Intellectual property in Sri Lanka
LegalBase has an outstanding IP practice. It specialises in online IP infringement across a broad range of online content including social media, marketplaces, mobile apps and domains. It works with a number of leading global brands in particular brands in the fashion, apparel, retail, FMCG and sports sectors. The practice has built up a bespoke software to detect, monitor and remove infringing online content across an extensive range of online platforms. Head of department Ali Tyebkhan is highly recommended. Senior counsel Natasha Burhan is also experienced in arbitrations involving domain names and anti-counterfeiting matters.
Other key lawyers:
‘LegalBase handles our IP and corporate work and provides us with strategic legal advice on an ongoing basis. The lawyers are exceptional at what they do. The team always delivers on time, even when working to very short tight deadlines and the lawyers have continuously not disappointed us. Their fees are transparent, and they offer fixed fees for most things. Their fees are also much better value when compared to others, without compromising on quality‘.
‘Partner Ali Tyebkhan is just excellent. Always detailed and solutions orientated. Natasha Burhan handles a lot of the day to day elements of our legal work and is very good to work with, smart and focused‘.
‘LegalBase has been our go-to legal advisors for over 10 years. The lawyers are exceptional and market leaders for IP. They handle all legal work across all jurisdictions for us and also manage other external counsel in multiple jurisdictions. They consistently come up with very creative solutions and cutting edge ways to solve the most complex IP problems. They have particular expertise and strength in online IP protection and have the best software and AI powered solutions I have seen in the market‘.
‘It is a great team, it delivers on time and is value for money‘.
‘Ali Tyebkhan is simply outstanding. Excellent technically and a great commercial mindset that sets him apart from other lawyers‘.
‘LegalBase has handled our legal work for almost 10 years. The team is great to work with; always meets our usually very tight deadlines, the lawyers are knowledgeable and great technically‘.
‘Ali Tyebkhan is extremely sharp with a very astute commercial mind. He is outstanding and our go-to lawyer for all things strategic‘.
Edible Arrangements (www.ediblearrangements.com)
M Advocates (www.m-hq.com)
Al Dahbashi Gray (www.adglegal.com)
The Smarty Train Limited (www.thesmartytrain.com)
Marvel Limited (www.rhydycarwest.com)
Eswaran Brothers (www.eswaran.com)
Role Models (www.rolemodels.me)
Maltras International (Pvt) Limited (www.tealiateas.com) and (www.battlertea.com)
K10 Apprenticeships Limited (www.k-10.co.uk)
Mithril Asset Management (www.mithrilassetmanagement.com)
George Petch International UK (www.georgepetchint.com)
W Food Group Pty Ltd (www.wfoodgroup.com)
Broker Back Office Limited (www.broker-backoffice.com)
Gamevy ( www.gamevy.com)
- The firm has partnered with Plasseraud IP (a leading European law firm) to combat trademark infringements of its clients in the sports, food and beverages sectors and the illegal sale of counterfeit products – the firm in particular has provided its state of the art monitoring and detection software for this purpose.
- Al Dahbashi Gray and LegalBase have partnered to form a JV entity Hemaya (www.hemaya.global) – this is a pioneering venture to provide highly targeted and effective online IP protection and reputation management.
- LegalBase effectively manages Maltras’s global portfolio of TMs which is pivotal to the success of the Matras tea brands.
Sudath Perera Associates fields an excellent team that is well-regarded for its work on IP and brand protection in Sri Lanka. It has a strong client base of leading international and local brands. The team skilfully covers the full array of IP matters and recently it has been increasingly advising on various licensing and franchising matters. Sudath Perera is an accomplished intellectual property lawyer and litigator and frequently conducts high-level negotiations on behalf of brand owners. Himani Perera has also played a key role in leading the firm’s IP offering. In addition the group has a solid reputation for its work on domain name disputes, trademarks and passing off actions.
Polo Ralph Lauren
L Brands Inc. (Victoria Secrets)
Louis Vuitton Malletier
Daiso Industries Co. Ltd, Japan
Tommy Hilfiger B.V.
- Acted for Manchester United Football Club Limited in an action that was filed against a trademark and copyright violation of Manchester United Football club in the Commercial High Court of Sri Lanka whereby an ex-parte enjoining order was obtained in the first instance.
- Acted for Chint Group Corp. in an action that was filed in the Commercial High Court in a matter against the local distributor in relation to the infringement of the well-known marks of the Chint Group.
- Acted for Casio Computer Co. Ltd, Japan in conducting a criminal raid and seizure action simultaneously against four shops at a popular shopping mall in Colombo for selling counterfeit Casio watches.
