Intellectual Property Law

• “I am excited about the opportunities

presented by the internet because it
allows artists to communicate directly
with fans. But the bottom line must
always be respect and compensation for
creative work. I am against internet
piracy and it is wrong for companies like
Napster and others to promote stealing
from artist online”

Elton John.
 Content

• Introduction
• Earlier law & Global Treaties
• IP Act No.36 of 2003
• Case law
 Why protection is vital?
• Legal recognition and protection
• Unlike personal property intellectual
property cannot be possessed
• Unlike personal property intellectual
property cannot be occupied
• Money value
• Easy to copy.
 Cont…
• It encourage further creations
• Enhance investment
• It has major effect of technology transfer
• Create new industries and employment
• Enhance the quality of life
• It attempts to achieve a balance
between creators rights and interest
of society.
 What is intellectual Property?
• 1.It comprises of all which emanate from
the exercise of the human brain and
which are original
• 2.It is a right attached to the IP which
are legally protected from being
infringed by others.
• They are incorporeal or intangible
property rights associated with creative
effort or commercial reputation and
goodwill.
 How are these rights created?
• Some of these rights are created by
registration such as patent, industrial
design, trade marks and some by
creation and publication such as
copyrights and some by prior user such
as trade mark.
 How are these rights
protected?
• These rights are protected by
registration(except copyrights)and by
legal action(civil and criminal)
 Cont…
• Foundation of IP is its money value
• There is a special relationship with
human brain.
• IP itself is inherently intangible
IP is a kind of property.
 IP IS A FORM OF PROPERTY WITH SOME
UNIQUE
FEATURES OF ITS OWN.

IP is an asset.
IP has a monetary value.
IP can be owned, transferred, sold or
licensed.
It is a kind of intangible property.

To be protectable ,it must be expressed in a

discernible (visible, evident)form or way.
 Evolution of IP law in SL
• SL had its origin during the British
colonial period
• British inventors Ordinance1859
• Patents Ordinance1906
• Trade marks Ordinance 1888
• Design Ordinance……
• Code of IP Act No.52 of 1979
• IP Act No.36 of 2003(current law in force)
IP Act No.36 of 2003
 The International Arena on IP
• Paris Convention(since 1952)
• Madrid Agreement(since 1952)
• Nairobi Treaty(since 1984-Olympic
Symbol)
• Bern convention(since 1959)
• Universal copy right convention(since
1983)
• TRIPS Agreements
• WTO(since 1995)
• Trade Mark Law Treaty(since 1996)
 NIPO of SL
• This is a government Dept.
• Headed by an officer “the Director
General of IP”
• He is an independent
/autonomous administrator
• Decisions of Director General can
only be challenge before the Court.
Sources of the Law (place where one must
look
to discover the substance and rules of law)

• Statutes

Rules and Regulations made under the Act

Civil procedure code
Judicature Act
The Code of Criminal Procedure Act
The High Courts of the Provinces(Special Provisions)Act
Customs Ordinance

• Judicial Decisions
International Human Right Law
• Who Will Own Your
Next Good Idea?

(The Atlantic Monthly,September 1998)

• “Because copyright is the mechanism for
establishing ownership, it is increasingly
seen as the key to wealth in the
Information Age.”
(Charles C.Maan)
 Copy Right-Part 2 of the Act

• Copyright means the rights given by law to

the creators for their literary and artistic
works. The rights takes two forms (a)
economic rights and (b) moral rights. The
economic rights include the right to
reproduce, sell, rent, distribute,
communicate to the public, translate etc
whereas the moral rights cover the right to
claim the authorship and right to oppose
distortion or mutilation of the work.
 Original works protected
• (a) books, pamphlets, articles, computer programs and
other
writings ;
• (b) speeches, lectures, addresses, sermons and
other oral works ;
• (c) dramatic, dramatic-musical works,
pantomimes,choreographic works and other works
created for stage productions ;
• (d) stage production of works specified in paragraph(c)
and
expressions of folklore that are apt for such productions ;
• (e) musical works, with or without accompanyingwords ;
• (f) audiovisual works ;(g) works of architecture ;
• (h) works of drawing, painting, sculpture, engraving,
• litho-graphy, tapestry and other works of fine art ;
 Protected Rights(economic
rights)
Covers entire work as well as Substantial part
thereof.
• Reproduction
• Translation
• Adaptation,arrangementb or transformation
• Public distribution
• Rental
• Importation
• Public performance
 Moral rights
• The right to have his name
• The right to use a pseudonym and not to
have his name indicated on the copies
• The right to object to any
distortion,mutilation or other
modification….which would be prejudicial
to his honor or reputation.
 Derivative works protected

