Reframing Intellectual Property Law in Sri Lanka: Lessons from the Developing World and Beyond (International Law and the Global South) 9811945810, 9789811945816

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International Law and the Global South Perspectives from the Rest of the World

Althaf Marsoof Kanchana Kariyawasam Chamila Talagala

Reframing Intellectual Property Law in Sri Lanka Lessons from the Developing World and Beyond

International Law and the Global South Perspectives from the Rest of the World

Series Editor Leïla Choukroune, International Law and University Research, Portsmouth University, Portsmouth, UK Editorial Board Balveer Arora, Centre for Multilevel Federalism (CMF), Institute of Social Sciences, Delhi, India Eros Roberto Grau, Faculty of Law, Universidade de São Paulo, São Paulo, Brazil Denise Prevost, Department of International & European Law, Maastricht University, Maastricht, Limburg, The Netherlands Carlos Miguel Herrera, CY Cergy Paris University, CERGY, France

This book series aims to promote a complex vision of contemporary legal developments from the perspective of emerging or developing countries and/or authors integrating these elements into their approach. While focusing on today’s law and international economic law in particular, it brings together contributions from, or influenced by, other social sciences disciplines. Written in both technical and nontechnical language and addressing topics of contemporary importance to a general audience, the series will be of interest to legal researchers as well as non-lawyers. In referring to the “rest of the world”, the book series puts forward new and alternative visions of today’s law not only from emerging and developing countries, but also from authors who deliberately integrate this perspective into their thinking. The series approach is not only comparative, post-colonial or critical, but also truly universal in the sense that it places a plurality of well-informed visions at its center. The Series Provides a truly global coverage of the world in reflecting cutting-edge developments and thinking in law and international law Focuses on the transformations of international and comparative law with an emphasis on international economic law (investment, trade and development) Welcomes contributions on comparative and/or domestic legal evolutions

Althaf Marsoof · Kanchana Kariyawasam · Chamila Talagala

Reframing Intellectual Property Law in Sri Lanka Lessons from the Developing World and Beyond

Althaf Marsoof Nanyang Business School Nanyang Technological University Singapore, Singapore

Kanchana Kariyawasam Griffith Business School Griffith University Brisbane, QLD, Australia

Chamila Talagala Australian Centre for Intellectual Property in Agriculture Brisbane, QLD, Australia

ISSN 2510-1420 ISSN 2510-1439 (electronic) International Law and the Global South ISBN 978-981-19-4581-6 ISBN 978-981-19-4582-3 (eBook) https://doi.org/10.1007/978-981-19-4582-3 © The Editor(s) (if applicable) and The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022, corrected publication 2023 This work is subject to copyright. All rights are solely and exclusively licensed by the Publisher, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations, recitation, broadcasting, reproduction on microfilms or in any other physical way, and transmission or information storage and retrieval, electronic adaptation, computer software, or by similar or dissimilar methodology now known or hereafter developed. The use of general descriptive names, registered names, trademarks, service marks, etc. in this publication does not imply, even in the absence of a specific statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. The publisher, the authors, and the editors are safe to assume that the advice and information in this book are believed to be true and accurate at the date of publication. Neither the publisher nor the authors or the editors give a warranty, expressed or implied, with respect to the material contained herein or for any errors or omissions that may have been made. The publisher remains neutral with regard to jurisdictional claims in published maps and institutional affiliations. This Springer imprint is published by the registered company Springer Nature Singapore Pte Ltd. The registered company address is: 152 Beach Road, #21-01/04 Gateway East, Singapore 189721, Singapore

