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PROTECTION OF INTELLECTUAL PROPERTY RIGHTS OF A TRADE MARK OWNER
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Availability of an efficient system of enforcement of the rights of a registered owner.
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Diploma in Intellectual Property Rights
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The availability of an efficient system of enforcement of the rights of a registered owner is important and essential. To meet this requirement, the Code of Intellectual Property Act No 52 of 1979 has offered an aggrieved party to go before a Court of Law, either civil or criminal, in view of safeguarding its rights.
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Infringement is confined to goods or services which are identical or similar to those covered by registration. Thus, the scope of registration should be carefully considered. At the time of registration, some jurisdictions require a bona fide to use the mark.1 In such an event the onus is on an interested party, to prove that the owner of the mark never had an intention of using the mark in respect of certain goods or services, which the other party is seeking the Court’s assistance to delete.
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Sir Wilfred Greene described this offence as, “………………………the use by the Defendant for trade purposes……………of a mark identical with the Plaintiff’s mark or comprising some of its essential features, or colourably resembling it so as to be calculated to cause goods to be taken by ordinary purchasers for the goods of the Plaintiff”.
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Section 179 of the code States that “where the registered owner of a mark proves that any person is threatening to infringe or had infringed the mark or is performing acts which make it likely that infringement will occur the Court may grant an injunction restraining such person from committing or continuing such infringement or performing such acts and may
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award damages and such other relief as to the Co appears just and appropriate”. This provision enable the registered owner to institute an infringement action even when his rights are threatened with infringement The District Court of Colombo and the High Court the Western Province (exercising its civil/commerce Jurisdiction) exercise the jurisdiction to bear a determine. Violations, of rights set out in section 1 of a Code of this nature out of Colombo and with the western province respectively, applying provisions of the Civil Procedure Code and other statutory provisions relating to Civil procedure subject to provisions of the Code. Accordingly, the owner entitled to pray for two Civil remedies, including inductive relief and damages under section 1′ Notwithstanding the Civil remedies, the Code enable an aggrieved party to seek Criminal Sanctions again a Defendant under Section 150. However, he may a obtain any such other relief as to the Court shall see meet. Section 179 confers the burden of proof on registered owner to establish that his rights are infringement or threatened. Nihal J in the case of MOHAMEL Vs- MOHAMED UVAIS3 observed that “in registration case, the burden of proof is on Applicant to satisfy the Registrar that his mark is calculated to deceive. In an infringement action, burden is on the person who says his rights in mark have been infringed. “To maintain an act: against infringement, the question whether it committed intentionally or negligently is not mater: The principles applicable in the determination of issue as to whether the Defendant’s mark deceptively similar to that of the Plaintiff are the same as those discussed under section 99 and 100 of Code. However it is important in this context consider how the marks are actually used.
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In LEVER BROTHERS- VS- R. M. RENGANATHAN PILLAI4 Maartensz J. observed :- ” the marks must be compared as they are seen in ordinary use on the goods they are used for, provided the Plaintiff’s mark does not substantially differ from the mark on the Register”. He further stated: “In an action for infringement, the Plaintiff can relay upon the imitation of his trade mark. In the case of a colourable imitation, which is what the Defendants mark is to be, the test is whether or not the Defendant’s mark is calculated to cause his goods to be taken by ordinary purchasers for the goods of the Plaintiff”. The Court will pay attention to what the Defendant is doing and not to what he might do.
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It next arose for discussion in M.S HEBTULABHOY & CO – Vs- STASSEN EXPORTS LTD5. Habtualabhoy’s had for many years exported tea to Saudi Arabia using the registered trade mark “Rabea” in English which in Arabic means “Spring Time”. Further as the Certificate of Registration prohibited the use of the translation of “Rabea” the Petitioner had exported tea under another mark, not registered in Sri Lanka in Arabic characters, transliterated as “Chai el Rabea”. They became aware that Stassens (the Respondent) was exporting tea to Egypt with the label “Chai el Rabea” in Arabic affixed in Colombo. The Court of Appeal holding that the Appellant was entitled to an injunctive remedy against the Respondent, said that the two marks were identical phonetically speaking and would be “likely to mislead the public” as required by Section 117 i.e., the public present , prospective local and foreign, not excluding the Sri Lankan consumer. As the Respondent had affixed the labels in Colombo prior to export, the Court concluded that infringement had been committed for the laws can only protect the owner’s rights in this country.
