IP/N/6/LKA/1  
 
15 January 2015  
(15-0262)  Page: 1/14  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English  
 
 CHECKLIST OF ISSUES ON ENFORCEMENT1 
RESPONSE FROM SRI LANKA 
Civil and Administrative Procedures and Remedies 
(a)  Civil judicial procedures and remedies 
 
1.  Specify the courts which have juri sdiction over IPR infringement cases 
 Commercial High Court established for the Western province under the High Court of the Provinces 
(Special Provisions) Act No. 10 of 1996 is vested wi th the sole and exclusive civil jurisdiction in 
respect of litigation involving IP rights.   
Any person aggrieved by a decision of the commercial High Court may prefer an appeal to the 
Supreme Court against such order with the leave of the Supreme Court first had and obtained.   
2. (a)  Which Persons have standing to assert IPRs? 
 Any person  to whom any recognized IP rights are granted under the Intellectual Property Act of Sri Lanka (Act No. 36 of 2003) have standing to assert IPRs where any person or a body of 
persons  is threatening to infringe or has infringed his rights or is performing acts which make it 
likely to infringe a right under the Act.    
In the case of Unfair competition - 
 Any person or enterprise or association of producers or traders aggrieved by any act or practice 
constituting an unfair competition may institute proceedings in court to prohibit the continuance of 
such act or practice and obtain damages for losses suffered as a result of such act or practice.  In the case of Geographical indications – 
 
Any act or practice carried out or engaged in, in the course of industrial or commercial activities that is contrary to honest practices in relation to geographical indications as provided in 
section 160 of the Act may constitute an act of unfair competition and a civil action can be 
instituted seeking an injunction and any other re lief deemed appropriate to prevent any use of 
such geographical indications.   
 
In the case of Undisclosed information -   Any act or practice carried out or engaged in, in the course of industrial or commercial activities 
that is contrary to honest practices in relation to undisclosed information as provided in the Act 
(se 160 (6) may constitute an act of unfair competition.  Civil proceedings can be instituted for prohibiting the continuance of prohibited acts of undisclosed information and obtain damages for 
losses suffered. Criminal remedies- Unlawful disclosure of such information is a criminal offence 
and on conviction is liable to a fine not exceeding five hundred thousand rupees or to imprisonment of either description for a term not exceeding 6 months or to both such fine and 
imprisonment. 
 
                                               
1 Document IP/C/5. IP/N/6/LKA/1 
 
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  It is important to note however, that in case of license contract relating to an industrial design, 
patent or mark or any other matter provided by the Act and in the absence of any provision to the contrary in such contract, the licensee is required to request the registered owner to apply for an injunction, in case of an infringement or threatened infringement of his rights or acts being 
performed in relation to such infringement. If the registered owner fails to apply for an injunction 
within 3 months from the receipt of the said request, the licensee may apply for an injunction in his own name, with notice to the registered owner who may join in the proceedings. However, the 
court may, on application of the licensee, prior to the said period grant an injunction if he proves 
that immediate action is necessary to avoid substantial damage. (sec. 171)   (b)  How they may be represented? 
 
In a Civil Court, they may be represented by his recognized agent or registered attorney duly appointed by such right holder or such recognized agent to act on behalf of such party.  
 
(c)  Are there any requirements for mand atory personal appe arances before the 
Courts by the right holder? 
 
Personal appearance is not mandatory in civil litigation. An appearance in a court of law can be made by a right holder in person or his recognized  agent or registered attorney duly appointed by 
such right holder or such agent to act on behalf of such party.  
 
3. What authority do the judicial authorit ies have or order, at the request of an 
opposing party, a party to proceedings to pr oduce evidence which lies within its control? 
 
The Court has the power to order the opposing party to tender any evidence that is relevant to the substantiation of the claim and is in his control. This order may be made where such a party has 
presented reasonably available evidence in support  of the claim and has specified that evidence 
relevant to the substantiation of such claim lies in the control of the opposing party. However, the order for the tendering of such evidence will be made subject to the protection of confidential information (se. 179 (3) (iii). 
 
4.  What means exist to identify and prot ect confidential information brought forward 
as evidence? 
 
The order for tendering of such evidence will be made subject to the protection and identification 
of confidential information.  Thus, the order may be made where such a party (i) has presented 
reasonably available evidence in support of the claim and (ii) has specified that evidence relevant 
to the substantiation of such claim lies in the control of the opposing party.   5.  Describe the remedies that may be orde red by the judicial au thorities and criteria, 
legislative or jurisprudential, for their use: 
 (a)  Injunctions  –  
 
