PARLIAMENT OF THE DEMOCRATIC
SOCIALIST REPUBLIC OF
SRI LANKA—————————INTELLECTUAL PROPERTY
ACT, No. 36 OF 2003—————————[Certified on 12th November, 2003]

Printed on the Order of Government—————————

Published as a Supplement to Part II of the Gazette of the Democratic
Socialist Republic of Sri Lanka of November 14, 2003
PRINTED AT THE DEPARTMENT OF GOVERNMENT PRINTING, SRI LANKA
TO BE PURCHASED AT THE GOVERNMENT PUBLICATIONS BUREAU, COLOMBO 1

Price : Rs. 80.00

Postage : Rs. 27.00

Intellectual Property Act, No. 36 of 2003

1

[Certified on 12th November, 2003]
L.D.—O. 54/2002.
AN ACT TO PROVIDE FOR

THE LAW RELATING TO INTELLECTUAL

PROPERTY AND FOR AN EFFICIENT PROCEDURE FOR THE REGISTRATION,CONTROL AND ADMINISTRATION THERE OF ; TO AMEND THE CUSTOMSORDINANCE (CHAPTER 235) AND THE HIGH COURT OF THE PROVINCES(SPECIAL) PROVISIONS ACT, NO. 10 OF 1996 ; AND TO PROVIDE FOR
MATTERS CONNECTED THEREWITH OR INCIDENTAL THERETO

BE it enacted by the Parliament of the Democratic Socialist
Republic of Sri Lanka as follows :—1. This Act may be cited as the Intellectual Property
Act, No. 36 of 2003.

Short title.

PART IADMINISTRATION
2. (1) There shall be a person to be or to act as the
Director-General of Intellectual Property of Sri Lanka(hereinafter referred to as the “Director-General”).
(2)

The Director-General shall—(a) be vested with the power of implementation of theprovisions of this Act, the control andsuperintendence of the registration andadministration of Industrial Designs, Patents, Marksand of any other matter as provided by the Act, andthe supervision and control of all persons appointed
for, or engaged in, the implementation of theprovisions of this Act ; and(b) take all necessary steps to promote and encouragenational awareness of the subject of Intellectual
Property including copyright and related rights byorganisation of exhibitions, contests, seminars andpublications and by promoting and encouraging theestablishment and proper functioning oforganisations or societies to protect and administer
copyright and related rights under Part II of the Act.
2—H 18510— 10,650 (2003/05)

Appointment andpowers of the
Director-General.

2Intellectual Property Act, No. 36 of 2003

(3) The Director-General shall comply with the generalpolicy of the government with respect to subject ofintellectual property and with any general or special
directions issued by the Minister in relation to such policy.
Director and
Deputy Directors.

3. (1) There may from time to time be appointed a fit
and proper person or persons, to be or to act as Director ofIntellectual Property and such other Deputy Directors forthe proper implementation and administration of theprovisions of this Act.
(2) Any person so appointed may exercise, perform anddischarge any power, duty or function expressly conferredor imposed upon the Director or the Deputy directors, as thecase may be, and may, subject to the directions of the Ministerand under the authority and control of the Director-General,
exercise, perform and discharge any powder, duty or function
conferred or imposed upon the Director-General by or under
this Act.
(3) There shall be appointed such other officers andservants as may be necessary for the administration of theAct.

Office andmaintenance ofregisters.

4. (1) There shall be an office called the National
Intellectual Property Office of Sri Lanka (hereinafter referred
to as the “Office”). Such office shall be the sole office in Sri
Lanka for the registration and administration of Industrial
designs, patents, marks and any other matter as provided by
the Act.
(2) All registers required to be kept and maintained
under the provisions of this Act shall be kept and maintained
under the supervision of the Director-General at the Officeand such registers shall be the only legally recognizedregisters in Sri Lanka for the registration of industrial designs,
patents, marks and any other matter as provided by the Act.

Intellectual Property Act, No. 36 of 2003

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PART IICHAPTER ICOPYRIGHT
5.

For the purposes of this Part—“audiovisual work” means a work that consists of aseries of related images which impart the
impression of motion, with or withoutaccompanying sounds, susceptible of being madevisible, and where accompanied by sounds
susceptible of being made audible ;“author” means the physical person who has createdthe work ;“broadcasting” means the communication of a work,a performance or a sound recording to the publicby wireless transmission, including transmission
by satellite ;“collective work” means a work created by two or more
physical persons at the initiative and under the
direction of a physical person or legal entity, withthe understanding that it will be disclosed by thelatter person or entity under his or its own nameand that the identity of the contributing physicalpersons will not be indicated ;“communication to the public” means the transmission
to the public by wire or without wire of the images
or sounds, or both, of a work, a performance or asound recording including the making available
to the public of a work, performance or soundrecording in such a way that members of the public
may access them from a place and at a time
individually chosen by them ;Interpretation.

4Intellectual Property Act, No. 36 of 2003
“computer” means an electronic or similar device
having information processing capabilities ;“computer program” is a set of instructions expressedin words, codes, schemes or in any other form,
which is capable, when incorporated in a mediumthat the computer can read, of causing a computer
to perform or achieve a particular task or result ;“economic rights” means the rights referred to in
section 9 ;“expression of folklore” means a group oriented andtradition based creation of groups or individuals
reflecting the expectation of the community as anadequate expression of its cultural and social
identity, its standards and values as transmitted
orally, by imitation or by other means, including :(a) folktales, folk poetry, and folk riddles ;(b) folk songs and instrumental folk music ;(c) folk dances and folk plays ;(d) productions of folk arts in particular,
drawings, paintings, carvings, sculptures,
pottery, terracotta, mosaic, woodwork,
metalware, jewellery, handicrafts, costumes,
and indigenous textiles ;“infringement” means an act that violated any rightprotected under this Part ;“moral rights” means rights referred to in section 10 ;“performers” means singers, musicians, and otherpersons who sing, deliver, declaim, play in, orotherwise perform, literary or artistic works or
expressions of folklore ;Intellectual Property Act, No. 36 of 2003

5“photographic work” means the recording of light orother radiation on any medium on which an image
is produced or from which an image may be
produced, irrespective of the technique (chemical,
electronic or other) by which such recording ismade, a still picture extracted from an audiovisual
work shall not be considered a “photographic
work” but a part of the audiovisual work
concerned ;“producer” of an audiovisual work or a sound recording
means the physical person or legal entity that
undertakes the initiative and responsibility for the
making of the audiovisual work or soundrecording ;“public display” means the showing of the original ora copy of a work—(a) directly ;(b) by means of a film, slide, television image
or otherwise on screen ;(c) by means of any other device or process ; or(d) in the case of an audiovisual work, theshowingofindividual
imagesnonsequentially at a place or places where
persons outside the normal circle of a family
and its closest social acquaintances are or
can be present, irrespective of whether they
are or can be present at the same place andtime or at different places or times, and where
the work can be displayed without
communication to the public within themeaning of the definition of the expression“Communication to the Public”;“public lending” means the transfer of the possessionof the original or a copy of a work or a soundrecording for a limited period of time for nonprofit making purposes, by an institution, theservices of which are available to the public, suchas a public library or archives ;6Intellectual Property Act, No. 36 of 2003
“public performance” means—(a) in the case of a work other than anaudiovisual work, the recitation, playing,
dancing, acting or otherwise performing thework in public either directly or by meansof any device or process ;(b) in the case of an audiovisual work, theshowing of images in sequence or the
making of accompanying sound audible inpublic ; and(c) in the case of a sound recording, making
the recording sounds audible at a place orat places where persons outside the normal
circle of the family and its closest
acquaintances are or can be present,
irrespective of whether they are or can bepresent at the same place and time, or atdifferent places or times, and where theperformance can be perceived without theneed for communication to the public within
the meaning of the definition of theexpression“communication to the public” ;“published” means a work or a sound recording—(a) copies of which have been made available
to the public in a reasonable quantity for sale,rental, public lending or for transfer of theownership or the possession of the copies ;or(b) which has been made available to the publicby means of an electronic system :Provided that, in the case of a work, themaking available to the public took place withthe consent of the owner of the copyright, andin the case of a sound recording, with theconsent of, the producer of the soundrecording or his successor in title ;Intellectual Property Act, No. 36 of 2003

7

“rental” means the transfer of the possession of theoriginal or a copy of a work or sound recording
for a limited period of time for profit making
purposes ;“reproduction” means the making of one or more
copies of a work or sound recording in any
material form, including any permanent or
temporary storage of a work or sound recording
in electronic form ;“sound recording” means any exclusively aural fixationof the sounds of a performance or of other sounds,
regardless of the method by which the sounds are
fixed or the medium in which the sounds areembodied ; it does not include a fixation of sounds
and images, such as the sounds incorporated in
an audiovisual work ;“work” means any literary, artistic or scientific work
referred to in section 6 ;“work of applied art” means an artistic creation withutilitarian functions or incorporated in a usefularticle, whether made by hand or produced on anindustrial scale ;“work of joint authorship” means a work to the creationof which two or more authors have contributed,
provided the work does not qualify as “a collective
work”.
6. (1) The following works shall be protected as literary,artistic or scientific work (hereinafter referred to as “works”)
which are original intellectual creations in the literary, artistic
and scientific domain, including and in particular—(a) books, pamphlets, articles, computer programs andother writings ;(b) speeches, lectures, addresses, sermons and otheroral works ;Works protected.

8Intellectual Property Act, No. 36 of 2003(c) dramatic, dramatic-musical works, pantomimes,
choreographic works and other works created forstage productions ;(d) stage production of works specified in paragraph(c) and expressions of folklore that are apt for suchproductions ;(e) musical works, with or without accompanying
words ;
(f) audiovisual works ;(g) works of architecture ;(h) works of drawing, painting, sculpture, engraving,
litho-graphy, tapestry and other works of fine art ;(j) photographic works ;(k) works of applied art ;(l) illustrations, maps, plans, sketches and three
dimensional works relative to geography,
topography, architecture or science.

(2) The works specified in subsection (1) of this section
shall be protected by the sole fact of their creation andirrespective of their mode or form of expression, as well asof their content, quality and purpose.
Derivative works.

7. (1) The following shall also be protected as works :—(a) translations, adaptations, arrangements and othertransformations or modifications of works ; and(b) collections of works and collections of mere data
(data bases), whether in machine readable or otherform, provided that such collections are original
by reason of the selection, co-ordination or
arrangement of their contents.

Intellectual Property Act, No. 36 of 2003

9(2) The protection of any work referred to in subsection(1) shall be without prejudice to any protection of a preexisting work incorporated in, or utilized for, the making ofsuch a work.
8. Notwithstanding the provisions of sections 6 and 7,
no protection shall be extended under this Part —Works notprotected.

(a) to any idea, procedure, system, method of operation,
concept, principle, discovery or mere data, even if
expressed, described, explained, illustrated or
embodied in a work ;(b) to any official text of a legislative, administrativeor legal nature, as well as any official translation
thereof ;(c) to news of the day published, broadcast, or publicly
communicated by any other means.
9. (1) Subject to the provisions of sections 11 to 13 theowner of copyright of a work shall have the exclusive rightto carry out or to authorize the following acts in relation to
the work —(a) reproduction of the work ;(b) translation of the work ;(c) adaptation, arrangement or other transformation of
the work ;(d) the public distribution of the original and each copyof the work by sale, rental, export or otherwise ;(e) rental of the original or a copy of an audiovisual
work, a work embodied in a sound recording, acomputer program, a data base or a musical workin the form of notation, irrespective of the ownershipof the original or copy concerned ;Economic rights.

10Intellectual Property Act, No. 36 of 2003(f) importation of copies of the work, (even where theimported copies were made with the authorizationof the owner of the copyright) ;(g) public display of the original or a copy of the work ;(h) public performance of the work ;(j) broadcasting of the work ; and(k) other communication to the public of the work.

(2) The provisions of subsection (1) of this section shallapply to both the entire work and a substantial part thereof.
(3) The rights of rental in terms of paragraph (e) ofsubsection (1) shall not apply to rental of computer programs
where the program itself is not the essential object of the rental.
(4) Notwithstanding the provisions of paragraph (d) ofsubsection (1), the owner of a work or a copy of a work
lawfully made or any person authorized in that behalf bysuch owner, is entitled without the authority of the owner ofthe copyright, to sell or otherwise dispose of that copy.
Moral Rights.

10. (1) The author of a work shall independently ofhis economic rights and even where he is no longer the ownerof those economic rights, have the following rights :—(a) to have his name indicated prominently on the
copies and in connection with any public use of hiswork, as far as practicable ;(b) the right to use a pseudonym and not have his nameindicated on the copies and in connection with any
public use of his work ;(c) to object to any distortion, mutilation or othermodification of, or other derogatory action in
relation to, his work which would be prejudicial tohis honour or reputation.

Intellectual Property Act, No. 36 of 2003

11(2) No right mentioned in subsection (1) shall betransmissible during the life time of the author, however on
the death of the author, the right to exercise any of thoserights shall be transmissible by testamentary disposition orby operation of law.
(3) The author may waive any of the moral rights
mentioned in subsection (1), provided that such a waiver isin writing and clearly specifies the right or rights waived
and the circumstances to which the waiver applies :Provided that where any waiver of the rights underparagraph (c) of subsection (1) specifies the nature and extent
of the modification or other action in respect of which theright is waived, subsequent to the death of the author, thephysical person or legal entity upon whom or which the moral
rights have devolved shall have the right to waive the said
rights.
11. (1) Notwithstanding the provisions of subsection(1) of section 9, the fair use of a work, including such use by
reproduction in copies or by any other means specified bythat section, for purposes such as criticism, comment, news
reporting, teaching (including multiple copies for classroomuse), scholarship or research, shall not be an infringementof copyright.
(2) The following factors shall be considered indetermining whether the use made of a work in any particularcase is fair use :—(a) the purpose and character of the use, including
whether such use is of a commercial nature or isfor non-profit educational purposes ;(b) the nature of the copyrighted work ;(c) the amount and substantiality of the portion usedin relation to the copyrighted work as a whole ; and(d) the effect of the use upon the potential market for,or value of, the copyrighted work.

Fair use.

12Intellectual Property Act, No. 36 of 2003

(3) The acts of fair use shall include the circumstances
specified in section 12.
Act of fair use.

12. (1) Notwithstanding anything contained inparagraph (a) of subsection (1) of section 9 and subject tothe provisions of subsection (2) of this section, the private
reproduction of a published work in a single copy shall bepermitted without the authorization of the owner of the
copyright, where the reproduction is made by a physicalperson from a lawful copy of such work exclusively for his
own personal purposes.
(2) The permission under subsection (1) of this section
shall not be extended to the reproduction—(a) of a work of architecture in the form of a building
or other constructions ;(b) in the form of reprography of the whole or asubstantial part of a book or of a musical work in
the form of notations ;(c) of the whole or a substantial part of a data base ;(d) of a computer program, except as provided insubsection (7) ; and(e) of any work, in case the reproduction would conflictwith a normal exploitation of the work or would
otherwise unreasonably prejudice the legitimate
interests of the owner of the copyright.
(3) Notwithstanding the provisions of paragraph (a) ofsubsection (1) of section 9, the reproduction, in the form of
a quotation, of a short part of a published work shall bepermitted without authorization of the owner of copyright :Provided that the reproduction is compatible with fair
practice and does not exceed the extent justified by the
purpose of such reproduction. The quotation shall beaccompanied by an indication of the source and the name of
the author, if his name appears in the work from which thequotation is taken.

Intellectual Property Act, No. 36 of 2003

13(4) Notwithstanding the provisions of parargraph (a)of subsection (1) of section 9, the following acts shall bepermitted without the authorization of the owner of the
copyright :—(a) the reproduction of a short part of a published workfor teaching purposes by way of illustration, in
writing or sound or visual recordings, provided thatthe reproduction is compatible with fair practiceand does not exceed the extent justified by the
purpose of such reproduction;(b) the reprographic reproduction for face to faceteaching in any educational institution the activitiesof which do not serve direct or indirect commercial
gain, of published articles, other short works or short
extracts of works, to the extent justified by the
purpose, provided that the act of reproduction is an
isolated one occurring, if repeated, on separate andunrelated occassions :Provided however the source of the work
reproduced and the name of the author shall be
indicated as far as practicable on all copies madeunder this subsection.
(5) Notwithstanding the provisions of paragraph (a) ofsubsection (1) of section 9, any library or archives, whose
activities do not serve any direct or indirect commercial gain
may, without the authorization of the owner of copyright,
make a single copy of the work by reprographic
reproduction—(a) where the work reproduced is a published article,
other short work or short extract of a work, andwhere the purpose of the reproduction is to satisfy
the request of a physical person :Provided that—(i) the library or archives is satisfied that the
copy will be used solely for the purposes ofstudy, scholarship or private research,14Intellectual Property Act, No. 36 of 2003(ii) the act of reproduction is an isolated
occurance, occurring if repeated, on
separate and unrelated occasions ;(b) where the copy is made in order to preserve and, if
necessary replace a copy, or to replace a copy which
has been lost, destroyed or rendered unusable in
the permanent collection of another similar libraryor archives :Provided that it is not possible to obtain such a
copy under reasonable conditions ; andProvided further, that the act of reprographic
reproduction is an isolated occurance occurring if
repeated, on separate and unrelated occasions.

(6) Notwithstanding the provisions of paragraphs (a),(h) and (j) of subsection (1) of section 9, and subject to thecondition that the source and the name of the author isindicated as far as practicable, the following acts shall bepermitted in respect of a work without the authorization of
the owner of copyright—(a) the reproduction in a newspaper or periodical,
manner of broadcasting or other manner ofcommunication to the public, of an article publishedin a newspaper or periodical on current economic,
political or religious topics or a broadcast orcommunication relating to the same, and suchpermission shall not apply where the right toauthorize reproduction, broadcasting or othercommunication to the public is expressly reservedon the copies, by the owner of copyright, or inconnection with broadcasting or othercommunication to the public of the work ;(b) for the purpose of reporting current events, thereproduction and the broadcasting or othercommunication to the public of short excerpts of aIntellectual Property Act, No. 36 of 2003

15

work seen or heard in the course of such events, tothe extent that it is justified by the purpose of such
reproduction;(c) the reproduction in a newspaper or periodical,
broadcasting or other manner of communication to
the public, of a political speech, a lecture, address,
sermon or other work of a similar nature deliveredin public, or a speech delivered during legal
proceedings, to the extent that it is justified byreason of the fact of providing current information.
(7) (a) Notwithstanding anything contained inparagraphs(a) and (c) of subsection (1) of section 9,
reproduction in a single copy or the adaptation of a computer
program by the lawful owner of a copy of that computer
programe, shall be permitted without the authorization of
the owner of copyright provided that the copy or adaptationis necessary—(i) for use of the computer program with a computer
for the purpose and extent for which the computer
program has been obtained ;(ii) for archival purposes and for replacement of thelawfully owned copy of the computer program in
the event that the said copy of the computer program
is lost, destroyed or rendered unusable.
(b) No copy or adaptation of a computer program shallbe used for any purpose other than those specified inparagraph (a), and any such copy or adaptation shall be
destroyed in the event that continued possession of the copyof the computer program ceases to be lawful.
(8) Notwithstanding the provisions of paragraph (f) ofsubsection (1) of section 9, the importation of a copy of awork by a physical person for his own personal purposes
shall be permitted without the authorization of the owner of
copyright.

16Intellectual Property Act, No. 36 of 2003

(9) Notwithstanding anything contained in paragraph(g) of subsection (1) of section 9, the public display oforiginals or copies of works shall be permitted without theauthorization of the owner of copyright :Provided that the display is made other than by means ofa film, slide, television image or otherwise on screen or bymeans of any other device or process :Provided further, the work has been published or theoriginal or the copy displayed has been sold, given away orotherwise transferred to another person by the author or his
successor in title.
(10) Notwithstanding anything contained in this Part,
the following shall not be an infringement of copyright :–(a) the performance or display of a work for educationalor teaching purposes by government or non profit
educational institutions, in classrooms or similarplaces set aside for education :Provided that, in the case of an audiovisual work,
the performance or the display of individual images,
is given by means of a lawfully made copy, or the
person responsible for the performance did not knowor had no reason to believe that the copy was notlawfully made.
(b) the communication of a transmission embodying aperformance or display of a work by the public
reception of the transmission on a single receiving
apparatus, of a kind commonly used in private
homes, unless –(i) a direct charge is made to see or hear thetransmission ; or(ii) the transmission thus received is furthertransmitted to the public.

Intellectual Property Act, No. 36 of 2003

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13. (1) Subject to the provisions of subsections (2), (3),(4) and (5), the economic and moral rights shall be protectedduring the life time of the author and for a further period ofseventy years from the date of his death.

Duration of
copyright.

(2) In the case of a work of joint authorship, theeconomic and moral rights shall be protected during thelife of the last surviving author and for a further period ofseventy years from the date of the death of the last surviving
author.
(3) In the case of a collective work, other than a workof applied art, and in the case of an audiovisual work, theeconomic and moral rights shall be protected for seventy
years from the date on which the work was first published,or failing publication within seventy years from the makingof the work.
(4) In the case of a work published anonymously or
under a pseudonym, the economic and moral rights shall beprotected for seventy years from the date on which the work
was first published :Provided that, where the author’s identity is revealed or
is no longer in doubt before the expiration of the said period,
the provisions of subsection (1) or subsection (2) shall apply,as the case may require.
(5) In the case of work of applied art, the economic andmoral rights shall be protected for twenty-five years fromthe date of the making of the work.
(6) Every period provided for under the preceding
subsections shall run to the end of the calendar year in which
it would otherwise expire.
14. (1) Subject to the provisions of subsections (2), (3),(4) and (5), of this section, the author who created the work
shall be the original owner of economic rights.

Original
ownership ofeconomic rights.

18Intellectual Property Act, No. 36 of 2003

(2) In respect of a work of joint authorship, the coauthors shall be the original owners of the economic rights.
If, however, a work of joint authorship consists of parts thatcan be used separately and the author of each part can be
identified, the author of each part shall be the original ownerof the economic rights in respect of the part that he hascreated.
(3) In respect of a collective work, the physical personor legal entity at the initiative, and under the direction, ofwhom or which the work has been created shall be theoriginal owner of the economic rights.
(4) In respect of a work created by an author employed
by a physical person or legal entity in the course of his
employment, the original owner of the economic rights shall,unless provided otherwise by way of a contract, be theemployer. If the work is created pursuant to a commission,
the original owner of economic rights shall be, unlessotherwise provided in a contract, the person who
commissioned the work.
(5) In respect of an audiovisual work, the original ownerof the economic rights shall be the producer, unless otherwise
provided in a contract. The co-authors of the audiovisual
work and the authors of the pre-existing works, included in,or adapted for, the making of the audiovisual work shall,
however, maintain their economic rights in their contributions
or pre-existing works, respectively, to the extent that thosecontributions or pre existing works can be the subject ofacts covered by their economic rights separately from theaudiovisual work.
Presumption of
authorship and ofrepresentation of
the author.

15. (1) The physical person whose name is indicatedas the author on a work in the usual manner shall, in theabsence of proof to the contrary, be presumed to be the authorof the work. The provisions of this section shall be applicableeven if the name is a pseudonym, where the pseudonym
leaves no doubt as to the identity of the author.
(2) The physical person or legal entity whose nameappears on an audio-visual work shall, in the absence of
proof to the contrary, be presumed to be the producer of thesaid work.

Intellectual Property Act, No. 36 of 2003

19

16. (1) The owner of a copyright may (a) grant licence to a physical person or legal entity tocarry out all or any of the acts relating to theeconomic rights referred to in section 9 ;Assignment or
licence ofauthor’s rights.

(b) assign or transfer in whole or any part of theeconomic rights referred to in section 9.
(2) Any assignment or transfer of an economic right,
and any licence to do such an act subject to authorization by
the owner of the copyright, shall be in writing signed by theassignor and the assignee, transferor and the transferee orby the licensor and the licensee, as the case may be.
(3) An assignment or transfer in whole or in part of any
economic right, or a licence to do an act subject toauthorization by the owner of copyright, shall not include or
be deemed to include the assignment or transfer or licencein respect of any other rights not expressly referred to therein.
CHAPTER I I
RELATED RIGHTS[PROTECTION OF RIGHTS OF PERFORMERS, PRODUCERS OF SOUND
RECORDING AND BROADCASTING ORGANIZATION]
17. (1) Subject to the provisions of section 21, aperformer shall have exclusive right to carry out or toauthorize any of the following acts :—(a) the broadcasting or other communication to the
public of his performance or a substantial part
thereof, except where the broadcasting, or the othercommunication—(i) is made from a fixation of the performance,other than a fixation made in terms of section
21 ; orRights requiring
authorization of
performers.

20Intellectual Property Act, No. 36 of 2003(ii) is a re-broadcasting, made or authorized by
the organisation initially broadcasting theperformance or substantial part thereof ;(b) the fixation of his unfixed performance orsubstantial part thereof ;(c) the reproduction of a fixation of his performanceor substantial part thereof.

(2) Once the performer has authorized the incorporationof his performance in a audiovisual fixation, the provisionsof subsection (1) shall have no further application.
(3) Nothing in this section shall be construed to deprive
performers of the right to enter into contracts in respect of
their performances on terms and conditions more favourable
to them.
(4) The rights under this section shall be protected fromthe moment the performance takes place until the end of
the fiftieth calendar year following the year in which theperformance takes place.
Rights of
producers ofsound recordings.

18. (1) Subject to the provisions of section 21, a
producer of a sound recording shall have the exclusive rightto carry out or to authorise any of the following acts :—(a) the direct or indirect reproduction of the soundrecording or substantial part thereof ;(b) the importation of copies of the sound recording ora substantial part thereof even where such imported
copies were made with the authorisation of the
producer ;(c) the adaptation or other transformation of the soundrecording or a substantial part thereof ;(d) the rental of a copy of the sound recording or asubstantial part thereof, irrespective of theownership of the copy rented ;Intellectual Property Act, No. 36 of 2003

21(e) the sale or offering for sale to the public of theoriginal or copies of the sound recording or
substantial part thereof.
(2) The rights under subsection (1) of this section shallbe protected from the date of publication of the soundrecording until the end of the fiftieth calendar year following
the year of publication, or if the sound recording has notbeen published, from the date of fixation of the soundrecording until the end of fiftieth calendar year following
the year of fixation.
19. (1) where a sound recording published for commercial
purposes, or a reproduction of such sound recording, is useddirectly for broadcasting or other form of communication to
the public, or is publicly performed, a single equitableremuneration for the performer or performers and the producerof the sound recording shall be paid by the user.