We dedicate this book to our fathers—the true heroes in our lives

Foreword

This book is an imaginative, yet intensely practical, exploration of the tools and techniques required for building an effective, post-colonial Intellectual Property (“IP”) regime. The following pages productively explore the room to manoeuvre at the national level within the constraints of international treaty obligations. It is, therefore, a book that is relevant beyond its chosen focus—Sri Lanka—since it offers valuable lessons for any developing country policymaker confronting this question. One could not have selected a better team of authors to write such a book. Professors Althaf Marsoof, Kachana Kariyawasam, and Dr. Chamila Talagala are intimately familiar with IP legislation, doctrine, and policy in Sri Lanka. Furthermore, their own biographical journeys ensure that this book is enriched by comparative law insights from Australia, Singapore, the United Kingdom, and several other developed economies as well as Asian neighbours. The authors also combine scholarly rigour with practitioner experience and insights derived from government service. Like many of its immediate neighbours, Sri Lanka has inherited a colonial IP framework. This has been further circumscribed by a series of international commitments to uphold minimum substantive standards of IP protection. However, the authors urge legislators and policymakers not to squander the opportunities presented within this international IP framework. They identify sites that have the potential to craft a balanced IP regime catering to domestic needs and priorities, including public health prerogatives, cultural policy, and education. It, therefore, is possible to respect international commitments while being more sensitive to local priorities. The argument is cleverly crafted, clearly written, and compellingly argued. For example, while the substantive international standards for patent subsistence may be harmonised, we are reminded that individual elements or concepts within these standards have wriggle room. While international patent law requires that inventions be novel, countries retain the choice to implement this as an absolute, relative, or local novelty standard. Defences and limitations, such as compulsory licences both for technology (as the pandemic has reminded us) and for ensuring the availability of copyright works in a local language, remain viable and should be utilised. Countries also retain the ability to exercise a choice between a national or international rights exhaustion regime. Exploring these spaces is, therefore, one of vii

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the two main contributions of this book. The other relates to more effective IP policy design and implementation. The book identifies best practices when drafting legislation—the need for wide-ranging consultations and evidence-based policymaking features in these pages—while the authors conclude by advocating practical and procedural reforms to the national IP office, such as digitisation and improvements to the dispute resolution landscape. This book is, therefore, a valuable contribution for anyone interested in how developing countries can, in very practical terms, reconcile competing tensions and craft a better IP ecosystem. It is accessibly written and extremely well-researched. The authors are to be congratulated on their achievements. These are ideas that deserve to travel widely. Dev Saif Gangjee Professor of IP Law University of Oxford Oxford, United Kingdom

Preface

Developing countries of the Global South found the notion of Intellectual Property (“IP”) repugnant to their economic, social, political, and cultural contexts. They saw IP as a creature of the industrialised world—the Global North. To some extent, they still do. But the union of IP and global trade, when members of the World Trade Organization (“WTO”) negotiated and entered into the Agreement on the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), has compelled the developing world even unwillingly to fully embrace the IP system. Countries that fail to do so face the threat of being excluded from the WTO’s multilateral trade system, risk sanctions from their trading partners, and are likely to lose foreign investment. Thus, it is not surprising that Sri Lanka, a founding member of the WTO, decided to bring its laws into conformity with TRIPS by enacting the Intellectual Property Act 2003 (“IP Act”), a statute that was specifically crafted for this purpose. Almost 20 years have elapsed since the enactment of the IP Act. But as a nation, Sri Lanka is still a developing country grappling with the very same problems it did decades ago. In economic terms, the country is doing far worse at present, lagging considerably behind its neighbours. As we pen down these words, Sri Lanka was facing its worst economic crisis since gaining independence from British rule in 1948. In March 2022, the foreign reserves of the country hit a record low of US$1.9 billion. The country was already facing a fuel and food shortage, requiring rationing measures to be put into place. Public hospitals were unable to treat patients and perform surgeries due to shortages in medicines and medical equipment. A longescalating fiscal and economic crisis, compounded by the COVID-19 pandemic, forced Sri Lanka to announce a default on all its outstanding foreign debt, running into US$51 billion. Life as we know it had come to a standstill. The beautiful island, home to nearly 22 million people, was on the brink of economic destruction. Given the economic hardships, it was not surprising to see the people of Sri Lanka taking to the streets with protests in all parts of the country seeking political change. These protests, which began in small pockets, gathered momentum and magnitude over a period of a month. At the centre of this struggle was the peaceful protest in Gall Face, a green open space opposite the Presidential Secretariat in the heart of Sri Lanka’s commercial capital, Colombo. Thousands of protesters came together, ix