• (a) translations, adaptations,

arrangements and other transformations
or modifications of works ; and
• (b) collections of works and collections
of mere data(data bases), whether in
machine readable or other form,
provided that such collections are
original by reason of the selection, co-
ordination or arrangement of their
contents.
 Works not protected
• Any official text of a legislative,
administrative or legal nature, as well as
any official translation thereof ;
• News of the day published, broadcast,
or by any other means.(SEC.8)
• Simple works such as titles of books or
short slogans,non-original works and
works of which the period of protection has
lapsed.
 Protected rights
• Economic rights- reproduction,
translation, adoption, public disribution,
rental, public display, broadcasting etc
• Moral Rights-To have or not to have his
name, to object any action or modification
which would be prejudicial to his honour
or reputation.
 Duration of copy right
• the economic and moral rights shall be
protected during the life time of the author
and for a further period of seventy years
from the date of his death.
 Limitation of Rights
• each of the protected rights is limited
to a specific period of time
• The rights may be waived by the
owner of copyright
• By an act authorized by the
owner of copyright
• In respect of a work which is
obscene,immoral,defamatory,blasphemou
s,irr iligeous,…
• FAIR USE
 Fair use
• Following are not considered as
infringement of Copy Right; criticism,
comment, news reporting, teaching,
scholarship or research,
• In determining weather the use is fair or
not depend on several factors.
 Fair Use-Factors to be
considered…

• The purpose and character of

use(comercial nature or non-profit
educational nature)
• The nature of the copyright work
• The amount and substantiality of the
portion used. The effect of the use..
 Acts of fair use
• Private reproduction
• Quotations
• Teaching purposes
• Libraries and archives
• Current affairs and information
• Computer programs
• Importation for personal purposes
 Case law
• Vasantha Obeysekera v A.C.Alles
• Kumaratunga v Data Management systems
• Kartha Singh v Ladha Singh
• Walter v Lane
• A&M Records v Napster
• Lalitha Sarathchandra v Sannasgala.
Industrial Designs-part 3 of the
Act
• What is Industrial Design

• It is the ornamental or aesthetic aspect

of an article. It does not have any
functional character. A design can be
three dimensional such as shape of an
article ( design for a toy, bottle, jewelry
or chair etc.) or two dimensional such as
pattern or lines.( design for a greeting
card etc).
Case law
 What is Industrial Design

• It is the ornamental or aesthetic aspect

of an article. It does not have any
functional character. A design can be
three dimensional such as shape of an
article ( design for a toy, bottle, jewelry
or chair etc.) or two dimensional such as
pattern or lines.( design for a greeting
card etc).
 Patent

• In January, Real Network sold 190

patents to Intel covering technology for
media players,
• Microsoft's $550 million patent sale
to Facebook
• In April, Microsoft sold 650 patents
to Facebook,
• Lipitor, a cholesterol-lowering drug
used to help reduce heart attack and
stroke risk, represents one of the most
value patent in history. It expired on
June 28, 2011. What does this mean
for Pfizer, the inventor?
• Pfizer filed a patent application for Lipitor
on 2/26/91, which issued on 12/28/93. The
product was launched in the market in
1997, with revenues peaking at $12.6
billion in 2006. By the end of 2009, total
revenue was greater than $105 billion.
 Advantages
• Patents provide protection in a variety of
ways. They give the owner the exclusive
right to exclude someone from practicing
the invention in the market. They protect
something functional or utilized. They
allow for abnormal market profits inherent
in the monopolistic nature of a patent, and
patent owners can price skim if patent
utility presents a strong value proposition.
Furthermore, patents can command treble
damages for willful infringement.
 disadvantages
• Patents are expensive. One patent can
cost anywhere from $10,000 to
$50,000. An international patent can
cost upwards of
$250,000! Patents have short useful lives,
with the typical statutory life of 20 years or
less.
Patents require full disclosure, revealing
specific design information to competitors.
Patents lose value every day on a present
value basis. Finally, patents are expensive
to defend.
 Patents-part 4 of the Act
• A Patent is granted to an “invention” which
means an idea of an inventor which
permits in practice the solution to a
specific problem in the field of technology.
An invention may relate either to a product
or a process.
 What is a Patent?

