g.. Invented word will
create a distinctive character.
◦ Immoral, scandalous and antisocial marks
◦ Scandalous design
◦ -contrary to morality
◦ Offend racial or religious susceptibilities
◦ e.g.. Ghandi Samba, a cross or a Buddha’s image, a sign or image
considered by the general society as vulgar may not be registered as of this
provision.
◦ Fcuk him Fcuk her ( brand name of French Connection UK)
Scandalous …. marks
◦ Misleading marks
◦ Mark will not be registered if it is likely to mislead the public or the
trade as to the
◦ Nature
◦ Source
◦ Manufacturing process
◦ Characteristics
◦ Suitability for the purpose of goods/services concerned
• Names of individuals and enterprises
names can be registered subject to certain rules but it should
be of actual persons living or an existing organisation. ( a mark
which doe not represent in a special or particular manner the
name of an individual or enterprise shall not be registered. )
•
• Geographical names and surnames
Generally( according to its ordinary significance =normal understanding)
a geographical name or surname is not allowed to be registered as a trade
mark. However, if it can be proved that name or place is of significance
for the trade name to distinguish the product it should be possible to
register.
• E.g.. Wickremarachchi Ayurveda Drugs
• Jinadasage Talaguli
• If a name to be registered as a trade mark it should be special and
particular manner where it could serve as a mark of distinction.
Therefore, simply printed, type written or written in ordinary
hand may not be treated as special or particular manner. Surnames
alone cannot be registered generally, therefore, name here denotes
the whole name or at least two names together.
• E.g.. Maxwell Ranasinghe
◦ Admissibility of Mark under section 104
This section deals with marks inadmissible due to 3rd party rights
1. A Mark which is likely to misleading resemblance to other lawfully filed or
registered marks ( sec 104 (1))
◦ ( likely – not necessarily involve an intention to deceive. Merely causing
confusion would be sufficient)
• 2. A mark which resembles in a such a way that is likely to mislead
the public of an unregistered mark used in SL by 3rd party in the
past and the applicant could not be aware of it.
• Duration of registered mark
• Registration is valid for 10 years. On the expiration of the period, it
could be renewed for further periods of 10 years
Registration ◦ Trade marks, Patents, Industrial designs (other
than copy rights) have to be registered as per the
IPA
◦ Once the application is filed, the trade Mark ,
Patent or Industrial Design will be gazetted.
Objections can be made within 3 months to
Director General Intellectual Property
◦ If no objections are made it will be registered.
◦ If objections are not made but found later by the
original owner still he can go to court for nullity.
Read Chapter XXXII on Unfair competition
◦ 160 (1) (a) IPA

◦ Any act or practice carried or engaged

in, in the course of industrial or commercial
activities, that is contrary to honest practice shall
constitute an act of unfair trade
◦ Any act or practice carried or engaged
in, in the course of industrial or commercial activities, that causes, or is likely to cause,
confusion with respect to another’s enterprise or its activities, in particular, the products or
services offered by such enterprise, shall constitute an act of unfair competition.

( there are 9 subsections under this Sec 160 as to unfair competition

and undisclosed information and u requested read the know more
about it)