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The Respondent appealed in STASSEN EXPORTS LTD – VS- M. S HEBTULABHOY & CO LTD6 and regretfully instead of deciding on certain key issues such as whether a transliteration would result in infringement. , the Supreme Court held, inter alia , that infringement had not occurred. The reason given was that the Code was not considered to have extra-territorial effects, as its rights and prohibitions are confined to the limits of Sri Lanka and use outside Sri Lanka of a registered mark or an infringing sign would not be a violation of Section 117 (2). Hence though “Chai el Rabea” was applied in Sri Lanka but neither sale nor agreement to sell had occurred within Sri Lanka, violation of its rights had not taken place.
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The Supreme Court overlooked that the alleged label was applied on the goods in Colombo, and , as observed by the Court of Appeal, infringement had taken place at that point of time. Thereafter, the Supreme Court should have addressed its mind to identifying the essential features in the two marks -“Rabea” and its translation “Chai el Rabea”.
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The principle that an alleged infringement must occur within Sri Lanka, as the Code does not cover extra territorial acts of infringement was upheld in LIPTON LTD – VS- STASSEN EXPORTS LTD1 The Court of Appeal stated that details relating to the Defendant’s use of a shield device on tea compared to the Plaintiff’s Yellow Label tea and red shield device, need not be considered, as a witness had admitted, that for the past six years Yellow Label Tea had not been exported to the Middle East from Sri Lanka, but from the U.K. The Court followed the Advacaat Case8 which is submitted is incorrect, as it’s principles are applicable to passing-off. Further, such a restrictive interpretation of the Code, unduly ties the hands of the registered trade mark owners while permitting third parties evade infringement litigation by affixing marks outside Sri Lanka , and yet reap the benefit of reputation, advertising expenditure etc., of registered trade marks.
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Eni’s J also declared: “In a series of English cases, it has been held that the English Acts 1875 – 1883 did not affect the jurisdiction of the Courts of equity in “passing off” actions, notwithstanding the prohibition, apparently because that jurisdiction was based on the fundamental rule that no person was at liberty to represent his goods (pass them off) as goods of another.”
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A Defendant in an action for infringement may plead the following defences:9
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a. There is no infringement
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b. The Plaintiff has no title to the mark claimed by him
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c. The limitations imposed upon the rights of the registered owner by the Registrar or the Court.
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d. The registration at the mark is null and void. The proviso to section 179 declares that the Defendant may in the same proceedings for infringement request the Court to declare that the registration of the mark or any part of it is null and void. It is further provided in the same proviso that in such an event the provision of sections 130 and 131 would apply.
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e. The Plaintiff is debarred from suing the
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Defendant by an agreement entered into by the parties.
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f. The Plaintiff is guilty of delay, acquiescence and the like
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g. Any other defence available to a Defendant in an action for injunction.
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h. In a case of concurrent registration of a mark, it would be more appropriate for the Plaintiff to have the registration declared null and void rather than resorting to action for infringement. As a result, there may be instances where the concurrent registration of a mark may be pleaded as a defence.
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It is only very recently that passing-off has more than occasionally been recognized as a body at law worthy of attention in its own right.
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Throughout the nineteenth century judges of every temperament agreed that passing-off actions raised no questions of Law, but only ones of fact. Later in the nineteenth century the problem arises in a different form.
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“Passing-off” is defined and explained, so far as the United Kingdom is concerned as:-
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“The pretence by one person that his goods are those of another. Where a person sells goods or carries on business etc., under such a name, mark description, or otherwise in such a manner as to mislead the public into believing that the goods or business, etc is that of another person, the Latter person has a right of action in damages or for an account, and for an injunction to restrain the Defendant for the future.” (Osborn, A concise Law Dictionary (Sweet and Maxwell, 5th edition)
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Passing-off as known to the English Court of Law and equity was said in PERRY- VS- TRVEFITT11 to prohibit a man from selling his own goods pretending that they are the goods of another, as it would be a deception.
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The concept of passing-off which is an economic tort attempts to protect the legitimate business interests of the enterprises in the competitive world of business. It has been expressed in various judicial decisions that no person is entitled to represent his goods or business as being those of another. The essential element of liability in an action for passing-off is thus associated with the confusion that is likely to arise in the mind of the consumer. The confusion in this context may
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relate to the identity of the goods, services or business concerned. The common form of this tort comprise the imitation of the getup, mark or trade name.