• The State grants the inventor, by means

of a patent, the right to exclude others
from making, using and selling the
qualified invention for a period of 20
years from the date of application for
patent. The owner of the patent can
use, sell or license the patented
technology and derive financial benefits.
 What is a patent?
• A right in the nature of a monopoly
• Granted for a limited period of time
• In respect of an invention.
 What is an invention?
• An idea of an inventor
• Which solves a specific problem
• In the field of technology
 What is a patentable
invention?s.63
• It should be new
• It should involve an inventive step
• It should be industrially applicable
 What is not patented
• (i) discoveries, scientific theories and
mathematical
methods;
• (ii) plants, animals,biological process for
the production of plants
• (iii) schemes, rules or methods for doing
business, performing purely mental acts or
playing games
• iv) methods for treatment of human or animal
body by surgery or therapy and diagnostic
methods practiced on human or animal body
• (v) inventions which are necessary to protect
public order, morality including human animal or
plant life, health, or to avoid serious prejudice to
environment.
 How is patent obtained?
• Application is made to the director general
of intellectual property with the
appropriate fee.
 What is the nature of the right
granted by the patent?s.84
• An exclusive right to exploit the
patented invention
• An exclusive right to assign or transmit
the patent.
• An exclusive right togrant licences
Marks
• Google, in the filing for its initial public
offering, worried that the term “Google”
could one day become synonymous with
“search”– resulting in both a loss of
trademark
protection and reduced brand value.
Google’s trademark–now the most
valuable on the planet, according to Brand
Finance–is worth an estimated $44 billion,
or 27% of the firm’s overall value,
measured by market capitalization
• Google-Trademark value: $44.3 billion
(Company market capitalization : $164 billion)
• Microsoft-Trademark value: $42.8 billion
(Market cap: $204 billion)
• Walmart-Trademark value: $36.2 billion
• IBM-Trademark value: $36.2 billion
• Vodafone-Trademark value: $30.7 billion
 Marks

• “mark” means a trade mark or service

mark ;
• “trade mark” means any visible sign
serving to distinguish the goods of one
enterprise from those of another
enterprise ;
• “service mark” means any visible sign
serving to distinguish the services of one
enterprise from those of an other
enterprise ;
 What is a mark?
• A mark- trademark or service mark- is a visible sign that
is capable of distinguishing the goods or services of
different enterprises. A trademark relates to goods
whereas a service mark relates to services. In addition,
there are two more kind of marks – certification marks
and collective marks. A certification mark is a mark
which meets a defined standard of the goods or
services as certified by the owner of the mark who
licenses others to use it. A collective mark is a mark
serving to distinguish the origin or any other common
characteristic of goods or services of different
enterprises which use the Mark under the control of the
registered owner.
 What constitutes a mark?

• A mark may consists of a word, a symbol,

a device, letters, numerals, a name,
surname or geographical name, a
combination or arrangement of colors and
shapes of goods or containers etc. The
visible sign must always be capable of
distinguishing the goods or services of
different enterprises (it must be distinctive)
Registered and unregistered
marks

• A registered mark is a mark registered

under the law and with National
Intellectual Property office. You can use a
mark even without registration.
Unregistered marks can be protected
under the unfair competition law or
common law action for passing off.
 Why registered?
• It is highly recommended that you register
your mark. The registration of the mark
gives its owner exclusive right to use it,
assign it and license it. You can enforce
these rights easily and effectively through
court- civil or criminal or both. You can
retrain others from using your mark or a
mark deceptively resembling your mark.
You are even entitled to claim damages. It
is the prima facie proof of the ownership.
 Function of a mark
• Identification
• Guarantee the quality of the
goods/services
• Advertising
• Indicates the source of goods or services.
 ADMISSIBILITY OF MARKS
• The exclusive right to a mark
shall be acquired, by registration.
• 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 :
 Registrable marks
The marks which are not inadmissible
under sections 103 and 104 of the IP Act
can be registered. A mark is inadmissible
if it is not capable of distinguishing your
goods or services from those of others
and
if it is deceptively similar to the other
registered or well known marks.
 Marks inadmissible on
objective grounds
• which consists of shapes or forms imposed by
the inherent nature of the goods or services or
by their industrial function ;
• which, is incapable of distinguishing the
goods or services of one enterprise from
those of another enterprise ;
• which does not represent in a special or
particular manner the name of an individual
or enterprise ;
• which is, according to its ordinary
signification, a geographical name or
surname ;
 Shapes or Forms

