Intellectual property in Sri Lanka

LegalBase

With Ali Tyebkhan at the helm, LegalBase continues to work with a number of global multinational brands and companies. Its clients operate across various sectors including luxury goods, fashion, food and beverage in addition to finance, real estate, sports and consumer goods. The practice excels at online brand protection across a broad range of online content such as social media, mobile apps and web domains. Other names to note include Sudath Perera, who is a known name for his work on brand protection and anti-counterfeiting in Sri Lanka. Legal director Natasha Burhan is also recommended.

Practice head(s):

Ali Tyebkhan

Other key lawyers:

Sudath Perera; Natasha Burhan

Testimonials

‘LegalBase has been our go-to legal advisors for over 10 years. They are exceptional and market leaders for IP. They handle all legal work across all jurisdictions for us and also manage other external Counsel multi-jurisdictionally. 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’.

‘They are great with on time delivery, value for money and just have a “can do” attitude to everything. The team continues to maintain very high service levels and continues to go out of its way to assist with all work‘.

‘Ali Tyebkhan is simply outstanding. Excellent technically and a great commercial mind-set that sets him apart from other lawyers. Always available and goes the extra mile for his clients’.

‘People are extremely responsive, involved with clients and willing to find the most effective and practical solutions’.

‘The firm offers us support in the field of anti-counterfeiting. The surveillance and take-down activity have proven invaluable to some of our clients.’

‘Ali Tyebkhan is confident in his craft and provides solutions. Natasha Burhan is extremely efficient’.

Legalbase is our go to firm for all our legal requirements in connection with IP and corporate matters. They consistently provide us with a great service. They have been excellent to work with during the pandemic and still meet all our deadlines. The team is highly professional, easy to work with and very knowledgeable‘.

The team at Legalbase is hardworking and always willing to assist even during the pandemic, they give no excuses. Ali Tyebkhan is a stand-out individual at LegalBase, his problem solving skills are unmatched and is extremely thorough and knowledgeable. Natasha Burhan who handles our day to day work is fantastic to work with, very proactive and smart‘.

Key clients

Edible Arrangements

M Advocates

Al Dahbashi Gray

Symons IP

The Smarty Train Limited

Marvel Limited

Role Models

Maltras International (Pvt) Limited and

Dilmah

K10 Apprenticeships Limited

Broker Back Office Limited

Eswaran Brothers

Mithril Asset Management

Chryso

George Petch International UK

W Food Group Pty Ltd

Printsource

Gamevy

Work highlights

  • Continues to partner with Plasseraud IP (a leading European law firm) to combat trademark infringements of its clients in the sports and food and beverage sector and the illegal sale of counterfeit products. In particular, the firm provides its state-of-the-art monitoring and detection software for this.
  • Al Dahbashi Gray and LegalBase have partnered to form a JV entity Hemaya. This pioneering venture provides highly targeted and effective online IP protection and reputation management in the Middle East. Hemaya offers state of the art monitoring and detection software provided by LegalBase.
  • Partnering with Symons IP (a leading IP firm based in the UAE) to combat trademark infringements of its clients and the illegal sale of counterfeit products. In particular, LegalBase provides its state-of-the-art monitoring and detection software for this.

Sudath Perera Associates

Sudath Perera Associates has an excellent reputation for its work in intellectual property and brand protection. The group garners praise for its handling of trade mark, patent and design prosecutions both locally and internationally as well as for its work in other areas such as copyright and domain name disputes, licensing and distributorship agreements as well as other issues such as copyright infringements and unfair competition. Sudath Perera is a key contact, and Himani Perera  is another notable member of the department. The team is also recommended for its advice to clients on brand development matters.  

Practice head(s):

Sudath Perera ; Himani Perera

Other key lawyers:

Manoj Bandara  ;Nathaya Nanayakkara

Testimonials

‘Sudath Perera Associates has been our professional & trusted partner for IP enforcement/protection services. The firm is able to provide timely & professional advice while offering a flexible fee structure which is critical to our programme’s success during the challenging time’.

‘Sudath and Nathaya have always been able to provide advices and proposals which fit our budget constraints. Moreover, they are able to offer the most effective strategies to tackle against infringers’.

‘The team provides innovative solutions and is always available to the clients. Manoj is very knowledgeable in this area of law and very efficient with the services‘.

Key clients

Precisely Holdings, LLC

Maplebear Inc. DBA Instacart

Beverage Marketing USA, Inc.

Libra Association

Sim Leisure Group Limited

OLIMP LABORATORIES Sp. z.o.o.

Red Bull AG

Facebook, Inc

Instagram, LLC

Alcon Inc.