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marking the beginning of “Occupy Galle Face” and continued their protest for weeks voicing a singular and clear message—the need for political change and progressive policies. A striking feature of all these protests was the unity among the Sri Lankan people. Perhaps, this is the silver lining in the midst of all the chaos. There is still hope for Sri Lanka to bounce back as a united nation. There are many factors that have cumulatively led to Sri Lanka’s current economic and political predicament. Inconsistent government policies, mismanagement, corruption, and the lack of visionary leadership have been the key obstacles. But as a country, Sri Lanka has tremendous potential. When one looks back at Sri Lanka’s ancient history, it had been a highly innovative and enterprising nation. It had made vast strides in innovation, industry, and also culturally. However, successive governments that came into power after independence have failed to realise Sri Lanka’s true potential. They have neglected to harness Sri Lanka’s natural and human resources. As we see it, in the area of creativity, innovation, research and development, and entrepreneurship, the lack of a coherent and robust national IP policy and an IP legal framework that is effective but at the same time calibrated to reflect the country’s domestic interests are two of the key factors that have held back Sri Lankan innovators, researchers, and entrepreneurs for decades. A report titled Integrating Intellectual Property into Innovation Policy Formulation in Sri Lanka published by the World Intellectual Property Organization (“WIPO”) in 2015, among other things, pointed out that the responsibility for research, science, and technology was spread across many ministries and agencies lacking in efficiency and coordination. The WIPO report also revealed that there was a decline in both the interest in science and the number of scientists in the country. Importantly, the WIPO report noted that although several policies had been formulated in the area of science and technology, none had satisfactorily incorporated IP considerations into them. In contrast, Sri Lanka’s neighbours in the region have adopted comprehensive national IP policies that focus on the role of IP law in promoting a culture of innovation and creativity. For instance, India adopted its National Intellectual Property Rights Policy in 2016. India’s national IP policy was aimed at creating a dynamic, vibrant, and balanced IP rights system to “foster creativity and innovation and thereby promote entrepreneurship and enhance socio-economic and cultural development” and “focus on enhancing access to health care, food security, and environmental protection, among other sectors of vital social, economic, and technological importance.” Bangladesh followed suit in 2018 with its national IP policy aiming to establish a “balanced IP infrastructure in the country and to make IP an integral part of the national development plans and strategy.” We firmly believe that the time is ripe for Sri Lanka to revaluate its strategy and approach towards IP protection with a view of entirely revamping and updating the current IP legal framework. Five years ago, we approached the Ministry of Trade to pitch an idea for a comprehensive and ambitious study, in collaboration with a local research institute, to develop a national IP policy for Sri Lanka and recommend changes to the provisions of the IP Act. Unfortunately, but somewhat unsurprisingly, our ideas fell on deaf ears. To date, however, Sri Lanka has not officially developed or adopted a national IP policy. Nor has it taken the time to comprehensively assess

Preface

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its current IP law to identify areas for improvement. Only piecemeal amendments to the IP Act have been made from time to time. It is against this backdrop that we decided to alter our project from what we had originally conceived into an independent endeavour to systematically evaluate the key provisions of Sri Lanka’s IP Act. This book is a culmination of that effort. We believe that the timing of this book is impeccable, as it aligns itself with a change in mindset and attitude among Sri Lankans, particularly among the younger population. Our hope is that the contents of this book will spark much-needed discussion and debate to facilitate change in both policy and law to steer Sri Lanka into economic prosperity. Singapore, Singapore Brisbane, Australia Brisbane, Australia