Where a person to whom a recognized rights grante d under the Act, proves to the satisfaction of 
the court that any person is threatening to infringe or has infringed his rights or is performing acts 
which makes it likely to infringe a right under the Act, the court may grant an injunction 
restraining any such person from commencing or continuing such infringement or performing such acts.   
An injunction may take the form of interim or permanent and may be available in the infringing 
proceedings. Where it appears to court that the object of granting an injunction would be defeated by delay, it may until the hearing and decision of the application for an injunction, enjoin the 
defendant for a period not exceeding 14 days in the first instance. The court may, for good and 
sufficient reasons, which shall be recorded, extend  such periods not exceeding 14 days at a time. 
Any disobedience of such injunction or enjoining order so granted may be enforced, by punishment 
of the offender as for contempt of court.  
 IP/N/6/LKA/1 
 
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  (b)  Damages, including recovery of profits and expenses, including attorney's fees  -  
 In the same infringing action the court has the power to order damages (170 (1). The court has 
the power to order the infringer to pay the right holder such actual damages as adequate to 
compensate him for the loss suffered by him, by reason of such infringement, in addition to the 
recovery of profits that may have been made (170 (3).   
The right owner has, however, an option to elect at any time before judgment to recover, instead 
of proved actual damages, an award of statutory damages for any infringement involved in the 
action of a sum not less than Sri Lanka rupees 50,000/- and not more than Sri Lankan rupees 1 million as the court may consider appropriate and just (170 10). (See also section 22 (2) (b) as 
regards copyright and related rights.) 
 (c)  Destruction or other disposal of infringing goods and materials/implements for their 
production - 
 The court has the power to order the infringing goods to be disposed of outside the channels of 
commerce or to be destroyed without the paymen t of any compensation (170 (3) (ii). (See also 
se 22 (2) (c) as regards copyright and related rights).  (d)  Any other remedies  - 
 
(a)  The court has the power to order other relief as the court may deem just and equitable, which may include: 
 
(i)  Keeping accounts of profits; 
 
(ii)  The Act empowers the court to make the following orders in respect of copyright 
infringement:  
 
(a)  to order the impounding of copies of works or sound recordings suspected of 
being made, sold, rented or imported without the authorization of the owner 
where the making, selling, renting or importation of copies is subject to authorization and their implements could be  used in the creation of copies of 
such infringing goods (22 (2) (ii); 
 (b)  to order destruction or other reasonable manner of disposing of copies made in 
infringement of any right protected und er the Act, is  available and their 
packaging outside the channels of commerce in such a manner as would avoid harm to the owner  of the rights, unless he requests otherwise; (22) (2) (c); 
 
(c)  to order, where there is a danger that implements may be used to commit or 
continue to commit acts of infringement,  destruction or other reasonable manner of disposing of such implements outside the channels of commerce so 
as to minimize the risks of further infringements, including the surrender to the 
owner of the rights (22 (2) (d).  
 
(d)  where there is a danger that acts of infringement  may be continued, the court 
shall make such orders as may be necessary prevent such acts being committed. 22 (2) (e); 
 
(e)  Payment of expenses caused by the infringement including legal fees. 
 
(b)  Unfair competition - is defined in the Intellectual Property Act of 2003 as follows: "Any 
act or practice carried out or engaged in, in the course of industrial or commercial activities 
that are contrary to honest practices shall constitute an act of unfair competition." 160 (1).The Act recognises the following acts in particular constituting unfair competition.
 
 
1. Causing confusion with respect to another's enterprise or its activities. 
2. Damaging another's goodwill or reputation.  
3. Misleading the public (any act or practice which misleads or likely to mislead the 
public in respect of another's enterprise or its activities) IP/N/6/LKA/1 
 
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  4. Discrediting another's enterprise or his activities. (any false or unjustifiable allegation 
in the course of industrial or commercial activity which discredits or is likely to 
discredit another's enterprise.) 
5. Disclosure, acquisition or use by others of secret information. (any act of practice in 
the course of industrial or commercial activities that results in the disclosure, 
acquisition or use by others of undisclosed information without the consent of the person lawfully control of that of that information.) The protection against acts of 
unfair competition can be enforced by means of civil remedies as provided in 
section 160 (7) and the reliefs include injunctions and damages.  
 
(c)  Common law remedy of Passing off -  The la w of passing off, which  is a form of tort 
known to the English  common law means that "nobody has any right to represent his goods 
as the goods  of somebody else" (Reddaway v Banham (1896)  AC 199 at 224). The five elements of passing off as recognised in Reckitt & Coleman Products Ltd v Borden Inc., as 
(1) Reputation or goodwill attached to the goods or services (2) Deception 
(Misrepresentation of that goodwill) (3) actual  damage or reasonable likelihood of damage. 
(1990) 1 All E.R. 873)  
 