• A mark which consist of shapes or forms

imposed by the inherent nature of the
goods or services or by their industrial
function shall not be registered.
• Re coca cola,
• Unilever PLC’s trade mark Application
 Descriptiveness
• A sign or indication ,which is descriptive of
the goods or services concerned ,is not
admissible as a mark.
(Descriptiveness covers "kind, quality, quantity, intended
purpose, value, place of origin or time of production or of
supply of goods or services concerned.”)
• A word may be so utterly descriptive of
the goods concerned as to be totally
unregistrable- “Electrics” for electrical
apparatus, is one such.
• “BABY-DRY” for nappies
 Marks incapable of
distinguishing
the goods or services.
• A mark shall not be registered which is
incapable of distinguishing goods or
services of one enterprise from those of
another enterprise.
• Letters and numerals,colors,signs
common to the trade,geographical
names and
surnames,signatures,…
Immoral, scandalous and anti-
social marks
Misleading marks
 Names of Individual and
Enterprises
• A name must be represented in a
special or particular manner.(not in
ordinary manner- uncommon manner)
• The name-includes name and surnames.
Geographical names and
surnames
Armorial bearings ,flags or other
emblems etc
• A mark which reproduces or imitates
armorial bearings, flags or other
emblems, initials, names or abbreviated
names of any state or any inter
governmental international organizations
shall not be registered unless authorized
by the competent authority.
Inadmissibility on the ground of
third party rights
• Misleading similarity
• Misleading resemblance to a used
and unregistered mark
• Misleading resemblance to a used trade
name
• Well known marks and trade names
• Marks applied for by agents
or representations.
 Who can register?

• individual (s),
• company,
• partnership,
• association etc
 Period of validity and renewal

• The registration is valid for a period of 10

years from the date of application and is
renewable on the payment of the fee for
further periods of 10 years. For the fee
please refer to the fee schedule.
 Protection abroad
Marks registered in Sri Lanka are valid only
in Sri Lanka. If you do business in other
countries it is advisable for you to register
the mark in those countries. You have to
make applications in each country where
you seek the protection under the
respective national law. ( Sri Lanka is not
a member of the Madrid System.)
However, you can claim priority under the
Paris Convention
 Trade names

• A trade name is the name under which

you do your business- your name,
partnership name etc. Your trade name
can be protected under the IP Act.
However, it can be registered as a mark
only. Thus, it is advisable to register your
trade name as a mark.
 REQUIREMENTS OF APPLICATION AND
PROCEDURE
FOR REGISTRATION

• (1) An application for registration of a

mark shall be made to the Director-
General in the prescribed form and shall
contain —
• A request for the registration of the mark ;
• The name, address of the applicant and,
if he is resident outside Sri Lanka, a
postal address for service in Sri Lanka ;
• Five copies of a representation of the mark
;
• A clear and complete list of the particular
goods or services in respect of which
registration of the mark is requested, with
an indication of the corresponding class
or classes in the international
classification, as may be prescribed.
• The applicant or his duly authorized
agent must sign it.

• Where the application is filed through an

agent, it shall be accompanied by a
power of attorney granted to such agent
by the applicant.
 Publication of the application
• Sec 111(7)
 Opposition to registration
• Ground of opposition are also
grounds of inadmissibility under
sec.103 & 104
• The “Notice of opposition” must be
given within 3 months.
• “Certificate of registration”
 Recognized rights

• To use the mark

• To assign or transmit the registration of
the mark
• To conclude license contracts in respect
of the mark
 Unregistered marks
• Unfair competition
• Well known marks
• Passing off action
 Limitation of rights
• Use for Identification or information
• Lawful goods
 Marks cont….
• Associated marks
• Collective marks
• Certification marks
• Trade names
 Remedies –civil law
• Injunctions
• Damages
• Such other relief as the court may deem
just and equitable
Criminal liability
 What is GI

• It is a name or sign that is used on goods

and that indicates that the goods have
special quality, character or reputation
because they are originating from specific
place ( country or a place of a country). (
like Ceylon Tea, Ceylon Cinnamon,
Ceylon Sapphire, Nuwaraeliya Tea and
Ruhunu Curd.)
 Why protected

• As they carry the symbol of quality ,

character or reputation of the particular
goods help greatly commercialize the
goods. The abuse or misrepresentation
are harmful to both the owners of GI and
the consumers.
 Trademark v. GI

• A mark is a sign serving to distinguish

the goods or services of different
enterprises. GI indicates and informs the
consumers and traders that a product is
originating from a place and has some
special quality, character or reputation.
 How protected

• The law protects GI s by prohibiting the

use of it for the goods that are not actually
originating from the respective place. The
court can issue injunctions to stop such
use. In Sri Lanka GIs are protected
without registration. GIs can also be
protected under the laws of unfair
competition and certification marks and
collective marks. The misrepresentation
as to GI is an offence too.
 Protection abroad

• GI of Sri Lanka can be protected in all the

member countries of WTO under the
national law of the particular country. (
For Ex. In India you can register it. In
USA you can register it as a certification
mark)