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The hallmark decision in Passing-off is WARNING} – VS. TOWNEND’2 where the House of Lord analysed, considered, restated and consequently updated the tort of passing-off. The Plaintiffs had been selling in England an alcoholic beverage marketeing under the mark “Advocaat”, the registration of which had been cancelled. The Defendants were also marketing and selling in England a beverage know as “Old English Advocaat”, the formulation being different to the Plaintiffs. The House of Lords overruling the Court of Appeal, granted the Plaintiff an injunction restraining the Defendant from using “Advocaat” on deferent types of drink event though it was established that “Advocaat” was not distinctive of the Plaintiffs products only. This was not a classic “passing-off’ case but an extension, as first recognize and applied in the Champagne case. Examining the Champagne, Sherry and Whisky cases the House c Lords while upholding the principles laid down refused to endorse the view that goods marketed under descriptive names ought to be restricted to geographical localities, when opposed to the deceptive use of such names by competitors on competing products of different compositions.
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Lord Diplock listed the five elements required to established passing-off namely, there must be,
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2. made by a person in the course of trade
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3. to prospective customers of his or ultimate customers of goods or services supplied by him
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4. calculated to infringe the business or goodwi of another trader (in the sense that this is reasonably foreseeable consequence)
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5. which causes actual damage to a business or goodwill of the trader by whom the action brought or (in the quia timet action) will probably do so.
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It established therefore, that the Plaintiff must be engaged in a “common field of activity wilth the Defendant”, within which there must be misrepresentation by the Defendant , the. consequences causing damage to the Plaintiff goodwill.
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Far from unfolding in a consistent and purposeful manner, passing-off has largely developed through ad
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be decisions which were often motivated primarily by a desire not to let an demeritorious Defendant escape liability.
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The Defendant can be held liable even though his conduct was honest or innocent13 the Plaintiff is not, therefore, required to prove that the Defendant had the intention to confuse the consuming public. It is sufficient to establish that deception is probable.
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One could come to the conclusion that the concept of passing-off is well established in the domestic legal system, included in the provisions of section 142 of the Code as an act of unfair competitions contrary to honest practices in industrial or commercial matters, though unexpressed. Action for passing-off is a remedy available in common law apart from the statutory provisions relating to unfair competition. Thus, both the common law remedy and the statutory remedy could co-exist. The Courts of Sri Lanka have held that, even though the passing-off action is not specifically reserved in the statutory law, it can be successfully maintained, where appropriate. The provisions of the Code relating to infringement actions do not seem to interfere with the common law action for passing-off.
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Competitiveness among enterprises is essential in the interest of the consumers as well as of the economy as a whole in any country where a market economy system. Prevails. However, competitiveness may result in acts of unfair competition. It is therefore always advisable to promote protection against unfair competition in a market economy system.
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Industrial property rights and protection against unfair competition are not totally unrelated. The link between the two may be seen in certain cases. For example, the interests of the owner of an unregistered mark or of a trade name may be protected under the law of unfair competition.14
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The law of unfair competition … ..”originated in the conscience, justice and equity of common law judges……..It is a persuasive example of the law’s capacity for growth in response to the ethical, as well as the economic needs of society. As a result of this background, the legal concept of unfair competition has evolved as a broad and flexible doctrine with a capacity for further growth to meet changing conditions……..there is no complete list of the activities which constitute unfair competition. The general principle, however, evolved from all of the
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cases is that commercial unfairness will be restrained when it appears that there has been an appropriation, for the commercial advantage of one person, of a benefit or property right belonging to another……..15
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Unfair Competition as a wrong actionable at the suit of a trader was recognized by Parliament with the enactment of the Code of Intellectual Property Act No. 52 of 1979 (“Act’1)
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Section 142 of the Act defines unfair competition as,
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“Any act of competition contrary to honest practices in industrial or commercial matters.”