The case law developed under the former Trademarks Ordinance in Sri Lanka demonstrates that the tort of passing off is recognised in Sri Lanka. In the case of Kapadiya vs. Mohamed 20 NLR 314 at 317 Shaw J. stated that although the passing off action is not specifically 
reserved in the statutory law (Trade Marks Ordinance), such an action can be successfully 
maintained under our law.  The provisions relating to unfair competition do not interfere with the common law tort of passing off and the passing off continues to exist  in Sri Lanka 
along with the action of unfair competition. The tort of passing off comes under unfair 
competition and its elements are incorporated in the Sri Lankan Act itself. However, unfair competition is much wider than passing off and it is only one remedy of unfair competition. 
The tort of passing off it has now developed into a new independent cause of action and 
both actions can be successfully maintained in Sri Lanka.   The remedies under passing off are injunctions and/or damages or as an alternative an 
account of profits. Additionally, an order may be granted for the delivery or destruction of 
articles to which the name or mark has been applied or an order for the obliteration of such marks or names.  
 
6. In what circumstances, if any, do judi cial authorities have the authority to order 
the infringer to inform the right holder of th e identity of third persons involved in the 
production and distribution of the goods or se rvices found to be infringing and of their 
channels of distribution?  The court has the power to order the infringer to inform the right holder of the identity of the 
persons involved in the production and distributi on of the infringing goods or services and of 
channels of distribution used by them. The court may, however, make this order other than in an instance where it would not be in proportion to the seriousness of the infringement (170 (4) 
 
7. Describe provisions relating to the indemnification of defendants wrongfully 
enjoined. To what extent are public authoritie s and/or officials liable  in such a situation 
and what "remedial measures " are applicable to them? 
 Where the interim measures taken under section 170 (6) are modified or revoked or it is subsequently found that there has been no infringement of a protected right, the court has the 
power to order the plaintiff, upon the request of the defendant who has been wrongfully enjoyed 
to pay appropriate compensation for any injury caused (170 (8).  
Further, public officials are protected from any suit or prosecution under the section 170 (11) of 
the Act where they have acted in good faith and in pursuance of any provisions of the Act. The 
said section reads as follows: 
 
"No suit or prosecution shall lie against any officials for any act which is done in good faith and in pursuance of any provisions of this Act."  IP/N/6/LKA/1 
 
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  8. Describe provisions governing the leng th and cost of proceedings. Provide any 
available data on the actual durati on of proceedings and their cost. 
 The length of the judicial proceedings depends on the nature of the IPR dispute. In many infringing 
litigation, the proceedings are terminated after the interim injunction is either allowed or refused 
since the parties either withdraw the case or settled. The length of such proceedings may take 6 months to 1 year. If the parties insist on litigating on substantive matters, the length of the 
proceedings depends on the nature of issues involv ed in the litigation and the number of witnesses 
to be called and the court calendar and the appeal procedure in case of an appeal (if any) to the 
Supreme Court with leave of the Supreme Court first had and obtained.  
The data however, is not available on cost of pr oceedings since costs depend on the nature of the 
IPR dispute and the attorney's fees. However, after the litigation is over, bill of costs is filed and it may be enforced as if were an order of the Court.  
 
 (b)  Administrative proceedings and remedies  
9. Reply to the above question in relation  to any administrative procedures on the 
merits and remedies that may result from these procedures 
 The Act provides an alternative remedies for redress for aggrieved parties in IP violation cases by 
filing administrative complaints before the Direct or-General of Intellectual property. The Director-
General has the original quasi-judicial functions in the administration of IP. The commencement of an administrative action before the Director-General is independent and without prejudice to the 
filing of an action with the regular courts.  
 (a) The Director-General has the power, on an ap plication being made in the prescribed form and 
manner by a person aggrieved by any of his copyrigh ts or related rights being infringed  or in any 
manner affected, and after due inquiry, to determine any question that may be necessary or expedient to determine in connection with such application. The decision of the Director-General shall be binding on the parties subject, however, to  the right of a party aggrieved by such decision 
to make an appeal to the Commercial High Court (22 (3). 
 The words "...on an application being made …. by a person aggrieved by an y of his rights under 
this Part being infringed or in  any manner affected…" imply that the scope of the subject matter 
covers not only infringement of rights but also  rights affected by any other manner such as 
ownership of rights, contractual relationships, payment and quantum of royalties, restraining a 
defendant from committing or continuing the acts  of infringement. The person aggrieved by the 
decision of the Director-General may make an appeal to the Commercial High Court and unless such Court issues an interim order staying the operation of the decision of the Director-General, such decision shall continue to be in force until the matter is decided by the Court. 
 
Remedies: The Director-General, after due inquiry, may impose the following administrative remedies in respect of such application: 
 
(i)  decide that the rights of any party ha ve been infringed and restraining a defendant 
from committing or continuing the acts of infringement; 
 
(ii)  decide that any other right of a right holder has been affected such as ownership of 
rights, contractual relationships, payment and quantum of royalties etc. and make necessary orders accordingly.  
 