Equitable
remuneration foruse of soundrecordings.

(2) Unless otherwise agreed between the performer or
the producer, half of the sum received by the producer undersubsection (1) shall be paid by the producer to any performer.
(3) The right to an equitable remuneration under thissection shall subsist from the date of publication of the soundrecording until the end of the fiftieth calendar year following
the year of publication, or if the sound recording has notbeen published, from the date of fixation of the soundrecording until the end of the fiftieth calendar year following
the year of fixation.
20. (1) Subject to the provisions of section 21, abroadcasting organisation shall have the exclusive right tocarry out or to authorize any of followings acts :—(a) the re-broadcasting of its broadcast or a substantial
part thereof ;(b) the communication to the public of its broadcast ora substantial part thereof ;Rights ofbroadcastingorganisation.

22Intellectual Property Act, No. 36 of 2003(c) the fixation of its broadcast or a substantial part
thereof ;(d) the reproduction of a fixation of its broadcast or asubstantial part thereof.

(2) The rights under this section shall be protected fromthe moment when the broadcasting takes place until the endof the fiftieth calender year following the year in whichbroadcast takes place.
Limitations onprotection.

21. Sections 17, 18, 19 and 20 shall not apply where
the acts referred to in those sections are related to—(a) the use by a physical person exclusively for his own
personal purposes ;(b) using short excerpts for reporting current events tothe extent justified by the purpose of providing
current information ;(c) use solely for the purpose of face to face teachingactivities or for scientific research ;(d) cases where, under copyright, a work can be usedwithout the authorization of the owner of copyright.

Enforcement ofrights anddisputes
resolution.

22. (1) Any person who infringes or is about to infringe
any of the rights protected under this Part may be prohibitedfrom doing so by way of an injunction and be liable todamages. The owner of such rights is entitled to seek suchother remedy as the court may deem fit.
(2)(a) The Court shall have power and jurisdiction—(i) to grant such injunctions to prohibit thecommission of any act of, infringement or
the continued commission of such acts of
infringment of any right protected under
this Part ;Intellectual Property Act, No. 36 of 2003

23(ii) to order the impounding of copies of works
or sound recordings suspected of being madesold, rented or imported without theauthorization of the owner of any rightprotected under this Part where the making,selling, renting or importation of copies issubject to such authorization, as well as theimpounding of the packaging of, theimplements that could be used for the
making of, and the documents, accounts orbusiness papers, referring to, such copies.
(b) The Court shall in addition have the jurisdiction toorder the payment by the infringer, of damages for the loss
suffered as a consequence of the act of infringement, as wellas the payment of expenses caused by the infringement,
including legal costs. The amount of damages shall be fixed
taking into account inter alia, the importance of the material
and moral prejudice suffered by the owner of the right, as
well as the importance of the infringer’s profits attributable
to the infringement. Where the infringer did not know or
had no reasonable cause to know that he or it was engaged
in infringing activity, the court may limit damages to the
profits of the infringer attributable to the infringement or to
pre established damages.
(c) The Court shall have the authority to order thedestruction or other reasonable manner of disposing of copies
made in infringement of any right protected under this Partif available and their packaging outside the channels ofcommerce in such a manner as would avoid harm to theowner of the rights, unless he requests otherwise. The
provisions of this section shall not be applicable to copies
and their packaging which were acquired by a third party ingood faith.
(d) Where there is a danger that implements may be used
to commit or continue to commit acts of infringement, theCourt shall, whenever and to the extent that it is reasonable,order their destruction or other reasonable manner of disposingof the same outside the channels of commerce in such a manneras to minimize the risks of further infringements, including
surrender to the owner of the rights.

24Intellectual Property Act, No. 36 of 2003(e) 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.
(f) The provisions of Chapter XXXV of this Act relating
to infringement and remedies shall apply, mutatis mutandis,
to rights protected under this Part.
(g) Any person who infringes or attempts to infringe
any of the rights protected under this Part shall be guilty of
an offence and on conviction be liable to any penalty as
provided for in Chapters XXXVIII and XLI of the Act.
(3) (a) The Director-General may on an application
being made in the prescribed form and manner by a person
aggrieved by any of his rights under this Part being infringed
or in any other manner affected, and after such inquiry as hethinks fit determine any question that may be necessary or
expedient to determine in connection with such applicationand such decision shall be binding on the parties subject tothe provisions of paragraph (b) of this subsection.
(b) Any person aggrieved by the decision of the
Director-General may make an appeal to the Court and unlessthe Court issues an interim order staying the operation of
the decision of the Director-General, such decision shallcontinue to be in force until the matter is decided by the
Court.
Measures,remedies andsanctions against
abuses in respectof technicalmeans.

23. (1) The following acts shall be considered unlawful
and in the application of section 22 shall be assimilated toinfringements of the rights of the owner of copyright :—(i) the manufacture or importation for sale or rental ofany device or means specifically designed or
adapted to circumvent any device or means intended
to prevent or restrict reproduction of a work or to
impair the quality of copies made (the latter device
or means hereinafter referred to as “copy protection
or copy management device or means”) ;Intellectual Property Act, No. 36 of 2003

25(ii) the manufacture or importation for sale or rental ofany device or means that is susceptible to enable orassist the reception of an encrypted program, whichis broadcast or otherwise communicated to the
public, including reception by satellite, by those
who are not entitled to receive the program.
(2) In the application of section 22, any illicit device
and means mentioned in subsection (1) of this section shallbe assimilated to infringing copies of works.
(3) The owner of copyright in a work shall also beentitled to the damages for infringement provided for in
section 22 where—(a) authorized copies of the work have been made andoffered for sale or rental in an electronic form
combined with a copy protection or copy
management device or means, and a device ormeans specifically designed or adapted tocircumvent the said device or means, made orimported for sale or rental ;(b) the work is aurhorised for inclusion in an encrypted
program, broadcast or otherwise communicated tothe public, including by satellite, and a device ormeans enabling or assisting the reception of the
program by those who are not entitled to receive
the program made or imported, for sale or rental.
24. (1) Subject to the provision of subection (4) of thissection expressions of folklore shall be protected against—(a) reproduction ;(b) communication to the public by performance,broadcasting, distribution by cable or other means ;(c) adaptation, translation and other transformation,
when such expressions are made either forcommercial purposes or outside their traditional or
customary context.

Protection of
expressions offolklore anddamages.

26Intellectual Property Act, No. 36 of 2003

(2) The rights conferred by subsection (1) of this section
shall not apply where the acts referred to therein are relatedto –(a) the use by a physical person exclusively for his own
personal purposes ;(b) using short excerpts for reporting current events tothe extent justified by the purpose of providing
current information ;(c) the use solely for the purpose of face to face teachingor for scientific research ;(d) instances referred to in sections 11 and 12, where awork can be used without the authorization of theowner of copyright.
(3) In all printed publications, and in connection withany communication to the public of any identifiable
expression of folklore, its source shall be indicated in an
appropriate manner and in conformity with fair practice bymentioning the community or place from where theexpression utilized has been derived.
(4) The right to authorize acts referred to in subsection(1) of this section shall subject to the payment of a prescribedfee, vest in a Competent authority to be determined by the
Minister.
(5) The money collected under subsection (4) shall be
used for purposes of cultural development.
(6) Any person who, without the permission of theCompetent Authority referred to in subsection (4), uses anexpression of folklore in a manner not permitted by thissection shall be in contravention of the provisions of thissection and shall be liable to damages, and be subject to an
injunctions and any other remedy as the Court may deem fit
to award in the circumstances.

Intellectual Property Act, No. 36 of 2003

27

25. (1) (a) No person or body of persons corporate orunincorporate shall, after the coming into operation of thisAct, commence or carry on the business of issuing or granting
licences in respect of any right protected under this Part
except under or in accordance with, the provisions ofparagraph (c) of this subsection :Provided that the owner of such right shall, in his
individual capacity, continue to have the right to grant
licences in respect of his own rights. Where such owner is amember of a society registered under this section the grantof such licences shall be consistent with his obligations as amember of such society.
(b) Any body of persons corporate or unincorporate
which fulfils such conditions as may be prescribed, apply to
the Director-General for permission to engage in the businessspecified in paragraph (a) and register the society.
(c) The Director-General may having regard to theinterests of the owners of the rights protected under this Part,
the interests and convenience of the public and in particularof the groups of persons who are most likely to seek licencesin respect of relevant rights and the ability and professional
competence of the applicant to grant permission tocommence or carry on business specified in paragraph (a)of subsection (1) and register such person or body of persons
as a collective society subject to such conditions as may beprescribed :Provided that the Director-General shall not ordinarily
register more than one such society to do business in respectof the same class of rights.
(d) The Director-General may, if he is satisfied that thesociety is being managed in a manner detrimental to theinterests of the owners of rights concerned, cancel or suspend
the registration of the society and the permission tocommence or carry on business as specified in paragraph(a) of this subsection, after such inquiry as may be necessary.

Registration ofsociety,administration ofrights by societies,
control over therights andsubmission ofreport.

28Intellectual Property Act, No. 36 of 2003(e) The Director-General may by order cancel or suspend
the registration of such society and the permission to carryon business pending inquiry for such period not exceeding
one year as may be specified in such order under paragraph(d) of this subseciton.
(f) Where the Director-General suspends the registrationof a society, he shall thereupon appoint an administrator tocarry out the functions of the society.
(2) (a) Subject to such conditions as may beprescribed—(i) a society may accept from an owner of therights exclusive authorization to administer any
right under this Part by the issue of licences orcollection of licence fees or both ; and(ii) an owner of the rights shall have the right towithdraw such authorization without prejudice
to the rights of the society under any contract
between such owner and society.
(b) It shall be competent for a society to enter into any
agreement with any foreign society or organization
administering rights corresponding to the rights protectedunder this Part, and to entrust to such foreign society ororganization the administration in any foreign country ofrights administered by the said society in Sri Lanka, or foradministering in Sri Lanka the rights administered in aforeign country by such foreign society or organization :Provided that no such society or organization shall permit
any discrimination in regard to the terms of a licence or the
distribution of fees collected in connection with the rights
protected under this Part and in such foreign country.
(c) Subject to such conditions as may be prescribed, asociety may –(i) issue licences in respect of any rights protectedunder this Part ;Intellectual Property Act, No. 36 of 2003

29(ii) collect fees in pursuance of such licences ;(iii) distribute such fees among owners of rights after
making deductions for its own expenses ;(iv) perform any other functions consistent with theprovisions of subsection (4).
(3) (a) Every society shall be subject to the collective
control of the owners of rights under this Part whose rights
are administered in such a manner as may be prescribed inorder to —(i) obtain the approval of such owners of rights for its
procedures of collection and distribution of fees ;(ii) obtain their approval for the utilization of any
amounts collected as fees for any purpose otherthan distribution to the owner of rights ; and(iii) provide to such owners regular, full and detailed
information concerning all its activities, in relation
to the administration of their rights.
(b) All fees distributed among the owners of rights shall,
as far as may be, be distributed in proportion to the actualuse of their works.
(4) (a) Every Society shall submit to the DirectorGeneral such returns as may be prescribed.
(b) The Director-General may call for any report orrecords of any society for the purpose of satisfying himselfthat the fees collected by the society in respect of the rights
administered by it are being utilized or distributed inaccordance with the provisions of this Part.
26. (1) The provisions of this Part in respect of theprotection of literary, artistic or scientific works shall apply
to —(a) works of authors who are nationals of , or have theirhabitual residence in, Sri Lanka ; andScope ofapplication.

30Intellectual Property Act, No. 36 of 2003(b) works first published in Sri Lanka, works firstpublished in another country and hereupon
published in Sri Lanka, within thirty days from such
publication, irrespective of the nationality or
residence of the author.

(2) The provisions of this Part shall also apply to works
that are protected in Sri Lanka by virtue of, and in accordance
with, any international convention or any international
agreement to which Sri Lanka is a party.
Protection of
performers.

27. (1) The provisions of this Part in respect ofprotection of performers shall apply to—(a) performers who are nationals of Sri Lanka ;(b) performers who are not nationals of Sri Lanka but
whose performances :—(i) take place on the territory of Sri Lanka ; or(ii) are incorporated in sound recordings that areprotected under this Part ; or(iii) have not been fixed in a sound recording but
are included in broadcasts qualifying forprotection under this Part.
(2) The provisions of this Part on the protection of soundrecodings, shall apply to —(a) sound recordings the producers of which, arenationals of Sri Lanka ;(b) sound recordings first fixed in Sri Lanka ; and(c) sound recordings first published in Sri Lanka.
(3) The provisions of this Part on the protection ofbroadcasts shall apply to—(a) broadcasts of broadcasting organisations where theregistered office of such organisations are situatedin Sri Lanka ; andIntellectual Property Act, No. 36 of 200331(b) broadcasts transmitted from transmitters situatedin Sri Lanka.
(4) The provisions of this Part shall in addition apply toperformers, producers of sound recordings and broadcastingorgainsations protected by virtue of, and in accordance with,any international convention or any international agreement
to which Sri Lanka is a party.
PART IIICHAPTER III
INDUSTRIAL DESIGNSSCOPE OF THIS PART AND DEFINITIONS

28. The protection of industrial designs provided under
this Part shall be in addition to and not in derogation of any
other protection provided under any other written law, inparticular under Part II of this Act.
29. The protection provided under this Part shall—

Conditions forprotection.

Scope of this Part.

(a) apply only to new industrial designs ;(b) not apply to an industrial design which consistsof any scandalous design or is contrary to moralityor public order or public interest or which, in theopinion of the Director-General or of any Court
to which such matter has been referred to is likely
to offend the religious or racial susceptibilities ofany community.
30. For the purposes of this Part any composition oflines or colours or any three dimensional form, whether or
not associated with lines or colours, that gives a special
appearance to a product of industry or handicraft and iscapable of serving as a pattern for a product of industry or
handicraft shall be deemed to be an industrial design :Definition ofindustrial design.

32Intellectual Property Act, No. 36 of 2003

Provided that anything in an industrial design which serves
solely to obtain a technical result shall not be protected under
this Part.
Definition ofnovelty.

31. (1) For the purpose of this Part a new industrial
design means an industrial design which had not been madeavailable to the public anywhere in the world and at any
time whatsoever through description, use or in any othermanner before the date of an application for registration ofsuch industrial design or before the priority date validly
claimed in respect thereof.
(2) An industrial design shall not be deemed to havebeen made available to the public solely by reason of thefact that, within the period of six months preceding the filingof an application for registration, it had been a displaly at
an official or officially recognized, international exhibition.
(3) An industrial design shall not be considered a new
industrial design solely by reason of the fact that it differsfrom an earlier industrial design in minor respects or that itconcerns a type of product different from a productembodying an earlier industrial design.
CHAPTER IV
RIGHT TO PROTECTION OF INDUSTRIAL DESIGN

Ownership andright to protectionof industrial
design.

32. (1) The right to obtain protection of an industrial
design belongs to its owner.
(2) Subject to provisions of section 34, the owner of anindustrial design or his successor in title is its creator .
(3) Where two or more persons have jointly created anindustrial design, the right to obtain protection shall belong
to them jointly :Provided that a person who has merely assisted in thecreation of an industrial design but has made no contributionof a creative nature shall not be deemed to be the creator ora co-creator of such industrial design.

Intellectual Property Act, No. 36 of 2003

33

(4) Subject to the provisions of sections 33 and 34 theperson who makes the first application for the registrationof an industrial design or the person who first validly claims
the earliest priority for his application shall be deemed to be
the creator of such industrial design.
33. (1) Where the essential elements of an industrial
design, are the subject of an application for registration or
have been derived from an industrial design, for which theright to protection belongs to another person, such otherperson may apply in writing to the Director-General to assign
the said application or registration to him.
(2) The application for assignment shall be forwarded
with the prescribed fee and evidence to substantiate the claimof the applicant. Where the registration has already beeneffected, the application under subsection (1) shall be madewithin one year from the date of the publication of theregistration under section 44.
(3) The Director-General shall forthwith send a copyof such application for assignment to the applicant forregistration or the registered owner of the industrial design,
who shall within a period of three months from the date ofsuch notice forward to the Director-General a counter
statement in the prescribed manner together with theprescribed fee and evidence to substantiate his claim.
(4) If the applicant or the registered owner forwards acounter statement as referred to in subsection (3), theDirector-General shall after hearing the parties, if heconsiders it necessary decide as expeditiously as possible
whether the application or registration should be assigned
and, where applicable whether the register should berectified. If the applicant or the registered owner fails to
forward a counter statement as provided for in subsection(3) within the period of three months, the Director-Generalshall allow the application referred to in subsection (1).

Industrial design.

34Intellectual Property Act, No. 36 of 2003

(5) Where, after an application for the registration of anindustrial design has been filed, the person to whom the rightto protection belongs gives his consent to the filling of thesaid application, such consent shall, for all purposes, bedeemed to have been effective from the date of filling ofsuch application.
Industrial design
created by theemployee toaccrue to
employer.

34. (1) In the absence of any provision to the contrary
in any contract of employment or for the execution of work,
the ownership of an industrial design created in theperformance of such contract or in the execution of suchwork shall be deemed to accrue to the employer, or the person
who commissioned the work, as the case may be :Provided that where the industrial design acquires an
economic value much greater than the parties could
reasonably have foreseen at the time of concluding thecontract of employment or for the execution of work, as thecase may be, the creator shall be entitled to equitableremuneration which may be fixed by the Court on an
application made by the creator to Court in the absence ofan agreement between the parties.
(2) Where an employee whose contract of employment
does not require him to engage in any creative activity
creates, in the field of activities of his employer, an industrial
design using data or means placed at his disposal by his
employer, the ownership of such industrial design shall bedeemed to accrue to the employer in the absence of any
provision to the contrary in the contract of employment :Provided that the employee shall be entitled to equitableremuneration, which in the absence of agreement between
the parties, may be fixed by the Court on an application
made by the employee, taking into account his emoluments,
the economic value of the industrial design and any benefit
derived from it by the employer.
(3) The rights conferred on the creator of an industrial
design by subsections (1) and (2) shall not be restricted bycontract.

Intellectual Property Act, No. 36 of 2003

35

35. (1) The creator of an industrial design shall be named
as such in the registration, unless by a declaration in writing
signed by him or any person authorized by him in writing inthat behalf and submitted to the Director-General indicates
his willingness to forgo his name being used in suchregistration.

Naming of creatorof an industrial
design.

(2) The provisions of subsection (1) not be altered, varied
or modified by the terms of any contract.
CHAPTER VREQUIREMENTS OF APPLICATION AND PROCEDURE FORREGISTRATION OF AN INDUSTRIAL DESIGN
36. (1) An application for registration of an industrial
design shall be made to the Director-General in the prescribed
form and shall be accompanied by the prescribed fee andshall contain—(a) a request for registration of the industrial design ;(b) the name, address and description of the applicant
and, if he is a resident outside Sri Lanka, a postal
address for service in Sri Lanka ;(c) a specimen of the article embodying the industrial
design or copies of a photographic or graphic
representation of the industrial design, in colour
where it is in colour, or drawings and tracings ofthe design ;(d) an indication of the kind of products for which theindustrial design is to be used and, where theregulations make provision for classification, an
indication of the class or classes in which suchproducts are included ;(e) a declaration by the applicant that the industrial
design is new to the best of his knowledge.

Requirements ofapplication.

36Intellectual Property Act, No. 36 of 2003

(2) The application for registration may be accompanied
by a declaration signed by the creator of the industrial design,
giving his name and address and requesting the same to be
indicated in the registration.
(3) Where the applicant is not the creator of the industrial
design the application shall be accompanied by a statement
justifying the applicant’s right to obtain registration.
(4) The Director-General shall in every case where theapplicant is not the creator of the Industrial design, shallserve the creator with a copy of the statement referred to in
subsection (3). The creator of the industrial design shall havethe right to inspect the application and to receive, on paymentof the prescribed fee, a copy thereof.
(5) Where the application is filed through an agent, it
shall be accompanied by power of attorney granted to suchagent by the applicant.
Right of priority.

37. The applicant for registration of an industrial design
who desires to availhim self of the priority of an earlier
application filed in a convention country shall, within six
months of the date of such earlier application, append to his
application a written declaration indicating the date andnumber of the earlier application, the name of the applicant
and the country in which he or his predecessor in title filed
such application and shall, within a period of three months
from the date of the later application filed in Sri Lanka,
furnish a copy of the earlier application certified as correct
by the Appropriate Authority of the country where suchearlier application was filed.

Application fee.

38. An application for registration of an industrial design
shall not be entertained unless the prescribed fee has been
paid to the Director-General.

Examination of
application.

39. (1) The Director-General shall examine whether theapplicant has complied with the provisions of sections 36,
section 37 (where applicable) and section 38.

Intellectual Property Act, No. 36 of 2003

37(2) Where the applicant fails to comply with theprovision of sections 36 and 37 the Director-General shallrefuse registration of the industrial design :Provided that the Director-General shall first notify theapplicant of any defect in the application and shall afford
him an opportunity to remedy such defect within threemonths from the date of receipt of such notification.
(3) Where the applicant fails to comply with theprovisions of section 37 the Director-General shall not, inconnection with the registration of the industrial design, makeany reference to the priority claimed(4) Where the applicant complies with the provisionsof section 37 the Director-General shall, in connection withthe registration of the industrial design, record the priority
claimed.
(5) Where the Director-General refuses to register anindustrial design he shall, state the grounds for such refusal
and inform the applicant, on payment of a prescribed fee ofthe grounds for his decision.
40. (1) Where the applicant complies with the provisionsof sections 36 and 38 the Director-General shall examine
the industrial design in relation to the provisions of section
29.
(2) Where the industrial design is not registrable under
section 29 the Director-General shall notify the applicant
accordingly, stating the grounds for refusal of registration.
(3) Where the Director-General refuses the applicationof a person for registration of an industrial design, theapplicant may within a period of one month from the dateof such notification in terms of section (2), make his
submissions in writing on the matter of such refusal to the
Director-General.

Registration.

38Intellectual Property Act, No. 36 of 2003

(4) On receipt of any such submission as required bysubsection (3) the Director-General may grant such applicant
a hearing and inform him of the date and time of such hearing.
The Director-General may after such hearing register orrefuse to register such industrial design.
(5) (a) Notwithstanding the provisions of subsections(1) (2), (3) and (4) where the Director-General finds that theessential elements of an industrial design is derived from anindustrial design already registered in respect of which an
application for registration is made, he shall notify theapplicant accordingly and request him, with a copy to theregistered owner of the cited industrial design, to show thatthe industrial design is not so derived.
(b) The applicant may, within a period of three months
from the date of such notice, tender his written submissions
to the Director-General with the prescribed fee. The
registered owner of the cited industrial design may also tender
his observations in writing within the same period of time.
(c) On receipt of such written submissions andobservations, if any, the Director-General shall after hearing
the parties if he considers it necessary forthwith determine
whether such industrial design should be registered or not.
(d) Where the applicant fails to tender his written
submissions as required by paragraph (b) of subsection (5)the Director-General shall refuse the application for theregistration of the industrial design for reasons to be statedand he shall in writing, if the aplicant so requests, informthe applicant in writing of the grounds for his decision on
payment by the applicant of the prescrided fee.
(6) Where the Director-General is of the opinion thatthe industrial design is registrable he may request theapplicant to pay within a period of one month the prescribed
fee for publication of the application.
(7) Where the fee for publication of the application is
not paid within the prescribed period registration of theindustrial design shall be refused.

Intellectual Property Act, No. 36 of 2003

39(8) (a) If the fee for publication is paid within theprescribed period the Director-General shall proceed to
publish the application setting out the date of application,
number of the application, the name and address of theapplicant and if the applicant is resident outside Sri Lanka,
a postal address for service in Sri Lanka, the priority claimed,a description of the industrial design and the kind and classof the industrial design.
(b) Notwithstanding the provisions of subsections (6),(7) and paragraph (a) of subsection (8), the Director-General
may in his discretion by a written notice, require the applicant
to publish the application in accordance with the provisionsof paragraph (a) of subsection (8) and in the form as indicatedby the Director-General. Where the applicant fails or neglects
to publish the application as required by the Director-General
within a period of two months from the said notice of the
Director-General, the application may be refused.
(9) Where any person considers that the industrial design
is not registrable on one or more grounds referred to in section
29 he may within a period of two months from the date of
publication give to the Director-General in a prescribed form
and together with the prescribed fee, notice of opposition tosuch registration stating his grounds of opposition
accompanied by evidence to substantiate such grounds.
(10) Where notice of opposition has not been received
by the Director-General within the period specified insubsection (9) the Director-General shall register theindustrial design.
(11) Where, within the period specified in subsection(9) notice of opposition in the prescribed form is received
by the Director-General, together with the prescribed fee,he shall serve a copy of such grounds of opposition on theapplicant and shall request him to present his observations
on those grounds in writing accompanied by evidence tosupport his application within a period of one month.

40Intellectual Property Act, No. 36 of 2003

(12) On receipt of the observations of the applicant the
Director-General shall after hearing the parties, where taking
all the circumstances into consideration he considers such
hearing necessary, decide, as expeditiously as possible,
whether or not the industrial design may be registered. If hedecides that the industrial design is registrable he shallaccordingly register such industrial design—(a)where no appeal is preferred against his decision,
upon the expiry of the period within which an appeal
may be preferred against his decision ;(b)where an appeal is preferred against his decision,
upon the dismissal of such appeal, as the case maybe.

(13) The Director-General may allow a reasonable
extension of the prescribed period within which any act has
to be done or any fee has to be paid under this section.
Issue of certificate
of registration.

41. Upon the registration of an industrial design, theDirector-General shall issue to the registered owner thereofa Certificate of Registration and shall, at the request of theregistered owner, send such certificate to him by registered
post to his last recorded postal address in Sri Lanka or, if heis resident outside Sri Lanka, to his last recorded postal
address.

Register ofIndustrial
Designs.