Work highlights

  • The firm instituted a court action for Victoria’s Secret Stores Brand Management LLC against a local party known as ‘Usha Factory Excess (Pvt) Ltd under Section 121 (Violation of the Registered Trademarks) and Section 160 (Unfair Competition) of the Intellectual Property Act No. 36 of 2003 for manufacturing and marketing counterfeit garments under ‘Pink’ and ‘dog device’ trademarks. The Court was pleased to issue an ex-parte enjoining order based on the submissions made in this regard.
  • Judgement was granted in favour of its client Zahra Exports (Private) Limited, in an action to protect its registered trademark of “ZAHRA TEA”.

Julius & Creasy

Anomi Wanigasekera leads the intellectual property division at Julius & Creasy. It advises on diverse matters from patent, trade mark and copyright issues to industrial design and domain names. It handles a whole host of other issues in sectors such as biotechnology, health care, pharmaceuticals and software. The group advises various multinational companies including some Fortune 500 companies and also acts for several leading Sri Lanka conglomerates. In addition, the practice is regularly instructed by some of the leading trade mark agents based overseas.

Practice head(s):

Anomi Wanigasekera

Key clients

Baker & McKenzie

Mars Incorporated

Bajaj Auto Ltd

Unilever

PLCCPA Global

Fross Zelnick

Toyota Technical

TATA Motors

Apple Inc

Honda Motor Co. Ltd

Hayleys PLC

Astra Zeneca

Abbott

Novartis

Shangri La

HyattMarriot

Nithya Partners

Nithya Partners fields a full-service intellectual property offering that advises on a wide array of contentious and non-contentious matters. It is particularly recommended for its experience in handling the trade mark portfolios of local and foreign companies. The firm has recently noticed increased instructions in the pharmaceutical sector. Other strengths include helping clients with their patent portfolios. Under the leadership of Chanaka de Silva PC, Aruna Samarajewa  and Chamindi Ekanayake the practice regularly collaborates with foreign law firms and also conducts due diligence  exercises on IP matters for M&A transactions. The firm is also well-equipped to advise on non-disclosure agreements and other licensing matters.

Testimonials

‘Compared to other firms they have a good and competitive team. They are well experienced in the specific areas. When it comes to fees they always ensure fair charges for the service’.

‘We normally contact Chamindi Ekanayaka for all our trademark matters. Compared to others we have worked with over the past years she is professional, very cooperative, organised, dedicated and puts her full potential into the work assigned to her’.

‘The team is very reliable and capable of handling various IP matters. During Covid times, they put extra effort to provide us with services. Chamindi Ekanayaka is our key contact person. She has vast experience and always provided us with advice and services in a timely manner‘.

Nithya Partners has a highly skilled team for both trademark prosecution and litigation. They are very professional in their approach and very easy to work with. Chamindi Ekanayaka is our contact and she had been handling our trademark portfolio for years. Chamindi attends to our searches, fillings and hearings promptly. She can be contacted easily and also provides us necessary instructions whenever necessary‘.

Key clients

Sunshine Holdings PLC, Sri Lanka

Citizens Development Business Finance PLC, Sri Lanka

Richard Pieris Arpico Finance Limited

Maliban Biscuit Manufactories (Private) Limited, Sri Lanka

Getz Pharma International FZ LLC, Dubai

ARISTO Pharmaceuticals Private Limited, India

Giga Foods (Pvt) Ltd, Sri Lanka

Ceylon Fresh Teas (Private) Limited, Sri Lanka

Patpatride Limited, Sri Lanka

Tengri Aero (Private) Limited

Work highlights

  • Successfully defended Richard Pieris Arpico Finance Limited, where its use of the trademark and the tradename was challenged in the Commercial High Courts.
  • Successfully represented Maliban Biscuit Manufacturers in a trade mark violation matter in the Commercial High Courts where a competitor company was using a similar packing.
  • The firm manages the trademark portfolio of Citizens Development Business Finance PLC and also represents the client from time to time at the hearings conducted at NIPO.

D. L. & F. De Saram

D. L. & F. De Saram continues to be busy advising on the registration of trade marks, patents, industrial designs and on other intellectual property matters. The department is well-versed too in conducting due diligence on IP elements of larger corporate transactions and in advising on licensing agreements. The team is skilled at advising on the registration of patents for both local and foreign clients as well as handling IP disputes. Prabash De Saram and Hasanthie Manukulasooriya co-head the department.

Other key lawyers:

Dunya Pieris

Testimonials

‘Our dealings with D.L. & F. De Saram have been very rewarding. They have an excellent team of partners who are always available to help and assist clients. All financials are very transparent and any additional charges were always informed to us beforehand so we never had any surprises by way of hidden costs‘.

‘The team is equally efficient, cooperative and willing to go the extra mile to help speed up transactions as well as being flexible and accommodating. Working with them is always a pleasure because they understand our requirements and are willing to accommodate our time schedules as well‘.

Great industry knowledge. Very professional. Timely completion. Issues are resolved immediately‘.

