International trademarks straight from Sri Lanka by mid-2020
– Cabinet nods accession to Madrid Protocol
– Amendments to Intellectual Property Act
– Foreign Ministry to submit docs in a month
In what will be a significant milestone for Sri Lanka’s business sector, companies will be able to obtain trademarks/service marks for their products internationally in a single filing directly from Sri Lanka, starting from mid-2020.
This is due to the recent nod from the Cabinet of Ministers for Sri Lanka to enter into the Madrid Protocol, an international system for obtaining trademark protection.
Sri Lankan businesses, particularly those in the export sector, will soon be able to apply online for trademarks/service marks through the National Intellectual Property Office of Sri Lanka (NIPO) in Colombo. At present, these businesses are required to visit countries one by one to trademark/service mark their products in those respective countries.
Speaking to The Sunday Morning Business, NIPO Director General Geethanjali R. Ranawaka noted that the necessary amendments to the Intellectual Property Act of 2003 have been drafted to facilitate Sri Lanka’s entry into the protocol.
“The draft is already completed. Now we have to send this to the Attorney General’s Department and the Legal Draftsman’s Department to receive their approval for the amendments. After that, all the necessary documents would be sent to the Ministry of Foreign Affairs,” Ranawaka noted.
She added that upon sending relevant documents to the Ministry of Foreign Affairs, the Ministry would deposit them with the World Intellectual Property Organisation (WIPO), the institution which administers the Madrid Protocol.
According to Ranawaka, the accession process is expected to take a period of one month. It will begin with obtaining approval from the Attorney General’s Department and the Legal Draftsman’s Department for amendments and end with depositing documentation at the WIPO.
Following the submission of documents, the WIPO will review the documents and approve Sri Lanka’s entry into the Madrid Protocol, Ranawaka further stated. The review process is expected to take a maximum of three months.
National Chamber of Exporters (NCE) Secretary General/Chief Executive Officer (CEO) Shiham Marikar, speaking to us, appreciated this move by the Government, which has been a long-needed requirement.
“There is a lot of cost and time involved when exporters have to go and visit each and every country physically. Hopefully, Sri Lanka’s entry into the protocol would cut off the time and cost now,” Marikar said.
However, on a further note, Marikar stated that the products seeking to obtain international trademarks/service marks have to first register locally, which is a lengthy bureaucratic process at the NIPO which sometimes take even more than a year.
Therefore, Marikar noted that the NIPO should expedite their local registration process in order to ensure smooth entry into the Madrid Protocol for local brands.
Sri Lanka’s entry into the Madrid Protocol was in the pipeline for several years before getting kicked off this year. Sri Lanka was planning to access the Madrid Protocol by the end of 2017, as disclosed by then Minister of Industry and Commerce Rishad Bathiudeen during a press conference in April that year.
The timeline was revised from August 2017 to August 2018 by Bathiudeen. He appointed new members to the Intellectual Property Advisory Commission (IPAC) to guide the NIPO on this matter. It was also noted by Bathiudeen at that point that Rs. 100 million was allocated for this purpose from the Budget 2016. However, Sri Lanka failed to make it into the Madrid Protocol before the stipulated time period due to unknown reasons.
The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Brands can apply for protection in up to 122 countries by filing a single application and paying one set of fees. Further, brands can modify, renew, or expand their global trademark portfolio through one centralised system.
The trademark application has to be registered at the NIPO initially. The NIPO would then forward it to the WIPO, after which the WIPO would send it to the countries designated by the trademark owner. The WIPO ensures the application is processed within a period of one to one-a-half years.
WIPO’s Madrid System recorded its 1.5 millionth international registration in November last year. The Madrid System received three more members last year with the entrance of Canada, Brazil, and Malaysia.
WIPO is the global forum for intellectual property (IP) services, policy, information, and co-operation and is a self-funding agency of the United Nations (UN), with 192 member states. IP refers to creations of the mind, such as inventions; literary and artistic works and designs; and symbols, names, and images used in commerce.