Leading Individuals

Next Generation Partners

Intellectual property in Sri Lanka

LegalBase

The highly rated team at LegalBase represents multinational clients across a range of sectors, including consumer and luxury goods, finance, real estate, sports and IT. The practice has expanded its monitoring service in order to protect clients’ brands, especially online; to guard against counterfeits and to remove infringing online content.  Practice head Ali Tyebkhan is experienced in supporting clients with domestic and multi-jurisdictional transactions and disputes and is supported by legal director Natasha Burhan who also handles corporate, commercial and private equity matters.

Practice head(s):

Ali Tyebkhan

Other key lawyers:

Sudath Perera; Natasha Burhan

Testimonials

‘LegalBase has a team of IP experts who have assisted us to a great extent in protecting our IP. Their services are unique in comparison with other firms we have worked with and stand out in terms of their efficiency and expertise.’

‘We had a great experience working with LegalBase in resolving most of our trademark disputes. They displayed a unique way of handling our portfolio with utmost efficiency. They stand out as a competent and highly valuable IP firm in comparison with a number of IP firms we have dealt with in the past.’

Key clients

Edible Arrangements

M Advocates

Al Dahbashi Gray

Symons IP

The Smarty Train Ltd

Marvel Limited

Role Models

Dilmah

K10 Apprenticeships Ltd

Broker Back Office Ltd

Eswaran Brothers

Mithril Asset Management

George Petch International UK

Printsource

Gamevy

Work highlights

  • Combatting trademark infringements of its clients in the sports and food and beverage sector and the illegal sale of counterfeit products.
  • Providing highly targeted and effective online IP protection and reputation management in the Middle East, offering state of the art monitoring and detection software.
  • Providing Smarty Train with a wide range of strategic advice in respect of the protection of its intellectual property rights.

Sudath Perera Associates

Sudath Perera Associates fields a deep bench of lawyers that are ‘proactive, responsive and clear’ in their intellectual property and brand protection advice. The team is jointly led by Sudath Perera, an experienced litigator capable of conducting complex negotiations with international brand owners, and Himani Perera, another knowledgeable practitioner. It provides clients with a comprehensive intellectual property offering across a variety of sectors, handling trademark, patent and design prosecutions, copyright infringements and domain name disputes, licensing and distributorship agreements, as well as brand development matters. Manoj Bandara regularly assists the team with a number of significant matters.

Practice head(s):

Sudath Perera; Himani Perera

Other key lawyers:

Manoj Bandara; Deshan Hewavithana

Testimonials

‘Proactive, responsive and clear in advice provided.’

‘The patience and willingness to help the client have clarity on all related matters including the registration bodies in the various jurisdictions, the processes, costs etc.’

‘The ability to understand client concerns, the competency to address queries raised, the willingness and patience to help.’

Key clients

Victoria’s Secret Stores Brand Management LLC

PUMA SE

D. Samson & Sons (Pvt) Ltd

JAS Active Wear Ltd

Zahra Exports (Pvt) Ltd

Raffles International Ltd

Nippon Paints Lanka (Pvt) Ltd

Global Sea Foods (Pvt) Ltd

Bridgestone Licensing Services, Inc

Marks and Spencer (Jaeger) Ltd

Meta Platforms, Inc

CLO Virtual Fashion Inc

Aritzia LP

Work highlights

  • Obtained an interim injunction on behalf of the client, Chint Group Corp, against the defendant, the former local distributor and registered owner of the Chint marks in Sri Lanka, on the infringement of the Chint IP rights.
  • Acted for PUMA SE, one of the largest sporting brands in the world, against the infringement of its registered trademark rights by the defendant, CIB Garments Ltd.
  • Represented D. Samson & Sons (Pvt) Ltd, the largest footwear retailer in Sri Lanka, against the infringement of its registered trademark “BEAT”.

D. L. & F. De Saram

D. L. & F. De Saram has an excellent reputation for its intellectual property expertise, acting for local and foreign clients operating across various sectors including consumer goods, logistics, leisure, healthcare and industrial products. Prabash De Saram and Hasanthie Manukulasooriya lead a group that is adept at advising on the registration and protection of trademarks, patents, industrial designs, and a range of other IP-related matters, including infringement disputes and product liability. It also performs due diligence exercises on the IP elements of high-caliber business transactions and the negotiation of licensing agreements. Associates Ziyani Marikar and Manavi Seneviratne frequently assist the co-heads.

Practice head(s):

Prabash De Saram; Hasanthie Manukulasooriya

Other key lawyers:

Sanuji Munasinghe; Ziyani Marikar; Manavi Seneviratne

Testimonials

‘The team is effective and has a good presence in the respective field they represent which is convenient for clients.’

‘Prompt response and effective communication by the individuals during assignments. The progress of the assignment is frequently updated with the client.’