(iii)  decide that rights of the owners have not been infringed;  
(iv)  decide any other rights of the right holders have not been affected. 
 IP/N/6/LKA/1 
 
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  Provisional Measures 
 (a)  Judicial measures 
 10.  Describe the types of provisional measur es that judicial authorities may order, and 
the legal basis for such authority 
 (a)  Interim Injunctions-where any person is threatening to infringe or has infringed his rights or 
is performing acts which makes it likely to infringe a recognized right of a right holder (170 (1), 
the court has the power to make an appropriate interim order under section 170 (6). Interim injunctions may also include orders directing the opposing party to tender evidence to the substantiation of a claim including materials or implements or documents in the possession of the 
opposing party and used in the creation of infringing goods or production and/or distribution of 
these goods and the documents relating thereto in the possession of the defendant. (170 3) (b).  
Legal Basis of issuing Injunctions- Its object is to keep matters in status quo until the question at 
issue between the parties can be determined. legal principles governing the question of issuing or 
refusing to issue an injunction were laid down in Sri Lanka in the case of Felix Dias Bandaranaike 
v. State Film Corporation (1981) 2 SLR 218. It was held in this case that in deciding whether or 
not to grant an interim injunction the following sequential tests should be applied:  
1.  Has the plaintiff made out a strong prime facie  case of infringement or imminent 
infringement of a legal right to which he has title, that is, that there is a serious 
question to be tried in relation to his legal rights and that the probabilities are that he will win;  
 
2.  In whose favour is the balance of convenience- the main factor being the 
uncompensatable disadvantage or irreparable damage to either party? In Yakkaduwe 
Sri Pragnarama Thero v. Minister of Education 71 NLR 506, 511 H.N.G.Fernando, C.J 
adopted the explanation of what is meant by  the expression ‘balance of convenience' 
as set out in Halsbury (3
rd. Ed. Vol. 51, p. 366):  
 
"Where any doubt exists as to the plaintiff's right or if his right is not disputed, 
but its violation is denied, the Court in determining whether an interlocutory injunction should be granted , takes into consideration the balance of 
convenience to the parties and the nature of the injury which the defendant, on 
the other hand, would suffer if the injunction was granted and he should ultimately turn out to be right and which the plaintiff, on the other hand, might 
sustain if the injunction was refused and he should ultimately turn out to be 
right…..The burden of proof that the inco nvenience which the plaintiff will suffer 
by the refusal of the injunction is greater than that which the defendant will suffer, if it is granted, lies on the plaintiff". 
 
The test for the proof of greater harm is that i rrespective of the availability of damages, if 
the claimant would suffer irreparable loss or damages and unless injunction is issued, the 
defendant is unlikely to satisfy the final judgment. Irreparable loss/injury- means that the 
injury is one which cannot be adequately compensated by damages. It means any wrong or damage done to another either to his person, rights, reputation or damage done to another 
either to his person, reputation, rights or pr operty. If damages cannot be capable of being 
accurately measured, it may constitute irreparable damages.  
 
3.  As the injunction is an equitable relief gr anted in the discretion of the Court, it has to 
be considered whether the conduct and dealings of the parties justify the grant of the 
injunction (ex- delay and suppression of material facts will be taken into consideration).  
 
(b)  Interim orders- 170 (6). The purpose of interim orders is to preserve for the trail evidence pending the disposition of the plaintiff's claim. Such orders can include: 
 
(i)  order for tendering of any evidence relevant to the substantiation of a claim of the 
right holder subject to confidential information. Such orders may also include:  
 IP/N/6/LKA/1 
 
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  (a)  the detailed description with or without the taking of samples of the infringing 
goods; (b) detailed description of the materials and implements used in the creation  of infringing goods or production and/or distribution of these goods and the documents relating thereto; (c) orders for the preservation of assets 
preventing the removal of  assets pending the disposition of the plaintiff's claim 
for damages where the defendant threatens or is about to remove or dispose of his property with intent to defraud the plaintiff (See se. 54 (c) of Judicature Act 
which support this position). 
 
(c)   The Court has the power to order interim measures relating to protection, ex parte , where 
appropriate, in particular (i) where any delay is li kely to cause irreparable harm to the right holder 
or (ii) where there is a demonstrable risk of evidence being destroyed (section 170 (6). 
 Legal Basis of making Interim Orders- The object of  interim measures is to preserve for the trail 
evidence in the possession of the defendant or prospective defendant, pending the determination 
of the action where any delay in preserving evidence is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.  
 
The applicant should satisfy court that (i) he has an extremely strong prima facie case that his claim will succeed on the merits; (ii) the damage , actual or potential, by such destruction of 
evidence to the applicant is very serious and delay in making an order is likely to cause irreparable 
harm to the right holder; (iii) the defendant is in the possession of incriminating evidence-
documents  or material and that there is a real possibility or demonstrable risk that, if he is forewarned, he may destroyed such evidence before any application inter parte  can be made. 
 