42. (1) The Director-General shall keep and maintaina register called the “Register of Industrial Designs” whereinshall be recorded, in the order of their registration, allregistered industrial designs and such other particulars
relating to the industrial designs as are authorised or directedby this Part to be so recorded or may from time to time beprescribed(2) The registration of an industrial design shall include
a representation of the industrial design and shall specify its
number, the name and address of the registered owner and,if the registered owner is resident outside Sri Lanka, a postal
address for service in Sri Lanka ; the date of application andIntellectual Property Act, No. 36 of 2003

41

registration ; if priority is validly claimed, an indication ofthat fact and the number, date and country of the applicationon the basis of which the priority is claimed ; the kinds andclasses of products referred to in paragraph (d) subsection(1) of section 36 and the name and address of the creator of
the industrial design, if he has requested his name to be
indicated as such in the registration.
43. Any person may examine the register and may obtaincertified extracts therefrom on payment of the prescribed fee.

Examination ofregister andcertified copies.

44. The Director-General shall cause to be publishedin the Gazette, in the prescribed form, all registered industrial
designs in the order of their registration, including in respectof each industrial design so published reference to suchparticulars as may be prescribed.

Publication ofregisteredindustrial designs.

CHAPTE R

VI

DURATION OF REGISTRATION OF AN INDUSTRIAL DESIGN
45. Subject to, and without prejudice to the otherprovisions of this Part, registration of an industrial design
shall expire on the completion of five years from the date ofreceipt of the application for registration.

Duration ofregistration.

46. (1) Registration of an industrial design may berenewed for two consecutive periods of five years each, on
an application made in that behalf and on payment of theprescribed fee.

Renewal.

(2) The renewal fee shall be paid within the six months
preceding the date of expiration of the period of registration :Provided, however, that a period of grace of six months
shall be allowed for the payment of the fee after the date ofsuch expiration, upon payment of such surcharge as may beprescribed.
(3) The Director-General shall record in the register andcause to be published in the Gazette in the prescribed form
a list of all renewals of registration of industrial designs.

42Intellectual Property Act, No. 36 of 2003

(4) Where the renewal fee has not been paid within such
period or such extended period as is specified in subsection(2), the Director-General shall remove from the relevant
register the registration relating to such industrial design.
CHAPTER VII
RIGHTS OF A REGISTERED OWNER OF AN INDUSTRIAL DESIGN
Rights of aregistered ownerof an industrial
design.

47. (1) Subject and without prejudice to otherprovisions of this Part, the registered owner of an industrial
design shall in relation to such industrial design have theexclusive rights to —(a) reproduce and embody such industrial design inmaking a product ;(b) import, offer for sale, sell or use a productembodying such industrial design ;(c) stock for the purpose of offering for sale, selling or
using, a product embodying such industrial design ;(d) assign or transmit the registration of the industrial
design ;(e) conclude licence contracts.
(2) No person shall do any of the acts referred to in
subsection (1) without the consent of the registered ownerof the industrial design.
(3) The acts referred to in subsection (1), if done by
any unauthorized person, shall not be lawful solely by reasonof the fact that the reproduction of the registered industrial
design differs from the registered industrial design in minor
respects or that the reproduction of the registered industrial
design is embodied in a type of product different from a
product embodying the registered industrial design.

Intellectual Property Act, No. 36 of 2003

43

48. The provisions of subsection (1) of section 47 shall—(1) extend only to acts done for industrial orcommercial purposes ;Limitation ofregistered owner’s
rights.

(2) not preclude third parties from performing any of
the acts referred to therein in respect of a productembodying the registered industrial design after thesaid product has been lawfully manufactured,
imported, offered for sale, sold, used or stocked in
Sri Lanka.
CHAPTERVIIIASSIGNMENT AND TRANSMISSION OF APPLICATIONS FORREGISTRATION OF INDUSTRIAL DESIGNS AND REGISTRATIONS
OF THE SAME

49. (1) An application for registration or the registrationof an industrial design may be assigned or transmitted andsuch assignment or transmission shall be in writing signedby or on behalf of the contracting parties.

Assignment andtransmission of
applications andregistrations.

(2) Any person becoming entitled by assignment or bytransmission to an application for registration or theregistration of an industrial design may apply to the DirectorGeneral in the prescribed manner along within the prescribed
fee to have such assignment or transmission recorded in theregister.
(3) No such assignment or transmission shall berecorded in the register unless the prescribed fee has been
paid to the Director-General.
(4) No such assignment or transmission shall have effectagainst third parties unless so recorded in the register.
50. In the absence of any agreement to the contrary
between the parties, joint owners of an application forregistration or the registration of an industrial design may,separately, assign or transmit their rights in the application

Joint ownership of
applications andregistration.

44Intellectual Property Act, No. 36 of 2003

or registration, use the industrial design and exercise theexclusive rights referred to in paragraphs (a) to (c) ofsubsection (1) of section 47, but may only jointly withdraw
the application, renounce the registration or conclude alicence contract.
CHAPTER IX
LICENCE CONTRACTS OF INDUSTRIAL DESIGNSInterpretation.

51. For the purposes of this Part licence contract means
any contract by which the registered owner of an industrial
design (“the Licensor”) grants to another person or enterprise(“the licensee”) a licence to do any or all of the acts referred
to in paragraphs (a), (b) and (c) of subsection (1) ofsection 47.

Form and recordof licence
contract.

52. (1) A licence contract shall be in writing signed byor on behalf of the contracting parties.
(2) Upon a request in writing signed by or on behalf ofthe contracting parties, the Director-General shall on
payment of the prescribed fee, record in the register suchparticulars relating to the contract as the parties thereto
requires to be recorded :Provided that the parties shall not be required to discloseor have recorded any other particulars relating to the said
contract.

Rights of licensee.

53. In the absence of any provision to the contrary in
the licence contract, the licensee shall—(a) be entitled to do any or all of the acts referred to inparagraphs (a), (b) and (c) of subsection (1) ofsection 47 within Sri Lanka, during the period ofvalidity of the registration of the industrial design,
inclusive of the period of renewl if any ;(b) not be entitled to assign or transmit his rights under
the licence contract or grant sub-licenses to third
parties.

Intellectual Property Act, No. 36 of 2003

45

54. (1) In the absence of any provision to the contraryin the licence contract, the licensor may grant further licenses
to third parties in respect of the same industrial design or on
behalf of himself do any or all of the acts referred to in subparagraphs (a), (b) and (c) of subsection (1) of section 47.

Rights of licensor.

(2) Where the license contract provides that the license
is exclusive, and unless it is expressly provided otherwise insuch contract, the licensor shall not grant further licenses tothird parties in respect of the same industrial design or not
execute any of the acts referred to in sub-paragraphs (a), (b)and (c) of subsection (1) of section 47 or cause to be executed.
55. Any clause or condition in a license contract shallbe null and void in so far as it imposes upon the licensee, inindustrial or commercial field, restrictions not derived fromthe rights conferred by this Part on the registered owner of
an industrial design, or unnecessary for safeguarding of suchrights :Invalid clauses inlicense contracts.

Provided that—(a) restrictions concerning the scope, extent, or durationof use of the industrial design, or the geographicalarea in or the quality or quantity of the products inconnection with which the industrial design may
be used ; and(b) obligations imposed upon the licensee to refrainfrom all acts capable of prejudicing the validity of
the registration of the industrial design,
shall not be deemed to constitute such restrictions.
56. Where, before the expiration of the license contract
the registration is declared null and void the licensee in such
event not be required to make any payment to the licensor
under the licence contract, and shall be entitled toreimbursement of the payments already made :Effect of nullity ofregistration oflicense contract.

46Intellectual Property Act, No. 36 of 2003

Provided that the licensor shall not be required to makeany repayment, or be required to make repayment in part, tothe extent of his ability to prove that such repayment would
be inequitable having considerd all the circumstances andin particular whether the licensee has effectively profited
from the licence.
Expiry,termination orinvalidation oflicencecontract.

57.

The Director-General shall—(1) if he is satisfied that a recorded licence contract
has expired or been terminated, record that fact in
the register upon a request in writing to that effectsigned by or on behalf of the parties thereto ;(2) record in the register the expiry, termination orinvalidation of a licence contract under any
provision of this Part.

Licencecontracts
involving
payments
abroad.

58. (1) Where the Director-General has reasonablecause to believe that any licence contract or any amendment
or renewal thereof—(a) which involves the payment of royalties abroad ; or(b) which by reason of other circumstances relating tosuch licence contract,
is detrimental to the economic development of Sri Lanka heshall in writing communicate such fact to the Governor of
the Central Bank and transmit all papers in his custody
relevant to the matter which are essential to the making of adecision on such matter to the Governor of the Central Bank.
(2) Where the Governor of the Central Bank on receipt
of any communication under subsection (1) informs the
Director-General in writing that the said licence contract or
any amendment or renewal thereof is detrimental to theeconomic development of Sri Lanka, the Director-Generalshall cancel and invalidate the record of such contract in theregister.
(3) The provisions of this section shall apply, mutatis
mutandis, to assignment and transmissions.

Intellectual Property Act, No. 36 of 2003

47(4) The provisions of this Chapter shall apply mutatis
mutandis, to sub-licences.
CHAPTER X
RENUNCIATION AND NULLITY OF REGISTRATION OF INDUSTRIAL
DESIGN

59. (1) The registered owner of an industrial design may
renounce the registration by a declaration in writing signed
by him or on his behalf in writing and submit it to the
Director-General.

Renunciation ofregistration.

(2) The Director-General shall, on receipt of the saiddeclaration, record it in the register and cause such record
to be published in the Gazette.
(3) The renunciation shall take effect from the date thatthe Director-General receives the said declaration.
(4) Where a licence contract in respect of an industrial
design is recorded in the register the Director-General shallnot, in the absence of any provision to the contrary in suchlicence contract, accept or record the said renunciation except
upon receipt of a signed declaration by which every licensee
or sub-licensee on record consents to the said renunciation,
unless the requirement of their consent is expressly waived
in the licence contract.
60. (1) The Court may on the application, to which theregistered owner of the industrial design and every assignee,
licensee or sub-licensee on record shall be made a party, of
any person having a legitimate interest, or of any competentauthority including the Director-General, declare theregistration of the industrial design null and void on any one
or more of the following grounds—(a) that the provisions of sections 29, 30 and 31 havenot been complied with :Nullity ofregistration.

48

Intellectual Property Act, No. 36 of 2003
Provided, however, that the grounds of nullity
referred to in subsection (2) of section 29 shall not
be taken into account if such grounds are notapparent on the date of the making of the application
to Court ;(b) that the identical industrial design has beenpreviously registered upon a prior application or
has been conferred earlier priority by virtue of an
application in that behalf upon the ground of priorregistration in another country ;(c) that the essential elements of the registeredindustrial design have been unlawfully derived fromthe creation of another person within the meaningof section 33.

(2) Where an application under subsection (1) of thissection relates to several industrial designs, included in theregistration and any ground for nullity applies to some, theCourt shall declare such registration null and void in so far
as it relates to the industrial design in respect of which theground for nullity applies.
Date and effect ofnullity.

61. (1) Upon a final decision of the Court declaring
total or partial nullity of the registration of an industrial
design, the registration shall be deemed to have been nulland void totally or partially, as the case may be, from thedate of such registration.
(2) When a declaration of nullity becomes final theRegistrar of the Court shall notify the Director-General who
shall record such declaration in the register and cause it bepublished in the Gazette.

Intellectual Property Act, No. 36 of 2003

49

PART IVCHAPTER XIDEFINITIONS
62. (1) For the purposes of this Part, “invention” means
an idea of an inventor which permits in practice the solution
to a specific problem in the field of technology.
(2) An invention may be, or may relate to, a product orprocess.
(3) The following, notwithstanding they are inventions
within the meaning of subsection (1), shall not bepatentable—(a) discoveries, scientific theories and mathematicalmethods ;(b) plants, animals and other micro organism other thantransgenic micro organism and an essentiallybiological process for the production of plants andanimals other than non-biological andmicrobiological processes :Provided however, that a patent granted in
respect of micro-organisms shall be subject to theprovisions of this Act;(c) schemes, rules, or methods for doing business,
performing purely mental acts or playing games ;(d) methods for the treatment of the human or animal
body by surgery or therapy, and diagnostic methods
practiced on the human or animal body :Provided however, any product used in any suchmethod shall be patentable ;(e) an invention which is useful in the utilization of
special nuclear material or atomic energy in an
atomic weapon ;Definition of
invention.

50Intellectual Property Act, No. 36 of 2003(f) any invention, the prevention within Sri Lanka ofthe commercial exploitation of which is necessary
to protect the public order, morality including theprotection of human, animal or plant life or healthor the avoidance of serious prejudice to theenvironment.

Patentable
inventions.

63. An invention is patentable if it is new, involves aninventive step and is industrially applicable.

Novelty.

64. (1) An invention is new if it is not anticipated byprior art.
(2)

Prior art shall consist of—(a) everything disclosed to the public, anywhere in theworld, by written publication, oral disclosure, use
or in any other way, prior to the filing or, whereappropriate, priority date of the patent application
claiming the invention ;(b) the contents of patent application made in Sri Lanka
having an earlier filing or, where appropriate,priority date than the patent application referred toin paragraph (a), to extent that such contents areincluded in the patent granted on the basis of thesaid patent application made in Sri Lanka.
(3) A disclosure made under paragraph (a) of subsection(2) shall be disregarded—(a) if such disclosure occurred within one year
preceding the date of the patent application and if
such disclosure or in consequence of acts committed
by the applicant or his predecessor in title ;(b) if such disclosure occurred within six months
preceding the date of the patent application and if
such disclosure was by reason or in consequenceof any abuse of the rights of the applicant or his
predecessor in title.

Intellectual Property Act, No. 36 of 2003

51

65. An invention shall be considered as involving an
inventive step if, having regard to the prior art relevant to
the patent application claiming the invention, such inventive
step would not have been obvious to a person having ordinary
skill in the art.

Inventive step.

66. An invention shall be considered industriallyapplicable if it can be made or used in any kind of industry.

Industrial
application of
invention.

CHAPTER XII
RIGHT TO A PATENT
67. (1) Subject to the provisions of section 68 the rightto a patent shall belong to the inventor.

Right to apatient.

(2) Where two or more persons have jointly made aninvention, the right to a patent shall belong to them jointly.
(3) If and to the extent to which two or more persons
have made the same invention independently of each other,
the person whose application has the earliest filling date or,if priority is claimed, the earliest validly claimed priority
date, shall have the right to the patent, so long as thatapplication is not withdrawn, abandoned or rejected.
68. Where the essential element of the invention claimed
in a patent application or patent have been unlawfully derived
from an invention for which the right to the patent belongs
to another person, such other person may apply to the Court
for an order that the said patent application or patent be
assigned to him :Provided that where, after a patent application has been
filed, the person to whom the right to the patent belongs
gives his consent to the filing of the said patent application,such consent shall, for all purposes, be deemed to have beeneffective from the date of filing of such application :Provided also that the Court shall not entertain an
application for the assignment of a patent after the expiry ofa period of five years from the date of grant of the patent.

Assignment ofpatent applicationor patent, by courtin case of
usurpation.

52
Inventions madeby an employee
or pursuant to acommission.

Intellectual Property Act, No. 36 of 2003

69. (1) In the absence of any provision to the contrary
in any contract of employment or for the execution of work,
the right to a patent for an invention made in the performanceof such contract of employment or in the execution of suchwork shall be deemed to accrue to the employer, or the person
who commissioned the work, as the case may be :Provided that where the invention acquires an economic
value much greater than the parties could reasonably haveforeseen at the time of entering the contract of employment
or for the execution of work, as the case may be, the inventor
shall be entitled to equitable remuneration which may be
fixed by the Court an application made to it in that behalf,in the absence of an agreement between the parties.
(2) Where an employee whose contract of employment
does not require him to engage in any inventive activity,
makes in the field of activities of his employer, an invention
using data or means placed at his disposal by his employer,
the right to the patent for such invention shall be deemed to
accrue to the employer, in the absence of any provision to
the contrary in the contract of employment :Provided that the employee shall be entitled to equitableremuneration which, in the absence of agreement between
the parties, may be fixed by the Court, taking into accounthis emoluments an application made to it in that behalf theeconomic value of the invention and any benefit derived
from it by the employer.
(3) The rights conferred on the inventor undersubsections (1) and (2) shall not be restricted by contract.

Naming ofinventor.

70. (1) The inventor shall be named as such in thepatent, unless by a declaration in writing signed by him oron his behalf and submitted to the Director-General, heindicates his decision to forgo his name being included in
the patent.
(2) The provisions of subsection (1) shall not be
modified by the terms of any contract.

Intellectual Property Act, No. 36 of 2003

53

CHAPTER XIIIREQUIREMENTS OF APPLICATION AND PROCEDURE
FOR GRANT OF A PATENT
71. (1) (a) An application for the grant of a patent shallbe made to the Director-General in the prescribed form andshall contain—(i) a request for the grant of the patent ;(ii) a description of the patent ;(iii) a claim or claims ;(iv) a drawing or drawings, where required ;(v) an abstract ;(vi) date and number of any application for a patent
filed by the applicant abroad (hereinafter referred
to as the “foreign application”), if any, relating to
the same, or essentially the same invention as thatclaimed in the present application ;(vii) a declaration that the applicant or his predecessor
in title has not obtained a patent abroad before theapplication was filed relating to the same oressentially the same invention as that claimed in
the application.
(b) If the declaration referred to in sub-paragraph (vii)of paragraph (a) of subsection (1) of this section is found tobe false, the Court may declare the patent to be null andvoid on an application made to it by any interested party ora Competent Authority including the Director-General. The
registered owner of the patent, assignees and licensees shallbe made party to that application.

Requirements ofapplications

54

Intellectual Property Act, No. 36 of 2003(c) Where the applicant’s ordinary residence or principal
place of business is outside Sri Lanka, he shall be represented
by an agent resident in Sri Lanka whose name and address
shall be given in the application, and the application shallbe accompanied by a power of attorney granted to such agent
by the applicant.
(d) The application may be accompanied by adeclaration signed by the inventor, giving his name andaddress and requesting that he be named as such in the patent.
(2)(a) The request shall contain –(i) a petition that the patent be granted ;(ii) the title of the invention;(iii) the name, address, description and any otherprescribed information concerning the applicant,the inventor and the agent, if any.
(b) Where the applicant is not the inventor, the request
shall be accompanied by a statement justifying the applicant’s
right to the patent.
(c) The Director-General shall send a copy of thestatement referred to in paragraph (b) to the inventor who
shall have the right to inspect the application and to receive,on payment of the prescribed fee, a copy thereof.
(3) The description shall disclose the invention in amanner sufficiently clear and complete for the invention to
be evaluated, and to be carried out by a person having
ordinary skill in the relevant technology and shall, inparticular, indicate the best mode known to the applicant
for carrying out the invention.
(4) The claim or claims shall be clear, concise andsupported by the description.
(5) Drawings shall be required when they are necessary
for the understanding of the invention.

Intellectual Property Act, No. 36 of 2003

55

(6) The terms of any claim shall determine the scopeand extent of the protection afforded by the patent, and thedescription and drawings may be used to interpret such claim.
(7) The abstract shall serve the purpose of technicalinformation and shall not be used for the purpose ofdetermining or interpreting the scope and extent of theprotection afforded by the patent.
(8) Any application filed outside Sri Lanka under the
Patent Corporation Treaty for a patent designating Sri Lanka
shall if the applicant files a corresponding application with
the Director-General be deemed to be an application madeunder this Act.
For the purposes of this Chapter “the Patent Corporation
Treaty” means the Patent Corporation Treaty made in
Washington on June 19th 1970, as amended from time
to time.
72. An application for the grant of a patent shall not beentertained unless prescribed fee has been paid to the
Director-General.

Application fee.

73. (1) Every applicant shall furnish, within theprescribed period, a report, which if not in English shall beaccompanied by a translation thereof in English, of a searchwhich shall conform such type as may be prescribed :Search report.

Provided, however, that in lieu of the said search an
applicant may request the Director-General to refer theapplication to a local examiner who shall examine theapplication on the basis of any claim with due regard to thedescription and the drawings, if any, and furnish a report to
the Director-General within the prescribed period, on therelevant prior art, after making the required effort to discoveras much of the relevant prior art as facilities permit ; and forthe purposes of the search the local examiner shall makereference to every documentation on prior art available to
him.

56

Intellectual Property Act, No. 36 of 2003

(2) The applicant shall, when requiring the DirectorGeneral to refer his application to a local examiner, forward
such application with the prescribed fee to Director-General.
(3) (a) The applicant shall, at the request of the DirectorGeneral, furnish him with the following documents in respectof any foreign application for a patent filed by him abroad
relating to the same or essentially the same invention as thatclaimed in the application filed under this Act –(i) a copy of any communication received by theapplicant concerning the results of any search or
examination carried out in respect of the foreign
application ;(ii) a copy of the patent granted on the basis of theforeign application ; and(iii) a copy of any final decision rejecting the foreign
application or refusing the grant of a patent
requested in the foreign application.
(b) The applicant shall, at the request of the Director–
General, furnish him with a copy of any final decision
invalidating the patent granted on the basis of the foreign
application referred to in paragraph (a).
(4) For this purposes of the section “local examiner”
means any skilled person to whom the Director-General may
refer questions concerning patents.
Unity ofinvention.

74. An application shall relate to one invention only or
to a group of inventions which are so linked to each other so
as to form a single general inventive concept.

Amendment
and divisionof application.

75. (1) An applicant may amend the application,
provided that the amendment shall not exceed the limits ofthe disclosure in the initial application.
(2) (a) An applicant may divide the application into
two or more applications (hereinafter referred to as“divisional applications”) provided that each divisional
application shall not exceed the limits of disclosure in theinitial application.

Intellectual Property Act, No. 36 of 2003

57(b) Each divisional application shall be entitled to thefiling, or where applicable, priority, from date of the initial
application.
(3) An amendment to an application or a division of an
application shall be subject to the payment of a prescribedfee.
76. (1) An application may contain a declaration
claiming the priority, pursuant to the Convention, of one ormore earlier national, regional or international applications
filed by the applicant or his predecessor in title in or for any
State party to the said Convention.

Right of priority.

(2) Where the application contains a declaration undersubsection (1), the Director-General may require theapplicant to furnish, within the prescribed period, a copy ofthe earlier application, certified as correct by an officer
authorized in that behalf, for that purpose by the Office withwhich it was filed or, where the earlier application is aninternational application filed under the Patent Co-operation
Treaty, by an office authorized in that behalf for that purposeby the International Bureau of the World Intellectual Property
Organization.
(3) The effect of the declaration referred to in subsection(1) shall be the same as provided for in the Convention
referred to therein.
(4) Where any of the requirements of this section or
any regulation made thereunder have not been complied
with, the declaration referred to in subsection (1) shall bedeemed to be null and void.
77. (1) The Director-General shall record as the filing
date, the date of receipt of the application :Provided that on the date of the receipt of the application, contains –(a) the name and address of the applicant ;Filing date.

58Intellectual Property Act, No. 36 of 2003(b) the name and address of the inventor and, where theapplicant is not his inventor, the statement referred
to in paragraph (b) of subsection (2) of section 71 ;(c) a description of the patent;(d) a claim or claims :Provided further that at the time of receipt of theapplication the prescribed fee has been paid.
(2) Where the Director-General finds, at the time ofreceipt of the application, that the provisions of subsection(1) have not been complied with, he shall request theapplicant to file the required correction within a period of
three months from the date of such request.
(3) Where the applicant complies with the request
referred to in subsection (2), the Director-General shall record
as the filing date, the date of receipt of the required correction; where the applicant fails to so comply the Director–Generalshall treat the application as null and void.
(4) Where the application refers to drawings which infact are not included in the application, the Director-Generalshall request the applicant to furnish the missing drawings.
(5) Where the applicant complies with the request
referred to in subsection (4), the Director-General shall record
as the filing date the date of receipt of the missing drawings ;where the applicant fails to so comply the Director-Generalshall record as the filing date, the date of receipt of theapplication and shall make no reference to the said drawings.
(6) The title, description, drawings, abstracts and claims
filed with any international application made undersubsection (8) of section 71, designating Sri Lanka shall bedeemed to be carried out in accodance with specifications
required under this Act.

Intellectual Property Act, No. 36 of 2003

59(7) The filing date of such application made undersubsection (8) of section 71 and processed by the office shallbe deemed to be the date of filling of such application under
the Patent Corporation Treaty.
78. (1) The Director-General shall examine theapplication and shall satisfy himself as to the fulfilment of
the following :—(a) where applicable, the requirements of paragraph (b)of subsection (1) of section 71 ;(b) the requirements of paragraph (a) of subsection (2)of section 71 ;(c) where applicable, the requirements of paragraph (b)of subsection (2) of section 71 ;(d) the description, the claims and where applicable,
the drawings, which comply with the prescribed
requirements ;(e) the essential elements of the invention claimed in
the application have not been unlawfully derived
from a patent already granted in Sri Lanka ;(f) the application contains an abstract ;(g) the search report referred to in section 73 has been
submitted.
(2) Where the Director-General finds that the conditions
referred to in subsection (1) are not fulfiled he shall request
the applicant to file the required correction within a periodof three months from the date of such request ; where theapplicant fails to so comply the application shall, subject tothe provisions of subsection (3), be rejected.
(3) Where no correction is provided in response to arequest under subsection (2), the Director-General shall, on
payment of the prescribed fee within the prescribed period,
include the corrections into the application and if theprescribed fee is not paid within the prescribed period theapplication shall be rejected.

Examination of
applications &c.

60Intellectual Property Act, No. 36 of 2003

(4) Where the Director-General finds that the essential
elements of an invention claimed in an application are
unlawfully derived from a patent already granted in Sri
Lanka, such application shall be rejected.
(5) The Director-General shall notify the applicant ofany decision under subsections (2), (3) and (4) and any
decision taken to reject the application shall be in writing
stating the reasons for such rejection.
Grant of patent.

