Intellectual Property Thashira Gunatilake LLB(Colombo), LLM(Auckland) Attornry-at-Law

Nature of Intellectual Property  Creation of human mind (Intellect)  Intangible property  Exclusive rights given by statutes  Attended with limitations and exceptions  Time-bound  Territorial Therefore, it cover ideas, inventions, literary creations, unique names, models, logos, industrial processes, computer software programs etc.Therefore, it cover ideas, inventions, literary creations, unique names, models, logos, industrial processes, computer software programs etc. It is governed in SL by Intellectual Property Act No 36 of 2003.It is governed in SL by Intellectual Property Act No 36 of 2003.

Types of Intellectual Property What are the types if IP……?What are the types if IP……? Basic IP can be categorized under the following headings;Basic IP can be categorized under the following headings; 1.Copyright and Related Rights 2.Industrial Property  Patents  Industrial Designs  Trade Marks  Trade Secrets

1.Copy Rights – What type of work fall within this category…..??What type of work fall within this category…..?? Scope –Scope – a.Original Literary, Dramatic, Musical and Artistic Works  Work: Ideas expressed in material form  No copyright in ideas or facts b.Cinematograph Films c.Sound Recordings The Law governing copyrights are now included in the Intellectual Property Act.The Law governing copyrights are now included in the Intellectual Property Act. Works of authors of Sri Lanka, works first published in Sri Lanka and all works (even foreign) which by virtue of treaties entered into by SL are to be protected.Works of authors of Sri Lanka, works first published in Sri Lanka and all works (even foreign) which by virtue of treaties entered into by SL are to be protected.

2.Patent - What is a PATENT……?What is a PATENT……? A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problemA patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem The limited monopoly right granted by the state enables an inventor to prohibit another person from manufacturing, using or selling the patented product or from using the patented process, without permission.The limited monopoly right granted by the state enables an inventor to prohibit another person from manufacturing, using or selling the patented product or from using the patented process, without permission. Period of Patents - 20 YearsPeriod of Patents - 20 Years

WHAT CAN BE PATENTED…….? Inventions in all fields of technology, whether products or processes, if they meet the criteria of ;Inventions in all fields of technology, whether products or processes, if they meet the criteria of ; a.Novelty; b.Non-obviousness (inventive step); c.Industrial application (utility). Conditions of Patentability Novelty: Invention Not known to public prior to claim by inventor.Novelty: Invention Not known to public prior to claim by inventor. Inventive Step: Invention would Not be obvious to a person with ordinary skill in the art.Inventive Step: Invention would Not be obvious to a person with ordinary skill in the art. Industrial Application: Invention can be made or used in any useful, practical activity as distinct from purely intellectual one.Industrial Application: Invention can be made or used in any useful, practical activity as distinct from purely intellectual one.

3.What is a trademark? A trademark is a distinctive word, phrase, logo, domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others. Trade Mark can be [Sec 102(3)] - –Arbitrary or fanciful designations –Names –Geographical names –Slogans –Devices –Letters –Numbers –Labels –Combination or arrangements of colours and shapes of goods or containers etc.

What are Service Marks –What are Service Marks – A service Mark is any visible sign to distinguish the services of one enterprise from those other enterprises. Trade marks are attached to products and Service marks are attached to services.Trade marks are attached to products and Service marks are attached to services. What is the policy rationale for trademark law?What is the policy rationale for trademark law? 1.prevent consumer confusion and reduce consumer search costs 2.encourage trademark owners to maintain quality 3. prevent free riding on goodwill

Rights What are the rights of the trademark owner?What are the rights of the trademark owner? 1.Prevent trademark infringement (use of mark in commerce where use is likely to cause confusion or deceive) 2.Prevent trademark dilution (use of mark in a disapproving way – tarnishment- or overuse of mark – blurring)

Exclusive right to a mark - Upon proper registration one will get an exclusive right to use the markUpon proper registration one will get an exclusive right to use the mark The law does not make registration compulsoryThe law does not make registration compulsory Even a non registered mark may seek legal redress under other laws such as “unfair competition”. Under Common law “Passing off”( pretence of one person that his goods are those of another).Even a non registered mark may seek legal redress under other laws such as “unfair competition”. Under Common law “Passing off”( pretence of one person that his goods are those of another). But it is always better to be registered under IPA to get better protection and rightsBut it is always better to be registered under IPA to get better protection and rights

Generic signs or indications – If a mark resembles a sign that has become in the current language or established trade in SL, a customary designation of the good. Then it cannot be given as an exclusive trade mark.If a mark resembles a sign that has become in the current language or established trade in SL, a customary designation of the good. Then it cannot be given as an exclusive trade mark. E.g.. All soft drinks sold by roadside venders on pavement are generally called “Saruwath”. One may not be able to register “Saruwath” as his or her trade mark under this provision, as it is the customary designation of the goods.E.g.. All soft drinks sold by roadside venders on pavement are generally called “Saruwath”. One may not be able to register “Saruwath” as his or her trade mark under this provision, as it is the customary designation of the goods. Word does not become non descriptive by being misspelt. E.g.. Electrix for electical apparatusWord does not become non descriptive by being misspelt. E.g.. Electrix for electical apparatus However, descriptive word with other elements association of the product may be given. E.g.. Mobitel, Celltel, Dialog etc.However, descriptive word with other elements association of the product may be given. E.g.. Mobitel, Celltel, Dialog etc.

Misleading marks Mark will not be registered if it is likely to mislead the public or the trade as to theMark will not be registered if it is likely to mislead the public or the trade as to the NatureNature SourceSource Manufacturing processManufacturing process CharacteristicsCharacteristics Suitability for the purpose of goods/services concernedSuitability for the purpose of goods/services concerned Geographical names and surnames Generally( according to its ordinary significance =normal understanding) a geographical name or surname is not allowed to be registered as a trade mark. Generally( according to its ordinary significance =normal understanding) a geographical name or surname is not allowed to be registered as a trade mark. However, if it can be proved that name or place is of significance for the trade name to distinguish the product it should be possible to register. E.g.. Wickremarachchi Ayurveda DrugsE.g.. Wickremarachchi Ayurveda Drugs Jinadasage Talaguli Jinadasage Talaguli

Duration of registered mark - Registration is valid for 10 years. On the expiration of the period, it could be renewed for further periods of 10 yearsRegistration is valid for 10 years. On the expiration of the period, it could be renewed for further periods of 10 years What is Unfair Competition and Passing off……?What is Unfair Competition and Passing off……?

Industrial Designs What are Industrial Designs….?What are Industrial Designs….? ‘Design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether Rights attached to industrial designs – The proprietor of the registered design has the exclusive right to apply the design to any article in the class in which the design is registeredThe proprietor of the registered design has the exclusive right to apply the design to any article in the class in which the design is registered Period of protection is ten years extendable by 5 years.Period of protection is ten years extendable by 5 years.