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The vague concept which is not sustained by very reliable circumstances in English Common Law, finds some degree of conceptual support in Continental legal systems. The Paris Convention of 1883 (as revised) in attempting to spell out the elements of unfair competition uses the language of section 142 quoted above. Our Act proceeds to elaborate upon the definition and isolates and specifies certain instances which must in particular be deemed acts of unfair competition, namely:
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(a) all acts of such a nature as to create confusion by any means whatsoever with the establishment the goods, services or the industrial or commercial activities of a competitor
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(b) a false allegation in the course of trade of such a nature as to discredit the establishment, the goods services or the industrial or commercial activities of a competitor
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(c) any indication of source or appellation of origin the use of which in the course of trade is liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for their purpose or the quantity of goods
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(d) making direct or indirect use of a false or deceptive indication of the source of goods or of services the identity of their producer, manufacturer or supplier
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(e) making direct or indirect use of a false or deceptive appellation of origin or imitating an appellation of origin even if the true origin of the product is indicted or using the appellation in translated form or accompanied by terms such as ‘kind’ , ‘type’, ‘mark’, ‘imitation or the like.
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Since the Act has only isolated specific instances as being included in acts of unfair competition and not exhausted all the possibilities, courts will have to decide in each case brought before them, whether, in the given circumstances, any of the acts complained of is an act of competition contrary to honest practices. It should therefore be noted that acts contrary to honest practices in industrial and commercial matters can consist of any of the following acts as well:-
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(i) bribing the buyers of a competitor to secure or retain their patronage
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(ii) obtaining the business secrets of or trade secrets of a competitor by spying or by bribing his employees.
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(iii) inducing employees of a competitor to violate their employment contracts or the leave their employer
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(iv) using or disclosing, without authorisation, the secret technical “know how” of a competitor
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(v) threatening competitors with suits for patent or trademark infringement, if done in mala fide or for the purpose of reducing trade by them and delaying competition
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(vi) encouraging or utilising breach of contract by competitors
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(vii) effecting publicity which makes comparisons with goods or services of competitors
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(viii) dumping, that is selling below cost, with intent and effect of hindering or suppressing competition
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(ix) slavishly copying goods, services, publicity or other features of the trade of competitor
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(x) boycotting trade to prevent or hinder competition
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(xi) creating the impression that the customer is being offered an opportunity to make purchases under unusually favourable conditions, when such is not the case
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(xii) violating legal provisions not directly concerning competitions to obtain, through such violation, an unfair advantage over the competitors.
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Rules on unfair competition are not usually part of trademark law. However, there are three aspects of unfair competition that are closely related to the protection and use of trade marks
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3. Other acts of label and packaging imitation.
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Trade Mark Piracy means the registration or no a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non use. Often well known trademarks are used by pirates on totally different goods, or for services. It is submitted that it is not necessary for the trade mark to be well known in the country, if the owner can prove that it is internationally well known in a considerable number of countries.
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Counterfeiting is an imitation of a product The. counterfeit is not only identical in the generic sense of the term but also gives the impression of being the genuine product originating from the genuine manufacturer or trader.
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Counterfeit goods often bear well – known trademarks, for offering a counterfeit will only be meaningful if the genuine product is known to the consumer. Examples of counterfeit goods are false ROLEX, CARTIER luxury watches, false PUMA & REEBOK sports shoes, false LOCOSTE sports shirts and so on
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Imitation of Labels and packaging Lie between normal trademark infringement and counterfeiting. Here, though the label or packaging of the competing product is imitated, the imitation does not give the impression of being the genuine one. What the imitator does is to try to take advantage of the reputation of the competing product and of the goodwill belonging to the manufacturer of the product by giving his product an appearance so similar to it that confusion arises in the market place and it misleads the public into buying the imitator’s product believing it to be the genuine product. The imitator instead of developing at his own expense a label and packaging with an image of his own for his product, takes advantage of the reputation of the competing product. This constitutes an act of unfair competition, for it is generally recognised as being unlawful to pass off one’s goods as being those of a competitor. If the label or the packaging of a product is confusing similar to that of a competitor’s product, this requirement is normally fulfilled. Often the imitator uses a trade confusing similar to that of his competitor. Examples “RABEA’ ((in English) – CHAI-AL-RABEA (in Arabic)16 ‘LIPTON’ – ‘ NORTON’1 7 ‘ FOMORA’ – ‘FARINA’18,’LUX’ – ‘REX’19
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The choice is deliberate. As Palakidnar J, observed in the case of M.S. HEPTULLABHOY AND COMPANY LIMITED – VS- STASSEN EXPORTS LIMITED20
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“a boundless choice of words, phrases and symbols is available to one who wishes to mark and distinguish his products or service from others. When a Defendant selects from this practically unlimited field, a trademark confusing similar to the mark publicly associated with the Plaintiff’s product, then it would appear that the Defendant made the particular choice in order to trade upon the Plaintiff’s established reputation”. In such situations where the word mark used by the imitator is not similar, the confusion is the market place arises only or mainly, from the use by the imitator of colours and graphic elements (“get up’, “device”) that are identical or very similar to those of the competitors label or packaging. This constitutes an act of unfair competition under our law and is dealt with under the tort of “passing off” in English Law.