‘Very experienced firm which had a mix of talents from all corners.’

‘They maintain the quality of work and have updated knowledge.’

Key clients

Riococo Lanka Private Ltd

Expo Lanka Holdings PLC

Blue Diamonds Jewellery Worldwide PLC

Kalbe International Pte Ltd

Panasonic Ecology Systems Co Ltd

Melchers Lanka (Pvt) Ltd

The Swadeshi Industrial Works PLC

Printcare PLC

Perera & Sons Bakers Pvt Ltd

JF &I Pckaging (Pvt) Ltd

Work highlights

  • Advised Riococo Lanka Private Ltd with regard to an extensive list of IP matters, which included trademark registrations, patents and industrial designs. The department represented the client in its opposition inquiries at the National Intellectual Property Office and infringements of its trademarks.
  • Assisted Expo Lanka Holdings PLC and its subsidiaries in conducting trademark searches and trademark registrations.
  • Advised Blue Diamonds Jewellery Worldwide PLC in relation to patent and trademark registrations. The department represented the client in its opposition inquires.

Julius & Creasy

The intellectual property division at Julius & Creasy advises on diverse matters such as patents, trademarks, copyrights, industrial designs and domain names, among others. The group represents numerous multinational clients, including Fortune 500 companies, as well as several leading Sri Lankan conglomerates, and is well-versed in issues before the National Intellectual Property Office (NIPO). It is also regularly instructed by leading global trademark agents in regions such as the UK, USA and Hong Kong. The team, which handles an array of other IP-related matters, is led by Anomi Wanigasekera who has extensive experience in the full range of enforcement, management and transactional matters pertaining to IP law.

Practice head(s):

Anomi Wanigasekera

Key clients

NGB Corporation

Kilpatrick Townsend

Merck & Co

Unilever PLC

CPA Global

Victoria’s Secret Stores Brand Management Inc

Toyota Technical

TATA Motors

Apple Inc

Honda Motor Co. Ltd

Hayleys PLC

Astra Zeneca

Abbott

Novartis

Pfizer Inc

F . Hoffmann-La Roche AG

Shangri La

Hyatt

Marriott

Work highlights

  • Appointed as consultants to the Ministry of Higher Education on patent-related matters.
  • Negotiated over 20 trademark disputes where the infringing party agreed to change the mark.
  • Acted for Google providing YouTube advice on copyright infringement on review videos.

Neelakandan & Neelakandan (formerly Murugesu & Neelakandan)

Pranavan Neelakandan and Sivananthavalli ThuraRaja head the IP department at Neelakandan & Neelakandan (formerly Murugesu & Neelakandan). The team, which handles a large volume of trademark, industrial design and patent applications, regularly acts for both local and foreign clients including several Fortune 500 companies. It also advises on the protection and transfer of IP rights following corporate restructurings, as well as other issues such as patent enforcement, copyright and franchising. IP litigation is another strong point having successfully represented clients before the National Intellectual Property Office (NIPO) in refusal and opposition matters. The team continues to work closely with several leading international law firms.

Practice head(s):

