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.
Intellectual property in Sri Lanka
LegalBase
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.