79. (1) The grant of a patent shall not be refused and apatent shall not be invalidated on the ground that thecommercial exploitation of the claimed invention is prohibitedby any law except where the prevention of the commercial
exploitation of the claimed invention is necessary in order toprotect public order, and morality including the protection ofhuman, animal or plant life or health or for the avoidance ofserious prejudice to the environment.
(2) Where the applicant fulfils the requirements ofsubsection (1) of section 78 to the satisfaction of the DirectorGeneral, he shall grant the patent, and shall forthwith —(a) record the particulars relating to patent in theRegister of patents required to be maintained inaccordance with the provisions of section 80 ;(b) issue a certificate to the applicant in respect of the
grant of a patent together with a copy of the patentdocuments including the search report :Provided however where the applicant has not tendered
an international search report, but has requested the Director–
General to refer the application to a local examiner under
the proviso to section 73, the Director-General shall publish
a notice informing the public, of the possibility of granting
a patent to the applicant at the expiration of a period of threemonths from the date of publication of the notice, unlessotherwise directed by the Court.

Intellectual Property Act, No. 36 of 2003

61(3) The Director-General shall thereafter as soon aspracticable cause to be published in the Gazette a noticepertaining to the grant of the patent.
(4) The patent shall be deemed to be granted on the datethat the Director-General acts in accordance with theprovisions of paragraph (a) of subsection (2).
(5) The notice referred to in the proviso to subsection (2)shall contain the name and address of the applicant and where
the applicant is resident outside Sri Lanka a postal addressfor service in Sri Lanka, a description of the invention andany other information as may be prescribed.
(6) The applicant shall make the payment of theprescribed fee for the publication referred to in the proviso
to subsection (2) upon the request of the Director-General,
and where the applicant fails to satisfy such request within
one month from the date of such request the Director-Generalshall refuse to grant such patent.
80. The Director-General shall keep and maintain aregister (hereinafter called and referred to as the “Registerof Patents”) wherein all patents shall be recorded, in theorder of their grant, specifying the number of the patent,
the name and address of the grantee and, if the grantee isresident outside Sri Lanka, a postal address for service in
Sri Lanka, the date of application and grant, any change inthe ownership of a patent application or patent, theamendment or division of a patent application, theassignment or transmission of a patent application or patent,
any valid claim to priority, the surrender or revocation of apatent and such other matters relating to patents as areauthorised or directed by this Part to be so recorded or
may from time to time be prescribed.

Register ofPatents.

81. Any person may examine the register and may obtaincertified extracts therefrom on payment of the prescribed fee.

Examination ofregister andcertified copies.

62
Inspection offiles.

Intellectual Property Act, No. 36 of 2003

82. (1) Any person may, after the grant of a patent,
inspect, subject to subsections (2) and (3), the file relating
to any patent and may obtain certified extracts therefrom on
payment of the prescribed fee.
(2) The file relating to a patent application may beinspected before the grant of the patent only with the written
permission of the applicant :Provided that before the grant of the patent the DirectorGeneral may divulge the following information to any
person—(a) the name, address and description of the applicant
and the name and address of the agent, if any ;(b) the number of the application ;(c) the filing date of the application and, if priority isclaimed, the priority date, the number of the earlier
application and the name of the State in which theearlier application was filed or, when the earlier
application is a regional or an international
application, the name of the State or States for which
and the office with which, it was filed ;(d) the title of the invention ;(e) any change in the ownership of the application andany reference to a licence contract appearing in thefile relating to the application.
(3) Where the provisions of the proviso to subsection(2) of section 79 are applicable, the reference to the grant ofa patent in subsections (1) and (2) of this section shall bedeemed to be a reference to the publication of the noticereferred to in the said proviso.
(4) No person employed in or at the Office may make apatent application or be granted a patent or acquire or holdin any manner whatsoever any right relating to a patent during
the period of his employment in or at the office and for one
year after the termination of such employment.

Intellectual Property Act, No. 36 of 2003

63

CHAPTER XIV
DURATION OF PATENT
83. (1) Subject and without prejudice to the otherprovisions of this Part a patent shall expire twenty years
after the filing date of application for its registration.

Duration of patent.

(2) Where a patentee intends at the expiration of thesecond year from the date of grant of the patent to keep thesame in force he shall, twelve months prior to the date of
expiration of the second and each succeeding year during
the term of the patent, pay the prescribed annual fee:
Provided, however, that a period of grace of six months
shall be allowed after the date of such expiration, upon
payment of such surcharge as may be prescribed :Provided further that the patentee may pay in advancethe whole or any portion of the aggregate of the prescribedannual fees.
CHAPTERXVRIGHTS OF OWNER OF PATENT
84. (1) Subject and without prejudice to the otherprovisions of this Part, the owner of a patent shall have thefollowing exclusive rights in relation to a patented
invention:—(a) to exploit the patented invention ;(b) to assign or transmit the patent ;(c) to conclude licence contracts.
(2) No person shall do any of the acts referred to in
subsection (1) without the consent of the owner of the patent.

Rights of owner ofpatent.

64Intellectual Property Act, No. 36 of 2003

(3) For the purposes of the this Part “exploitation” of apatented invention means any of the following acts in relation
to a patent :—(a) when the patent has been granted in respect of a
product—(i) making, importing, offering for sale, selling,
exporting or using the product ;(ii) stocking such product for the purpose ofoffering for sale, selling, exporting or using ;(b) when the patent has been granted in respect of aprocess—(i) using of the process ;(ii) doing any of the acts referred to in paragraph(a), in respect of a product obtained directly
by means of the process ;(iii) preventing any person using that process orusing, selling or importing any productobtained directly by means of that processunless such person is authorized to do so.
Burden of proof
to be on the
alleged infringer.

85. (1) Where the subject mater of a patent is a process
for obtaining a product, the burden of proof in a civil actionof establishing that an alleged infringing product was not
obtained by that patented process shall be on the alleged
infringer—(a) if the product obtained by the patented process is
new ; or(b) if a substantial likelihood exists that the productwas made by the patented process and the patent
owner has been unable through reasonable efforts
to determine the process actually used.

Intellectual Property Act, No. 36 of 2003

65(2) In the gathering and evaluation of evidence, thelegitimate interests of the alleged infringer in protecting his
undisclosed information shall be taken into account.
86. (1) The provisions of section 84 shall—(i) extend only to acts done for industrial orcommercial purposes and in particular shall notextend to acts done only for the purpose of scientificresearch ;(ii) not preclude a person having the rights referred toin section 87 or a licensee, from exploiting thepatented invention ;(iii) not extend to the presence or use of products on
foreign vessels, aircraft, spacecraft, or land vehicles
which temporarily or accidentally enter the waters,
airspace or territory of Sri Lanka ;(iv) not extend to acts in respect of articles which havebeen put in the market by the owner of the patentor by a manufacturer under licence.
(2) (a) Any person, body of persons, a government
department or a statutory body may make an application to
the Director General for the purpose of obtaining a licenceto exploit a patent in the manner hereafter provided.
(b) Upon the receipt of such application, the Director
General may issue a licnece for exploition if he is satisfied
that the applicant has made efforts to obtain approval fromthe right holder on reasonable commercial terms andconditions and that such efforts have not been successful
within a reasonable period of time.
(c) Director-General may waive the requirements set
out in paragraph (b) where he has statisfied himself of theexistence of a national emergency or any other circumstancesof extreme urgency or in case of public non-commercial use

Limitation ofowner’s rights.

66Intellectual Property Act, No. 36 of 2003

for the purposes such as national security, nutrition, healthor for the development of others vital section of the national
economy.
(d) The exploitation of the patent shall be limited inscope and duration to the purpose as is specified in thelicence. Such exploitation shall be predominantly for the
purpose of supply to the domestic market.
(e) The Director-General shall consider eachapplication on its individual merits before granting a licenceto exploit a patent.
(f) The issuance of a licence shall be non-exclusive andsubject to the payment of adequate remuneration to the ownerof the patent taking into consideration the economic value
as determined by the Director-General, and where applicable,
the need to correct anti-competitive practices.
(g) Where such application is for the exploitation of
the patent (the second patent) which cannot be exploited
without infringing another patent (the first patent), thefollowing conditions shall apply :(i) the invention claimed in the second patent shallinvolve and important technical advance ofconsiderable economic significance in relation to
the invention claimed in the first patent ;(ii) the owner of the first patent shall be entitled to across licence on reasonable terms to exploit theinvention claimed in the second patent ; and(iii) the exploitation authorized in respect of the firstpatent shall be non-assignable except with theassignment of the second patent.
(h) The decision of the Director-General, shall be
notified in writing to the owner of the patent as soon aspracticable.

Intellectual Property Act, No. 36 of 2003

67(i) The Director-General, shall upon, the request of theowner or of the beneficiary of the licence, after hearing theparties, vary his decision by amending the terms subject towhich licence for the exploitation of the patent is issued tothe extent only that the changed circumstances justify suchvariation.
(j) The Director-General shall upon the request of theowner, terminate the non-voluntary license if he is satisfied
that the circumstances which led to his decision have ceased
to exist and are unlikely to recur or that the license has failed
to comply with terms of such licence.
(k) Notwithstanding anything contained in paragraph,(j) the Director-General shall not terminate a licence, if heis satisfied that adequate protection of the legitimate interestof the beneficiary of the licence justifies the continuity ofsuch licence.
(l) The licence to exploit a patent may be transferred
only with the enterprise or the business of the licencee ofsuch patent or with the part of such enterprise or business,in relation to which the licence to exploit has been granted.
(m) Where a judicial or administrative body has
determined that the manner of exploitation of a patent by its
owner or its licensee is anti-competitive, and the DirectorGeneral is satisfied that the exploitation of a patent inaccordance with this section would remedy such practice,
the Director-General may authorize any person, body of
persons, government departments or statutory body to exploit
the patent without a licence of the owner of the patent. The
provisions of the above paragraphs except those of paragraphs(b), (c) and (g) shall be applicable to such licence.
(3) Any person aggrieved by any decision of the
Director-General under subsection (2), may tender an appeal
therefrom. The provisions of section 173 shal1, mutatis
mutandis, apply in respect of such appeal.

68
Rights derived
from prior
manufacture oruse.

Intellectual Property Act, No. 36 of 2003

87. (1) Where a person at the filing date or, whereapplicable, the priority date, of the patent application—(a) was in good faith making the product or using theprocess in Sri Lanka which is the subject of theinvention claimed in such application ;(b) had in good faith made serious preparations in Sri
Lanka towards the making of the product or using
the process referred to in paragraph (a),he shall have the right, despite the grant of the patent, toexploit the patented invention :Provided that the product in question is made, or theprocess in question is used by the said person in Sri Lanka :Provided further, if the invention was disclosed undercircumstances referred to in paragraph (a) or (b) of subsection(3) of section 64, he may prove, that his knowledge of theinvention was not as a result of such disclosure.
(2) The right referred to in subsection (1) shall not be
assigned or transmitted except as part of the business of theperson concerned.
(3) The provisions of this section shall not affect therights of any person to object to the grant of a patent on the
ground that such invention is not patendable under sections
63, 64, 65 and 66 of the Act, or to seek relief under sections
68 and 99 of the Act.
CHAPTER XVIASSIGNMENT AND TRANSMISSION OF PATENT APPLICATIONS AND
PATENTS

Assignment andtransmission ofpatent applications
and patents.

88. (1) A patent application or patent may be assigned
or transmitted and such assignment or transmission shall bein writing signed by or on behalf of the contracting parties.

Intellectual Property Act, No. 36 of 2003

69

(2) Any person becoming entitled by assignment ortransmission to a patent application or patent may apply to
the Director-General in the prescribed manner to have suchassignment or transmission recorded in the register.
(3) No such assignment or transmission shall berecorded in the register unless the prescribed fee has been
paid to the Director-General.
(4) No such assignment or transmission shall have effectagainst third parties unless so recorded in the register.
89. In the absence of any agreement to the contrary
between the parties, joint owners of a patent application or
patent may, separately, assign or transmit their rights in thepatent application or patent, exploit the patented invention
and take action against any person exploiting the patented
invention without their consent, but may only jointly
withdraw the patent application, surrender the patent or
conclude a licence contract.
CHAPTER

Joint ownership ofpatent applications
or patents.

XVII

LICENCE CONTRACTS
90. For the purposes of this Part licence contract means
any contract by which the owner of a patent (hereinafterreferred to as “the licensor”) grants to another person orenterprise (hereinafter referred to as the “the licensee”) alicence to do all or any of the acts referred to in paragraph(a) of subsection (1) and subsection (3) of section 84.

Interpretation.

91. (1) A licence contract shall be in writing signed byor on behalf of the contracting parties.

Form and recordof licence
contract.

(2) Upon a request in writing signed by or on behalf ofthe contracting parties, the Director-General shall, on
payment of the prescribed fee, record in the register suchparticulars relating to the contract as the parties thereto mightwish to have so recorded :Provided that the parties shall not be required to discloseor have recorded any other particulars relating to the said
contract.

70
Rights of licensee.

Intellectual Property Act, No. 36 of 2003

92. In the absence of any provision to the contrary in
the licence contract, the licensee shall—(a) be entitled to do all or any of the acts referred to inparagraph (a) of subsection (1) and subsection (3)of section 84 within the territory of Sri Lanka,
without limitation as to time and through applicationof the patented invention ;(b) not be entitled to assign or transmit his rights under
the licence contract or grant sub-licences to third
parties.

Rights of thelicensor.

93. (1) In the absence of any provision to the contraryin the licence contract, the licensor may grant further licences
to third parties in respect of the same patent or perform allor any of the acts referred to in paragraph (a) of subsection(1) and subsection (3) of section 84.
(2) Where the licence contract provides the licence tobe exclusive, and unless it is expressly provided otherwise
in such contract, the licensor shall not grant further licences
to third parties in respect of the same patent or perform allor any of the acts referred to in paragraph (a) of subsection(1) and subsection (3) of section 84.

Invalid clauses
in licence
contracts.

94. Any term or condition in a licence contract shall benull and void in so far as it imposes upon the licensee, in theindustrial or commercial field, restrictions not derived fromthe rights conferred by this Part on the owner of the patent,
or unnecessary for the safeguarding of such rights :Provided that—(a) restrictions concerning the scope, extent or durationof exploitation of the patented invention, or thegeographical area in or the quality or quantity ofthe products in connection with, which the patented
invention may be exploited ; andIntellectual Property Act, No. 36 of 2003

71(b) obligations imposed upon the licensee to abstain
from all acts capable of prejudicing the validity ofthe patent,
shall not be deemed to constitute such restrictions.
95. Where, before the expiration of the licence contract,
any of the following events occur in respect of the patentapplication or patent referred to in such contract—(a) the patent application is withdrawn ;Effect of patentapplication not
being granted orpatent being
declared null andvoid.

(b) the patent application is finally rejected ;(c) the patent is surrendered ;(d) the patent is declared null and void ; or(e) the registration of the licence contract is invalidated,
the licensee shall no longer be required to make any payment
to the licensor under the licence contract, and shall be entitled
to repayment of the payments already made :Provided that the licensor shall not be required to makeany repayment, or repayment only in part, if he can provethat any such repayment would be inequitable under thecircumstances, in particular if the licensee has effectively
profited from the licence.
96. The Director-General shall—(a) if he is satisfied that a recorded licence contract
has expired or been terminated, record that fact in
the register upon a request in writing to that effectsigned by or on behalf of the parties thereto ;(b) record in the register the expiry, termination orinvalidation of a licence contract under any
provision of this Part.

Expiry,termination orinvalidation oflicence contract tobe recorded.

72
Licence contracts
involving
payments abroad.

Intellectual Property Act, No. 36 of 2003

97. (1) Where the Director-General has reasonablecause to believe that any licence contract or any amendment
or renewal thereof—(a) which involves the payment of royalties abroad ; or(b) which by reason of other circumstances relating tosuch licence contract,
is detrimental to the economic development of Sri Lanka,
he shall in writing communicate such fact to the Governorof the Central Bank and transmit all papers in his custody
relevant to a decision on such matter to the Governor of theCentral Bank.
(2) Where on receipt of any communication undersubsection (1) the Governor of the Central Bank informs the
Director-General in writing that the said licence contract or
any amendment or renewal thereof is detrimental to theeconomic development of Sri Lanka, the Director-Generalshall cancel and invalidate the record of such contract in theregister.
(3) The provisions of this section shall apply, mutatis
mutandis, to assignments and transmissions.
(4) The provisions of this Chapter shall apply, mutatis
mutandis, to sub-licence.
(5) The provisions of this Chapter shall have noapplication to a licence referred to in subsection (2) of section
86.
CHAPTERXVIII

SURRENDER AND NULLITY OF PATENT
Surrender ofpatent.

98. (1) The registered owner of a patent may surrender
the patent by a declaration in writing signed by him or by
any person authorized by him on his behalf and shall submitt
it to the Director-General.

Intellectual Property Act, No. 36 of 2003

73(2) The surrender may be limited to one or more claimsof the patent.
(3) The Director-General shall, on receipt of the saiddeclaration record it in the register or cause it to be registeredand shall cause such record to be published in the Gazette.
(4) The surrender shall take effect from the date ofreceipt of such declaration by the Director-General.
(5) Where a licence contract in respect of a patent isrecorded in the register, the Director-General shall not, inthe absence of provision to the contrary in such licence
contract, accept or record the said surrender except uponreceipt of a signed declaration by which every licensee or
sub-licensee on record consents to the said surrender, unlessthe requirement of his consent is expressly waived in thelicence contract.
99. (1) The Court may on the application of any person
showing a legitimate interest, or of any Competent Authority
including the Director-General, to which the owner of thepatent and every assignee, licensee or sub-licensee on record
shall be made party, declare the patent null and void on any
one or more of the following grounds :—(a) that what is claimed as an invention in the patent is
not an invention within the meaning of subsection(1) of section 62, or is excluded from protection
under subsection (3) of section 62, or subsection(1) of section 79, or is not patentable due to thefailure to satisfy the requirements of sections 63,
64, 65 and 66 ; or(b) that the description or the claims, fails to satisfy
the requirements of subsections (3) and (4) ofsection 71 ; or(c) that any drawings required for the understanding of
the claimed invention have not been furnished ; orNullity of patent.

74Intellectual Property Act, No. 36 of 2003(d) that the right to the patent belongs to a person otherthan the person to whom the patent was granted :Provided that the patent has not been assigned to theperson to whom the right to the patent belongs.
(2) (a) Where the provisions of subsection (1) apply
only to some of the claims or some parts of a claim, suchclaims or parts of a claim may be declared null and void by
the court.
(b) The nullity of part of a claim shall be declared in
the form of a corresponding limitation of the claim inquestion.
(3) (a) An assignee, licensee or sub-licensee, as the casemay be, who has been made party to the application undersubsection (1), shall be entitled to join in the proceedings in
the absence of any provision to the contrary in any contract
or agreement with the owner of the patent.
(b) Where the application to Court is on the groundreferred to in paragraph (d) of subsection (1), the applicant
shall give notice of the application to the person to whom
the right to the patent is alleged to belong.
Date and effect ofnullity.

100. (1) Upon a final decision of the Court declaring
total or partial nullity of a patent, the patent shall be deemed
to have been null and void, totally or partially, as the casemay be, as from the date of the grant of such patent.
(2) When a declaration of nullity becomes final theRegistrar of the Court shall notify the Director-General who
shall record the said declaration in the register and cause it
to be published in the Gazette.

Intellectual Property Act, No. 36 of 2003

75

PART VCHAPTER XIX
MARKS AND TRADE NAMES
101. For the purposes of this Part, unless the context
otherwise requires—“certification mark” means a mark indicating that the
goods or services in connection with which it isused are certified by the proprietor of the mark in
respect of origin, material, mode of manufactureof goods or performance of services, quality,
accuracy or other characteristics ;“collective mark” means any visible sign designated assuch and serving to distinguish the origin or any
other common characteristic of goods or servicesof different enterprises which use the mark under
the control of the registered owner ;“enterprise” means any business, industry or otheractivity carried on by an individual, partnership,company, or co-operative society whereverregistered or incorporated and whether registeredor not under any law for the time being in force
relating to companies, co-operative societies orbusinesses engaged in or proposing to engage inany business and includes any business undertakingof the Government or any State Corporation whether
carrying on business in Sri Lanka or otherwise ;“false trade description” means a trade description which
is false or misleading in a material respect as regards
the goods or services to which it is applied, andincludes every alteration of a trade description,
whether by way of addition, effacement orotherwise, where that alteration makes thedescription false or misleading in a material respect,

Definitions.

76Intellectual Property Act, No. 36 of 2003
and the fact that a trade description is a trade markor part of a trade mark shall not prevent such tradedescription being a false trade description within
the meaning of this Part ;“geographical indication” means an indication which
identifies any goods as originating in the territoryof a country, or a region or locality in that territory,
where a given quality, reputation or othercharacteristic of the good is essentially attributable
to its geographical origin ;“goods” means anything which is the subject of trade,manufacture or merchandise and includes services ;“indication of source” means any expression or sign used
to indicate that a product or service originates in agiven conutry or group of countries, region, or
locality ;“mark” means a trade mark or service mark ;“name” includes any abbreviation of a name ;“person” means manufacturer, dealer, trader or owner
and includes any body of persons, corporate orunincorporate ;“service mark” means any visible sign serving todistinguish the services of one enterprise from thoseof an other enterprise ;“trade description” means any description, statement
or other indication, direct or indirect—(a) as to the number, quantity, measure, gauge,
or weight of any goods ; or(b) as to the place or country in which any goods
were made or produced ; or

Intellectual Property Act, No. 36 of 2003

77(c) as to the mode of manufacturing or producing
any goods ; or(d) as to the material of which any goods arecomposed ; or(e) as to any goods being the subject of an
existing copyright, related rights, industrial
design or patent or any other matter protectedunder this Act ; or(f) as to the quality, kind or nature of theservices ; or(g) as to the standard of quality of any goods,
according to a classification commonly usedor recognized in the trade ; or(h) as to the fitness for purpose, strength,
performance or behaviour of any goods,
and the use of any figure, word or mark which,according to the custom of the trade, is commonly
taken to be an indication of any of the above
matters shall be deemed to be a trade description
within the meaning of this Part ;“trade mark” means any visible sign serving todistinguish the goods of one enterprise from thoseof another enterprise ; and“trade name” means the name or designation identifying
the enterprise of a natural or legal person.

78Intellectual Property Act, No. 36 of 2003
CHAPTER XXADMISSIBILITY OF MARKS

Admissibility ofmarks.

102. (1) The exclusive right to a mark conferred by thisPart shall be acquired, subject to the succeeding provisions,by registration.
(2) Registration of a mark may be granted to the person
who—(a) is the first to fulfill the conditions of a valid
application ; or(b) is the first to validly claim the earliest priority for
his application :Provided however such mark shall not be inadmissible
under sections 103 and 104.
(3) A mark may consist in particular, of arbitrary or
fanciful designations, names, pseudonyms, geographicalnames, slogans, devices, reliefs, letters, numbers, labels,
envelopes, emblems, prints, stamps, seals, vignettes,
selvedges, borders and edgings, combinations or
arrangements of colours and shapes of goods or containers.

Marks
inadmissible on
objective grounds.

103. (1) A mark shall not be registered—(a) which consists of shapes or forms imposed by theinherent nature of the goods or services or by theirindustrial function ;(b) which consists exclusively of a sign or indication
which may serve, in the course of trade, to designate
the kind, quality, quantity, intended purpose, value,place of origin or time of production, or of supply,of the goods or services concerned ;Intellectual Property Act, No. 36 of 2003

79(c) which consists exclusively of a sign or indication
which has become, in the current language or in
the bona fide and established practices of trade in
Sri Lanka, a customary designation of the goods orservices concerned ;(d) which, is incapable of distinguishing the goods orservices of one enterprise from those of anotherenterprise ;(e) which consists of any scandalous design or iscontrary to morality or public order or which, inthe opinion of the Director-General or of any court
to which the matter may be referred to, as the casemay be, is likely to offend the religious or racialsusceptibilities of any community ;(f) which is likely to mislead trade circles or the public
as to the nature, the source, geographical indication
the manufacturing process, the characteristics, orthe suitability for their purposes, of the goods orservices concerned ;(g) which does not represent in a special or particularmanner the name of an individual or enterprise ;(h) which is, according to its ordinary signification, ageographical name or surname ;(i) which reproduces or imitates armorial bearings,
flags or other emblems, initials, names orabbreviated names of any State or any intergovernmental international organization or any
organization created by international convention,
unless authorized by the Competent Authority ofthat State or international organization ;(j) which reproduces or imitates official signs or hallmarks of a State, unless authorized by theCompetent Authority of that State ;80Intellectual Property Act, No. 36 of 2003(k) which resembles in such a way as to be likely to
mislead the public, a mark or a collective mark or acertification mark the registration of which has
expired and has not been renewed during a periodof two years preceding the filing of the application
for the registration of the mark in question or where
its renunciation, removal or nullity has beenrecorded in the register during a period of two years
preceding the filing of the application for the markin question ;(l) the registration of which has been sought in respectof goods or services the trading of which isprohibited in Sri Lanka ;(m) which consists of any other word or definition as
may be prescribed.

(2) The Director-General shall in applying the provisionsof paragraphs (b), (c) , (d), (f), (g) and (h), of subsection (1),have regard to all the factual circumstances and, in particular,
the length of time the mark has been in use in Sri Lanka or inother countries and the fact that the mark is held to be
distinctive in other countries or in trade circles.
Marks
inadmissible byreason of thirdparty rights.