11.  In what circumstances ma y such measures be ordered inaudita altera parte? 
 
The court has the power to adopt provisional measures ex parte where appropriate, in particular 
where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed. The order is made on an ex-parte  application that 
is without the defendant's being given notice an d without his being heard. The defendant will 
become aware of the order when it is served on him. Thus, when an interim order is made ex-
parte,  the parties affected shall be given notice and shall on receipt of such notice be entitled to be 
heard as to whether the interim order should be modified or revoked (170 (7).  
 
12.  Describe the main procedures for the in itiation, ordering and maintenance in force 
of provisional measures, in pa rticular relevant time-limits and safeguards to protect the 
legitimate interests of the defendant 
 (a)  Interim Injunctions –A party seeking an interim injunction is required to present petition and affidavit except where the injunction is prayed for in  the plaint itself and in such case, the contents 
of the plaint shall be supported by an affidavit. No injunction in Sri Lanka will be issued without 
notice. However, where it appears to court that the object of granting an injunction would be defeated by delay, it may until the hearing and decision of the application for an injunction, the 
court may enjoin the defendant by making an enjoining order for a period not exceeding 14 days 
in the first instance and the court may for good and sufficient reason, extend for periods not exceeding 14 days at a time.  
 
The enjoining order and/or notice of injunction will be served on the parties affected and the 
grating or refusing to grant an interim injuncti on may be made upon a due inquiry after hearing 
the parties affected by such enjoining order or interim injunction sought. The order is based on 
affidavits, documents and written submissions and no  direct appeal will lie but only a leave to 
appeal with special leave having being obtained from the Supreme Court.   
The operation of the enjoining order so made may be vacated or suspended by the same court if it 
is satisfied that such order was obtained by supp ression or misrepresentation of material facts. 
There is provision to award compensation where a party obtains an injunction or enjoining order 
on insufficient grounds. The violation of an enjoining order has the same effect of an interim 
injunction and such violation of is a punishable with contempt of court.   IP/N/6/LKA/1 
 
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  (b)  Interim orders - A party seeking an interim order is required to present reasonably available 
evidence to support his/her claims by petition and affidavit with supporting documents that (i) his/her IP right has been infringed or is about to be infringed and  tendering of for the substantiation of the claim and is in the control of the opposing party is relevant including any 
materials and implements used in the creation of infringing goods or production and/or distribution 
of these goods and the documents relating thereto in the possession of the defendant (ii) ) his/her IP right has been infringed or is about to be infringed and  the defendant threatens or is about to 
remove or dispose of his assets accumulated or to be accumulated out of the infringing goods with 
intent to defraud the plaintiff (See se. 54 (c) of  Judicature Act which supports this position). 
 Such orders may be made upon an application of the claimant supported by an affidavit with 
supporting documents ex-parte  and the parties affected by such order will be entitled to notice and 
shall on receipt of such notice be entitled to be heard as to whether the interim order should be modified or revoked.(170 (7).  
 
In order to protect the legitimate interests of the defendant, the following provisions are included in the Act: (i) the court may direct the claimant to provide security or other equivalent assurance 
and also to prevent abuse of any interim orders so made (170 (9); (ii) where the interim measures 
taken are modified or revoked or it is subsequently found that there has been no infringement of a protected right, the court has the power to order the plaintiff, upon the request of the defendant 
who has been wrongfully enjoyed to pay appropriate compensation for any injury caused to the 
defendant (170 (8). 
 13. Describe provisions governing the length and cost of proceedings. Provide any 
available data on the actual durati on of proceedings and their cost. 
 The length and the cost of proceedings of IPR di sputes are not regulated by specific provisions. 
The length and the cost depend on the nature of the dispute.    
 
(b)  Administrative measures 
 
14.  Reply to the above questions in relation to any administrative measures 
 There are no specific administrative measures.     
 
Special Requirements Rela ted to Border measures 
15. Indicate for which goods it is possible to apply for the suspension by customs 
authorities of the release into free circulat ion, in particular whether these procedures 
are available also in respect of goods wh ich involve infringements of intellectual 
property rights other than counterfeit trad emark or pirated copyright goods as defined 
in the TRIPS Agreement (footnote to Article 51) . Specify together with  relevant criteria, 
any imports excluded from the application of such procedures (such as goods from 
another member of a customs union, goods in transit or de minimus  imports). Do the 
procedures apply to imports of goods put on the market in another country by or with 
the consent of the right holder and to goods destined for exportation? 
 The importation and exportation of counterfeit trad e mark goods or pirated copyright goods or any 
other goods in contravention of the provisions of the IP Act of Sri Lanka is prohibited in terms of 
amended section 101 of the Customs Ordinance (section 206 of IP Act).  
 Section 125A (1) of the Customs Ordinance provides that the importation of counterfeit trade mark 
goods or pirated copyright goods or any other good s in contravention of the provisions of the IP 
Act shall be prohibited and such goods shall be included among the goods the importation of which are prohibited under section 43 of the Customs Ordinance and included in schedule B of the 
Ordinance as prohibited goods.  
 Section 125A (2) of the Customs Ordinance provides  that the exportation of the goods referred to 
in subsection (1) shall be prohibited and such goods shall be included among the goods the 
exportation of which are prohibited under section 44 of the Customs Ordinance and included in schedule B of the Ordinance as prohibited goods.   IP/N/6/LKA/1 
 