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There is a deliberate”intent” in this . Why has the imitator deliberately chosen the colours, the graphics, the presentation, the common descriptive elements, sometime even a similar product name, for his packaging?
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There is only one answer. He wants the consumer to make his choice in the belief that the imitator’s product is the genuine one. So it is not a matter of mere chance or coincidence. It is a deliberate act calculated to mislead the public to the imitator’s advantage.
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The fight against labeling and packaging imitations will only be won when our courts fully acknowledge this simple truth. The prospects however do not seem very bright. Eg: LIPTON LTD – VS- STASSEN EXPORTS LTD
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The Complaint under unfair competition was that the Defendant was using labeling and packaging and a get-up which so nearly resembled the Plaintiff’s product as to be likely to cause confusion.
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It was strongly urged that this evidence was sufficient proof of acts of competition contrary to honest practices in industrial or commercial matters.
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However, H. W. Senanayake, J in his judgment delivered on 8 October 1996 (with which Edussuriya J agreed21 in holding that there was no unfair competition and that in the business world where the criteria of success depends on acute competition one cannot say with certainty that he had resorted to unfair competition.
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Freedom to trade competitively implies no doubt, that it cannot be prima facie wrongful to harm another simply by competing with him. But where the harm results from the Defendant’s infringements of accepted norms of behaviour in trading, it transforms his competition from the lawful to the unlawful
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Is this then an invitation to local “entrepreneurs’1 to become adept at trading on the reputation of other traders, local and international, to make direct use of false or deceptive indi……………….of source and to create confusion in the market?
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If the criterion of wrongful ness is the boni mores of the business community, then does this judicial pronouncement truly reflect the”boni mores of the Sri Lankan business community?
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Clearly a very sad day for healthy and honest competition. It is established principle in this branch of the law that “no man may pass off his goods as those of another”2- What the law does is to protect the proprietary interest and goodwill, and goodwill “………………..Is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”.23
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It is therefore important that our Courts should retain “the flexibility to deal with whatever new schemes for the downfall of others the untiring imagination of the dishonest may devise”.-“
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Though it is only after the passage of the Code of Intellectual Property Act in 1979 that the concept of unfair competition was brought into sharp focus. It was not unknown to our common law – the Roman Dutch Law.
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Long overshadowed and perhaps buried by the reception of the English law on the subject, it is off forgotten that a trade who complains of his rivals activities in a case for which there was no prodent was “entitled to invoke the ‘broad and ample basis of the lex aquilia’ in support of his claim”25
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In such a situation the Court should rely on the general criterion of wrongful ness and give expression to the community’s sense of fairness and honesty. For “it is neither fair nor honest to filch the fruits of another’s industry or expertise.”
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It is also an act of unfair competition to effect publicity which makes comparisons with goods and services of competitors if such comparisons are disparaging of the competitors product or contains false allegations of such a nature as to discredit the goods of a competitor, This is called comparative advertising.
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The Canadian case of CHURCH AND DWIGHT LTD – VS- SIFTO CANADA INC26, is one in point. where the Court issued an interim injunction stopping Sifto from making certain promotional claims in connection with the launch of its new baking soda product, even though Church and Dwight was not named in the advertisement.
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One must stop here and ask why? It is the writers experience that in litigation through indifference, inexperience, lack of expertise or for some other unknown or undisclosed reasons our Courts appear unable to meet the expectations of that part of the Country’s commercial and business community which would like to create and maintain a vibrant, healthy and honest environment where all entrepreneurs, both local and foreign, will have a level playing field under the laws extant, in the public interest.
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Until that happy environment can be delivered and maintained by the judicial system, by the judicious, timely and informed use of its amoury of interlocutory reliefs the law relating to unfair / unlawful competition will remain a dead letter and justice will forever elude that part of the business community playing by the Queens bury rules.