104. (1) The Director-General shall not register amark —(a) which resembles, in such a way as to be likely to
mislead the public, a mark already validly filed orregistered by a third party, or subsequently filed bya person validly claiming priority, in respect ofidentical or similar goods or services in connection
with which the use of such mark may be likely to
mislead the public ;(b) which resembles, in such a way as to be likely to
mislead the public, an unregistered mark usedearlier in Sri Lanka by a third party in connection
with identical or similar goods or services, if theapplicant is aware, or could not have been unaware,of such use ;Intellectual Property Act, No. 36 of 2003

81(c) which resembles, in such a way as to be likely to
mislead the public, a trade name already used in
Sri Lanka by a third party, if the applicant is aware.
or could not have been unaware, of such use ;(d) if it is identical with, or misleadingly similar to, or
constitutes or translation or transliteration ortranscription of a mark or trade name which is wellknown in Srl Lanka for identical or similar goods
or services of a third party, or such mark or tradename is well known and registered in Sri Lanka
for goods or services which are not identical orsimilar to these in respect of which registration isapplied for, provided in the latter case the use of
the mark in relation to those goods or services would
indicate a connection between those goods orservices and the owner of the well known mark andthat the interests of the owner of the well known
mark are likely to be damaged by such use ;(e) which infringes other third party rights or is contrary
to the provisions of Chapter XXXII relating to theprevention of unfair competition ;(f) which is filed by the agent or a representative of athird party who is the owner of such mark in anothercountry, without the authorization of such owner,
unless the agent or representative justifies his action.
(2) The following criteria shall be taken into account indetermining whether a mark is well known :—(i) particular facts and circumstances relating to eachmark ;(ii) any fact or circumstance from which it may beinferred that the mark is well known ;(iii) the degree of knowledge or recognition of the markof the relevant sector of the public ;(iv) the duration, extent and geographical area of useof the mark ;82Intellectual Property Act, No. 36 of 2003(v) the duration, extent and geographical area of
promotion of the mark, including advertising or
publicity and the presentation at any fair or
exhibition of the goods or services to which themark applies ;(vi) the duration and geographical area of theregistration or the application for registration, of
the mark, to the extent that they reflect use orrecognition of the mark ;(vii) the record of successful enforcement of rights inthe mark, in particular, the extent to which the markhas been recognized as being well known, by theCompetent Authority ;(viii) the value associated with the mark ;(ix) the criteria specified in this subsection to determine
whether a mark is well known or not shall not be
exclusive nor exhaustive ;(x) for the purpose of this subsection —(a) “Competent Authority” means anadministrative, judicial or quasi-judicial
authority which is competent, to determine
whether a mark is well known mark or to
enforce the protection given to a well known
mark ;(b) “relevant sector of public” includes :—(i) actual or potential consumers of the typesof goods or services to which the markapplies ;(ii) persons involved in channels of
distribution of the types of goods orservices to which the mark applies ;(iii) any person or a body of persons dealing
with the type of goods or services to which
the mark applies.

Intellectual Property Act, No. 36 of 2003

83(3) The Director-General shall, in applying theprovisions of paragraphs (a) to (e) of subsection (1), haveregard to the fact that the third parties referred to therein
have consented to the registration of such mark.
105. There shall not be entered in the register a noticeof any Trust expressed, implied, or constructive, nor shallany such notice be receivable by the Director-General.

Trust not to beentered in register.

CHAPTER XXIREQUIREMENTS OF APPLICATION AND PROCEDURE FORREGISTRATION
106. (1) An application for registration of a mark shallbe made to the Director-General in the prescribed form andshall contain —Requirements ofapplication.

(a) a request for the registration of the mark ;(b) the name, address of the applicant and, if he isresident outside Sri Lanka, a postal address forservice in Sri Lanka ;(c) five copies of a representation of the mark ;(d) a clear and complete list of the particular goods orservices in respect of which registration of the markis requested, with an indication of the correspondingclass or classes in the international classification,as may be prescribed.
(2) Where the application is filed through an agent, it
shall be accompanied by a power of attorney granted to suchagent by the applicant.
107. An applicant for registration of a mark who wishes
to avail himself of the priority of an earlier application filed
in a Convention country shall, within six months of the dateof such earlier application, append to his application a written
declaration indicating the date and number of the earlier
application, the name of the applicant and the country in

Right of priority.

84Intellectual Property Act, No. 36 of 2003

which he or his predecessor in title filed such applicationand shall, within a period of three months from the date of
the later application filed in Sri Lanka, furnish a copy of theearlier application certified as correct by the appropriate
authority of the country where such earlier application was
filed.
Temporary
protection of markexhibited atinternational
exhibition.

108. (1) An applicant for registration of a mark who
has exhibited goods bearing the mark or rendered services
under the mark at an official or officially recognizedinternational exhibition and who applies for registration of
the mark within six months from the date on which the goods
bearing the mark or services under the mark were firstexhibited or services respectively at such exhibition, shallon request, be deemed to have applied for registration ofthat mark on the date on which the goods bearing the markor the services rendered under the mark were first exhibitedor rendered at such exhibition.
(2) Evidence of the exhibition of the goods bearing themark or the services rendered under the mark shall be by acertificate issued by the appropriate Authority of theexhibition stating the date on which the mark was first usedat such exhibition in connection with such goods or services.
(3) The provisions of subsections (1) and (2) shall notextend to any other period of priority claimed by theapplicant.

Application fee.

109. An application for registration of a mark shall not
be entertained unless the prescribed fee has been paid to the
Director-General.

Examinationof application
as to form.

110. (1) The Director-General shall examine whether
the applicant for registration of the mark satisfies therequirements specified in sections 106 and 109 and whereapplicable the provisions of sections 107 and 108.
(2) Where the applicant fails to comply with theprovision of sections 106 and 109, the Director-General shallrefuse to register the mark :Intellectual Property Act, No. 36 of 2003

85

Provided however the Director-General shall first notify
the applicant of any defect in the application and shall afford
him an opportunity to rectify such defect within three months
from the date of receipt of such notification.
(3) The date on which the applicant rectifies such defectshall be deemed to be the date of receipt of the application
for registration.
(4) Where the applicant fails to comply with theprovisions of section 107 or 108, the Director-General shallnot, in connection with the registration of the mark, makeany reference to the priority claimed.
(5) Where the applicant complies with the provisionsof sections 107 and 108, the Director-General shall inconnection with the registration of the mark record thepriority claimed or the date of the certified use of the markat an international exhibition.
(6) Where the Director-General refuses to register amark, he shall, if so requested by the applicant, state inwriting the grounds of his decision.
111. (1) Where the applicant complies with theprovisions of sections 106 and 109, the Director-Generalshall examine the mark in relation to the provisions ofsections 103 and 104.
(2) Where the mark is inadmissible under section 103
or 104 the Director-General shall notify the applicant
accordingly stating in writing the grounds on which
registration of the mark is refused.
(3) Where the applicant is dissatisfied with all or anyof the grounds stated by the Director-General in the
notification referred to in subsection (2) he may, within aperiod of one month from the date of such notification, makehis submissions against such refusal to the Director-General,in writing .
(4) On receipt of any submissions the Director-General
may inform the applicant that he has been granted a hearing
and the date, time and place of such hearing.

Registration ofmark after further
examination andpublication of
mark.

86

Intellectual Property Act, No. 36 of 2003

(5) The Director-General may, after such inquiry as hethinks fit, refuse to accept the application for registration of
the mark, or may accept it absolutely or subject to conditions,amendments or modifications, or to such limitations, if any,
as to the mode or place of user or otherwise as he may think
fit to impose.
(6) In case of any refusal or conditional acceptance ofan application for registration of a mark, the Director-Generalshall, if required by the applicant within a period of threemonths from such refusal or conditional acceptance, statein writing the grounds of his decision.
(7) Where the Director-General is of the opinion thatthe mark is admissible under section 103 or 104 he may
request the applicant to pay the prescribed fee within aprescribed period for publication of the application.
(8) The Director-General shall refuse registration of themark where the fee for publication of the application is not
paid within the prescribed period.
(9) (a) If the fee for publication is paid within theprescribed period the Director-General shall proceed to
publish the application setting out the date of application,
the representation of the mark, the goods or services inrespect of which registration of the mark is requested withan indication of the corresponding class or classes, the nameand address of the applicant and, if the applicant is resident
outside Sri Lanka, a postal address for service in Sri Lanka,
the priority claimed, if any, or the date of certified use of themark at an international exhibition.
(b) Notwithstanding the provisions of subsections (7),(8) and paragraph (a) of this subsection relating to theprescribed fee and the publication, the Director-General may,at his discretion, require the applicant by notice in writing
to publish an application as referred to in paragraph (a) of
this subsection. Where the applicant fails or neglects topublish such application within a period of three months
from the date of such notice the application may be refused.

Intellectual Property Act, No. 36 of 2003

87(10) Where any person considers that the mark is
inadmissible on one or more of the grounds specified in
section 103 or 104 he may, within a period of three months
from the date of publication of the application, give to the
Director-General in the prescribed form, and together withthe prescribed fee, notice of opposition to such registration
stating his grounds of opposition accompanied by evidence
to substantiate such grounds.
(11) Where notice of opposition has not been received
by the Director-General within the period specified insubsection (10) of this section, the Director-General shallregister the mark.
(12) Where, within the period specified in subsection(10) of this section notice of grounds of opposition in theprescribed form is received by the Director-General, together
with the prescribed fee, he shall serve a copy of such groundsof opposition on the applicant and shall requset him to present
his observations on those grounds in writing accompaniedby evidence to support his application within a period of
three months.
(13) On receipt of the observations of the applicant the
Director-General shall after hearing the parties, if heconsiders such hearing necessary, decide, as expeditiously
as possible, whether such mark should be registered or not.
If the Director-General decides that the mark can beregistered, then if —(a) no appeal is preferred against his decision, upon
the expiry of the period within which an appeal
may be preferred against his decision ;(b) an appeal is preferred against his decision, upon
the determination of such appeal,
the Director-General shall accordingly register such mark.
(14) The Director-General may allow a reasonable
extension of the prescribed period within which any act has
to be done or any fee has to be paid under this section.

88Intellectual Property Act, No. 36 of 2003

Non completionof registration.

112. Where, by reason of default on the part of theapplicant, the registration of a mark is not completed withintwelve months from the date of receipt by the DirectorGeneral of the application, the Director-General shall, after
giving notice of non-completion to the applicant in writingin the prescribed form, treat the application as abandoned,
unless it is completed within the time specified in that behalf
in such notice.

Register of marks
and issue ofcertificate.

113. (1) The Director-General shall keep and maintaina register called the “Register of Marks” wherein shall berecorded in the order of their registration, all registered marks
and such other matters relating to marks as are authorized
or directed by this Part to be so recorded or may from time
to time be prescribed.
(2) The registration of a mark shall include a
representation of the mark and shall specify its number, thename and address of the registered owner and, if theregistered owner’s address is outside Sri Lanka, a postal
address for service in Sri Lanka, the dates of application
and registration ; if priority is validly claimed, an indicationof that fact and the number, date and country of theapplication on the basis of which the priority is claimed, if
a valid certificate has been filed relating to the use of a markat an international exhibition, the contents of such certificate,
the list of goods and services in respect of which registrationof the mark has been granted with an indication of thecorresponding class or classes.
(3) Upon the registration of a mark the Director-Generalshall issue to the registered owner thereof a certificate ofregistration and shall, at the request of the registered owner,
send such certificate to him by registered post to his lastrecorded postal address in Sri Lanka, or if he is resident
outside Sri Lanka to his last recorded postal address in Sri
Lanka.

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89

114. The Director-General shall cause to be publishedin the Gazette, in the prescribed form, all registered marksin the order of their registration, including in respect of eachmark so published reference to such particulars as may beprescribed.

Publication ofregistered marks.

115. Any person may examine the register and may
obtain certified extracts therefrom on payment of theprescribed fee.

Examination ofregister andcertified copies.

116. Where application is made for the registration ofa mark identical with or so closely resembling a mark of theapplicant already on the register for the same goods orservices, the same description of goods or services as to be
likely to mislead or cause confusion if used by a person
other than the applicant, the Director-General may require
as a condition of registration that such marks shall be enteredon the register as associated marks.

Associated marks.

117. Associated marks shall be assignable ortransmissible only as a whole and not separately, but theyshall for all other purposes be deemed to have been registeredas separate marks :Assignment anduser of associatedmarks.

Provided that where under the provisions of this Part userof a registered mark is required to be proved for any purpose,
the Director-General may, in so far as is considered necessary
accept the user of an associated registered mark, or of themark, with additions or alterations not substantially affecting
its identity, as an equivalent for such user.

CHAPTER XXIIDURATION OF REGISTRATION OF A MARK
118. (1) Subject and without prejudice to the otherprovisions of this Part, registration of a mark shall expire
ten years after the date of registration of such mark.

Duration ofregistration.

90Intellectual Property Act, No. 36 of 2003

(2) A mark when registered shall be registered withreference to the date of receipt of the application forregistration by the Director-General, and such date shall bedeemed for the purposes of this Part to be the date ofregistration.
Renewal.

119. (1) Registration of a mark may be renewed forconsecutive periods of ten years each on payment of theprescribed fee.
(2) Renewal of registration of a mark shall not be subject
to any further examination of the mark by the DirectorGeneral or to opposition by any person.
(3) The renewal fee shall be paid within the twelve
months preceding the date of expiration of the period ofregistration :Provided, however, that a period of grace of six months
shall be allowed for the payment of the fee after the date ofsuch expiration, upon payment of such surcharge as may beprescribed.
(4) The Director-General shall record in the register andcause to be published in the Gazette in the prescribed form
all renewals of registration specifying any removal from thelists of goods or services.
(5) Where the renewal fee has not been paid within such
period or such extended period specified in subsection (3),the Director-General shall remove the mark from the register.

Alteration ofregistered mark.

120. The registered owner of any mark may apply inthe prescribed manner and with prescribed fee to the
Director-General for leave to add to or alter such mark in
any manner not substantially affecting the identity of thesame, and the Director-General may refuse such leave or
may grant the same on such terms and subject to such
limitations as to mode or place of use as he may think fit. If
leave be granted, the mark as altered shall be published in
the prescribed manner.

Intellectual Property Act, No. 36 of 200391

CHAPTER XXIIIRIGHTS OF THE REGISTERED OWNER OF A MARK
121. (1) Subject and without prejudice to the otherprovisions of this Part, the registered owner of a mark shallhave the following exclusive rights in relation to the mark :—(a) to use the mark ;(b) to assign or transmit the registration of the mark ;(c) to conclude licence contracts.
(2) Without the consent of the registered owner of the markthird parties are precluded from the following acts :—(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 orservices in respect of which the mark is registered orfor 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 nameresembling it, without just cause and in conditions
likely to be prejudicial to the interests of the registeredowner of the mark.
(3) The application (whether by way of printing, painting
or otherwise) or the affixing in Sri Lanka by a third party, ofa mark or any sign resembling such mark in such a way as tobe 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 an act prohibited under
Subsection (2).
(4) The court shall presume the likelihood of misleading
the public in instances where a person uses a mark identicalto the registered mark for identical goods or services in respectof which the mark is registered.

Rights ofregistered owner.

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Limitation ofregisteredowners’s rights.

Intellectual Property Act, No. 36 of 2003

122. The registration of the mark shall not confer on its
registered owner the right to preclude third parties –(a) from using their bona fide 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, usedor stocked in Sri Lanka under that mark, provided
that such goods have not undergone any change.
CHAPTER XXIVASSIGNMENT AND TRANSMISSION OF APPLICATIONS AND
REGISTRATIONS OF MARKS

Assignment andtransmission of
applications andregistrations.

123. (1) An application for registration or the registrationof a mark may be assigned or transmitted independently of
the transfer of all or part of the enterprise using the mark, in
respect of all or part of the goods or services for which theapplication was filed or the mark registered and suchassignment or transmission shall be in writing signed by oron behalf of the contracting parties.
(2) Such assignment or transmission shall be invalid if
the purpose or effect thereof is to mislead the public, inparticular in respect of the nature, source, manufacturing
process, characteristics or suitability for their purpose of thegoods or services to which the mark is applied.
(3) Any person becoming entitled by assignment ortransmission to an application for registration or theregistration of a mark may apply to the Director-General in
the prescribed manner to have such assignment ortransmission recorded in the register.

Intellectual Property Act, No. 36 of 2003

93(4) No such assignment or transmission shall be recordedin the register unless the prescribed fee has been paid to the
Director-General.
(5) No such assignment or transmission shall have effectagainst third parties unless so recorded in the register.
CHAPTER XXVLICENCE CONTRACTS
124. (1) For the purposes of this Part licence contract
means any contract by which the registered owner of a mark(hereinafter referred to as “the licensor”) grants to anotherperson or enterprise (hereinafter referred to as “the licensee”)
a licence to use the mark for all or part of the goods or services
in respect of which the mark is registered.

Interpretation.

(2) Use of the mark by the licensee shall be deemed to be
use of the mark by the registered owner.
125. (1) A licence contract shall be in writing signedby or on behalf of the contracting parties.

Form and recordof licence
contract.

(2) Upon a request in writing signed by or on behalf ofthe contracting parties, the Director-General shall, on paymentof the prescribed fee, record in the register such particulars
relating to the contract as the parties thereto might wish tohave recorded :Provided that the parties shall not be required todisclose or have recorded any other particulars relating tosuch contract.
126. In the absence of any provision to the contrary in
the licence contract, the licensee shall –(a) be entitled to use the mark within the territory of
Sri Lanka, during the entire period of registration of
the mark, including renewals, in respect of all the
goods or services for which the mark is registered ;Rights oflicensee.

94Intellectual Property Act, No. 36 of 2003(b) not be entitled to assign or transmit his rights under
the licence contract or grant sub-licences to third
parties.

Rights of liensor.

127. (1) In the absence of any provision to the contraryin the licence contract, the licensor may grant further licences
to third parties in respect of the same mark or himself use themark.
(2) Where the licence contract provides the licence to be
exclusive, the licensor shall not grant further licences to third
parties in respect of the same mark or himself use the markunless the contract otherwise provides.

Nullity of licence
contract andcertain clauses.

128. (1) A licence contract shall be null and void in theabsence of stipulations ensuring effective control by thelicensor of the quality of the goods or services in respect ofwhich the mark may be used.
(2) Any clause or condition in a licence contract shall benull and void in so far as it imposes upon the licensee
restrictions not derived from the rights conferred by this Parton the registered owner of the mark, or which are unnecessary
for the safeguarding of such rights :Provided that –(a) restrictions concerning the scope, extent, duration ofuse of the mark or the geographical area in or thequality or quantity of the goods or services inconnection with which the mark may be used ;(b) restrictions justified by the stipulations referred to in
subsection (1) ; and(c) obligations imposed upon the licensee to abstain fromall acts capable of prejudicing the validity of theregistration of the mark,shall not be deemed to constitute a restrictions as mentioned
above.

Intellectual Property Act, No. 36 of 2003

95129. The Court may on the application of any person
showing a legitimate interest, or of any Authority including
the Director-General, to which the registered owner ofthe mark and every assignee, licensee or sub-licensee onrecord shall be made party, annul and cancel the said contract
if—

Cancellation oflicence contracts.

(a) the licensor has lost effective control over the qualityof the goods or services in respect of which the markis used ;(b) the licensee has used the mark in such a way as tomislead or confuse the public.
130. (1) Where the Director-General has reasonablecause to believe that any licence contract or any amendment
or renewal thereof –(a) which involves the payment of royalties abroad ; or(b) which by reason of other circumstances relating tosuch licence contract,
is detrimental to the economic development of Sri Lanka heshall in writing communicate such fact to the Governor of
the Central Bank and transmit all papers in his custody relevant
to a decision on such matter, to the Governor of the Central
Bank.
(2) Where the Governor of the Central Bank on receipt ofany communication under subsection (1) informs the
Director-General in writing that the said licence contract or
any amendment or renewal thereof is detrimental to theeconomic development of Sri Lanka the Director-Generalshall cancel and invalidate the record of such contract in theregister.
(3) The provisions of this section shall, mutatis mutandis,
apply to assignments and transmissions.
(4) The provisions of this Chapter shall, mutatis mutandis,
apply to sub-licences.

Licence contracts
involving
payments abroad.

96
Effect of nullity
of registration on
licence contract.

Intellectual Property Act, No. 36 of 2003

131. Where, before the expiration of the licence contract,
the registration is declared null and void, the licensee shallno longer be required to make any payment to the licensor
under the licence contract, and shall be entitled to repaymentof the payments already made :Provided that the licensor shall not be required to makeany repayment, or shall be required to make repayment onlyin part, to the extent that he can prove that any such repayment
would be inequitable under all the circumstances, in particular
if the licensee has effectively profited from the licence.

Expiry,termination orinvalidation oflicence contract.

132. The Director-General shall –(a) if he is satisfied that a licence contract recorded undersubsection (2) of section 125 has expired or been
terminated, record that fact in the register upon arequest made in writing to that effect signed by or on
behalf of the parties thereto ;(b) record in the register the expiry, termination,
annulment or invalidation of a licence contract under
any provision of this Part.
CHAPTER XXVIRENUNCIATION AND NULLITY OF REGISTRATION OF A MARK

Renunciation ofregistration.

133. (1) The registered owner of a mark may renounce
the registration, either wholly or in respect of part of the goods
or services for which the mark is registered, by a declarationin writing signed by him or on his behalf and forwarded to
the Director-General.
(2) The Director-General shall, on receipt of the saiddeclaration, record it in the register and cause such record tobe published in the Gazette.
(3) The renunciation shall take effect from the date thatthe Director-General receives the said declaration.

Intellectual Property Act, No. 36 of 2003

97(4) Where a licence contract in respect of a mark is recordedin the register the Director-General shall not, in the absence ofprovision to the contrary in such licence contract, accept orrecord the said renunciation except upon receipt of a signed
declaration by which any assignee, licensee or sub-licensee onrecord consents to the renunciation, unless his consent isexpressly waived in the licence contract.
134. (1) The Court may on the application of any person
showing a legitimate interest, or of any competent Authority
including the Director-General , to which the registered ownerof the mark and every assignee, licensee or sub-licensee onrecord shall be made party, declare the registration of the marknull and void if its registration is precluded under theprovisions of sections 103 and 104 :Nullity ofregistration.

Provided, however, that grounds of nullity which do notexist on the date of the application to Court, shall not be taken
into account.
(2) Where the grounds for nullity of registration of themark exist in respect of only part of the goods or services forwhich the mark is registered, nullity of the registration shallbe declared for that part only for such goods or services.
(3) An application for a declaration of nullity based on
any of the grounds specified in subsection (1) of section 104
shall be made within five years from the date of issue of thecertificate of registration under subsection (3) of section 113.
135. (1) Upon a final decision of the Court declaring totalor partial nullity of registration of a mark, the registration shallbe deemed to have been null and void totally or partially, as thecase may be, from the date of such registration.
(2) When a declaration of nullity becomes final theRegistrar of the Court shall notify the Director-General ofsuch fact and he shall record the said declaration in the registerand cause it to be published in the Gazette.

Date and effect ofnullity.

98Intellectual Property Act, No. 36 of 2003
CHAPTER XXVIIREMOVAL OF MARK

Removal of mark.

136. (1) The Court may on the application of any person
showing a legitimate interest, or of any Competent Authority
including the Director-General, to which the registered ownerof the mark and every assignee, licensee or sub-licencee onrecord shall be made party, remove any registered mark fromthe register—(a) 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 dateof the application to Court ;(b) if the registered owner has caused, provoked ortolerated the transformation of the mark into a genericname for one or more of the goods or services inrespect of which the mark is registered so that in tradecircles and in the eyes of the public its significance asa mark has been lost.
(2) In any application under paragraph (a) of subsection(1) the Court may take into account the fact that non-use of
the mark was due to circumstances beyond the control of theregistered owner. The Court shall not take into account thelack of funds of the registered owner as a ground for non-useof the mark.
(3) The use of a mark—(a) in a form differing, in elements which do not alter the
distinctive character of the mark, from the form inwhich it was registered, shall not be a ground forremoval of the mark ;(b) in connection with one or more of the goods orservices belonging to any given class in respect ofwhich the mark is registered, shall suffice to preventthe removal of the mark in respect of all the othergoods or services of the same class.

Intellectual Property Act, No. 36 of 2003

99

137. Upon a final decision of the Court in respect ofremoving any registered mark from the register—

Date and effect ofremoval of mark.

(1) the Court may, taking into account the date of theevents and other circumstances which occasioned theremoval of the mark, determine the date on which theregistration of the mark shall be deemed to have ceased
to have any legal effect ;(2) the Registrar of the Court shall communicate thedecision of the Court to the Director-General who shall,
if the Court decides that the mark be removed, enter inthe register a record of such removal and cause thedecision of Court to be published in the Gazette.

CHAPTER XXVIIICOLLECTIVE MARKS
138. (1) Subject to the provisions of this Chapter theprovisions relating to marks shall apply to collective marks.
(2) In relation to a collective mark, the reference in section
101 (signs of which a trade mark or service mark may consist)to distinguish goods or services of one enterprise from thoseof other enterprises shall be construed as a reference todistinguish goods or services of the enterprise which uses thecollective mark from those of other enterprises.
(3) Notwithstanding the provisions of section 103 acollective mark may be registered which consists of a sign orindication which may serve, in trade, to indicate thegeographical origin of the goods or services :Provided, however, the owner of such a mark shall not be
entitled to prohibit the use of such sign or indication inaccordance with honest practices in industrial or commercial
matters and in particular, by a person who is entitled to use ageographical name.

Collective marks.

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Application forregistration ofcollective marks.

Intellectual Property Act, No. 36 of 2003

139. (1) An application for registration of a collective
mark shall not be entertained unless in such application themark is designated as a collective mark and the application isaccompanied by a copy of conditions governing the use of
the mark duly certified by the applicant.
(2) The conditions governing the use of the mark undersubsection (1) shall define the common characteristics orquality of the goods or services which the collective markshall designate, the conditions in which, and the person bywhom it may be used, the exercise of effective control of theuse of the mark and proper sanctions against the use of themark contrary to such conditions. They shall contain further
prescribed requirements under this section.
(3) A collective mark shall not be registered unless theconditions governing the use of the mark—(a) comply with the provisions of subsection (2) andany requirement imposed by any regulation madethereunder ;(b) are not contrary to public policy or accepted
principles of morality.
(4) (a) An authorised user shall, subject to any agreement
to the contrary between him and registered owner of thecollective mark, be entitled to require the owner to take
infringement proceedings in respect of any matter which
affects his interests.
(b) If the owner—(i) refuses to do so ; or(ii) fails to do so within two months after being called
upon to do so,
the authorised user may bring the proceedings in his own
name as if he was the owner. The registered owner shall bemade party to the action.