‘D. L. & F. De Saram handled my trademark registration swiftly and was prompt in handling the paper work. Information was shared via email and I only visited the office once to place my signature on the forms. Furthermore they were very transparent and precise with answering my queries. I was updated right throughout till the trademark registration was executed’.

‘Dunya Peiris was the person who singlehandedly handled my company’s trademark registration. She was extremely efficient and meticulous in doing so‘.

Very friendly and catered to our requirements promptly‘.

‘The D L & F De Saram team is a group of absolute professionals who carry out the work with comprehensive dedication. The team that advised me was well versed with all the technical legal regulations and guided me astutely in my decision making‘.

‘The team I worked with was available to me 24/7. They would answer my calls immediately and where relevant would revert with the necessary information and guidance promptly. In particular, the services I received from Hasanthie Manukulasooriya was outstanding and very professional in execution‘.

Key clients

National Olympic Committee of Sri Lanka

Economy Next Media (Private) Limited

Capital Media (Private) Limited

Kalbe International Pte. Ltd

S K International PVT LTD

Sena Mills Refineries Exports (Pvt) Ltd

Mascons Pvt Ltd

Printcare PLC

Perera and Sons Bakers ( Pvt) Ltd

Dial textline Industries (Pvt) Ltd

Work highlights

  • Assisting Perera and Sons Bakers (Pvt) Ltd in the protection of its trademarks under the Madrid System and advising and assisting the clients on the infringement of its trademarks in Australia.
  • Acted for Kalbe International (which is a pharmaceutical company) to conduct searches and register its trademarks in Sri Lanka.
  • Representing Printcare Plc in litigation involving the infringement of copyrights.

John Wilson Partners

John Wilson Partners advises on a whole host of intellectual property issues, from advising on the registration of trade marks and industrial designs to advising on patent, trade mark and industrial design litigation. It is skilled too at providing anti-counterfeiting legal advice and advising on the prevention of any infringement of copyrights. John Wilson leads the group, which is increasingly advising various brand owners. Sameendra Perera is another key contact and is a qualified intellectual property agent.

Practice head(s):

John Wilson

Other key lawyers:

Sameendra Perera

Testimonials

John Wilson is an excellent law firm for intellectual property matters in Sri Lanka. The opinion provided by the attorneys is comprehensive and complete in all aspects. Furthermore, the turnaround time for the opinions is commendable while keeping the quality of the advice at a very high level‘.

We have worked closely with Sameendra Perera. She is able to come up and suggest viable and innovative solutions to the queries. She is one of the most approachable associates we have had the pleasure of working with‘.

Key clients

Stromme

T Choithram and Sons LLC

Wistrand Stockholm

BUPA Global

Haynese Boone

Ernst & Young LLP

Sagittarius Digital Engineering

Kitz Corporation

Cisco Systems (India) Private Ltd.

Allen & Overy

JSSC Ltd.

Legal Action Worldwide

Stephenson Harwood LLP

Discovery Communications India

Citibank Hong Kong

Ancestry.com UK Ltd.

Clifford Chance

New Horizons Adoption Agency Inc.

Capespan South Africa (Pty) Ltd

Work highlights

  • Managing trademark portfolios of the clients of HSLEGAL LLP.
  • Managing trademark portfolios of the clients of Chadha & Chadha.
  • Managing trademark portfolios of the clients of Kim & Chang IP.

Neelakandan & Neelakandan (formerly Murugesu & Neelakandan)

Neelakandan & Neelakandan (formerly Murugesu & Neelakandan) continues to handle a large volume of trade mark, industrial design and patent applications for a number of local and foreign clients. It is adept at advising on the protection and transfer of intellectual property following a corporate restructuring as well as advising on other issues such as copyright and franchising. In addition it has considerable strength in IP disputes and works closely with several leading international law firms. Heads of department Pranavan Neelakandan and Sivananthavalli ThuraRaja are the key contacts.

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 NoKia 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

  • Continuing to advise  BMW AG on a broad range of IP matters.
  • Continuing to advise Marriott Worldwide Corporation on the protection of its IP.
  • Continuing to advise Rolls-Royce PLC on its Sri Lankan trademark portfolio.

Tiruchelvam Associates

Tiruchelvam Associates handles all aspects of intellectual property matters from trademarks, design and patent filings to prosecutions, enforcement and opposition actions. It is retained by a number of significant multinational clients and regularly conducts detailed due diligence exercises as well as negotiating licensing agreements and assignments for these clients. The group is well-equipped to handle all aspects of disputes relating to IP infringements. Ramani Muttettuwegama  and Michael Paiva co-lead the dynamic team, which has been increasingly appearing before the Intellectual Property Office in matters relating to the tea, coffee and pharmaceutical sectors.

Testimonials

‘Great firm; great team. Very responsive and professional’.

