The Code of Intellectual Property Act No.52of 1979 was repealed and the Intellectual Property Act No.36 of 2003 was introduced in 2003. Section 207 of the IP Act introduced new section 125 A and 125 B to the Customs Ordinance of Sri Lanka to cater IPR infringements at the boarders. The most interesting fact is that the IP Act No 36 of 2003 is perfectly synchronized with TRIPS agreement of WTO.
101. (1) The Minister may make regulations in respect of any matter required by this Ordinance to be prescribed or in respect of which regulations are required to be made under this Ordinance and in particular for any of the following purposes: -
• (ee) for prohibiting of importation and exportation of counterfeit trade mark goods or pirated copyright goods or any other goods in contravention of the provisions of the Intellectual Property Act, No. 36 of 2003;
Accordingly, a special Government Gazette Notification Extraordinary No.1523/22 of 15.11.2007 was issued by the Finance Minister with 12 Articles and the specimen Application form of requesting to suspend clearance of suspected counterfeit goods. The Articles includes,
♦ Condition governing the lodging of an application
♦ Steps to be taken by Customs upon accepting an application
♦ Acts on Customs on its own initiatives (Ex. Officio Power)
♦ Disposal of Counterfeit Trade Mark or Pirated Copyright Goods
A special section was inserted after section 125 of the Customs Ordinance as 125 A and 125 B which empowers Customs to Enforce the Law and continue with legal procedures. More valuable fact is that the Counterfeit Goods are considered as Prohibited Goods as per the new amendment.
(1) The importation of counterfeit trade mark goods or pirated copyright goods or any other goods in contravention of the provisions of the Intellectual Property Act No. 36 of 2003 (hereinafter referred to as the “Act”) shall be prohibited and such
goods shall be included among the goods the importation of which, are prohibited under section 43 of the Ordinance and included in Schedule B of the Ordinance as prohibited goods.
(2) The exportation of the goods referred to in subsection (1) of this section shall be prohibited and such goods shall be included among the goods the exportation of which, are prohibited as if they were referred to in section 44 of the Ordinance and included in Schedule B of the Ordinance as prohibited goods.
(1) A Right Holder, who has valid grounds to believe that the importation of counterfeit trade mark or pirated copyright goods or of any other goods in contravention of the right holder’s rights under the Act is taking place, may make an application in writing to the Director-General of Customs requiring him to suspend the release of such goods into free circulation.
(2) A Right Holder who makes an application under subsection (1) shall provide adequate evidence to satisfy the Director-General of Customs that there is a prima-facie case of infringement of the right holder’s rights under the Act and supply a sufficiently detailed description of the goods to make them readily recognizable by any officer of the Customs.
The Right Holder should take legal action within 10 working days of the suspension in the Court of Law. Otherwise the goods will be released.
Though the recordation regulations are available in the Customs Ordinance a modified version of recordation is in the final process at Attorney General Department. We are in the final stages of finalizing the regulations for recordation.
A special circular DOPL 627- B was issued on 27.05.2016 to establish an IPR Dedicated Office in the Consumer Protection Unit and now functioning with 05 frontline officers. This was a successful outcome of“Action IPR A/P 1” in 2016.
Intellectual Property Right Law Enforcement is coming under the Consumer Protection Unit and IP office is acting on,
♦ Registering Right Holders at IP dedicated Office which is already registered with the National Intellectual Property Office.(NIPO)
♦ Take action as per the complaint of Right Holder to detain the goods.
♦ Take action on our own to intercept counterfeit goods.
♦ Circulates alert messages inside the department on Counterfeit Goods.
♦ Took part in the "WCO Joint Enforcement Action against Counterfeiting and Piracy in the Asia/Pacific".