Intellectual Property Act, No. 36 of 2003

101(c) In infringement proceedings brought by the owner ofa registered collective mark, any loss suffered or likely to besuffered by any authorised user shall be taken into
consideration by Court.
(5) The registration of the collective mark may be removed
on the following grounds in addition to the grounds specified
in section 136 :—(i) that the manner in which the mark has been used by
the owner has caused it to become liable to mislead
the public to understand or think that the mark has
state patronage ;(ii) that the owner has failed to observe, or to secure theobservance of, the conditions governing use of themark ; or(iii) that an amendment of the conditions has been madeso that the conditions—(a) no longer comply with subsection (2) and anyother condition imposed by regulation madeunder this Act ; or(b) are contrary to public policy or to the accepted
principles of morality.
(6) The registration of a collective mark shall be declarednull and void in addition to the grounds of nullity specified in
section 134 if it was registered in violation of the provisionsof subsections (1), (2) and (3) of section 139.
140. (1) Registration of a collective mark shall be in such
Part of the register as the Director-General may decide and a
copy of the conditions governing the use of the mark shall beappended to the registration.
(2) The publication of an application for a collective markin accordance with subsection (9) of section 111 shall include
a summary of the conditions to be apended to the registration.

Registration andpublication ofcollective
marks.

102

Intellectual Property Act, No. 36 of 2003

(3) When a collective mark, is registered under subsection(1) it shall be deemed in all respects to be a registered mark.
(4) The conditions governing the use of a registeredcollective mark shall be open for public inspection in the same
way as the register.
Changes in
condition
governing the useof collective
marks.

141. (1) The registered owner of a collective mark shallnotify the Director-General in the prescribed manner of any
change or amendments effected in the conditions governing
the use of the collective mark.
(2) Any notification of such change or amendment shallbe recorded in the register on payment of the prescribed fee.
Any such change or amendment in the condition shall beeffectual only if they have been recorded.
(3) The Director-General shall cause a summary of suchchanges and amendments made in the conditions and recorded
under subsection (2) to be published in the Gazette.

CHAPTER XXIXCERTIFICATION MARKS
Certification
marks.

142. (1) Subject to the provisions of this Chapter,
provisions relating to marks shall apply to certification marks.
(2) In relation to a certification mark the reference insection 101 (signs of which a trade mark or service markmay consist) to distinguish goods or services of one enterprisefrom those of another enterprise shall be construed as areference to distinguish goods or services which are certified
from those which are not certified.
(3) Notwithstanding the provisions of section 103, acertification mark which consists of a sign or indication which
may serve in trade to designate the geographical origin of thegoods and services may be registered :Intellectual Property Act, No. 36 of 2003

103

Provided, however, the owner of such mark is not entitledto prohibit the use of such sign or indication in accordancewith honest practices in industrial or commercial matters andin particular by a person who is entitled to use a geographicalname.
(4) An application for registration of a certification markshall not be filed unless in the application the mark is
designated as a certification mark and is accompanied by acopy of the conditions governing the use of the mark duly
certified by the applicant.
(5) The conditions shall indicate the name of the person
authorised to use the mark, the characteristics to be certified
by the mark, how the owner is to test those characteristics
and to supervise the use of the mark, the fees (if any) to be
paid in connection with the operation of the mark and theprocedures for resolving disputes. They may in addition
contain further prescribed requirements under this section.
(6) A certification mark shall not be registered—(a) if the owner of the certification mark carries on abusiness involving the supply of goods or services of
the kind certified ; and(b) unless the conditions governing the use of the mark,—(i) comply with the provisions of subsection (5) andany other requirement imposed by regulations
made under that subsection ; and(ii) are not contrary to public policy or accepted
principles of morality.
(7) In infringement proceedings brought by the owner ofthe registered certification mark any loss suffered, or likely
to be suffered, by any authorised user shall be taken into
account ; and the Court may give such directions as it thinks
fit as to the extent to which the owner is to hold the proceedsof any pecuniary remedy on behalf of such users.

104Intellectual Property Act, No. 36 of 2003

(8) Apart from the grounds of removal of a mark provided
for in section 136, the registration of a certification mark may
be removed on the ground—(a) that the owner has commenced such a business as ismentioned in paragraph (a) of subsection (6) ;(b) that the manner in which the mark has been used by
the owner has caused it to become liable to mislead
the public as to the character of significance of themark ;(c) that the owner has failed to observe, or to secure
observance of, the conditions governing the use of
the mark ;(d) that the owner is no longer competent to certify thegoods or services for which the mark is registered ;(e) that an amendment of the conditions have been madeso that the conditions—(i) no longer comply with the provisions ofsubsection (5) and any other condition imposedby regulations ;(ii) are contrary to public policy and order or to theaccepted principles of morality.
(9) Apart from the grounds of nullity provided in section
134 the registration of a certification mark may be declarednull and void if it was registered contrary to the provisions ofsubsections (3), (4) and (5).
(10) (a) Registration of a certification mark shall be insuch part of the register as the Director-General may decide,
and a copy of the conditions, governing the use of the mark,shall be appended to such registration.

Intellectual Property Act, No. 36 of 2003

105(b) The publication of an application of a certification
mark shall be in accordance with subsection (9) of section
111, which shall include a summary of the conditions to be
appended to the registration.
(c) A certification mark registered under subsection (4)shall be deemed for all purposes be a registered mark.
(d) The conditions governing the use of a certification
mark shall be open for public inspection in the same manneras the register.
(11) (a) The registered owner of a certification mark shallnotify the Director-General in prescribed manner of any
changes or amendments effected to the conditions governing
the use of the mark.
(b) Any notification of such changes and amendments
shall be recorded in the register on the payment of prescribed
fee. Any change or amendment of conditions shall come into
force only if they have been so recorded.
(c) The Director-General shall cause to be published in
the Gazette a summary of the changes or amendments sorecorded in the register.
PART VI
CHAPTER XXX
TRADE NAMES
143. A name or designation shall not be admissible as atrade name if, by reason of its nature or the uses to which it
may be put, it is contrary to morality or public order or is
likely to offend the religious or racial susceptibilities of any
community or is likely to mislead trade circles or the public
as to the nature of the enterprise identified by that name.

Prohibited trade
names.

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Protection of
trade name.

Intellectual Property Act, No. 36 of 2003

144. (1) Notwithstanding the provisions of any written
law providing for the registration of a trade name, such nameshall be protected, even prior to or without registration, against
any unlawful act committed by a third party.
(2) Any subsequent use of a trade name by a third party,
whether as a trade name or as a trade mark, service mark,collective mark or certification mark or any such use of similar
trade name, trade mark, service mark or collective mark or
certification mark likely to mislead the public shall bedeemed to be unlawful.
(3) Section 122 of this Act shall apply to trade names.

Assignment andtransmission of
trade names.

145. (1) A trade name may be assigned or transmitted
together with the assignment or transmission of the enterpriseor part of the enterprise identified by that name.
(2) The provisions of section 123 shall apply, mutatis
mutandis, to trade names.

PART VII
CHAPTER XXXILAYOUT DESIGNS OF INTEGRATED CIRCUITS
Right toprotection.

146. (1) The right to protection of a layout design shallbelong to the creator of layout design. Where several persons
have jointly created a layout design such persons shall be coowners of the right to protection.
(2) The right to protection of a layout design made or
created in the performance of a contract of employment or in
the execution of a work shall, unless the terms of such contractof employment or contract for the execution of such work
otherwise provides, belong to the employer or the person who
commissioned the work, as the case may be.

Intellectual Property Act, No. 36 of 2003

107147. (1) The protection provided under this Act shallapply to any layout design which is original. For the purposesof this section a layout design is original if —Originality.

(a) it has not been produced by the mere reproductionof another layout design or of any substantial part
thereof; and(b) it is the result of an intellectual effort of a creator andis not common place among creators of layout designs
and manufacturers of integrated circuits at the time of
the creation of such layout design.
(2) Where a layout design consists of a combination ofelements and interconnections that are common place among
creators of layout designs or manufacturers of integrated
circuits, such layout designs shall be protected only if the
combination, taken as a whole, meets the conditions referred
to in subsection (1).
148. (1) The protection afforded to a layout design under
this Part shall not be dependent on the integrated circuit which
incorporates such layout design being incorporated in an article.
Subject to the provisions of subsection (2) the right holder of alayout design shall have the exclusive right to do or authorize
any person to do any of the following acts :—(i)to reproduce whether by incorporation in an
integrated circuit or otherwise, the protected layout
design in its entirety or any part thereof, except theact of reproducing any part that does not comply withthe requirement of originality referred to in
subsections (1) and (2) of section 147.

(ii) to import, offer for sale, sell or otherwise distributefor commercial purposes, the protected layout designor an integrated circuit in which the protected layout
design is incorporated or an article incorporating suchan integrated circuit in so far as it does not contain an
unlawfully reproduced layout design.

Scope ofprotection.

108Intellectual Property Act, No. 36 of 2003

(2) The scope of the protection of a layout design affordedby this Part, shall not extend to—(i) the reproduction of the protected layout design forthe purpose of evaluation, analysis, research or non
profit teaching or education ;(ii) the incorporation in an integrated circuit of a layout
design, created on the basis of such analysis,
evaluation or research referred to in paragraph (i), if
such layout design is itself original within themeaning of subsections (1) and (2) of section 147,or for the performance of any of the acts referred toin subsection (1) of this section in respect of suchlayout design ;(iii) the performance of any of the acts referred to inparagraph (ii) of subsection (1), where the act isperformed in respect of a protected layout design, orin respect of an integrated circuit in which such layout
design is incorporated, and such layout design or
integrated circuit has been put on the market by, orwith the consent of, the right holder; or(iv) the performance of any act referred to in paragraph(ii) of subsection (1) in respect of an integrated circuit
incorporating an unlawfully reproduced layout
design or any article incorporating such an integrated
circuit, where the person performing or orderingsuch an act unknowingly performs or orders suchan act and has no reasonable grounds of knowing at
the time of acquiring the integrated circuit or thearticle incorporating such an integrated circuit, thatit incorporated an unlawfully reproduced layout
design :Provided however, where the person performing
or ordering any act under this paragraph, is notified
that such layout design is an unlawful reproduction,then such person may, perform or order any act onlyIntellectual Property Act, No. 36 of 2003

109

with respect to the stock in hand or ordered before
he was so notified and shall be liable to pay to theright holder a sum equivalent to a reasonable royalty
such as would be payable under a freely negotiatedlicence in respect of such layout design; or(v) protection under this Part shall not be available forany layout design which has been commerciallyexploited in or outside Sri Lanka for more than two
years prior to the commencement of this Act.
149. (1) Protection of a layout design under this Act shallcommence—

Commencementand duration ofprotection.

(i) on the date of the first commercial exploitation in or
outside Sri Lanka of the layout design by, or withthe consent of the right holder, provided an
application for protection is filed by the right holder
with the Director-General within the time specified
in subsection (2) of section 150 ; or(ii) on the filing date accorded to the application for theregistration of the layout design filed by the rightholder, if the layout design has not been previously
exploited commercially in or out side Sri Lanka.
(2) Protection of a layout design under this Part shallterminate at the end of the tenth calendar year from the dateof commencement of such protection.
150. (1) The application for the registration of a layout
design shall be in the prescribed form, and shall beaccompanied by the prescribed fee and shall be filed in the
Office. A separate application shall be filed in respect of eachdifferent layout design.
(2) Any person may apply for registration of a layout
design if such layout design has not been commerciallyexploited, or if exploited, in or outside Sri Lanka theapplication for registration shall be made before the expiryof a period of two years from the date of such exploitation.

Requirements of
the Application.

110Intellectual Property Act, No. 36 of 2003

(3) The application shall—(a) contain a request for the registration of the layout
design in the Register of Layout Designs and a brief
and precise description thereof ;(b) specify the name, address, nationality of the applicant,and if he is resident outside Sri Lanka a postal addressfor service in Sri Lanka ;(c) be accompanied by a copy of a drawing of the layout
design along with information defining the electronic
function which the integrated circuit is intended toperform ; however, the application may omit such partsin the copy or drawing that relate to the manner or
manufacture of the integrated circuit, provided thatthe parts submitted are sufficient to allow theidentification of the layout design ;(d) specify whether the layout design is exploited in or
outside Sri Lanka and the date of its first commercial
exploitation, if any ;(e) provide particulars establishing the right to protection
under section 146 ;(f) be accompanied by a declaration as to the originalityof the layout design ;(g) be accompanied by a power of attorney granted to theagent by the applicant, where the application is madethrough an agent.
(4) (a) Where the applicant fails to comply with therequirements specified in subsection (3) of this section the
Director-General shall, notify the applicant of the same andrequire him to correct the defect made in the application withina period of two months from the date of such notification.

Intellectual Property Act, No. 36 of 2003

111(b) Where the applicant complies with such requirements
specified in paragraph (a) of this subsection, the DirectorGeneral shall accord the date of filing as the date of receipt of
the application :Provided however, such application should contain written
statement of the need for the registration of the layout design,
and information whereby the identity of the applicant can beestablished and shall be accompanied by a copy of thedrawings of the layout design.
(c) Where the applicant fails to submit drawings of a layout
design with the original application, but corrects theapplication for the registration of the layout design within
the period specified in paragraph (a), the date of receipt of
the corrections shall be deemed to be the date of filing of theapplication. The Director-General shall by a written
communication confirm the filing date of the application to
the applicant.
(d) Where the applicant fails, after notification by the
Director-General, to correct the application within the period
specified in paragraph (a), such application shall be deemed
not to have been filed.
151. (1) The Director-General shall maintain a Registerof Layout Designs and he shall register or cause to beregistered of each protected layout design, in respect of whichapplications for registration have been accepted.
(2) Where any application conforms to the requirementsof section 150, the Director-General shall register the layout
design in the Register of Layout Designs without examinationof the originality of the layout design, the applicant’s right toprotection or the correctness of the facts stated in theapplication.

Registration oflayout design in
the Register.

112Intellectual Property Act, No. 36 of 2003

(3) The Register of Layout Designs shall contain thenumber, title, filing date and where indicated in the application
under section 150 the date of first commercial exploitation inor outside Sri Lanka of the layout design as well as the nameand address of the right holder, details relating to assignment,
transfer, license contract and other prescribed particulars.
(4) Any person may refer the Register of Layout Designs
and obtain extracts therefrom, subject to the payment of theprescribed fee.
(5) Every registration of a layout design shall be publishedin the Gazette.
Right to transfer
and rectificationof the Register.

152. (1) Where the essential elements of a layout design
has been taken from a layout design of another person without
his consent in writing, the second mentioned person may, inwriting together with all relevant material necessary to
substantiate his claim and the prescribed fee, request the
Director-General to transfer the application to him. Where
the application has already been registered the second
mentioned person may, within one year from the date of
publication of such registration write to the Director-General
together with all relevant material necessary to substantiate
his claim and the prescribed fee, requesting the DirectorGeneral to transfer the registration to him and to rectify theentry in the register accordingly.
(2) The Director-General shall forthwith send a copy of such
request to the applicant or registered right holder, as the casemay be, requiring him to furnish him with a counter claim withina period of two months from the date of such notice in theprescribed manner together with any material if any in his
possession to prove his ownership of the layout design in question
and the prescribed fee. The applicant or the registered right holder
may send the Director-General a counter claim.
(3) Where the registered right holder or the applicant fails
to provide any information as required under subsection (2)of this section, within the period specified, the DirectorGeneral shall allow the request of the second mentioned
person and rectify the entry in the register.

Intellectual Property Act, No. 36 of 2003

113(4) If the applicant or the right holder sends a counterclaim, as provided in subsection (2), the Director-General shallafter hearing both parties and taking into consideration the
merits of the case, shall make his determination and notify
the parties of his determination.
(5) Where after the filing of the application the person towhom the right to protection belongs, gives his consent to
the filing of that application, such consent shall, for all
purposes, be deemed to be effective from the date of filing ofsuch application.
153. (1) A protected layout design may be assigned ortransmitted and such assignment or transmission shall be inwriting, signed by or on behalf of the contracting parties.

Changes in theownership andcontractual
licenses.

(2) Upon a request in writing signed by or on behalf of
the assignor or transferor of the layout design the DirectorGeneral shall on payment of the prescribed fee, record in theregister such particulars of change of ownership and publish
such change. Such change shall have no effect against third
parties until such recording is made.
(3) The right holder of layout design may grant a licenceto another person or enterprise authorizing it to do any or allof the acts referred to in subsection (1) of section 148. Suchlicense contract shall be in writing and signed by or on behalfof the contracting parties. Such license contract shall uponregistration of the layout design be submitted to theDirectorGeneral together with prescribed fee, who shall record or cause
to be recorded the existence of such license contract in theregister. A license contract shall have no effect against third
parties until it is so recorded.
154. (1) Any person interested in a layout design
registered under section 151, or an appropriate Authority
including the Director-General may file an application in the
Court, for the cancellation of such registration on the following
grounds :—(a) that the layout design is not protected under sections
147 ;Cancellation of a
Registration of alayout design.

114Intellectual Property Act, No. 36 of 2003(b) that the right holder is not entitled to protection under
section 146; or(c) that the layout design has been commercially exploitedin or out side Sri Lanka, before the filing of theapplication for registration of the layout design, andthe application was not filed within the time limit
specified in subsection (2) of section 148 andsubsection (2) of section 150.
(2) On the establishment of grounds for cancellation of apart of a layout design, the registration applicable to suchcorresponding part only of the layout design, shall becancelled.
(3) The Court may on an application made to it in writingby an interested party or any appropriate Authority including
the Director-General, and where the registered owner of thelayout design and every assignee, licensee or sub-licensee onrecord shall be made party, make order for the cancellationor partial cancellation of such registration.
(4) Any cancellation of a registration of layout design orpart thereof, shall have the effect of making null and void theregistration of a layout design or part thereof as the case may
be, and as such it shall be effective from the date ofcommencement of the protection of such layout design.
(5) The Court shall notify the Director-General of its
decision and the Director-General shall record such decisionand publish a notice to that effect, in the Gazette.
Representation by
an Agent.

155. Where the ordinary residence, or principal, of theapplicatant place of business, of the applicant is outside Sri
Lanka, he shall be represented by an agent registered under
section 175 of the Act.

Infringement.

156. (1) Infringement shall consist of the performanceof any act in contravention of the provisions of section 148.

Intellectual Property Act, No. 36 of 2003

115(2) The Court may grant an injunction, award damages or
grant any other proper remedy —(a) to a right holder to prevent an infringement or
imminent infringement if he makes an application
having reason to believe that a layout design has been
made infringing the rights protected under section 148of the Act ; or(b) to a licencee, where the licencee makes an application
to court, in the event of the right holder failing or
neglecting to make an application to Court on his being
made aware of such infringement by the licencee.
(3) The provisions of Chapter XXXV of this Act shallapply in respect of an infringement and the remedies available
to a right holder or a licencee.
(4) Any action under subsection (2) may be initiated only
after an application for registration of the layout design being
filed with the Director-General.
157. Any person who, knowingly or intentionallycontravenes the provisions of section 148, shall be guilty of
an offence, and shall on conviction after trial before a
Magistrate be liable to a fine not exceeding rupees five
hundred thousand or to imprisonment of either description
for a term not exceeding six months or to both such fine andimprisonment and in the case of a second or subsequentconviction such fine or term of imprisonment or both suchfine and imprisonment may be doubled. The Court may inaddition order the seizure, forfeiture and destruction of thelayout design, integrated circuits, articles or any material or
implement, which have been used for or in the commissionof the offence.

Offences.

158. The provisions of sections 125A and 125B of the
Customs Ordinance and sections 163 to 174, 177, 180, 187,
191, 195 to 204 of the Act shall apply to and in relation to thelayout designs of integrated circuits.

Application ofcertain provisionsof the Act.

116
Interpretation.

Intellectual Property Act, No. 36 of 2003

159. In this Part unless the context otherwise
requires—“integrated circuit” means a product, in its final formor an intermediate form, in which the elements, atleast one of which is an active element, and some or
all of the interconnections are integrally formed inor on a piece of material and which is intended toperform an electronic function ;“layout design” is synonymous with “topography” andmeans the three dimensional disposition, however
expressed, of the elements, at least one of which isan active element, and of some or all of theinterconnections of an integrated circuit, or such athree-dimensional disposition prepared for an
integrated circuit intended for manufacture ;“right holder” means the natural person who, or the legal
entity which, is to be regarded as the beneficiary of
the protection referred to in section 146.

PART VIII
CHAPTER XXXIIUNFAIR COMPETITION AND UNDISCLOSED INFORMATION
Unfaircompetition andundisclosed
information.

160. (1) (a) Any act or practice carried out or engaged
in, in the course of industrial or commercial activities, that iscontrary to honest practices shall constitute an act of unfair
competition.
(b) The provisions of this section shall apply
independently of, and in addition to, other provisions of the
Act protecting inventions, industrial designs, marks, trade
names, literary, scientific and artistic works and otherintellectual property.

Intellectual Property Act, No. 36 of 2003

117(2) (a) Any act or practice carried out or engaged in, inthe 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.
(b) Confusion may, in particular, be caused with respectto —(i) a mark, whether registered or not ;(ii) a trade name ;(iii) a business identifier other than a mark or tradename ;(iv) the appearance of a product ;(v) the presentation of products or services ;(vi) celebrity or a well known fictional character.
(3) (a) Any act or practice carried out or engaged in, in thecourse of industrial or commercial activities, that damages, oris likely to damage, the goodwill or reputation of another’s
enterprise shall constitute an act of unfair competition, whether
or not such act or practice actually causes confusion.
(b) Damaging another’s goodwill or reputation may, inparticular, result from the dilution of the goodwill or reputation
attached to—(i) a mark, whether registered or not ;(ii) a trade name ;(iii) a business identifier other than a mark or a tradename ;

118

Intellectual Property Act, No. 36 of 2003
(iv) the appearance of product ;(v) the presentation of products or services;(vi) celebrity or a well-known fictional character.

(c) For the purposes of these provisions, “dilution of
goodwill or reputation” means the lessening of the distinctive
character or advertising value of a mark, trade name or otherbusiness identifier, the appearance of a product or thepresentations of products or services or of a celebrity or wellknown fictional character.
(4) (a) Any act or practice carried out or engaged in, inthe course of any industrial or commercial activity, thatmisleads, or is likely to mislead, the public with respect to an
enterprise or its activities, in particular, the products or services
offered by such enterprise, shall constitute an act of unfair
competition.
(b) Misleading may arise out of advertising or promotion
and may, in particular occur with respect to —(i) the manufacturing process of a product ;(ii) the suitability of a product or service for a particularpurpose ;(iii) the quality or quantity or other characteristics ofproducts or services ;(iv) the geographical indication of products or services ;(v) the conditions on which products or services areoffered or provided ;(vi) the price of products or services or the manner inwhich it is calculated.

Intellectual Property Act, No. 36 of 2003

119(5) (a) any false or unjustifiable allegation, in the courseof industrial or commercial activities, that discredits, or is
likely to discredit, an enterprise of another person or theactivities of such enterprise, in particular, the products orservices offered by such enterprise, shall constitute an act of
unfair competition.
(b) Discrediting may arise out of advertising or promotion
and may, in particular, occur with respect to—(i) the manufacturing process of a product ;(ii) the suitability of a product or service for a particularpurpose ;(iii) the quality or quantity or other characteristics ofproducts or services ;(iv) the conditions on which products or services areoffered or provided ;(v) the price of products or services or the manner inwhich it is calculated.
(6) (a) Any act or practice, in the course of industrial orcommercial activities, that results in the disclosure,acquisition or use by others, of undisclosed information
without the consent of the person lawfully in control of that
information (in this section referred to as “the rightful
holder”) and in a manner contrary to honest commercial
practices shall constitute an act of unfair competition.
(b) Disclosure, acquistion or use of undisclosed
information by others without the consent of the reghtful
holder may, in particular, result from—(i) industrial or commercial espionage ;(ii) breach of contract ;(iii) breach of confidence ;(iv) inducement to commit any of the acts referred to in
sub-paragraphs (i) to (iii) ;120Intellectual Property Act, No. 36 of 2003(v) acquisition of undisclosed information by a third
party who knew or was grossly negligent in failingto know, that an act referred to in sub-paragraphs (i)to (iv) was involved in the acquisition.
(c) For the purposes of this Act, information shall beconsidered “undisclosed information” if—(i) it is not, as a body or in the precise configuration
and assembly of its components, generally known
among, or readily accessible to, persons within thecircles that normally deal with the kind of informationin question ;(ii) it has actual or potential commercial value because
it is secret ; and(iii) it has been subject to reasonable steps under thecircumstances by the rightful holder to keep it secret.
(d) Any act or practice, in the course of industrial orcommercial activities, shall be considered an act of unfair
competition if it consists of results in—(i) an unfair commercial use of secret test or other data,
the origination of which involves considerable effort
and which have been submitted to appropriate
authority for the purposes of obtaining approval ofthe marketing of pharmaceutical or agricultural orchemical products which utilize new chemical
entities ; or(ii) the disclosure of such data, except where necessary
to protect the public, or unless steps have been taken
to ensure that the data is protected against unfair
commercial use.
(e) The undisclosed information for the purpose of thisAct shall include—(i) technical information related to the manufacture ofgoods or the provision of services ; or

Intellectual Property Act, No. 36 of 2003

121(ii) business information which includes the internal
information which an enterprise has developed so as
to be used within the enterprise.
In this section the word “enterprise” has the same meaning
as in section 101 of the Act.
(7) Any person or enterprise or association of producers,
manufacturers or traders aggrieved by any act or practicereferred to in this Part, may institute proceedings in Court toprohibit the continuance of such act or practice and obtaindamages for losses suffered as a result of such act or practice.
The provisions of Chapter XXXV of this Act relating to
infringement shall apply, mutatis mutandis, to suchproceeding.
(8) (a) Any person, who willfully and without lawfulauthority, discloses any undisclosed information shall be guiltyof an offence under this Act 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 notexceeding six months or to both such fine and imprisonment.
(b) The provisions of Chapter XXXVIII of the Act shallapply, mutatis mutandis, to the offence specified under thissubsection.
(9) The rights conferred by the provisions of subsection(6) shall be in addition to, and not in derogation of, any
common law rights.
PART IX
CHAPTER XXXIIIGEOGRAPHICAL INDICATIONS
161. (1) Any interested party shall be entitled toprevent—(i) the use of any means in the designation orpresentation of goods that indicates or suggeststhat the goods including an agricultural product,food, wine or spirit in question originates in a

Protection ofgeographicalindications.