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  The words "counterfeit trade mark goods or pi rated copyright goods or any other goods in 
contravention of the provisions of the IP Act" indicate that the prohibition applies not only to 
"counterfeit trade mark goods or pirated copyri ght goods" but to any other goods which involve 
infringements of intellectual property rights as defined in the TRIPS Agreement. 
 
Exception to importation  
(i)  The provisions of sections 125A and 125B shall not apply to small quantities of goods of a 
non-commercial nature contained in a traveller's personal luggage or forwarded in small consignments ( de minimus  imports)-125B (10).  
 
"Personal Baggage" means the permissible quantities  of articles and goods in-passenger baggage 
as the Director General of Customs, may from time to time determine. "Goods in small consignments" means any goods that arrive as bone fide gift or commercial or trade samples 
received by an individual or registered comp any as determined by the Director General of 
Customs.  
16. Provide a description of the main elem ents of the procedures relating to the 
suspension of the release of goods by custom s authorities, in particular the competent 
authorities (Article 51), the requirements fo r an application (Article 52) and various 
requirements related to the duration of su spension (Article 55). How have Article 53 
(security or equivalent assurance), 56 (indemni fication of the importer and of the owner 
of the goods) and 57 (right of inspecti on and information) been implemented? 
 
Suspension of goods by Customs Authorities- 
 Section 125B of the Customs Ordinance contains prov isions with regard to the suspension by the 
Customs ordinance of the goods imported in violation of intellectual property rights. Those 
provisions are as follows:  (1) A right holder, who has valid grounds to believe that the importation of counterfeit trade mark 
or pirated copyright goods or of any other goods in  contravention of the right holder's rights under 
the Act is taking place, may make an application in writing to the Director-General, of customs requiring him to suspend of the release of such goods into free circulation. 
 
(2) A right holder who makes an application under subsection (1) shall provide adequate evidence to satisfy the Director-General of Customs that ther e is a, prima facie, case of infringement of the 
right holder's rights under the Act and supply a sufficiently detailed description of the goods to 
make them readily recognisable by any officer of the Customs. (See Article 52). 
 (3) (a) The Director-General of customs shall have  the power to require an applicant to provide a 
security or equivalent assurance sufficient to protect the defendant and to prevent any abuse. 
(See Article 53)  
(b) Where pursuant to an application made under subsection (1), the Director-General of customs 
suspends the release of any goods into free circulation, he shall forthwith cause the importer and the applicant to be promptly notified the suspension. 
 
(4) If the Director-General of customs fails to receive any notice regarding the institution of proceedings in respect of the of release of any goods suspended under subsection (3), within a 
period not exceeding ten working days after the ap plicant has been informed of the suspension as 
provided for in subsection (3), he shall cause the goods to be released, provided all other 
conditions for importation or exportation have been complied with. (see- Article 55)  
(5) Where pursuant to an application made under subsection (1), the Director-General of customs 
has suspended the release of any goods into free circulation and the period referred to in subsection (4) has expired without the granting of any provisional relief by a Court, and provided 
that all other conditions for importation have been complied with, the owner, importer or 
consignee of such goods shall be entitled to have such goods released.  IP/N/6/LKA/1 
 
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  (6) Notwithstanding anything contained in the preceding provisions of this section, where the 
suspension of the release of any goods is carried out or continued in accordance with an order of court, the provisions of subsection 4 of section 170 of Intellectual Property Act, No. 36 of 2003, 
shall apply. 
 
(7) The court shall have the power to order the applicant to pay the importer, the consignee and the owner of the goods, appropriate compensation for any harm caused to them through the 
wrongful detention of goods or through the detent ion of goods released pursuant to the preceding 
provisions of this section. (See- Article 56);  (8) Without prejudice to the protection of confiden tial information, the Court shall have power to 
give the right holder sufficient opportunity to have any goods detained by the customs authorities 
inspected in order to substantiate the right holder's claims. The Court shall in addition have power to give the importer an equivalent opportunity to have any such goods inspected. (See Article 57) 
 
9) Without prejudice to other rights of action open  to the right holder and the defendant, the Court 
shall have the power to order the destruction or disposal of any infringing goods in accordance 
with the principals set out in section 170 of Intellectual Property Act, No. 36 of 2003. In regard to 
counterfeit trade mark goods, the Court shall not other than in exceptional circumstances allow the re exportation of the infringing goods in an unrel ated state or subject them to a different customs 
procedure. 
 
17. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. How long is the 
validity of decisions by the competent author ities for the suspension of the release of 
goods into free circulation?  
Steps are being taken to collect data since exact data is presently not available. 
 18. Are competent authorities required to act upon their own initiative and, if so, in 
what circumstances? Are there any special pr ovisions applicable to ex officio action? 
 
Yes. Acts on Customs on its own initiatives (Ex. Officio Action) is available. The Customs shall 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. The Officers, of Customs shall be exempted  from liability only where such action is taken 
in good faith (Article 9 of Gazette Extraordinary dated 1523 dated 15.11.2007) 
 
Where the clearance or exportation of the goods has been suspended by the Customs on its own 
initiative, the Customs shall immediately inform the right holder of the place and date of the 
suspension of Customs Clearance. The Customs may seek any assistance or any information 
including technical expertise and facilities from the right holder, without any payment, for the 
purpose of determining whether the suspended good s are counterfeit, pirated or otherwise infringe 
an intellectual property right. (V ide- the same Gazette-Article 10) 
 
19. Describe the remedies that the competen t authorities have the authority to order 
and any criteria regulating their use 
 
Disposal of prohibited goods by the Director-General of Customs  Both section 43 and 44 declares that the prohibited  goods shall be forfeited and shall be destroyed 
and disposed of as the Director-General of Customs may direct. Subject to the right of the 
defendant to seek remedy by a judicial authority,  the Director-General has the authority to order 
the destruction or dispose of infringing goods in accordance with section 125 (3) of the Customs 
Ordinance.  
 Section 125 (3) provides that notwithstanding anything to the contrary in any other law, such 
prohibited goods in contravention of IP Act shall be disposed of outside the channels of commerce 
or if such disposal damages the interests of the owner of any right protected under the Act, be destroyed.  IP/N/6/LKA/1 
 
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  Criminal Procedures 
20. Specify the courts which have jurisdiction  over criminal acts of infringement of 
IPRs.  
The Magistrate's Court has jurisdiction. 
 21. In respect of which infringements of whic h intellectual property rights are criminal 
procedures and penalties available? 
 The following are only infringing offences:  
Offence Penalty Other sanctions 
 
Infringement of copyright  
178 (1) Any person who willfully infringes 
any of the rights protected under the 
provisions relating to copyright and related rights shall be liable on 
conviction   
For a fine not exceeding Rs. 
500000/- or imprisonment for a term not exceeding 6 months 
or to both. In the case of 
second or subsequent conviction, such fine or term of 
imprisonment or both may be 
doubled.   
 
 The Magistrate may, 
whether the alleged 
offender is convicted or not, order that all 
copies of the work and 
all implements used for the infringement, or all plates in the possession 
of the alleged offender, 
which appear to him to be infringing copies, or 
plates or implements 
used for the purpose of making infringing 
copies, shall be 
destroyed or delivered up to the owner of the right, or otherwise 
dealt with in such 
manner as the Magistrate may think 
fit. 
  2) Any person knowing or having reason to believe that copies have 
been made in infringement of the 
rights protected under Part II of the Act, sells, displays for sale, or has in 
his possession for sale or rental or for 
any other purpose of trade any such copies, shall be guilty of an offence and shall be liable on conviction  for a fine not exceeding rupees 
five hundred thousand or to imprisonment for a term not 
exceeding six months or to 
both such fine and such imprisonment, and in the case 
of a second or subsequent 
conviction, to double the amount of a such fine or term of imprisonment or both. 
 
 (3) Any person knowingly or having 
reasons to believe that he is in possession or has access to a 
computer program infringing the 
rights of another person, and willfully makes use of such program for commercial gain, shall be guilty of an 
offence and shall be liable on 
conviction by a Magistrate   
for a fine not exceeding rupees 
five hundred thousand or to imprisonment for a period of 
six months or to both such fine 
and imprisonment.  
 Attempted infringement of copyright and related rights 
22 (2) (g) 
Any person who infringes or attempts to infringe any of the rights protected 
under copyright or related rights shall 
be guilty of an offence and on conviction be liable    
 to any penalty as provided 
above  IP/N/6/LKA/1 
 
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  Offence Penalty Other sanctions 
 
Infringement of Industrial Design 
179. 
Any person who willfully infringes the rights of any registered owner, 
assignee or licensee of an Industrial 
Design shall be guilty of an offence and shall be liable on conviction after 
trial before a Magistrate   
to a fine not exceeding five 
hundred thousand rupees or to 
imprisonment for a term not exceeding six months or to 
both such fine and such 
imprisonment, and in the case of a second or subsequent 
conviction to double the 
amount of such fine or term of imprisonment or both.   
 