Pranavan Neelakandan; Sivananthavalli ThuraRaja

Key clients

Rolls-Royce PLC

Rolls-Royce Motor Cars Limited

Mini

Audi AG

Volkswagen AG

BMW AG

Bugatti International SA

Ferrari SPA

Automobili Lamborghini SPA

Honda Motor Company

Yamaha Corporation

Suzuki Corporation

Kawasaki Corporation

Nissan Corporation

Datsun

Kia Motor Corporation

Hyundai Motor Company

Toyota Financial Services Corporation

Kubota Corporation

JCB Corporation

Caterpillar Inc

Konecranes Global Corporation

TVS

Research in Motion

Panasonic Corporation

Mitsubishi Electric Corporation

Samsung Electronics

LG Electronics

Canon Corporation

Nikon Corporation

Fujifilm Corporation

Seiko

Marriott Worldwide Corporation

Sheraton International IP LLC

Hilton Worldwide

Ritz Carlton Hotel Company

Steigenberger Hotels AG

Hard Rock Cafe

Movenpick Holdings AG

Virgin Enterprises Limited

TUI AG

Standard Chartered Bank

DBS Bank

Deutsche Bank AG

Deutsche Telekom

Cargill Incorporated

Nando’s Limited

Kraft Food

Sunkist Growers Inc

Tramontina SA

Visa International

American Express

Emirates Airlines

Qantas Airways

Air China

Akzo Noble Coatings International BV

Asian Paints

Hafele GmbH

Bayer

Basf SE

Debenhams

Hermes International

NGB Corporation

NSK Limited

YKK Group

Philip Morris Products SA

Staedtler GmbH

Monami Co. Ltd

Grunenthal GmbH

Daiichi Sankyo Company Limited

Sun Pharmaceutical

USV Pharmaceutical

Kingfisher

ThyssenKrupp

Schneider Electric

AT&T

Puma

HEAD Technology GmbH

Tesco Store Limited

United Biscuits (UK) Limited

Dennemeyer

TWG Tea

Levi Strauss

Giorgio Armani SPA

Abercrombie & Fitch Europe SA

Asos PLC

Geox SPA

Klipsch Group Inc

Seagate Technology LLC

St. Gobain Abrasives Limited

CIMA – Chartered Institute of Management Accountants

Singer (Sri Lanka) PLC

Ceylon Biscuits

Finlays Colombo Limited

Himalaya Herbals

United Breweries

TNT Express

Armani Exchange

VFS Global Services

Macmillan Publishers

University of Cambridge

Belmond

Bremont Watches

Shinsegae International

Yupo Coporation

China Central Television

Pigeon Corporation

Work highlights

  • Acting for BMW in challenging several trademark infringements in Sri Lanka. The firm has handled the clients trademarks since the early 1990s and continues to advise them on all their IP matters.
  • Acting for Marriott Hotels on the protection of their IP. The firm obtained an interim injunction against Colombo Courtyard from using the words “Courtyard” as part of its name forcing them to change their name, enabling Marriott to claim USD 500 million in damages.
  • Acting for the defendant Cargill Inc against Cargills Ceylon in an action involving an application for declaration of non-infringement made by the plaintiff which is being resisted by the client.

Nithya Partners

With Chanaka De Silva, Aruna Samarajewa and Chamindi Ekanayake at the helm, Nithya Partners provides end-to-end intellectual property advice. The firm deals with a mixture of non-contentious and complex, high-calibre cases for both local and international clients. The team is skilled at managing trademark portfolios, and is handling a growing caseload in the pharmaceutical sector. Hearings before the National Intellectual Property Office (NIPO) is a particular strong point as the firm is regularly retained by companies to manage their extensive trademark portfolios, including one of the largest tea exporters in Sri Lanka. Other areas of expertise include patent portfolio management and due diligence investigations, especially in relation to M&A transactions.

Practice head(s):

Chanaka De Silva; Aruna Samarajewa; Chamindi Ekanayake

Testimonials

‘They are very professional and have been delivering their services to our satisfaction. Nithya Partners has expertise not only in intellectual property but in other areas of law such as litigation and investments as well and it had been very helpful in our field of work.’

‘Our first point of contact is Chamindi Ekanayake. We find her very attentive and her practical knowledge in intellectual property matters have been very useful to us. She is contactable at any time and is capable of providing solutions to our issues very efficiently.’

‘Through my experience with Nithya Partners, I have found them to be extremely hands on with their work and are very thorough in their research and legal opinions.’

‘I have worked very closely with Chamindi Ekanayake and have found her to be professional, prompt and extremely competent in her work. It has been a great experience.’

‘The expertise in the intellectual property rights is commendable. The professionals who handles conceptualization and litigation work are very sound in addressing the issues and advisory.’

‘Other than litigation, brand registration and renewal work is also handled by Nithya Partners where the Account Manager provides the client with a very comprehensive service and assures records management and registration is up to date. Follow-up and done on a continuous basis.’

Key clients

The University of the Visual and Performing Arts

Dipped Products PLC

Sunshine Holdings PLC, Sri Lanka

Citizens Development Business Finance PLC, Sri Lanka

Maliban Biscuit Manufactories (Private) Limited, Sri Lanka

Getz Pharma International FZ LLC, Dubai

ARISTO Pharmaceuticals Private Limited, India

ECOLAB USA

Ceylon Fresh Teas (Private) Limited, Sri Lanka

Anverally and Sons (Pvt) Ltd, Sri Lanka

Work highlights

  • Advised the Accelerated Higher Education Expansion and Development Operation of the University of the Visual and Performing Arts, a World Bank funded project to protect IP rights of their innovations.
  • Represented a client on a matter concerning the refusal by the NIPO to register the new nutrient ‘Vitagen’ on the ground that there were some other phonetically similar marks registered under the NIPO.
  • Amended applications to suit the requirements of the NIPO and assisted the client to file their applications under the Patent Cooperation Treaty.

Varners

The team of ‘commercially astute legal professionals’ at Varners represents a vast clientele from industries including pharmaceuticals, software and infrastructure, with notable growth being seen in the construction, media and entertainment sectors as of late. With the experienced Mahinda Haradasa and Surani Wickramaratna in control, the group have been increasingly appearing before the National Intellectual Property Office (NIPO) and the courts at all levels, and have advised on protecting and enforcing a number of famous international brands. It is primarily engaged in commercial matters such as licensing, portfolio management, optimisation of brand value, and the IP aspects of transactions. Advising on patents and areas including design rights, unfair competition and regulatory law are also strengths for the practice.