122Intellectual Property Act, No. 36 of 2003
geographical area other than the true place oforigin in a manner which misleads the public as
to the geographical origin of goods ; or(ii) any use of a geographical indication whichconstitutes an act of unfair competition within
the meaning of section 160 ;(iii) the use of a geographical indication identifying
goods including an agricultural product, food,wine or sprit not originating in the place indicatedby the geographical indication in question or
identifying goods not originating in the place
indicated by the geographical indication inquestion, even where the true origin of the goods
is indicated or the geographical indication is usedin translation or accompanied by expression suchas kind, type, style or immitation 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, shalldetermine by prescribed practical conditions under which thehomonymous indications in question will be differentiatedfrom each other, taking into consideration the need to ensure
equitable treatment of the producers concerned and theprotection 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 toprevent 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.

Intellectual Property Act, No. 36 of 2003

123

(5) For the purposes of this section “geographicalindications” shall have the same meaning as in section 101.
PART XCHAPTER XXXIVCONSTITUTION AND POWERS OF ADVISORY COMMISSION
162. (1) The Minister may constitute an Advisory
Commission (hereinafter referred to as the “Commission”)
for the purpose of advising him on any matter referred tohim in relation to the law relating to Copyright, Industrial
Designs, Marks, Patents and Unfair Competition and anyother area or subject of Intellectual Property.
(2) The Commission constituted under subsection (1)shall consist of—(a) not less than five and not more than ten members
appointed by the Minister from among persons who
have shown capacity in law or commerce or related
fields, (hereinafter referred to as an “appointed
member”) ; and(b) the Director-General who shall be an ex-officio
member and who shall function as the Secretary to
the Commission ;(3) (a) Subject to the provisions of subsection (4), theterm of office of an appointed member of the Commission
shall be three years :Provided that a member appointed in place of a member
who resigns or is removed or otherwise vacates office, shallhold office for the unexpired portion of the part of term ofoffice of the member whom he succeeds ;(b) An appointed member of the Commission who vacatesoffice by effluxion of time shall be eligible for re -appointment.

Appointments &c.
of Advisory
Commission.

124Intellectual Property Act, No. 36 of 2003

(4) (a) An appointed member of the Commission may
resign from office by letter to that effect addressed to
the Minister and such resignation shall take effecton such resignation being accepted by the Minister in writing.
(b) The Minister may at any time remove an appointed
member from office, assigning any reason therefor.
(c) Where an appointed member is temporarily
unable to discharge the duties of his office on account of
illness, absence from Sri Lanka or any other cause, theMinister may appoint another person to act as a member in
his place.
(5) (a) The Minister shall appoint a Chairman of theCommission (in this Part referred to as the “Chairman”) fromamong the appointed members of the Commission ;(b) If the Chairman is by reason of illness, other infirmity
or absence from Sri Lanka, temporarily unable to performthe duties of his office, the Minister may appoint anotherappointed member to act in his place.
(c) The Minister may at any time remove the Chairman
from office, assigning any reason therefor ;(d) The Chairman may resign from the office of Chairman
by a letter to that effect addressed to the Minister in writing
and such resignation shall take effect on such resignation
being accepted by the Minister.
(e) Subject to the provisions of paragraphs (c) and (d),the term of office of the Chairman shall be his period ofmembership of the Commission.

Intellectual Property Act, No. 36 of 2003

125(6) There may be appointed such officers and servants
as may be necessary to assist the Commission in performing
its duties under this Part.
(7) The members of the Commission may be paid such
remuneration out of the Fund as may be determined by the
Minister in consultation with the Minister in charge of thesubject of Finance.
(8) It shall be the duty of the Commission –(a) to inquire into and report to the Minister, on any
matter or question relating to the law of Copyright,
Industrial Designs, Trade Marks, Patents and Unfair
Competition or any other matter relating toIntellectual Property as may be referred to it by the
Minister from time to time ;(b) to review the law relating to, and applicable to,
Copyright, Industrial Designs, Trade Marks, Patents
and Unfair Competition or any other matter relating
to intellectual property from time to time and to
make proposals to the Minister for the alteration,
modification or addition to such law ;(c) in making the report or proposals referred to inparagraph (a) or (b), to consult and take into
consideration where the Commission deems it
necessary to do so, the views of trade chambers,
professional organizations, related institutions,
government departments and the general public.
(9) The Minister may give special or general directionsin writing to the Commission, as to the performance of its
duties and the exercise of the powers, and the Commission
shall give effect to such directions.

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Intellectual Property Act, No. 36 of 2003
PART XI
CHAPTER XXXVAPPLICATIONS TO AND PROCEEDINGS BEFORE, THE
DIRECTOR-GENERAL AND COURT

Correction andrectification ofregister.

163. (1) The Director-General may, on application
made in the prescribed manner by or on behalf of theregistered owner of an industrial design, patent, trade markor any other registration provided for under the Act, correct
any error or make any change—(a) in the name, address or description of the registeredowner of any Industrial Design, Patent or Mark or
any other registration provided for under the Act ;(b) concerning any other particulars relating to theregistration of an Industrial Design, Patent or Markor any other registration as may be prescribed.
(2) Subject and without prejudice to other provisions of
the Act—(a) the Court may on the application of any person
aggrieved by the non-insertion in or omission fromany register, of any entry, or by any entry made in
any register without sufficient cause, or by any entry
wrongly remaining on any register, or by any error
or defect in any entry in any register, make suchorder for making, expunging, or varying such entry,
as it may think fit ;(b) the Court may in any proceeding under this section
decide any question that may be necessary or
expedient to decide in connection with therectification of any register ;Intellectual Property Act, No. 36 of 2003

127(c) in case of fraud in the registration, assignment ortransmission of any registered Industrial Design,
Patent or Mark, or any other registration provided
for under the Act, the Director-General himself may
apply to the Court under the provisions of thissection.
(3) In any proceedings under this Act in which the relief
sought includes correction, alteration or rectification of any
register, the Director-General shall have the right to appear
and be heard, and shall appear if so directed by the Court.
Unless otherwise directed by the Court, the Director-Generalin lieu of appearing and being heard may submit to the Courta statement in writing signed by him, giving particulars of
the proceedings before him in relation to the matter in issue
or of the grounds of any decision given by him affecting thesame or of the practice of the office in like cases, or of suchother matters relevant to the issue, and within his knowledge
as such Director-General shall think fit, and such statement
shall be deemed to form part of the evidence in theproceedings.
(4) The Court, in dealing with any question of thecorrection, alteration or rectification of any register shallhave power to review any decision of the Director-Generalrelating to the entry in question or the correction, alteration
or rectification sought to be made.
164. (1) Where the Director-General is satisfied thatany volume of any register kept under this Act has been sodamaged as to render that volume incapable of being mended,he may cause a copy thereof to be made and authenticatedin such manner as he may direct.
(2) Any copy made and authenticated under theprovisions of subsection (1) shall replace the volume of which
it is a copy, and shall for all purposes be deemed to have thesame legal force and effect as the volume which such copy
replaces.

Power to makecopies ofdamaged volumesof any register, toprepare and insert
reconstructedfolios.

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Intellectual Property Act, No. 36 of 2003

(3) The Director-General shall cause every damaged
volume of which a copy has been made under the provisionsof subsection (1) to be preserved as long as it is reasonably
practicable for any reference which may be necessary.
(4) Where the Director-General, after due investigation,is satisfied that any folio of any volume of any register has
been lost and cannot be recovered or that any such folio has
been permanently mutilated or so obliterated or damaged as
to render the entries or any material part of the entries therein
illegible, he may cause a reconstructed folio to be prepared.
(5) No folio shall be reconstructed as provided insubsection (4) except in accordance with the prescribed
procedure, providing—(a) for evidence to be admitted and used by the
Director-General in ascertaining the particulars
originally contained in the lost or mutilated ordamaged folio ;(b) for the giving of notice by the Director-General of
the preparation of the reconstructed folio ;(c) for the lodging of objections by any person affectedby any of the particulars contained in the folio tobe reconstructed ; and(d) for the holding of an inquiry by the Director-General
into any such objections.
(6) Where any folio has been reconstructed by the
Director-General in accordance with the preceding provisionsof this section, the Director-General shall authenticate thereconstructed folio in the prescribed manner and shallthereafter cause the reconstructed folio to be inserted in theappropriate volume of the register in the place formerly
occupied by the lost folio or in place of the mutilated ordamaged folio, or in a copy of a volume prepared under theprovisions of this section, as the case may be, and thereconstructed folio, when so authenticated and inserted, shallfor all purposes be deemed to have the same legal force andeffect as the folio which such reconstructed folio replaces.

Intellectual Property Act, No. 36 of 2003

129(7) The Director-General may, after such inquiry as hemay deem necessary, correct any clerical error or omission
which may be discovered in any entry in any register or inany certificate kept or issued under the provisions of thisAct and for that purpose may recall any such certificate andamend the same or issue a fresh certificate in its place.
165. A certificate purporting to be under the hand of
the Director-General as to any entry, matter, or thing which
he is authorized by this Act or regulations made thereunderto make or do, shall be, prima facie, evidence of the entry
having been made, and of the contents thereof, and of thematter or thing having been done or not done.

Certificate of
Director-General
to be evidence.

166. Printed, mechanically produced, typed or written
copies or extracts, certified by the Director-General, of orfrom any document, register, or other book filed or kept under
this Act in the office shall be admitted in evidence in any
Court of Sri Lanka, without further proof or production of
the originals.

Certified copies tobe evidence.

167. (1) In any proceeding under this Act before the
Court, the evidence shall be given by affidavit in the absenceof directions to the contrary. However in any case in which
the Court shall think it right so to do, the Court may takeevidence, viva voce, in lieu of or in addition to evidence byaffidavit.

Mode of giving
evidence.

(2) The provisions of subsection (1) shall, mutatis
mutandis, apply in respect of the giving of evidence at an
inquiry before the Director-General.
(3) In case any part of the evidence is taken viva voce,
the Director-General may exercise the powers conferred ona Commission appointed under the provisions of theCommissions of Inquiry Act for compelling the attendanceof witnesses and the production of documents and foradministering oaths to all persons who shall be examined
before him.

130Intellectual Property Act, No. 36 of 2003

Exercise of
discretionary
power byDirector–General.

168. Where any discretionary or other power is given
to the Director-General by this Act or any regulation madethereunder, he shall not exercise that power adversely inrespect of the applicant for registration or the registeredowner of an Industrial Design, Patent or Mark or any othermatter provided under this Act without (if duly required so
to do within the prescribed time) giving such applicant orregistered owner an opportunity of being heard.

Director-General
may seek
assistance ofAttorney-General.

169. The Director-General may, in any case of doubt ordifficulty arising in the administration of any of the provisionsof this Act, seek the assistance of the Attorney-General.

Infringement andthe remedies.

170. (1) Where a person to whom any recognised rights
granted under this Act, proves to the astisfaction 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 aright under this Act, will occur, the Court may grant an
injunction restraining any such person from commencing or
continuing such infringement or performing such acts andmay order damages and such other relief as the Court may
deem just and equitable. The injunction may be granted alongwith an award of damages and shall not be denied only for thereason that the applicant is entitled to damages.
(2) The defendant may in the proceedings referred to in
subsection (1) request the Court to declare the registrationof an Industrial Design, Patent, Mark or any other registration
provided for under the Act, as the case may be, or any partof it, null and void, in which event the provisions of thesection relating to the nullity of such registration shall apply
as appropriate.
(3) (a) The court shall have the power to order—(i) the infringer to pay the right holder suchdamages as are adequate to compensate
him for the loss suffered by him, by reasonof such infringement, in addition to therecovery of any profits ;Intellectual Property Act, No. 36 of 2003

131(ii) the infringing goods to be disposed ofoutside the channels of commerce or to
be destroyed without the payment of any
compensation ; and(iii) subject to the protection of confidential
information, the tendering of any evidenceby the opposing party which evidence isrelevant to the substantiation of the claim
and is in the control of the opposing party,
in cases where a party has presented
reasonably available evidence in supportof the claim and has specified that evidence
relevant to the substantiation of such claim
lies in the control of the opposing party.
(b) The court may make any order specified in subsection(1) in respect of materials and implements used in the creationof the infringing goods.
(4) In making such orders the need for maintaining abalance between the seriousness of the infringement and theremedies ordered, as well as the interests of third parties
shall be taken into consideration. In regard to counterfeit
trade mark goods, the simple removal of the trade markunlawfully affixed shall not other than in exceptional cases,
be sufficient, to permit the release of the goods into thechannels of commerce.
(5) The Court may, other than in an instance where it
would not be in proportion to the seriousness of theinfringement, order the infringer to inform the right holderof the identity of the persons involved in the production anddistribution of the infringing goods or services and ofchannels of distribution used by them.
(6) The Court shall have power to order interim measuresrelating to protection, ex-parte, where appropriate, inparticular where any delay is likely to cause irreparable harmto the right holder or where there is a demonstrable risk ofevidence being destroyed.

132Intellectual Property Act, No. 36 of 2003

(7) Where interim measures have been ordered ex-partethe parties affected shall be given notice and shall on receipt
of such notice be entitled to be heard as to whether the interim
measures ordered should be modified or revoked.
(8) Where the interim measures are modified or revokedor it is subsequently found that there has been no infringementof a protected right, the Court shall have the power to order
the applicant, upon the request of the defendant to pay
appropriate compensation for any injury caused.
(9) The Court may require the applicant to provide
security or other equivalent assurance sufficient to protect
the defendant and to prevent abuse of any interim measuresreferred to in the preceding provisions of this section.
(10) Any owner of the rights protected under this Act
may, notwithstanding any provision in the Act relating to
the award of damages, elect at any time before final judgment
to recover, instead of proved actual damages, an award of
statutory damages for any infringement involved in the actionof a sum not less than rupees fifty thousand and not morethanrupees one million as the court may consider
appropriate and just.
(11) No suit or prosecution shall lie against any official
for any act which is done in good faith and in pursuance ofany provisions of this Act.
Infringement
proceedings by orat the request of
licensee.

171. In the absence of any provision to the contrary ina licence contract relating to an Industrial Design, Patent orMark or any other matter provided for by the Act, the licensee
may—(a) in respect of the threatened infringement,
infringement or acts referred to in section 170
request the registered owner of the Industrial
Design, Patent or Mark or any other matter provided
for by the Act, to apply for an injunction :Intellectual Property Act, No. 36 of 2003

133

Provided that the licensee shall indicate thethreatened infringement, infringement or acts being
performed in relation to such infringement andspecify the relief sought under the Act ; and(b) if the owner of the said Industrial Design, Patent orMark or any other matter provided for by this Act
refuses or fails to apply for an injunction within threemonths from the receipt of the said request, apply
for an injunction in his own name, with notice to theregistered owner who may join in the proceedings :Provided that the Court may, on the applicationof the licensee, prior to the expiry of the period of
three months, specified in paragraph (b) of thissection grant an injunction if he proves that
immediate action is necessary to avoid substantial
damage.
172. (1) The Court may on the application of any person
showing a legitimate interest to which the registered ownerof the Industrial Design, Patent or Mark, or any other matterprovided for under the Act as the case may be, shall be madeparty, declare that the threatened performance or performanceof a specific act does not constitute a threatened infringement
or infringement of the said Industrial Design, Patent or Markor any other matter provided for under the Act.
(2) The registered owner of the industrial design, patentor Mark or any other register provided for under the Act, as
the case may be, shall give notice of the said application to
any assignee or licensee, who shall be entitled to join in theproceedings in the absence of any provision to the contrary
in any agreement with the registered owner.
(3) The proceedings for a declaration of non-infringement
may be instituted concurrently with proceedings to declare
the registration of an Industrial Design, Patent or Mark or
any other matter provided for by the Act be null and void :Declaration of
non-infringement.

134Intellectual Property Act, No. 36 of 2003

Provided that the matters in issue in the proceedings fora declaration of non-infringement are not already the subjectof infringement proceedings.
(4) The provisions of the Judicature Act, No. 2 of 1978,
and the Civil Procedure Code shall apply to every application
for an injunction made to the Court under this Act.
Appeals.

173. (1) Any person aggrieved by any decision madeby the Director-General under any provision of the Act may
appeal therefrom to the Court within a period of six months
from the date of such decision.
(2) Such person may prefer an appeal to the Court by
way of a petition of appeal with a certified copy of thedecision appealed form, accompanied by copies of all
relevant documents and affidavits from the file of theIntellectual Property Office. A copy of the petition of appeal
and the accompanying documents and the affidavits shallbe served on the Director-General and other respondents
named in the petition of appeal. Proof of such service shallbe furnished with the petition of appeal to the Court. The
respondents may file a statement of objections.
(3) Court may call for the original file from the DirectorGeneral and may receive and admit new evidence by way ofaffidavit and documents, additional to, or supplementary of,
the evidence already given before the Director-General inrespect of the matter issue as the Court may require.
(4) On any such appeal, the Court may affirm, reverse orvary the decision of the Director-General or may issue suchdirections to the Director-General, or order a further hearing
by the Director-General, as the court may require.
(5) Any person who is dissatisfied with any Order madeby the Court under subsection (4) to which such person is aparty may prefer an appeal to the Supreme Court against
such Order for the correction of any error in fact or in law,with the leave of the Supreme Court first had and obtained.

Intellectual Property Act, No. 36 of 2003

135(6) Every appeal to the Supreme Court under subsection(5) shall be made as nearly as may be in accordance withthe procedure prescribed by the rules of the Supreme Court
with respect to special leave to appeal to the Supreme Court.
174. (1) In all proceedings before the Director-General
under this Act, the Director-General shall have power to award
any party such costs as he may consider reasonable, and todirect to whom and to what parties they are to be paid, andsuch order may be filed in Court, and thereupon such order
may be enforced as if it were an order of the Court.

Costs ofproceedings
before DirectorGeneral andCourt.

(2) In any proceedings before a Court under this Act, theDirector-General shall not be ordered to pay costs. The Court
may however in its descretion Order the payment of costs to
the Director-General.
CHAPTER XXXVIREGISTERED AGENTS
175. (1) An Agent referred to in this Act means an agent
registered under the provisions of the Act or in accordancewith any regulation made thereunder.
(2) Any person registered as an agent under this Act shallhave the authority and be competent to act as an agent under
this Act.
(3) A person may be admitted and registered as an agent
if he—(a) is a citizen of Sri Lanka and is ordinarily
resident in Sri Lanka ; and(b) (i) is an Attorney-At-Law of the Supreme
Court of Sri Lanka ; or(ii) is a person possessing the qualificationsprescribed for an agent ; and(c) pays the prescribed fee.

Registered agents.

136Intellectual Property Act, No. 36 of 2003

(4) A corporate body or a firm may act as an agent if the
majority of the Directors of such corporate body or if the
majority of the partners of the firm, as the case may be, areregistered agents.
(5) The registration of an agent under this Act shall bevalid for a period of three years and shall be renewable,
subject to the payment of a prescribed fee, for a consecutive
period of three years provided, however, that a period ofgrace of six months shall be allowed for renewal upon
payment of such surcharge as may be prescribed.
(6) Notwithstanding anything in the provisions ofsubsection (2), any duly appointed agent, irrespective of
not being registered under this Chapter, may represent his
clients, for a period of two years from the date on which theprovisions of this Chapter comes into operation.
(7) The power of attorney referred to in this Act means a
power of attorney duly executed or a letter of authorisation
duly signed by the principal.

CHAPTER XXXVII
FUND
Fund.

176. (1) For the purposes of this Act there shall beestablished a Fund which shall be maintained in such manneras the Secretary to the Ministry of the Minister in charge ofthe subject of Trade in consultation with the Director-Generalmay direct.
(2) There shall be paid into the Fund two-thirds of every
fee or charge, levied or recoverable under this Act or any
regulation made thereunder.
(3) There shall be paid out of the Fund referred to in
subsection (1) all sums of money required to defray any
expenditure incurred by the Director-General in the exercise,discharge and performance of his powers, functions andIntellectual Property Act, No. 36 of 2003

137

duties under this Act and all such sums of money as are
required to be paid out of such Fund by or under this Act or
any regulation made thereunder.
(4) The balance one-third of the money paid into the Fundunder subsection (2), of each and every such fee or charge
levied or recoverable under this Act or any regulation madethereunder shall be credited to the Consolidated Fund.
(5) The Secretary to the Ministry of the Minister in chargeof the subject of Ttrade shall as soon as possible after theend of each calendar year prepare a report on theadministration of the Fund and shall cause to be maintained
a full and appropriate account of the Fund in respect of eachcalendar year.
(6) The Auditor-General shall audit the accounts of theFund in terms of Article 154 of the Constitution.
(7) The financial year of the Fund shall be the calendar
year.
CHAPTER XXXVIIIOFFENCES AND PENALTIES
177. Any person who makes or causes to be made a
false entry in any of the registers kept under this Act, or awriting falsely purporting to be a copy of an entry in any
such register, or produces, or tenders, or causes to be
produced or tendered in evidence any such writing, knowing
the entry or writing to be false shall be guilty of an offence
and shall on conviction after trial before a Magistrate beliable to a fine not exceeding rupees five hundred thousand
or to imprisonment for a term not exceeding seven years.

Falsification of
entries in any
register.

178. (1) Any person who wilfully infringes any of therights protected under Part II of this Act shall be guilty of an
offence and shall be liable on conviction after trial before a
Magistrate to a fine not exceeding rupees five hundred

Infringement of
Copyright.

138Intellectual Property Act, No. 36 of 2003

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 such fine orterm of imprisonment or both such fine and imprisonment
may be doubled.
(2) Any person knowing or having reason to believe that
copies have been made in infringement of the rights protectedunder 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 by a Magistrate for a fine not exceedingrupees 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 subsequentconviction, to double the amount of a such fine or term of
imprisonment or both.
(3) Any person knowingly or having reasons to believethat he is in possession or has access to a computer program
infringing the rights of another person, and wilfully 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 fineand imprisonment.
(4) The Magistrate may, whether the alleged offender isconvicted or not, order that all copies of the work and all
implements used for the infringement, or all plates in thepossession 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 ordelivered up to the owner of the right, or otherwise dealt
with in such manner as the Magistrate may think fit.
Infringement ofIndustrial
Designs.

179. Any person who wilfully infringes the rights ofany registered owner, assignee or licensee of an Industrial
Design shall be guilty of an offence and shall be liable onconviction after trial before a Magistrate to a fine notIntellectual Property Act, No. 36 of 2003

139

exceeding five hundred thousand rupees or to imprisonment
for a term not exceeding six months or to both such fine andsuch imprisonment, and in the case of a second or subsequentconviction to double the amount of such fine or term of
imprisonment or both.
180. (1) Any person who, for industrial or commercial
purposes, makes a representation —(a) with respect to an Industrial Design not being a
registered Industrial Design to the effect that it is a
registered Industrial Design ;False
representations
regardingindustrial Designs.

(b) to the effect that a registered Industrial Design isregistered in respect of any product, regarding
which registration has not been carried out ;(c) to the effect that the registration of an Industrial
Design gives an exclusive right to the use thereof
in any circumstances in which, having regard tolimitations recorded in the register, the registration
does not give that right,
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.
(2) A person shall be deemed to represent that an
Industrial Design is registered if he uses in connection with
the Industrial Design the word “registered”, or any word orwords expressing or implying that registration has beenobtained for the Industrial Design.
181. Any person who wilfully infringes the rights of any
registered owner, assignee or licensee of a patent shall be guiltyof 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

Infringement ofPatents.

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Intellectual Property Act, No. 36 of 2003

of a second or subsequent conviction to double the amountof such fine or term of imprisonment or both.
False
representations
regarding Patents.

182. (1) Any person who, for industrial or commercial
purposes, makes a representation –(a) with respect to a patent not being a registered patentto the effect that it is a registered Patent ;(b) to the effect that a registered Patent is registered in
respect of any product or process regarding which
registration has not been carried out ; or(c) to the effect that the registration of a Patent gives
an exclusive right to the use thereof in any
circumstances in which, having regard to limitations
recorded in the register, the registration does notgive that right,
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 notexceeding six months or to both such fine and such
imprisonment.
(2) A person shall be deemed to represent a Patent as
registered if he uses in connection with the Patent the word
“registered”, or any word or words expressing or implyingthat registration has been obtained for the Patent.

Unlawful
disclosure of
information
relating to Patents.

183. Any person who being or having been employed in
or at the office, communicates any information relating toPatents or matters connected therewith obtained by him during
the course of his employment in or at the office to any person
not entitled or authorized to receive such information, ordiscloses such information to the public or makes any otherunlawful use of such information 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 twelve months or toboth such fine and such imprisonment.

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141

184. Any person who wilfully infringes the rights ofany registered owner, assignee or licensee of a Mark, shallbe 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 notexceeding six months or to both such fine and such
imprisonment and in the case of a second or subsequentconviction to double the amount of such fine or term of
imprisonment or both such fine and imprisonment.

Infringement ofMarks.

185. (1) Any person who, for industrial or commercial
purposes, makes a representation—

False
representations
regarding marks.

(a) with respect to a Mark not being a registered Markto the effect that it is a registered Mark ;(b) to the effect that a registered mark is registered in
respect of any goods or services regarding which
registration has not been carried out ; or(c) to the effect that the registration of a mark gives an
exclusive right to the use thereof in any
circumstances, in which having regard to limitations
recorded in the register, the registration does notgive that right,
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 notexceeding six months or to both such fine and imprisonment.
(2) A person shall be deemed to represent a Mark as
registered if he uses in connection with the Mark the word
“registered”, or any word or sign expressing or implyingthat registration has been obtained for the mark.
186. (1) Any person who—(a) forges any Mark ; or(b) falsely applies to goods any Mark or Marks so nearly
resembling a registered Mark as to be likely to
mislead ; orOther offences as
to marks and tradedescriptions.