‘They are responsive and are our ‘go-to’ team for intellectual property matters in Sri Lanka’.

‘Michael Paiva is a responsible person overseeing the matters that we entrust them with’.

‘The firm surely has a deep knowledge and expertise about intellectual property practice in the country, including recent updates. Mr. Michael Paiva always proactively updates us on the work in progress, also on the recent situations in the country that may impact on our interests‘.

 

Key clients

FARMAPATENT LTD. ŞTI

JK MARCAM LLP

SULLIVAN IP SOLUTIONS

HEALTHNET INTERNATIONAL (PVT) LTD.

SARVODAYA SUSTAINABLE ECONOMIC ENTERPRISE DEVELOPMENT LIMITED

EBEYONDS (PVT) LTD

SYNAPSYS LTD.

Work highlights

  • Represented an entity with major stakeholders in the construction industry of Sri Lanka (including major investors from foreign jurisdictions engaged in foreign sponsored governmental projects) in order to successfully enforce the licensor’s IP rights.
  • Drafted an IT software as a service (SaaS) agreement for the client relating to the licensing of one of its key ecommerce solutions and associated intellectual property to its clients.
  • Representing the client in safeguarding several of its trademarks relating to vaccines in Sri Lanka.

Varners

Varners fields a responsive team that is led by experienced partners Mahinda Haradasa and Surani Wickramaratna. The team represents clients before the National Intellectual Property Office and the courts at all levels, as well as advising on a myriad of commercial issues such as licensing, portfolio management and the IP aspects of transactions. It is skilled at advising on the protection and enforcement of some famous international brands, and the practice has specific sector expertise in a wide range of industries including pharmaceuticals, software and infrastructure. It is also skilled at advising on patents and other areas such as design rights, unfair competition and labelling law.

Other key lawyers:

Sahan Perera ; Trehani Wickramaratne

Testimonials

The team is prompt and provides tailored solutions to complex trademark issues. Surani Wickramaratna is extremely dependable and provides practical and clear advice in the most complicated trademark matters‘.

‘The Intellectual Property Division of Varners is a dedicated team who gives timely and well thought out advice. They are a service oriented and friendly team and attends to our work in a prompt manner. I would recommend this team‘.

‘Excellent IP knowledge not only of Sri Lanka, but also of the region. Extremely proactive, clear explanations. Mahinda Haradasa, Surani Wickramaratma, among others are excellent. Personal attention to IP matters they are handling, very thorough in their approach, clear responses‘.

‘The support by their junior law as well as senior lawyers was tremendous. They stood by me step by step especially at the start when I couldn’t believe what I had to face and they never let up. They were very encouraging. To me this would be their greatest strength. I think attention to detail and caring about their clients is their USP. Trehani and Sahan were my team and they had my back every single time. They were very supportive- I couldn’t have asked for a better team‘.

‘We have been working with Varners on a regular basis in relation to various aspects of trademarks practice viz. search, filing, prosecution, oppositions, renewal, assignments, etc. Varners has been professional and efficient in handling our matters‘.

We have been highly impressed with our association with the team at Varners so far. The team ticks all the right boxes, highly professional, they are customer service orientated, diligent, responsive and dedicated to our clients. The legal advice is technically superior to their competitors in Sri Lanka, and their understanding of the commercial objectives of our clients and how to achieve them is exemplary. The team’s legal knowledge, attentiveness to our client’s matters especially stood out for us. We are confident that the legal services provided by Varners are leaps and bounds ahead of the other local firms‘.

‘We have been working very closely with Mahinda Haradasa and Sahan Perera on our client’s matters. Mr. Haradasa’s leadership ability is evident in all meetings, as is his keen legal acumen and commercial insight into the matter at hand, this is also reflected in the quality of his team. Mr. Perera has handled much of the correspondence between our firms on the matter, and has been highly professional and incredibly responsive throughout. He is clearly committed to the best interests of our client, and his legal abilities are also impressive‘.

Key clients

Crocodile International

TVS Motor Company Limited

Sheshandri Dushinka Subramanian

Under Armour

Miniso Hong Kong Limited

Alkem Laboratories Limited

Incyte Corporation

Compass Capital International Limited

Colombo City Centre Partners (Private) Limited

Brinker International, PLC

Carsons Cumberbatch PLC

Prima Group/Ceylon (Private) Limited

CHEC Port City Colombo (Private) Limited

Bean Media Group Pty Ltd

Pharmaceutical Companies

Work highlights

  • Advising Crocodile International on various contentious and non-contentious IP matters.
  • Representing BEAN MEDIA GROUP PTY LTD in registering its trademarks in Sri Lanka and in a dispute with a local entity.
  • Handling trademark prosecutions and enforcement for Under Armour’s extensive portfolio of marks for apparel, footwear etc in Sri Lanka.