- Relationship between Designs and Trademarks-

Transcription

1 Special Topic APAA Design Committee Questionnaire (2007) - Relationship between Designs and Trademarks- Country Name : Sri Lanka : Surani Wickramaratna Q1. What subject is protected under the Design (Patent) Law or Trademark law? 1.1 DESIGN LAW Typeface Logo/sign Ornamentation Product Shape Portion of a product, which is not a component part 1.2 TRADEMARK LAW Typeface Logo/sign Ornamentation Product Shape Portion of a product which is not a component part Q2. According to the applicable law, is subject matter that is dictated essentially by technical or functional consideration excluded from: (a) Protection as a Trademark: (b) Protection as a Design: Q.3. Is there any cross-examination between Industrial Design Applications and Trademark Applications before such applications are registered?. Q.4. Treatment of Registered Designs when there is a conflict between a Registered Design and a Registered Trademark When there is a conflict between a Registered Design and a Registered Trade mark, will the Design Registration be invalidated by an invalidation trial? The Registered Design may be invalidated in an invalidation trial (called a Nullity Action in Sri Lanka) if the Trademark has been filed on a date prior to the Design, as it would not meet the requirements of novelty.

2 If so, who can file such an invalidation trial? Any person having a legitimate interest or any competent authority including the Director General of Intellectual Property Must the owner of the registered design right stop commercially working their registered design?. According to Section 61 (1) of the Intellectual Property Act, upon a final decision of Court declaring nullity of the registration of a Design, the registration is deemed to have been null and void from the date of such registration. Until final determination of the action, an enjoining order/ interim injunction can be sought to stop the owner of the design from commercially working their design. Q.5. Treatment of Registered Trademark when there is a conflict between a Registered Design and a Registered Trademark When there is a conflict between a Registered Design and a Registered Trademark, will the Trademark Registration be invalidated by an invalidation trial? If there is a conflict an action for nullity of a Trademark can be made by proving that the mark is precluded under Section 104 (marks inadmissible by reason of third party rights, in particular Section 104 (1) (e) which provides that the Director General of Intellectual Property shall not register a mark which infringes other third party rights or is contrary to the provisions relating to the prevention of unfair competition) If so, who can file such an invalidation trial? Any person showing a legitimate interest or any Competent Authority including the Director General of Intellectual Property Must the owner of the registered trademark stop commercially working their registered trademark?. According to Section 135 (1) of the Intellectual Property Act, upon a final decision of Court declaring nullity of the registration of a Mark, the registration is deemed to have been null and void from the date of such registration. Until final determination of the action, an enjoining order/ interim injunction can be sought to stop the owner of the trademark from commercially working their mark.

3 -3- Q.6. Difference of infringement standards for Design Rights and Trademark rights (with regard to three dimensional trademarks) Please explain the standard for determining Design Right infringement. The owner of a registered design has the exclusive rights to a) reproduce and embody such design in making a product b) import, offer for sale, sell or use a product embodying such design c) stock for the purpose of offering for sale, selling or using, a product embodying such design d) assign or transmit the registration of the design e) conclude licence contracts Any person who does any of the above acts without the consent of the owner of the design commits an infringement of the Design rights. It shall also be unlawful for a person without obtaining the consent of the owner to reproduce a registered design which differs in minor respects or to embody a registered design in a type of product different from a product embodying the registered design Please explain the standard for determining Trademark Right infringement. The owner of a registered Trademark has the following exclusive rights to a) use the mark b) assign/ transmit the registration of the mark c) conclude licence contracts Any person who does any of the above acts without the consent of the owner of the Trademark commits an infringement of the Trademark rights. Without the consent of the registered owner third parties are also precluded from : a) any use of the mark, or a sign resembling it in such a way as to be likely to mislead the public, for goods or services in respect of which the mark is registered or for similar goods or services in connection with which the use of the mark or sign is likely to mislead the public; and b) any other use of the mark, or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interests of the registered owner of the mark

4 -4- The application (whether by way of printing, painting or otherwise) or the affixing in Sri Lanka by a third party, of a mark or any sign resembling such mark in such a way as to be likely to mislead the public, on or in connection with, goods in respect of which such mark has been registered (whether such goods are intended for sale in Sri Lanka, or for export from Sri Lanka) shall be deemed to be a prohibited act Please explain differences in these standards for determining Infringement of Design Rights and Trademark Rights. In cases of an infringement of a Design there is no requirement to prove a misleading of the public by the use of the infringing design. In cases of an infringement of a Trademark in addition to it being established that the rights of the owner have been affected it should be shown that the public would be misled by the use of the infringing Trademark. Q.7. Protection of trademarks (e.g. three-dimensional trademarks) after the expiration of design rights Is it possible to protect a trademark after expiration of a Design Right if the appearance of the trademark and design are same., provided that the Trademark is not inadmissible on objective grounds or by reason of third party rights If not, please explain the reason thereof and statute of the prohibition. N/A Q.8. Dual protection 8.1. Have you ever filed both Trademark Application and Design Application for same products? (if you have not filed such applications, do you know of an example of such applications in your jurisdiction?) If so, please explain for what kind of products are targeted. Cartons for Tea, Bottles

5 -5- Q.9. Problems between Design Law (or Patent Law) and Trademark Law. 9.1 Please explain any other problems that exist for use of Design Law (or Patent Law) and Trademark Law, to protect three dimensional designs or marks. There are no other problems that exist for the use of the Design law and the Trademark Law in Sri Lanka to protect three dimensional designs or marks. - THE END -