142Intellectual Property Act, No. 36 of 2003(c) makes any die, seal block, machine, or other
instrument for the purpose of forging, or to be used
for forging, a Mark ; or(d) applies any false trade description to goods ; or(e) disposes of, or has in his possession, any die, seal
block, machine, or other instrument for the purposeof forging a Mark ; or(f) causes any of the things referred to in this subsection
to be done,

shall, subject to the provisions of this Part, and unless he provesthat he acted without intent to defraud, be guilty of an offence.
(2) Any person who sells or exposes for sale, or has in his
possession for sale, or any purpose of trade or manufacture,
any goods or things to which any forged Mark or false tradedescription is applied, or to which any Mark so nearly
resembling a registered Mark so as to be likely to mislead, isfalsely applied, as the case may be, shall, unless he proves—(a) that having taken all reasonable precautions against
committing an offence he had at the time of thecommission of the alleged offence no reason tosuspect the genuineness of the Mark, or tradedescription ; and(b) that on demand made by or on behalf of theprosecutor he gave all the information in his powerwith respect to the persons from whom he obtainedsuch goods or things ; or(c) that otherwise he had acted innocently,
be guilty of an offence.
(3) Any person who imports any piece-goods ordinarily
sold by length or by the piece, manufactured outside
Sri Lanka, or who sells or exposes for, or has in his possession
for sale or any purpose of trade, any piece-goods ordinarily

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143

sold by length or by piece, whether manufactured within or
outside the territory of Sri Lanka, which do not haveconspicuously stamped in English numerals on each piece,
the length thereof in standard metres, or in standard metres
and a fraction of such a metre, according to the real lengthof the piece, shall be guilty of an offence :Provided that nothing contained in this subsection shallapply to any piece-goods manufactured within the limits of
Sri Lanka by hand labour only.
(4) Any person found guilty of an offence under thissection shall on conviction after trial before a Magistrate beliable to a fine not exceeding rupees five hundred thousand
or to imprisonment for a term not exceeding two years or toboth such fine and such imprisonment, and in the case of asecond or subsequent conviction such fine or term of
imprisonment or both such fine and imprisonment may be
doubled.
(5) The Magistrate may, whether the alleged offender isconvicted or not, order that every chattel, article, instrument
or thing by means of or in relation to which the offence has ormight have been committed shall be destroyed or declared
forfeit to the State or otherwise dealt with as he may think fit.
187. Where an offence under this Act has beencommitted by a body corporate, every person who at thetime of the commission of the offence was a DirectorGeneral, Manager, Secretary or other similar officer of thatbody shall be deemed to be guilty of such offence, unlesshe proves that the offence was committed without his consent
or connivance and that he exercised all due diligence toprevent the commission of the offence.

Offences bybodies corporate.

188. For the purposes of this Part, the definitions
contained in section 101 shall apply, unless the context
otherwise requires.

Interpretation.

144
False name or
initials.

Intellectual Property Act, No. 36 of 2003

189. (1) The provisions of this Part respecting theapplication of a false trade description to goods, or respecting
goods to which a false trade description is applied, shallextend to the application to goods—(a) of any such figures, words, marks or arrangement
or combination thereof, whether including a
registered Mark or not, as are likely to lead persons
to believe that the goods are the manufacture or
merchandise of some person other than the person
whose manufacture or merchandise they really are ;(b) of any false name or initials of a person and to goods
with the false name or initials of a person applied,in like manner as if such name or initials were a
trade description.
(2) For the purposes of this Part the expression “falsename or initials” means, as applied to any goods, any nameor initials of a person which—(i) are not a Mark, or part of a Mark ; and(ii) are identical with, or are a colourable imitation of,
the name or initials of a person carrying on businessin connection with goods of the same description,and not having been authorized the use of such nameor initials ; and(iii) are either those of a fictitious person or of someperson not, bona fide, carrying on business inconnection with such goods.
(3) A trade description which denotes or implies that inany goods to which it is applied which contains more metresor standard metres than contained therein, is a false tradedescription.

Intellectual Property Act, No. 36 of 2003

145

190. A person shall be deemed to forge a Mark whoeither—Forging marks.

(a) without the assent of the owner of the Mark makethat Mark, or a Mark so nearly resembling that markas to be likely to mislead ; or(b) falsifies any genuine Mark, whether by alteration,
addition, effacement or otherwise,
and any Mark so made or falsified is in this Part referred toas a forged Mark :Provided that in any prosecution for forging a Mark theburden of proving the assent of the owner shall lie on theaccused.
191. Any person who—

False declaration
to be an offence.

(a) Makes a false declaration to the Director-General ;(b) Makes a false declaration in respect of geographicalindication inclusive of Ceylon Tea and Ceylon
Cinnamon,shall be guilty of an offence and shall be liable on conviction
by a Magistrate to a fine not exceeding five hundred thousand
rupees.
192. (1) Any person shall be deemed to apply a Markor trade description to goods who—(a) applies it to the goods itself ; or(b) applies it to any covering, label, reel or other thingin or with which the goods are sold or exposed, or
had in possession for any purpose of sale, trade, ormanufacture ; or(c) places, encloses, or annexes any goods which aresold or exposed, or had in possession for the purposeof sale, trade, or manufacture, in, with, or to any
covering, label, reel, or other thing to which a markor trade description has been applied ; orApplying Marksand descriptions.

146Intellectual Property Act, No. 36 of 2003(d) uses a Mark, or trade description in any manner
likely to lead to the belief that the goods inconnection with which it is used are designated or
described by that Mark, or trade description.

(2) The expression “covering” includes any stopper, cask,bottle, vessel, box, cover capsule, case, frame, or wrapper ;and the expression “label” includes any band or ticket.
(3) A Mark or trade description shall be deemed to be
applied whether it is woven, impressed, stamped, branded,or otherwise worked into or annexed, or affixed to the goods,
or any covering, label, reel, or other thing.
(4) A person shall be deemed to falsely apply to goods amark who, without the assent of the owner of a Mark, applies
such Mark or any Mark so nearly resembling it as to be
likely to mislead, but in any prosecution for falsely applyinga Mark to goods the burden of proving the assent of theowner shall lie on the accused.
Exemption certain
persons employed
in ordinary courseof business.

193. Where a person is charged with of making any die,stamp block, machine, or other instrument for the purpose offorging or being used for forging, a Mark, or with falsely
applying to goods any Mark or any Mark so nearly resemblinga mark as to be likely to mislead, or with applying to goods
any false trade description or causing any of the things in thissection mentioned to be done, and such person proves—(a) that in the ordinary course of his business he isemployed, on behalf of other persons, to make dies,stamps blocks, machines, or other instruments formaking, or to be used in making, Marks, or as thecase may be, to apply Marks or descriptions to goods
and that in the case which is the subject of the charge
he was so employed by some person resident in
Sri Lanka, and was not interested in the goods by
way of profit or commission dependent on the saleof such goods ; andIntellectual Property Act, No. 36 of 2003

147(b) that he took reasonable precautions against
committing the offence charged with ; and(c) that he had, at the time of the commission of thealleged offence, no reason to suspect the geniunnessof the Mark or trade description ; and(d) that he gave to the prosecutor all the information in
his power with respect to the person on whose behalf
the Mark or description was applied,
he shall be discharged from the prosecution, but shall be
liable to pay the costs incurred by the prosecutor unless hegives due notice to the prosecutor regarding his intention to
rely on defence specified in this section.
194. In any indictment, charge, proceeding, or documentin which any mark or forged mark is required to bementioned, it shall be sufficient, without further description
and without any copy or facsimile, to state that Mark orforged Mark to be a Mark or forged Mark.

Mark howdescribed inpleading.

195. In any prosecution for and offence under this Part—

Rules as toevidence.

(a) an accused, and his or her spouse as the case may
be, may, if the accused thinks fit, be called as awitness, and if called, shall be sworn and examined
and may be cross-examined and re-examined in likemanner as any other witness ;(b) in the case of imported goods evidence of the portof shipment shall be, prima facie, evidence of theplace or country in which the goods were made or
produced.
196. Any person who, being within Sri Lanka, abets
the commission out side Sri Lanka of any act which, if
committed within Sri Lanka, would under this Part be an
offence, shall be deemed to be guilty of that offence, and beliable to be indicted, proceeded against, tried and convicted
in any district or place in Sri Lanka in which he may be as if
the offence had been committed therein.

Punishment ofaccessories.

148Intellectual Property Act, No. 36 of 2003

For the purpose of this section “abet” shall have the same
meaning as in section 101 of the Penal Code.
Search warrant.

197. (1) (a) Upon receipt of information of an offence
being committed under this Part, a Magistrate may issue
either a summons requiring the person alleged to havecommitted such offence to appear in court and show cause
or where such person fails to appear issue a warrant for thearrest of such person ;(b) The Magistrate may upon being satisfied byinformation on oath that there are reasonable grounds tobelieve that any goods or things by means of, or in relation
to, which such alleged offence has been committed are in
any house or premises of the person charged on the basis ofsuch information, or in his possession or under his control,
in any place, such Magistrate may issue a warrant under hishand ;(c) It shall be lawful for any police officer, or other person
named or referred to in the warrant, to enter such house,premises, or place at any reasonable time of the day, and to
search therefore and seize such goods or things ; andany goods or things seized under any such warrant shall be
brought before the Magistrate’s Court for the purpose ofdetermining whether such goods are liable to forfeiture under
this Part.
(2) (a) If the owner of any goods or things which, if theowner thereof had been convicted, would be liable toforfeiture under this Part, is unknown or cannot be found,any information or complaint may be led for the purpose
only of enforcing such forfeiture, and a Magistrate may cause
notice to be published requiring reasons to be shown to thecontrary at the time and place named in the notice, as towhy such goods or things should not be forfeited.

Intellectual Property Act, No. 36 of 2003

149(b) If the owner or any person on his behalf, or otherperson interested in the goods or things, fails to show
sufficient cause to the contrary at the time and place namedin the notice, Magistrate may order such goods or things or
any of them to be forfeited. Every such order shall be subject
to an appeal.
(3) Any goods or things forfeited under this section, or
under any other provisions of this Part, may be destroyed orotherwise disposed of, in such manner as the Magistrate whoordered the forfeiture may direct, and the Magistrate out ofany proceeds which may be realized by the disposition ofsuch goods (all marks and trade descriptions being firstobliterated), may make an award to an innocent party for
any loss he may have sustained in dealing with such goods.
198. In any prosecution under this Part the Court mayorder costs to be paid to the accused by the prosecutor or to
the prosecutor by the accused, having regard to theinformation given by, and the conduct of, the accused andprosecutor respectively, and the sum so awarded as costs
shall be recoverable as if it were a fine.

Costs of defence
and ofprosecution.

199. Where, at the commencement of this Act, a tradedescription is lawfully and generally applied to goods of aparticular class, or manufactured by a particular method, toindicate the particular class or method of manufacture ofsuch goods, the provisions of this Part with respect to false
trade descriptions shall not apply to such trade description
when so applied :Provisions as tofalse description
not to apply incertain cases.

Provided that where such trade description includes thename of a place or country, which is likely to mislead as tothe place or country where the goods to which it is applied
were actually made or produced, and the goods are not actually

150Intellectual Property Act, No. 36 of 2003

made or produced in that place or country, the provisions of
this section shall not apply unless there is added to the tradedescription, immediately before or after the name of thatplace or country, in an equally conspicuous manner, the nameof the place or country in which the goods were actually
made or produced, with a statement that they were made or
produced there.
Savings.

200. (1) The Provisions of this Part shall not exempt any
person from any action, suit, or other proceeding which might,
but for the provisions of this Part, be brought against him.
(2) Nothing in this Part shall entitle any person to refuse
to make a complete discovery, or to answer any question orinterrogatory in any action, but such discovery or answer
shall not be admissible in evidence against such person inany prosecution for an offence under this Part.
(3) Nothing in this Part shall be construed so as to makeany servant of a master resident in Sri Lanka liable to a suitor prosecution due to disclosure of information regarding
the servant of a master, when required by or on behalf of theprosecutor who, bona fide, acts in compliance with the
instructions of such master.

Cognizable andbailable offences.

201. All offences under this Part shall be cognizable
and bailable, within the meaning of the Code of Criminal
Procedure Act, No. 15 of 1979. The provisions of the Codeof Criminal Procedure Act shall apply to any offence
committed under this Part.

Limitation ofprosecution.

202. No prosecution for an offence under this Act shallbe commenced after the expiration of three years after thecommission of the offence charged or two years after the
discovery thereof by the prosecutor, which ever expiration
first occurs.

Intellectual Property Act, No. 36 of 2003

151

203. On the sale, or in the contract for the sale, of any
goods to which a Mark, or trade description has been applied,the vendor shall be deemed to warrant that the Mark is agenuine Mark, and not forged or falsely applied, or that thetrade description is not a false trade description within themeaning of this Part, unless the contrary is expressed in writing
signed by or on behalf of the vendor and delivered at the timeof the sale or contract to, and accepted by, the vendee.

Implied warranty
on sale of marked
goods.

CHAPTER XXXIXREGULATIONS
204. (1) The Minister may from time to time makeregulations for the purpose of carrying out or giving effect tothe principles and provisions of this Act and in particular inrespect of any matter required under this Act to be prescribed.
(2) Without prejudice to the generality of the powers
conferred by subsection (1) the Minister may makeregulations in respect of any or all of the following matters :–(a) the procedure of registration ;(b) the classification of goods and services for the
purposes of registration ;(c) the fees payable in respect of registration and othermatters ;(d) the forms to be used for any purpose under the Act ;(e) the setting up of organizations to administer rights
specified in Part II on behalf of the owners of suchrights and the conditions under which suchorganizations are required to work ;(f) the admission, registration, cancellation, removal
and any other matter relating to agents specified in
Chapter XXXVI of the Act ;(g) The manner of the administration of the Patent
Co-operation Treaty in Sri Lanka ;Regulations.

152

Intellectual Property Act, No. 36 of 2003(h) all matters which under this Act have beenplaced under the direction or control of the
Director-General.

(3) Every regulation made by the Minister shall be
published in the Gazette and shall come into operation on
the date of such publication or on such later date as may be
specified therein.
(4) Every regulation made by the Minister shall as soon
as convenient after its publication in the Gazette be brought
before the Parliament for approval. Any such regulation
which is not so approved shall be deemed to be rescinded asfrom the date of its disapproval, but without prejudice toanything previously done thereunder.
(5) Notification of the date on which any regulation madeby the Minister is so deemed to be rescinded shall be
published in the Gazette.

CHAPTER XLAMENDMENT OF HIGH COURT OF THE PROVINCES(SPECIAL PROVISIONS) ACT, NO. 10 OF 1996
Amendment of
Act No. 10 of
1996.

205. High Court of the Provinces (Special Provisions)Act, No. 10 of 1996 is hereby amended as follows :—(1) by the repeal of item 3 of the First Schedule to that
Act and substitution therefore of the following :—“All proceedings required to be taken under theIntellectual Property Act, No. 36 of 2003 in the High
Court established under Article 154 P of theConstitution”.
(2) by the repeal of item 2 of the Second Schedule to
the Act.

Intellectual Property Act, No. 36 of 2003

153

CHAPTER XLIAMENDMENT OF THE CUSTOMS ORDINANCE
206. Section 101 of the Customs Ordinance (Chapter235) is hereby amended by the insertion immediately
after paragraph (e) of that section of the following newparagraph :—Amendment ofsection 101 of the
Customs
Ordinance.
(Chapter 235)“(ee) for prohibiting of importation and exportaion ofcounterfeit trade mark goods or pirated copyrightgoods or any other goods in contravention of theprovisions of the Intellectual Property Act, No. 36
of 2003”.
207. The Customs Ordinance hereinafter referred to as“the Ordinance ”is hereby amended in P art XIII of that
Ordinance by the insertion immediately after section 125
thereof of the following new sections :—“Inclusion ofprohibited
goods in
Schedule B of
Customs
Ordinance.

125A. (1) The importation of counterfeit
trade mark goods or pirated copyright goods
or any other goods in contravention of theprovisions of the Intellectual Property Act,
No. 36 of 2003 (hereinafter referred to as the“Act”) shall be prohibited and such goods shallbe included among the goods the importationof which, are prohibited under section 43 of
the Ordinance and included in Schedule B of
the Ordinance as prohibited goods.
(2) The exportation of the goods referred
to in subsection (1) of this section shall be
prohibited and such goods shall be included
among the goods the exportation of which, areprohibited as if they were referred to in section
44 of the Ordinance and included in Schedule
B of the Ordinance as prohibited goods.
(3) Notwithstanding anything to the contrary
in any other law, prohibited goods referred to in
subsections (1) and (2) of this section, shall bedisposed of outside the channels of commerce

Insertion of new
sections in the
Customs
Ordinance.

154Intellectual Property Act, No. 36 of 2003
or if such disposal damages the interests of theowner of any right protected under the Act, be
destroyed.
(4) “Counterfeit trade mark goods” mean
any goods including packaging, bearing
without authorization a trade mark which is
identical to a trade mark validly registered in
respect of such goods or which cannot be
distinguished in its essential aspects from sucha trade mark, and which thereby infringes therights of the owner of the trade mark recognisedby the Act.
(5) “Pirated copyright goods” mean any
goods which are made without the consent of
the copyright holder or person duly authorisedby the copyright holder in the country of
production and which are made directly or
indirectly from an article where the making ofthat copy would have constituted an
infringement of a copyright or a related rightby the Act.

Suspension ofcertain goods
by Customs
Authorities.

125B. (1) A right holder, who has valid
grounds to believe that the importation ofcounterfeit trade mark or pirated copyrightgoods or of any other goods in contraventionof the right holder’s rights under the Act istaking place, may make an application inwriting 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 there is a, prima facie, case of
infringement of the right holder’s rights underthe Act and supply a sufficiently detailed
description of the goods to make them readily
recognisable by any officer of the Customs.

Intellectual Property Act, No. 36 of 2003

155(3) (a) The Director-General of customs
shall have the power to require an applicant toprovide a security or equivalent assurance
sufficient to protect the defendant and toprevent any abuse ;(b) Where pursuant to an application madeunder subsection (1), the Director-General ofcustoms suspends the release of any goods into
free circulation, he shall forthwith cause theimporter and the applicant to be promptly
notified the the suspension.
(4) If the Director-General of customs fails
to receive any notice regarding the institutionof proceedings in respect of the of release of
any goods suspended under subsection (3),within a period not exceeding ten working days
after the applicant has been informed of thesuspension 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.
(5) Where pursuant to an application madeunder subsection (1), the Director-General ofcustoms has suspended the release of any goods
into free circulation and the period referred toin subsection (4) has expired without the
granting of any provisional relief by a Court,
and provided that all other conditions forimportation have been complied with, theowner, importer or consignee of such goods
shall be entitled to have such goods released.
(6) Notwithstanding anything contained in
the preceding provisions of this section, where
the suspension of the release of any goods iscarried out or continued in accordance with an

156Intellectual Property Act, No. 36 of 2003
order of court, the provisions of subsection 4of 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, appropriatecompensation for any harm caused to themthrough the wrongful detention of goods or
through the detention of goods released pursuant
to the preceding provisions of this section.
(8) Without prejudice to the protection ofconfidential information, the Court shall havepower to give the right holder sufficient
opportunity to have any goods detained by thecustoms authorities inspected in order tosubstantiate the right holder’s claims. The
Court shall in addition have power to give theimporter an equivalent opportunity to have any
such goods inspected.
(9) Without prejudice to other rights ofaction open to the right holder and the defendant,
the Court shall have the power to order thedestruction or disposal of any infringing goodsin accordance with the principals set out insection 170 of Intellectual Property Act, No. 36
of 2003. In regard to counterfeit trade markgoods, the Court shall not other than in
exceptional circumstances allow the reexportation of the infringing goods in an
unrelated state or subject them to a different
customs procedure.
(10) The provisions of sections 125A and
125B shall not apply to small quantities ofgoods of a non-commercial nature containedin a traveller’s personal luggage or forwardedin small consignments.

Intellectual Property Act, No. 36 of 2003

157(11) In this section, the expressions“counterfeit trade mark goods” and “pirated
copyright goods” shall have the same meanings
as are assigned to them in section 125A.”.
CHAPTER XLIIREPEALS AND SAVINGS
208. (1) The Code of Intellectual Property Act, No. 52
of 1979 (hereinafter referred to as the “Code”) is hereby
repealed.
(2) Notwithstanding the repeal of the Code the National
Intellectual Property Office of Sri Lanka established under
the Code, and the officials appointed under the Code shallcontinue and shall be deemed to have been established andappointed respectively under this Act.
(3) Notwithstanding the repeal of the Code every
regulation made thereunder as in force on the date ofcommencement of this Act, in so far as such regulation is
not inconsistent, with the provisions of this Act shall bedeemed to be made under this Act, and such regulations may
be amended, rescinded or altered by regulations made under
this Act.
(4) Notwithstanding the repeal of the Code—(a) Every application for registration of an Industrial
Design, Patent or Mark made to the DirectorGeneral under the provision of the code and pendingon the date immediately preceeding the date ofcommencement of this Act, shall be deemed to bean application made to the Director-General underPart III, IV or V respectively of this Act, and shallbe dealt with in accordance with the provisions of
this Act ;Repeals andsavings.

158

Intellectual Property Act, No. 36 of 2003(b) any right specified in Part II of this Act, which was
granted on the date of coming into operation of therepealed Code shall for all purposes except for the
purpose of imposing punishment, continue to be valid
and effectual as if herein granted provided that theterm of protection previously granted has not expired
under the Code or under the laws of the country oforigin of such work, performance, sound recordingor broadcast that are to be protected under any
international treaty to which Sri Lanka is a party ;(c) every action, proceeding or other matter relating to
Copyright, Industrial Desingns, Patents, Marks andunfair competition pending on the day immediately
preceeding the date of the commencement of thisAct, shall be deemed to have been instituted under
the provision of this Act and shall be continued andproceeded with under the provisions of this Act ;(d) nothing in Part III, IV, V or VI of this Act shall affectany order or requirement made, table of fees orcertificates issued, notice, decision, determination,
direction or approval given, application made, orthing done, under the Code, and every such order,
requirement, table of fees, certificate, notice,decision, determination, direction, approval,
application or thing shall, if in force on the date
immediately preceding the date of commencementof this Act, shall be deemed to have been made under
the provisions of this Act and shall continue in force
and shall, so far as it could have been made, issued,
given or done under this Act have effect as if made,issued, given or done under the corresponding
provisions of this Act ;(e) all contracts, leases and agreements subsisting on
the day immediately preceding the date ofcommencement of this Act shall be deemed for all
purposes to be contracts, leases or agreements madeor entered into by or with or for the office, under
the provisions of this Act.

Intellectual Property Act, No. 36 of 2003

159(f) all interests, rights, obligations, debts and liabilitiesof the office subsisting on the day immediately
preceding the date of commencement of this Act,
shall be deemed to be the interest, rights,
obligations, debts and to liabilities of the office,under the provisions of this Act.
209. The validity of the original entry of a Design on
the register of Designs existing on the day immediately
preceeding the date of commencement of this Act or any
register of Designs which was kept under any previous law
and was incorporated with and declared to form Part of theRegister of Designs, shall be deemed to have been registeredunder Part III of this Act. Every such Design shall howeverretain its original date.

Saving of
Designs.

210. The validity of the original entry of a Patent on
the register of Patents existing on the day immediately
preceeding the date of commencement of this Act or any
Register of Patents which was kept under the previous laws
and was incorporated with and declared to form Part of theRegister of Patent shall be deemed to have been registeredunder Part IV of this Act. Every such Patent shall howeverretain its Original date.

Savings ofPatents.

211. (a) The validity of the original entry of a Mark on
the Register of Marks existing on the day immediately
preceeding the date of commencement of this Act or any
register of Marks which was kept under any previous law
and was incorrporated with and declared to form Part of theRegister of Marks shall be deemed to have been registeredunder Part V of this Act. Every such Mark shall howeverretain its original date.

Savings of Marks.

(b) No mark which was on the Register on the day
immediately after the date of commencement of the Code andwhich under the Code was then a registrable mark shall be
removed from the Register on the ground that it was notregistrable under the law in force at the date of its registration.

160

Intellectual Property Act, No. 36 of 2003(c) No mark which was on the Register on the day
immediately preceeding the date of commencement of the
Act and which under Part V is a registrable mark shall be
removed from the register on the ground that it was notregistrable, under the law in force at the date of its
registration.
(d)Nothing in Part V shall—(i) invalidate the original registration of amark which had validity on the register
immediately before the date of commencementof this Act ; or(ii) subject any person to any liability in respect toany act or thing done before the date ofcommencement of this Act, to which he would
not have been subject under the law in force atthe time such act or thing was done.

CHAPTER XLIIIINTERPRETATIONInterpretation.

212. In this Act unless the context otherwise requires—“Central Bank of Sri Lanka” means the Central Bankof Sri Lanka established under the Monetary Law
Act (Chapter 422) ;“convention country” means any country that has
acceded to or ratified or that may hereafter accede
to or ratify the Paris Convention for the protectionof Industrial Property, as well as all members of
the World Trade Organisation or States that may
here after become members of the World Trade
Organisation, and includes any country which has

Intellectual Property Act, No. 36 of 2003

161

entered into or which may hereafter enter into any
treaty, convention or arrangement with Sri Lanka
creating reciprocal rights and obligations between
such country and Sri Lanka in regard to Industrial
Designs, Patents and Marks and any othermatter provided for by the Act and the registration
thereof ;“convention” means the Paris Convention for theprotection of Industrial Property, World Trade
Organisation or any other international or regional
convention, treaty or arrangement to which Sri
Lanka is party creating reciprocal rights andobligations between such country and Sri Lanka inregard to Industrial Designs, Patents. Marks and anyother matter provided for by the Act and theregistration there of ;“Court” means a High Court established under Article
154P of the Constitution for a Province empoweredwith civil jursidiction by Order published in theGazette under section 2 of the High Court of Provinces(Special Provisions) Act, No. 10 of 1996 when theparty or parties defendant to such action resides orreside or the cause of action has arisen or the contractsought to be enforced was made within the Province
for which such High Court is established, or where nosuch High Court is established for any Province orvested with such civil jurisdiction the High Court
established for the Western Province ;“Transgenic” means an organism that expresses acharacteristic not attainable normally by the species
under natural circumstances, but which has been
added by means of direct human intervention in its
genetic composition.”.
213. In the event of any inconsistency between the
Sinhala and Tamil texts of this Act, the Sinhala text shallprevail.

Sinhala text toprevail in case ofinconsistency.

162Intellectual Property Act, No. 36 of 2003

Annual subscription of English Bills and Acts of the Parliament Rs. 885 (Local), Rs. 1,180 (Foreign),
payable to the SUPERINTENDENT, GOVERNM ENT PUBLICATIONS BUREAU, NO. 32, TRANSWORKS HOUSE,
LOTUS ROAD, COLOMBO 01 before 15th December each year in respect of the year following.