Althaf Marsoof Kanchana Kariyawasam Chamila Talagala

Contents

1 Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1 The Struggle to Be Part of a Global System . . . . . . . . . . . . . . . . . . . . 1.2 A Snapshot of Sri Lanka’s IP Legal Framework . . . . . . . . . . . . . . . . . 1.3 Approach of the Book and Its Scalability . . . . . . . . . . . . . . . . . . . . . . . 1.4 A Roadmap of the Book . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Crafting Domestic Intellectual Property Law–International Obligations, Flexibilities, and Approaches . . . . . . . . . . . . . . . . . . . . . . . . 2.1 International Obligations and Flexibilities . . . . . . . . . . . . . . . . . . . . . . 2.1.1 Minimum Standards . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.2 Flexibilities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2 Formulating Domestic Intellectual Property Law and Addressing National Interests . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2.1 Legislating Through Consultation . . . . . . . . . . . . . . . . . . . . . . 2.2.2 Legislating with Evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2.3 Legislating with a Comparative Lens . . . . . . . . . . . . . . . . . . . . 2.3 From Process to Substance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.1 The Evolution of Patent Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2 Role of R&D in Driving Innovation . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3 Patentable Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.1 Inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.2 Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.3 Inventive Step . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.4 Industrial Applicability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4 Nature and Scope of Patent Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4.1 Scientific Research and Experimental Use Exception . . . . . . 3.4.2 The Regulatory Review or Bolar Exception . . . . . . . . . . . . . .

1 3 4 9 10 10 13 14 15 16 19 20 22 23 25 25 27 28 31 34 34 39 44 47 49 51 53

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3.4.3 Compulsory Licensing and the Local Working Requirement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4.4 Exhaustion of Rights and Parallel Imports . . . . . . . . . . . . . . . 3.5 Utility Models . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.6 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 Plant Varieties, Farmers’ Rights, and Access to Genetic Resources . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.1 A Snapshot of Sri Lanka as an Agricultural Nation . . . . . . . . . . . . . . 4.2 The International Framework . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3 Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 . . . . 4.3.1 Overview of the Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3.2 A Critical Evaluation of the Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 . . . . . . . . . . . . . . . . . . . 4.3.3 A Revised Bill After a Decade, But Still No Law in Place . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.4 Biopiracy and Access to Genetic Resources . . . . . . . . . . . . . . . . . . . . 4.4.1 Draft Law on Access to Genetic Resources . . . . . . . . . . . . . . 4.4.2 A Critical Review of the Draft Law . . . . . . . . . . . . . . . . . . . . . 4.5 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 Trade Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.1 The Evolution of Trade Mark Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2 Registrable Trade Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2.1 Signs Capable of Being Registered as a Trade Mark . . . . . . . 5.2.2 Inadmissibility of Marks on Objective Grounds . . . . . . . . . . . 5.2.3 Grounds of Inadmissibility and the Paris Convention . . . . . . 5.2.4 Inadmissibility of Signs on the Basis of Third-Party Rights or Interests . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3 Nature and Scope of Trade Mark Rights . . . . . . . . . . . . . . . . . . . . . . . 5.3.1 Nature of Trade Mark Rights . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3.2 Scope of Protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.4 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Geographical Indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.1 Sri Lankan Geographical Indications . . . . . . . . . . . . . . . . . . . . . . . . . . 6.2 The International Framework for the Protection of Geographical Indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.3 The Adequacy of Sri Lanka’s Legal Framework for the Protection of Geographical Indications . . . . . . . . . . . . . . . . . . 6.3.1 The Sui Generis Regime . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.3.2 Certification and Collective Marks . . . . . . . . . . . . . . . . . . . . . .

56 69 71 73 77 83 84 86 89 90 93 104 107 110 113 117 120 123 124 125 126 127 137 144 153 153 156 163 166 169 170 174 176 176 181

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6.3.3 Unfair Competition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.4 Calls for a Domestic Register of Geographical Indications . . . . . . . . 6.4.1 The Concerns and Perceptions of Local Industries and Academics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.4.2 Some Reflections on the Introduction of a Domestic Geographical Indications Register . . . . . . . . . . . . . . . . . . . . . . 6.5 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