Practice head(s):

Mahinda Haradasa; Surani Wickramaratna

Other key lawyers:

Achala Jayawardena; Trehani Wickramartne

Testimonials

‘Always provide feedback in a prompt manner.’

‘The partners of this firm are accessible and can be contacted. They respond promptly to any queries raised’

‘The lawyers are accessible and knowledgeable.’

‘Varners are one of the most commercially astute legal professionals in Sri Lanka as they understand legal provisions and the commercial realities very well.’

‘We work closely with Mahinda Haradasa and Surani Wickramaratna on matters between our firms. They work in a collaborative way, are solution-focused to deliver results, even in the face of various challenges, including the pandemic and other circumstances in their country.’

Key clients

Crocodile International

Alkem Laboratories Ltd

The Proctor & Gamble Company

Colombo Port City Economic Commission

Abans Group of Companies

Allergan, Inc

Rakuten Group, Inc

Ceylon Beverage Holdings Plc

ICC Business Corporation FZ LLC

Google LLC

Alfa Laval Corporate AB

Pharmaceutical Companies

Industrial Companies

Work highlights

  • Acted for Crocodile International Pte Ltd against Lacoste in a legal battle between global clothing giants. The protracted opposition proceedings comprised of detailed and lengthy written submissions, affidavits of evidence and oral submissions made by both parties. The firm was successful in defending the clients’ trademarks in Sri Lanka.
  • Advised Alkem, one of the largest pharmaceutical companies in India, in the prosecution and registration of their trademark portfolio. The firm is defending the IP rights of the client and is involved in opposition proceedings against local and international companies who have filed trademarks misleading or similar to the trademarks of the client.
  • Representing Proctor & Gamble in the prosecution of their entire trademark portfolio in Sri Lanka as well as protecting their IP rights.

Tiruchelvam Associates

Skilled negotiator Ramani Muttettuwegama and head of the IP practice Michael Paiva lead the team at Tiruchelvam Associates. It is equipped to provide the full array of intellectual property advice and is primarily engaged in the export, biotechnology and healthcare sectors. The team is skilled at trademarks, design and patent filings, as well as prosecutions, enforcements and opposition actions. Due diligence exercises and the negotiation of licensing agreements are also strong points for the firm. The group regularly represents clients at the National Intellectual Property Office (NIPO), most notably in the tea export industry – one of the main sources of foreign revenue generation to Sri Lanka.

Practice head(s):

Ramani Muttettuwegama; Michael Paiva

Other key lawyers:

Thuwaraka Ganeshan; Adheeba Ilyas; Allister Abeywardena

Testimonials

‘The firm has been very responsive since the start and handles our matter promptly and professionally. They provide practical solutions and keep us updated on the progress of the matter.’

‘Allister Abeywardena has been helping us to resolve the issues efficiently and practically. He always uses his best endeavour to find solutions and even during the Covid-19 lockdown period in Sri Lanka, he would use all means to reach out to the governmental authorities in order to get our matter to move forward at the soonest possible.’

‘Responsive and helpful. Despite the difficulties facing their country at the moment, they take care to update clients and keep matters running, as a testament to their resilience and business continuity.’

‘Michael Paiva is knowledgeable and responsive, a steady pair of hands we can count on.’

Key clients

Unitalen Attorneys at Law

Shailendra Thatte & Associates

SCG Legal Counsel Ltd

FarmaPatent IP

Withers Khattarwong LLP

Remfry & Sagar

Guangzhou Zhuanli IP Law Firm

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

C. S. Tang & Co. Advocates & solicitors

JK Marcam LLP

Mohamed Idris & Bros

Morgan, Lewis & Bockius

Studio Bonini SRL

APIA Proprietate Industriala

ANUATION Research and Consulting LLP

Anakamus Manufacturing

Barnes & Thornburg LLP

ATMD Bird & Bird LLP

Nanaviti Associates

Maha Chemicals (Asia) Pte Ltd

AnovIP

Saint-Gobain

IP ANTS

Sarvodaya SEEDS Limited

CDM International (Private) Ltd

Sarvasaara Agro Research and Technology Center Limited

Emirates Patent & Trade Mark Attorneys & Legal Consultants

D.S.Associates

Sun Pharmaceutical Industries Ltd

Jin Wang Cheng International Intellectual Property (Beijing) Co Ltd

Mega Trend Lanka

Berenguer & Pomares Abogados

Dhairya Shah & Associates (DSA)

Work highlights

  • Advised one of the world’s largest multinational fast food chains on the restructuring of the IP licensing agreement with Sri Lankan franchisee.
  • Advised a world renowned beverage company on managing its Sri Lankan franchise operations.
  • Advised the client on the managing and transfer of IP in a microbiological research project.