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Subsection (3) of section 142 to provides that,
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“any person or association of producers, manufacturers or traders aggrieved by any acts referred to in subsection (2) may institute proceedings in Court to prohibit the continuance of such acts, and the provisions of chapter XXXII relating to infringements shall apply, mutatis mutandis, to such proceedings.”
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Chapter XXXII of the Act, inter alia, provides for the jurisdiction of the Court to grant injunctions.
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Although the Code of Intellectual Property Act No. 52 of 1979 has dealt with necessary aspects/ facets of Intellectual Property to a certain extent, there remain some other issues which require attention.
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The Code does not define what “infringement” is. To avoid complications due to the ever changing nature of the activities in trade and commerce giving such
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definition would be impossible. Therefore, it would be more practicable and logical to describe what constitutes an infringement or to define infringement then and there according to the subject matter.
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In this context the word “use” is also not defined in the Code. This would, hence encompass different forms of use as the case may be. The Courts, in view of this, “will have to exercise its discretion and impartial thinking. Although there are no judicial decisions which proposes a tenable definition in relation to the same, it would be an encouragement to the improvement of judicial thinking. This fact itself would be an advantage as well as a disadvantage to an aggrieved party depending on the conduct of the judiciary.
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Section 100 (1) (d) which sets out an instance where a mark of a third party shall not be registered, is according to the authors view, not exhaustive enough to preclude a third party from misleading the public and causing damage to the interests of an owner of a well known mark. Hence the same should be appropriately set out exhaustively to enhance the rights of the owner.
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According to the provisions of section 107 (5) of the Code, the rights of the Registered owner can be enforced only within the territorial limits of Sri Lanka, which means that the Code has no extra-territorial effect. The Courts thus held in the STASSEN EXPORT LTD case that the application of a mark to the goods intended for export was not an act of infringement under section 117 (2) of the Code. It would be argued that under Section 117 (1) the registered owner has the Exclusive right to use his mark and that he is entitled to prevent others from using the same, irrespective of the fact whether the goods were intended for exportation or not. The likelihood of confusion of the public would not be material under this section.
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Thus by an amendment to the Code (Act No.40 of 2000) a solution to this lacuna was introduced to Section 117 (3) as follows:-
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“The application (whether by way of printing, painting or otherwise) or the affixing in Sri Lanka by a third party , of a mark or any sign resembling such mark in such a way as to be likely to mislead the public, on or in connection with, goods in respect of which such mark has been registered (whether such goods are intended for sale in Sri Lanka or for export from Sri Lanka) shall be deemed to be an act prohibited under subsection (2).”
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An amendment to the Code is in the offing. Apart from the amendments affecting Copyright, Industrial Designs and Patents the proposed amendments to the Code seek to exhaustively amend the provisions relating to Trade Marks and Unfair Competition, all in line to give effect to the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) to which Sri Lanka is a signatory.
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The Amendments include “Certification Marks”, “Geographical Indication”, a wider definition to unfair competition to also protect unregistered marks, damaging goodwill or reputation of another Enterprise, discrediting through advertising or promotion, protection is respect of undisclosed information, protection of geographical indications, wider powers to the Customs Authorities to suspend the release of infringing goods into the market, for appeals to be lodged within 6 months (as opposed to the present period of three years given by judicial Interpretation) and appeals to the High Court of the Provinces exercising Civil jurisdiction.
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The historical evidence reveals that the use of marks evolved and developed throughout four separate periods of time. Initially a mark was used to either prove ownership of goods or commercial origin. In . the 14th Century the marking was made compulsory, by statutory provisions. The Common Law Court and the Court of Chancery Developed their own views on trade marks. In 1875 the Trade Marks Registration Act introduced a system of registration. But thereafter, the desire of protecting unregistered trade marks was also recognised where the goodwill of a business had to be protected, While Sri Lanka was under British Colonial rule, some English Law concepts crept into the domestic system of Law by way of Legislation and Judicial Decisions. Law relating to Intellectual Property was thus introduced during this period of time. Due to the necessity of an active and efficient system of administration, the Code of Intellectual Property Act No.52 of 1979 was enacted on a draft prepared by the WIPO.
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Throughout the years several definitions were given to “trade marks” and “trade names”. Section 97 of the Code defines a trade mark and a trade name. The Code further recognises associated marks, collective marks, indications of source and appellation of origin.