184 184

191 199 201

7 Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.1 The Evolution of Copyright Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2 Works Protected . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2.1 Literary, Artistic and Scientific Domain . . . . . . . . . . . . . . . . . 7.2.2 Original Intellectual Creations . . . . . . . . . . . . . . . . . . . . . . . . . 7.2.3 Fixation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3 Nature and Scope of Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3.1 Moral Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3.2 Economic Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.4 Exceptions and Limitations to Copyright Protection . . . . . . . . . . . . . 7.4.1 The Fair Use Exception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.4.2 Special Exceptions in the Berne Appendix . . . . . . . . . . . . . . . 7.5 Weaknesses and Inadequacies–The Access Problem . . . . . . . . . . . . . 7.6 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

203 204 206 207 211 215 216 218 219 229 231 240 242 246 248

8 Traditional Cultural Expressions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.1 Defining Traditional Cultural Expressions . . . . . . . . . . . . . . . . . . . . . . 8.2 Traditional Cultural Expressions of Sri Lanka . . . . . . . . . . . . . . . . . . 8.3 Protection of Traditional Cultural Expressions . . . . . . . . . . . . . . . . . . 8.3.1 Why Should Traditional Cultural Expressions Be Protected? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3.2 Attributes of Protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3.3 Positive Protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3.4 Defensive Protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4 Protection of “Expressions of Folklore” Under Sri Lanka’s Intellectual Property Act 2003 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.1 Protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.2 Limitations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.3 Enforcement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.4 Benefit-Sharing Arrangements . . . . . . . . . . . . . . . . . . . . . . . . . 8.5 Recommendations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

251 252 257 260

185

260 262 263 269 270 270 275 275 279 280 282

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9 Way Forward . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.1 Digitisation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.2 A Proactive Intellectual Property Office . . . . . . . . . . . . . . . . . . . . . . . . 9.3 A Robust, Efficient, and User-Friendly Intellectual Property Dispute Resolution Landscape . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.4 Closing Remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Correction to: Plant Varieties, Farmers’ Rights, and Access to Genetic Resources . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

285 286 288 292 301 301 C1

Index . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 303

About the Authors

Althaf Marsoof is an Assistant Professor attached to the Division of Business Law of the Nanyang Business School, Nanyang Technological University (NTU), Singapore. He also serves as a Fellow of NTU’s prestigious Renaissance Engineering Programme. Prior to joining NTU, he spent three years at the Dickson Poon School of Law at King’s College London, where he completed his doctoral research that explored approaches to holding internet intermediaries accountable for infringements of trade mark rights. His research was fully funded by the Dickson Poon Scholarship. This research was also the basis for his monograph titled Internet Intermediaries and Trade Mark Rights, published in June 2019. Before moving into full-time academia, he worked as a State Counsel attached to the Attorney General’s Department in Sri Lanka. Althaf holds a Bachelor of Science from the Curtin University of Technology, a Master of Laws from the University of Cambridge, a Master of Philosophy from the University of Queensland, and a Doctor of Philosophy from King’s College London. Kanchana Kariyawasam is an Associate Professor at the Griffith Business School, Griffith University, Australia. She holds a Bachelor of Laws (Hons.) from the University of Colombo, a Master of Laws (Advanced) from the University of Queensland, and a Doctor of Philosophy from Griffith University. She specialises in the field of intellectual property law. She is an Adjunct Research Fellow of the Australian Centre for Intellectual Property in Agriculture (ACIPA) in Australia and a Member of the Law Futures Centre and Griffith Asia Institute (GAI) at Griffith University. She was a visiting researcher at the University of Meiji and Kanazawa University in Japan, where she collaborated on several research projects in the area of patent law. Prior to joining Griffith University, she worked as a Postdoctoral Research Fellow at the TC Beirne School of Law at the University of Queensland, Australia. Chamila Talagala is a member of the Australian Centre for Intellectual Property in Agriculture (ACIPA). Formerly, he was a Senior Lecturer at the Faculty of Law of the General Sir John Kotelawala Defence University in Sri Lanka and a Legal Advisor to the Ministry of Education in Sri Lanka. He has previously held academic positions at Griffith University, the General Sir John Kotelawala Defence University and the xvii

xviii

About the Authors

Open University of Sri Lanka. Chamila’s doctoral research at Griffith University on copyright and access to knowledge was fully funded by two prestigious postgraduate research scholarships. He has authored a number of national and international research publications and is also the author of a monograph titled Copyright Law and Translation: Access to Knowledge in Developing Economies. Chamila holds a Bachelor of Laws from the University of Colombo, a Master of Laws from the University of Colombo and a Doctor of Philosophy from Griffith University.

