Day, Month 1997

Patents chief calls for intellectual creativity

Intellectual Property is assuming increasing importance in global trade today, though the concept is only just beginning to gain recognition in Sri Lanka. The Sunday Times Business spoke to Dr. D. M. Karunaratne Registrar of Patents and Trade Marks in Sri Lanka. Mr. Karunaratne has written a book on the subject, ‘A guide Law of Trade Marks and Service Marks in Sri Lanka’.

He has a doctorate in Law and is an Attorney at Law. He is also a member of the Intellectual Property Advisory Commission of Sri Lanka.

By Asantha Sirimanne

Q: What is Intellectual Property?

A: Intellectual Property has been recognized throughout the world for more than one and a half centuries. In Sri Lanka it has been recognized for more than a century. Intellectual Property concerns the creations of the human mind. This property can have a monetary value, it can be owned, transferred, disposed of or entered into licence agreements. Intellectual Property has been traditionally divided into two sections. That is industrial property and copyright. Industrial property includes rights relating to inventions where you get patents, trade and service marks, industrial designs, principles against unfair competition and trade secrets. Copyright is the rights of the author of original artistic and literary works.

Q: As the Registrar of Patents and Trade Marks what areas do you cover?

A: Though this office is called the Registrar of Patents and Trade Marks of Sri Lanka we cover all areas of Intellectual Property. We also administer international conventions on intellectual property, to which we have become a party. Like the Berne and Paris Conventions, Patent Co-operation Treaty (PCT), Trade Mark Law Treaty, Universal Copyright Convention and the Convention of the World Intellectual Property Organization (WIPO).

We have a dual function. Under the Patent Co-operation Treaty member countries can make an application that will be applicable in all member countries.

We also have a concept called neighbouring rights which are part of copyright. Literary and artistic rights have been accepted since the Berne Convention in 1886. That is one of the earliest conventions relating to intellectual property. The first is the Paris Convention pertaining to industrual property in the 1860’s.

While copyright concerns original literary and artistic works, neighbouring rights concerns three major areas. First is the rights of performing artistes, the second is the rights of phonograms now CDs, and the third is the rights of broadcasters.

There are newer concepts related to computer software and satellite broadcasting. There is a bilateral agreement with the USA relating to satellite broadcasts but our law on Intellectual Property does not cover the area at present. However amendments have been suggested to remedy this.

That is why we have had some problems relating to satellite broadcasting in Sri Lanka. When you take programmes off the air without paying anything, the broadcaster who paid for the rights is at a disadvantage.

Q: But the satellite broadcasters do not pay a licence fee to the local telecommunication authority for using the electromagnetic spectrum, unlike local broadcasters. They haven’t sought our permission to direct their broadcasts towards us. But we are supposed to protect their rights, despite their not paying us anything ?

A: That is the international practice now. Even though they do not give anything to us that is their property.

Q: What is the background to Intellectual Property Law in Sri Lanka?

A: During the British colonial period, we followed the English patent law. The first patent was granted here in 1881. British trade mark law was also applicable. The first trade mark was registered in 1888. It was called ‘Aurora’. The first patent was granted to a British engineer for a coffee pulping machine. The first industrial design was introduced in 1905. In copyright, we followed the British Copyright Act of 1911, and we passed a law in 1912 to supplement it. Even in the bill for our independence in 1948 copyright law was mentioned - which is considered unusual. In 1979 we amended the law and codified it. Earlier we had different ordinances for trademark designs, patents and copyright. In 1979 we introduced the Code of Intellectual Property Act No. 52 of 1979.

Q: Changes are being contemplated to the present Intellectual Property Law. Can you elaborate?

A: During the Uruguay Round of talks leading upto the establishment of the World Trade Organisation there were discussions relating to intellectual property resulting in the TRIPS agreement. Under TRIPs we are supposed to make changes and overhaul the existing administrative system. Our law is very modern but our administrative system is archaic. My office was established in 1982. Before that, it was under the Registrar General, and later the Registrar of Companies.

At present the whole system is run by clerical staff who are transferable. We have to go for computers, but we do not have our own specialist staff, like patent examiners, trade mark examiners, public search officers. For the past four years, we have been making preparations to have our own staff. Training facilities are available abroad. We have made our recommendations to the Salaries and Cadres Committee for consideration.

Q: How many applications do you get each year?