Anomi Wanigasekera leads the IP group at Julius & Creasy. Wanigasekera has extensive experience in the full range of enforcement, management and the transactional aspects of IP law. The team also frequently represents clients before the National Intellectual Property Office and acts for multinationals as well as local conglomerates on various infringement actions in addition to search and seizure orders. In addition the department is adept at advising on a diverse range of regulatory compliance matters.
‘Anomi Wanigasekera is really well-known and respected in the market, she acts for some superb clients, very impressive‘.
Nithya Partners has a versatile team that handles both contentious and non-contentious IP matters well. It is skilled at advising on trademark and copyright disputes. 2019 was a particularly successful year for it in terms of IP litigation as it obtained judgments in favour of its clients in several matters. The department routinely handles trademark portfolios for local and foreign companies and is well-equipped to also handle patent portfolios for its clients. Chanaka de Silva, Aruna Samarajewa and Chamindi Ekanayake are the most prominent members of the team. The practice is also recommended for its IP due diligence work on transactional matters.
‘Its professional fees are very reasonable. Nithya Partners always tries to add something more when it comes to preparing written submissions and other submissions to be submitted to National Intellectual Property office. The lawyers do not just rely on the information we provide and always inquire and give more suggestions about what we could mention or what we can do. When it comes to time sensitive matters, they always try to do their best and follow up things in an orderly manner‘.
‘The lawyers are ready to help. Nithya Partners always keeps us updated us‘.
‘The lawyers are very responsible, work on time, approachable and friendly. Since intellectual property is a company sensitive asset, and we cannot rely upon everyone, the company always counts on this firm’s services. What I admire most is the relationship the lawyers build with the client‘.
‘There are some other firms that do not work on time and always ask for extensions of time. And sometimes some other law firms do not have good communication with their clients. When it comes to Nithya Partners luckily I never had to face any such difficulties such as late filings or requesting of extension of times due to their delays‘.
‘Ms. Ekanayake is very supportive and I sometimes get her advice for the things I handle by myself as well and she has never hesitated to help me when requested‘.
Citizens Development Business Finance PLC, Sri Lanka
Centara Hotels and Resorts, Thailand
Maliban Biscuit Manufactories (Private) Limited, Sri Lanka
Renuka Group, Sri Lanka
Getz Pharma International FZ LLC, UAE
ARISTO Pharmaceutical Private Limited, India
CCL Holdings Limited, UAE
Anverally and Sons (Pvt) Ltd, Sri Lanka
Ceylon Fresh Teas (Pvt) Ltd
- Represented Maliban Biscuit Manufactories (Private) Limited in the matter of Crown Biscuit Company (Private) Limited vs Maliban Biscuit Manufactories (Private) Limited (HC (Civil) 19/2013/IP) – the team successfully represented the client in obtaining a permanent injunction against the competitor in a heavily contested and lengthy case in the Commercial High Courts.
- Successfully represented the client in a case that was filed at the Colombo Commercial High Courts (HC (Civil) No. 16/2016 IP) whereby the team secured a permanent injunction against the opponent and the judgment conceded that a) its client is the lawful owner of the trademark/brand “HANUMA” for fireworks; b) a declaration was made that the competitor has no rights in law to manufacture/pack/make/distribute/sell fireworks under the trademark “Hanuma” and a permanent injunction was issued against the competitor; and c) its client recovered substantial damages.
John Wilson Partners attracts mandates from major multinational enterprises and household brands from a wide range of industry sectors such as entertainment, food and beverages as well as manufacturing and investments. It receives a steady workflow on trade mark filings and oppositions in addition to advising on counterfeiting and infringement actions. The team under the direction of John Wilson is also adept at handling regulatory work as well as licensing matters. Sameendra Perera is a well-respected senior associate who is one of the key contacts in the IP department.
Other key lawyers:
Shell International Petroleum Co Ltd
Authors, Composes and Publishers Organisation
EMG Health Solutions (Pvt) Ltd
T Choithram and Sons LLC
Prof. Jane Evans
Ernst & Young LLP
Sagittarius Digital Engineering
Cisco Systems (India) Private Ltd.
Allen & Overy
Diana & Bradley Shaw
- Successfully represented Samudra Cement Company Lanka Limited in a case over the use of a trademark with a shell device.
- Acted for KALBE International PTE LTD. in a dispute over the use of a trademark.
- Acting for KITZ Corporation in a dispute about the selling and keeping of counterfeit valves.