Abbreviations

ADR African Model Law

AI Berne Appendix Berne Convention

CBD CCD

CJEU Code of IP COVID-19

Director-General Draft Law

Alternative dispute resolution African Model Legislation for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources, adopted in 2000 by the Organisation of African Unity Artificial intelligence Appendix to the Berne Convention introduced by the Paris Act of 24 July 1971 Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, 161 U.N.T.S. 3, as amended on 28 September 1979 Convention on Biological Diversity, 5 June 1992, 1760 U.N.T.S. 69 Convention on the Protection and Promotion of the Diversity of Cultural Expressions, 20 October 2005, 2440 U.N.T.S. 311 Court of Justice of the European Union Code of Intellectual Property Act No 52 of 1979 Coronavirus Disease 2019 caused by the severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2) Director-General of the National Intellectual Property Office Daft Genetic Resources—Access and Benefit Sharing Act of 2000

xix

xx

Enforcement Directive

EU FAO FDI GATT GDP Geneva Act

GERD GI Bill

GII GIs ICLP Arbitration Centre

IITs Indian GIs Act Information Society Directive

IP IP Act IPOS ISP ITPGR

IU

Lisbon Agreement

Abbreviations

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights [2004] OJ L 157/16 European Union Food and Agricultural Organization of the United Nations Foreign Direct Investment General Agreement on Tariffs and Trade Gross Domestic Product Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, 20 May 2015, WIPO Doc L1/DC/19 Gross Domestic Expenditure on Research and Experimental Development Intellectual Property (Amendment) Bill 2022, as published in the Government Gazette dated 10.2.2022 Global Innovation Index Geographical indications Arbitration Centre of the Institute for the Development of Commercial Law and Practice International investment treaties Geographical Indications of Goods (Registration and Protection) Act 1999 (India) Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L 167/10 Intellectual property Intellectual Property Act No 36 of 2003 Intellectual Property Office of Singapore Internet service provider International Treaty on Plant Genetic Resources for Food and Agriculture, 3 November 2001, 2400 U.N.T.S. 303 International Undertaking on Plant Genetic Resources, 23 November 1983, UN Doc C/83/REP (1983) Lisbon Agreement for the Protection of Appellations of Origin and their International

Abbreviations

Madrid Agreement

Marrakesh Treaty

MNCs Model Provisions on Folklore

NCP New York Convention

NIPO NMRA NSF Paris Convention

PBR PGR PIC PPV Bill PPVFR Act R&D Regulation on Quality Schemes

SLNAC SMEs SPC

xxi

Registration, 31 October 1958, 923 U.N.T.S. 205, as amended on 28 September 1979 Madrid Agreement Concerning the International Registration of Marks, 14 April 1891, 23 U.S.T. 1353, 828 U.N.T.S. 389, as amended on 28 September 1979 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, 27 June 2013, 52 I.L.M. 1312 Multi-national corporations Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions Network carriage provider United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards, 10 June 1958, 21 U.S.T. 2517 National Intellectual Property Office National Medicines Regulatory Authority National Science Foundation Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979 Plant breeders’ rights Plant genetic resources Prior informed consent Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 Protection of Plant Varieties and Farmers’ Rights Act 2001 (India) Research and development Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, [2012] OJ L 343/1. Sri Lanka National Arbitration Centre Small and medium-sized enterprises State Pharmaceutical Corporation