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A number of International conventions and agreements including the most vital of all the Paris
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Convention, dealt with more detailed aspects of industrial property As marked goods are traded across international boundaries, a number of conventions have been specially addressed to aspects of trade mark protection.
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A trade mark/service mark obtained protection under the Code if the same was registered. A person who fulfills the conditions of a valid application, provided that trade mark is not admissible under sections 99 or 100, is conferred with the rights set out in section 117 subject to the limitations of the said rights under section 118 of the Code.
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The Code specifically provides that notwithstanding the provisions of any written law” for registration of a Trade Name that such a Trade Name should be protected even prior to or without registration against any unlawful act committed by a third party. Further any subsequent use of a Trade Name by a third party likely’ to n mislead the public will be deemed unlawful
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Frank Schechter took the opinion that “the primary and proper function of a trade mark was to identify, the origin or ownership of goods to which it is affixed.” According to him, the key function of a trade mark was not to nominate source, but to create and retain custom. He further argued that “the mark sells the goods.”
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The rights emanating from protected trade marks and trade names gave rise to actions for infringement, passing off and unfair competition.
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Infringement is confined to goods and services which are identical or similar to those covered by registration. Hence, the scope of registration was carefully considered. Thus, the Code of Intellectual Property Act, under section 179 enables the registered owner to institute an action not only when his right are infringed, but also when his rights are threatened with infringement.
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The concept of passing-off which is an economic to attempts to protect the legitimate business interest of the enterprises in the competitive world of business It has been expressed in various judicial decisions the no person is entitled to represent his goods or business as being those of another. It is observed that, passing off is well established in the provisions of section 1 of the Code as an act of unfair competition, contrary
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statutory provisions relating to unfair competition.
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On the other hand unfair competition, as defined by section 142 is “any act of
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Competition in contrary to honest practices in industrial or commercial matters.” Our Act proceeds to elaborate upon the definition and isolates and specifies certain instances which must in particular be deemed acts of unfair competition. Fortunately though the instances of unfair competition are not exhaustive.
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The Sri Lankan Code of Intellectual Property Act came into force on the 2nd of January 1980 nearly twenty three years ago, as a model law with much fanfare and great expectations.
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It was expected to achieve much. But unfortunately in the hands of our judiciary it appears not to have fully blossomed. Across the Palk Straits, in India, great strides are being made in this field to protect commercial interests against infringes and dishonest traders.
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Whilst it is necessary to adopt an approach to this problem in harmony with the needs of the contemporary commerce, balancing the interests of the parties concerned against the interest of society at large, one must also consider safeguarding the ethics of the business community against he grave dangers of public deception caused by the local infringe and the intercepting pirate.
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Surely a reputation that is honestly acquired- the attractive force which brings in custom’ – is worthy of protection under our laws? That was the expectation when the Act was passed.
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As we have already approached the 21st Century, where do those expectations sit? Where ought should they be sitting?
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1 Mothercare U.K. Ltd – Vs- Penquin Books Ltd (1988)
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2 Kerly on Trade Marks 6th edition at pg.445
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5 (1989)1 Sri L.R. 189-58
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8 Distilleries Company of Sri Lanka – Vs – W. M. Mendis & Co., Ltd – C. A. Revision Application No. 296/93 (unreported)
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9 D. M. Karunaratne ” A Guide to law of Trade Marks Service Marks in Sri Lanka” 1997
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12 (1980) RPC 31 (H.L) See also “Advocaat” Case Comment – EIPR July 1979 – pgs 196-280
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13 Baume – Vs – Moore (1958) RPC 125
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14 Sec S. 100 (l)(e) Sumeet Research & Holdings Ltd – Vs – Elite Radio & Engineering Co Ltd S. C. Appeal No. 36/95 (unreported)
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15 Dior-Vs-Milton (1956) 110 USPQ 563-566
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17 D. C. Colombo 2817/Spl. Lipton Ltd., Vs Jafferjee Bros
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11 CA 602/92 (F) D. C. Colombo 2765/Spl C. A. Minutes of 8 October 1996)
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22 Per Lord Oliver Reckitt and Coleman Product Limited – Vs- Borden Inc 1990 R.P.C 341
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23 Lord Macnaghten IRC – Vs Muller 1901 AC 217 at 223 -224
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24 Boberg- Law of Delicts 149
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25 Boberg-supra. See also Wille-Principles of South African Law, 8th Edition, p 671
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26 58 Canadian Paten Reporter 316
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