Infringement of Patents- 
181 
Any person who willfully infringes the rights of any registered owner, 
assignee or licensee of a patent shall 
be guilty of an offence, and shall be liable on conviction after trial before a Magistrate to a fine not exceeding 
five hundred thousand rupees or to 
imprisonment for a term not exceeding six months or to both such 
fine and such imprisonment, and in 
the case of a second or subsequent conviction to double the amount of 
such fine or term of imprisonment or 
both.   
 
 
 to a fine not exceeding five 
hundred thousand rupees or to 
imprisonment for a term not exceeding six months or to both such fine and such 
imprisonment, and in the case 
of a second or subsequent conviction to double the 
amount of such fine or term of 
imprisonment or both.   
 
Infringement of Marks. 184. Any person who willfully 
infringes the rights of any registered 
owner, assignee or licensee of a Mark, shall be guilty of an offence 
and shall on conviction after trial 
before a Magistrate be liable   
 to a fine not exceeding five 
hundred thousand rupees or to 
imprisonment for a term not exceeding six months or to 
both such fine and such 
imprisonment and in the case of a second or subsequent conviction to double the 
amount of such fine or term of 
imprisonment or both such fine and imprisonment. 
  
 
Offences by bodies of corporate 
187. Where an offence under this Act has been committed by a body 
corporate, every person who at the 
time of the commission of the offence was a Director- General, Manager, Secretary or other similar officer of 
that body shall be deemed to be 
guilty of such offence, unless he proves that the offence was 
committed without his consent or 
connivance and that he exercised all due diligence to prevent the 
commission of the offence. 
  
 
to a fine not exceeding five hundred thousand rupees.  IP/N/6/LKA/1 
 
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  Offence Penalty Other sanctions 
 
Lay-out designs of integrated 
circuits- 
157-Any person who knowingly or intentionally contravenes the 
provisions of Sec 148 that recognizes 
the exclusive rights attached to a layout shall be guilty of an offence.  
  
to a fine not exceeding five 
hundred thousand rupees or 
 
to imprisonment of either 
description for a term not 
exceeding 6 months  or to both 
such fine and imprisonment and second or subsequent 
conviction to double the 
amount of such fine or term of imprisonment or both such fine and imprisonment.  
Seizure, forfeiture, 
destruction of such 
articles or any material or implement, which 
have been used for the 
commission of offence.  
 22. Which public authorities are responsibl e for initiating criminal proceedings? Are 
they required to do this on their own init iative and /or in response to complaints? 
 
(i)  Prosecution by Police Officers- (Police Plai nts) Sec. 136 (1) (b) of the Criminal Procedure 
Code empowers a Police Office to institute crim inal prosecution in a Magistrate's Court.  
 
(ii)  Prosecution by a private individual- (Private Plaints) - Every right holder by way of a private 
plaint (se. 136 (1) (a) Criminal procedure code em powers every person to make a complaint of an 
offence to a Magistrate's Court.  
 
(iii)  Even any member of the public may make a complaint to the Police and the Police may initiate prosecution based on such complaint. 
 
23. Do private persons have standing to init iate criminal proceedings and, if so, who? 
 
Yes, a complaint in criminal proceedings can be made by the owner of the rights or a duly 
appointed agent of the owner as the compla inant (ex. power of attorney holder).  
 24. Specify by category of IPR and type  of infringement where necessary, the 
penalties and other remedies that may be imposed: 
  (a) Copyright-infringement 
 (b) Patent -infringement 
 (c)  Industrial Designs-infringement  (d)  Trademarks-infringement 
 (e)  Lay-out designs of integrated circuits-Infringement 
  
- imprisonment : See above 
 
  - monetary fines : See above 
 
- seizure, forfeiture and destruction of infringing goods and materials and 
implements for their production : 
 
(i)  a Magistrate may make issue  
 
(a)  summons; 197 (1) (a)  (b)  search warrants to search counterfeit goods 197 (1) (b) 
 
(ii)  Seizure- a Police officer upon such warrant may search and seize such goods 
and bring them before the Magistrate 197 (2) (c) 
 
(iii)  Forfeiture- of goods used in the offence- 197 (2)  
(iv)  disposal of forfeited goods and awarding proceeds of such sale to innocent party 
for any loss he may have sustained in dealing with such  property 197 (3). 
 IP/N/6/LKA/1 
 
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  25.  Describe provisions governing the leng th and any cost of proceedings. Provide any 
available data on the actual duration of proceedings and their cost, if any. 
 Steps are being taken to collect data from Magistrate's Courts.  
 
 
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