xxii

SPMC TCEs TK Trade Marks Directive of 1988

Trade Marks Directive of 2008

Trade Marks Directive of 2015

TRIPS

Tunis Model Law on Copyright UK UKIPO UNCTAD UNDRIP

UNEP UNESCO UPOV Convention

US WHO WIPO WIPO Model Law on Patents

Abbreviations

State Pharmaceutical Manufacturing Corporation Traditional cultural expressions Traditional knowledge First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks [1989] OJ L 40/1 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to Approximate the Laws of the Member States Relating to Trade Marks [2008] OJ L 299/25 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to Approximate the Laws of the Member States Relating to Trade Marks (Recast) [2015] OJ L 336/1 Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) Tunis Model Law on Copyright for Developing Countries United Kingdom UK Intellectual Property Office United Nations Conference on Trade and Development United Nations Declaration on the Rights of Indigenous Peoples, 2 October 2007, A/RES/61/295 United Nations Environment Programme The United Nations Educational, Scientific and Cultural Organization International Convention for the Protection of New Varieties of Plants, 2 December 1961, as revised in 1972, 1978, and 1991 United States World Health Organization World Intellectual Property Organization Model Law for Developing Countries on Inventions: Volume 1 Patents

Abbreviations

WIPO Model Law on Trade Marks

WTO

xxiii

Model Law for Developing Countries on Marks, Trade Names, and Acts of Unfair Competition World Trade Organization

Chapter 1

Introduction

This book was written and published in rather strange times–when an invisible enemy, a novel coronavirus responsible for causing the Coronavirus Disease 2019 (“COVID19”), almost brought humankind to its knees. But as a species, we have shown tremendous resilience. We have overcome the odds and have been able to manage what we can arguably describe as one of the worst pandemics of the twenty-first century. In this struggle, aside from our sheer determination to survive, it was our ingenuity, innovative thinking, and creativity that came to our aid. Therefore, there is no better time to have written a book that deals with the system that protects intellectual property (“IP”), which has been hailed as a tool for promoting and protecting intellectual and industrial creations of the mind. But somewhat paradoxically, the COVID-19 pandemic also revealed that the IP system could be inequitable at times. For instance, many developing countries faced tremendous hardships in gaining access to essential medicines, including vaccines, to counter COVID-19 because of the monopolistic nature of IP.1 They even called for the waiver of IP rights in respect of patents.2 This shows that the IP system cannot be treated as “one-size-fits-all.” It must be carefully calibrated to address the individual needs and interests of a diverse pool of countries and their citizens. In writing this book, we have consciously made a choice to focus on the perspective of Sri Lanka–a developing nation located in tropical South Asia. To many, Sri Lanka is the “jewel” of the Indian Ocean in view of its natural beauty, delightful local cuisines, rich cultural heritage, ancient architectural marvels, and warm and friendly people. Although Sri Lanka is classified as a lower-middle-income country with a 1 A McMahon, “Global Equitable Access to Vaccines, Medicines and Diagnostics for COVID-19: The Role of Patents as Private Governance” (2021) 47 Journal of Medical Ethics 142; O Gurgula and J Hull, “Compulsory Licensing of Trade Secrets: Ensuring Access to COVID-19 Vaccines via Involuntary Technology Transfer” (2021) 16 Journal of Intellectual Property Law & Practice 1242. 2 NS Jecker and CA Atuire, “What’s Yours is Ours: Waiving Intellectual Property Protections for COVID-19 Vaccines” (2021) 47 Journal of Medical Ethics 595.

This book reflects and represents the law and events as at 15 March 2022. © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_1