A: Our workload has increased tremendously during the past few years. For example from 1888 to 1979 we had only 20,000 trade mark applications. From 1979 to 1996 we have had 60,000 trade mark applications. This year alone it could reach 5,000. Last year it passed the 4000 mark. But the staff strength is less than what we had in 1982. There is a lot of backlog. We cannot serve the public as efficiently as we would like to.

Many people are also coming for patent information. Patent information contains the latest development in technology. But we are unable to give information to researchers because we do not have enough staff. We have a CD-ROM workstation which contains the latest patents registered under PCT sent by WIPO but we lack staff to man the station. This hampers trade and research activity in the country.

Q: How are violations of intellectual property dealt with?

A: That is not really our function. Intellectual property is like your land or car. The government’s function is to regulate and grant your rights. You have to protect them. You have to go to courts to seek remedy.

Q: In which area do we have the most amount of disputes?

A: In trade marks. In my office we get about 300 - 400 cases of opposition. But in courts it is much less. In case of infringements, they will directly go to courts.

Q: What are the methods you adopt to ensure that nights are not violated? For example, two products having similar trade marks.

A: A mark, whether a trade or service mark is a sign which distinguishes a product or service of one enterprise from those of others. The administribility of a mark for registration depends on certain legal issues. We examine a mark to see if there are identical or similar features.

Marks for goods and services are divided into 42 standard classes, by the Nice Convention. Once an application is made for registration, it is examined within that class for similarity. To test the similarity we may use the phonetical test.ear. For example over the phone Draffle and Raffle may sound the same. If Raffle is registerd earlier Draffle will not be given registration. Then the visual version, the suffix and prefix are also considered. If someone tries to register a name called Astro for margarine, we will not allow it. But we may allow it for another class of product. The main criteria we consider is whether it is likely to mislead the user of such products who is an average person.

Sometimes the name Campiq may be given registration for computers despite the existence of Compaq because it can be argued that computers are purchased by specialists who are better educated, who will not be misled. Sometimes enterprises register a name for all 42 classes.

Q: What about common words?

A: We are careful about giving exclusive rights to common dictionary words. If it acquires a distinction for your product we may register. But if it is descriptive we would not usually grant registration. A property developer for example will not be able to register the mark ‘House’.

Q: What if you make a mistake and grant registration?

A: When we receive the application we will allocate a number, do a formal examination to check that it conforms to requirements of the law. Then we do a substantive examination to check similarity to existing or pending marks. Then we do a legal examination and thereafter if we accept it, we will publish it in the gazette giving three months for the public to oppose.

If we do not accept, the applicant can ask for a hearing. If the applicant is not satisfied with my order, he can appeal to the courts. If nobody objects to a trade name when we publish it in the gazette he could still apply to the courts to have it declared null and void later. Only the courts can challenge the decisions of my office.

Q: How long is a patent valid?

A: Patents are valid for 15 years, but trade marks can be renewed every ten years, indefinitely. Patents have to be registered in each country if you want to protect your invention. But once you register a patent it is public knowledge and after 15 years anybody can use it.

Q: But companies like Coca-Cola have never patented their secret formulae, so there seems to be an advantage in not patenting formulae?

A: That is actually a trade secret. If you do not patent it you can keep it a secret. They are also given some protection under trade secrets or undisclosed secrets. If somebody at Coca-Cola divulges the information he can be liable for legal action. So can be the reciever of the information. There is no provision for trade secrets as yet. But our Intellectual Property Law will have those provisions when we amend the law.

Q: You have written a book on the trade mark law. What is the aim of the book? How will this help our economy?

A: In Sri Lanka we have a long history in intellectual property but this has not received much attention among legislators or the public. The reason is probably the lack of intellectual creativity in Sri Lanka. We had also not been very much concerned about international trade and commerce until recently. But now with the open economic system we are trying to be the commercial hub of South Asia.

To do this, we need very strong intellectual property law, especially trade mark law which is the most active area of Intellectual Property in Sri Lanka at the moment. But still our awareness of the subject is very low. Even in the University or at the Law College it is not taught. Even lawyers lack knowledge. The business community know very little. This is very unsatisfactory. My aim was to bridge that gap to certain extent. What I tried to do is to give the reader - he may be a lawyer or a businessman - some guidance in the basic principles of trade mark law and procedures. There is a misconception that intellectual property law is for developed countries. That is not correct. As a nation we must promote our creativity and inventiveness.

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