Registration & Refusal Process of Trademarks

Normal Registration Process

 

  • First step is to obtain a Trademark Application. (You have the option of conducting a Class search of the Trademarks of Goods and Services in the Intellectual Property Office website).
  • Submission of the Trademark Application (along with an Authorization Letter (POA)).
  • A number will be allocated to the said application and acknowledgement will be given by the Intellectual Property Office.
  • Completion of the Application
  • Examination of the Mark to see whether the Applicant’s Mark is acceptable within the Intellectual Property Law.
  • If application is accepted then, payment for publication of the Trademark.
  • Trademark will be published in the Government Gazette after the payment is made.
  • Three months from the date of the publication will be given to any party to object to Applicant’s Mark.
  • If there are no objects or oppositions on completion of three months, Applicant will be called for the Registration Fee.
  • Upon payment and completion of the Fee, Applicant’s Mark will be registered as a Trademark.
  • Certificate of a Registration of Mark will be issued by the Intellectual Property Office.
  • After such registration Applicant must maintain the registered Trademark. Maintenance includes change of name and or address, alterations of the Mark, assignments and merger and renewal.

 

Flowchart of Normal Registration Process

 

 

Process when the Mark is refused

 

  • Obtaining a Trademark Application. (You have the option of conducting a Class search of the Trademarks of Goods and Services in the Intellectual Property Office website).
  • Submission of the Trademark Application (along with an Authorization Letter (POA)).
  • A number will be allocated to the said Application and acknowledgement will be given by the Intellectual Property Office.
  • Completion of the Application (if the Mark is refused at this stage, then the Application will be called for corrections, after corrections, Application may be again refused, if accepted then it will proceed to the next stage).
  • Examination of the Application. (After examination, Mark may be refused)
  • Refusal of the Mark (Hearing will be given and Applicant must make submissions against the refusal within one month of such refusal)
  • Submission of a hearing (after hearing Mark may be accepted, the normal procedure will be applied from next step onwards)
  • Refusal of the Mark (and Grounds for the refusal will be given)
  • Applicant can challenge the Mark in Commercial High Court of Colombo.

 

 

Flowchart of the process when the Mark is refused

 

Process when a Mark is opposed by a third party

 

  • After following the normal registration process, when the Applicant’s Mark is published in the Government Gazette, three months will be given, any interested party to oppose to the said mark.
  • Within three months from the date of the publication any party to object to Applicant’s Mark must give grounds of oppositions.
  • Then Applicant is allowed to make observations against such grounds, if not the Application will be considered as abandoned.
  • If the Intellectual Property Office is satisfied with the grounds of the oppositions, then Applicant’s Mark will be refused,
  • Or opposing party may be given a hearing.
  • Upon such hearing, if the Intellectual Property Office is satisfied with the oppositions, then Applicant’s Mark may be refused, if not then Applicant’s Mark will be accepted.
  • Either way, either party can challenge in Commercial High Court against the decision of the Intellectual Property Office.
  • If the Applicant’s Mark is accepted by the Courts, the Applicant will be called for the Registration Fee.
  • Upon payment and completion of the Fee, Applicant’s Mark will be registered as a Trademark.
  • After such registration Applicant must maintain the registered Trademark.

 

 

Flowchart of the process when a Mark is opposed by a third party