Neelakandan & Neelakandan (formerly Murugesu & Neelakandan) has a strong track record in contentious and non-contentious IP matters and continues to handle a large volume of trademark, industrial design and patent applications for a number of local and foreign clients (including some Fortune 500 multinational companies). The diverse practice is adept at advising on the protection and transfer of IP rights following a corporate restructuring and is also skilled at advising on IP litigation. In addition the team receives a regular stream of instructions from several major international law firms. Heads of team Pranavan Neelakandan and Sivananthavalli ThuraRaja are key figures in the market.
Rolls-Royce Motor Cars Limited
Bugatti International SA
Automobili Lamborghini SPA
Honda Motor Company
Datsun NoKia Motor Corporation
Hyundai Motor Company
Toyota Financial Services Corporation
Konecranes Global Corporation
Research in Motion
Mitsubishi Electric Corporation
Marriott Worldwide Corporation
Sheraton International IP LLC
Ritz Carlton Hotel Company
Steigenberger Hotels AG
Hard Rock Cafe
Movenpick Holdings AG
Virgin Enterprises Limited
Standard Chartered Bank
Deutsche Bank AG
Sunkist Growers Inc
Akzo Noble Coatings International BV
Philip Morris Products SA
Monami Co. Ltd
Daiichi Sankyo Company Limited
HEAD Technology GmbH
Tesco Store Limited
United Biscuits (UK) Limited
Giorgio Armani SPA
Abercrombie & Fitch Europe SA
Klipsch Group Inc
Seagate Technology LLC
St. Gobain Abrasives Limited
CIMA – Chartered Institute of Management Accountants
Singer (Sri Lanka) PLC
Finlays Colombo Limited
VFS Global Services
University of Cambridge
China Central Television
- Advising BMW on various IP matters since the early 1990s.
- Advising Marriott Hotels on the protection of its IP since the late 1990s.
- Currently representing Cargill Inc in an action that has been filed in the Commercial High Court over the well-known mark ‘Cargill’.
With Prabash De Saram, Aloka Nandasena and Hasanthie Manukulasooriya at the helm at D. L. & F. De Saram the team continues to be active in registering national and international trademarks. It has also been busy registering patents and industrial designs and was recently involved in the first registration of 3D international trademarks in Sri Lanka. The practice is also well-equipped to advise on disputes about the infringement of IP rights and is well-versed in all aspects of deals that relate to IP such as conducting detailed due diligence exercises and negotiating license agreements and assignments.
Kalbe International Pte Ltd
Jagro (Pvt) Ltd
LT Productions (PVT) Ltd
Riococo Lanka Pvt Ltd
I sapori di Dolce Italia (Pvt) Ltd
Swadeshi Industrial Works PLC
- Representing Riococo Lanka (Pvt) Ltd ( a world-renowned manufacturer of coir-based products), in an opposition hearing before the National Intellectual Property office of Sri Lanka.
- Representing Swadeshi Industrial Works PLC (a leading personal care manufacturer) in the action that has been filed against the infringement of its trademark.
- Advising Kalbe International Pte Ltd ,a leading pharmaceutical marketing company, in the registration of its trademarks.
Under the leadership of Ramani Muttettuwegama and Michael Paiva the team at Tiruchelvam Associates advises national and international clients on the full array of IP matters. It frequently advises on the filing and prosecution of trade markets and design registrations as well as helping clients with filing PCT applications in Sri Lanka. It is also adept at assisting clients with enforcing their IP rights as well as advising on copyright and other contentious matters.
St. Gobain Glass France
Punjabi Trading Asia Limited
Mohamad Idris Bros (Private) Limited
Healthnet International (Pvt) Ltd. (Sri Lanka)
CDM International (Pvt) Ltd. (Sri Lanka)
Withers Khattar Wong LLP
Morgan, Lewis & Bockius LLP
SCG Legal Counsel Limited
PT Nutrifood Indonesia
PT Salim Ivomas Pratama Tbk
ADVOKATBYRÅN GULLIKSSON AB
ATMD Bird & Bird LLP
Barnes & Thornburg LLP
FarmaPatent Ltd. Şti
Franklin Covey Co.
- Acting on behalf of St. Gobain Glass France in the filing of active PCT National Phase Applications.
- Representing CDM International (Pvt) Ltd on various contentious matters before the Director General of the National Intellectual Property Office of Sri Lanka and drafting and engrossing all legal documents and written submissions.
- Representing PUNJABI TRADING ASIA LIMITED on various contentious matters before the Director General of the National Intellectual Property Office of Sri Lanka and drafting and engrossing all legal documents and written submissions.