1

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1 Introduction

Gross Domestic Product or GDP per capita of US$ 3,682.04 in the year 2020,3 the country has known better times in its 2,500 years of recorded history. Ancient Sri Lanka was a thriving civilisation centred around Buddhist traditions and teachings. From the establishment of the Anuradhapura Kingdom (in 437 BC) to the falling of Sri Lanka’s last kingdom, the Kandyan Kingdom, in 1815, ancient rulers spent a great deal of time innovating in various areas such as agriculture and irrigation, construction and architectural design, and medicine, as well as to promote cultural development in the form of literature and art. It does not come as a surprise to note that Sri Lanka’s ancient tank-based irrigated agricultural system in the country’s dry zone is one of the oldest historically known agricultural systems in the world.4 Indeed, ancient Sri Lanka played a crucial role in trade routes between China and Europe, becoming well-known for its rice production and spices. What is striking about ancient Sri Lanka’s success in innovation, literature, and trade is that it took place without the existence of a system that is even remotely analogous to the modern-day IP system. In fact, innovation, cultural progress, and trade were based on knowledge sharing between generations and the people. Unfortunately, it appears that as a result of colonisation by European powers, i.e., the Portuguese (1505–1658), the Dutch (1658–1796), and the British (1796–1948), the progress that Sri Lanka made during the ancient kingdoms slowly came to a standstill and instead “Western” notions and concepts about property seeped into the country. The introduction of the IP system into Sri Lanka’s legal landscape was purely a result of the British rule that lasted from 1796 to 1948. However, when we consider the progress of “independent” Sri Lanka, it is not comparable to the vast strides made during the ancient kingdoms. Given that the economic progress of countries around the world is commonly attributed to the efficiency, efficacy, and robustness of national IP systems,5 one must pause to consider on serious terms whether Sri Lanka’s IP system has brought about any good in terms of encouraging local innovation, promoting cultural development, and enabling local enterprises to have a better global reach. With that in mind, in writing this book titled “Reframing Intellectual Property Law in Sri Lanka: Lessons from the Developing World and Beyond,” we consider how Sri Lanka’s IP law can be repositioned to better meet domestic concerns and needs while adhering to international norms and expectations.

3

World Bank, Gross Domestic Product (GDP) Per Capita in the Asia–Pacific Region in 2020, By Country (15 September 2021) https://www.statista.com/statistics/632340/asia-pacific-gross-dom estic-product-per-capita-by-country/. 4 N Abeywardana et al., “Indigenous Agricultural Systems in the Dry Zone of Sri Lanka: Management Transformation Assessment and Sustainability” (2019) 11 Sustainability 910. 5 See, e.g., DM Gould and WC Gruben, “The Role of Intellectual Property Rights in Economic Growth” (1996) 48 Journal of Development Economics 323; V Raghupathi and W Raghupathi, “Innovation at Country-Level: Association Between Economic Development and Patents” (2017) 6 Journal of Innovation and Entrepreneurship 1.

1.1 The Struggle to Be Part of a Global System

3

1.1 The Struggle to Be Part of a Global System With the integration of IP with the multilateral trade system of the World Trade Organization (“WTO”), members of the WTO became obligated to afford minimum standards of IP protection under their national laws as required under the Agreement on the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”)6 and the related IP treaties of the World Intellectual Property Organization (“WIPO”) referred to therein. On the one hand, failure to adhere to these minimum standards could spell disaster for developing countries heavily reliant on their exports to sustain economic growth, as the more industrialised nations have the option of imposing trade sanctions to retaliate against low standards of IP protection. On the other hand, the lack of an adequate level of IP protection could drive away Foreign Direct Investment (“FDI”) to other jurisdictions with more robust IP regimes. As such, conformity to the minimum standards of IP protection is crucial for developing countries such as Sri Lanka. However, to comply with TRIPS, developing countries do not have to follow, imitate, or implant IP laws of the more developed and industrialised nations. Doing so would undermine the needs and interests of individual developing countries and make the enforcement of IP rights within their jurisdiction challenging, if not futile. This is mainly because the economic, social, political, and cultural contexts of developing countries vastly differ from that of the developed world. And even between developing countries, there can be many divergences in this regard. Although, for the most part, TRIPS and other related WIPO treaties mandate compliance with minimum IP protection and enforcement standards, there are many inbuilt flexibilities that developing countries can make use of to address their local needs and interests. Yet the question remains whether developing countries have been able to use these flexibilities, and if so, to what extent. In the chapters that follow, this book considers these matters from the perspective of Sri Lanka. Sri Lanka, like its neighbours in the region, is heavily reliant on exports and FDI. In the past two years, the COVID-19 pandemic has severely affected the country’s economy, depleting foreign reserves to record levels.7 In view of this, it is crucial for Sri Lanka to boost its exports and attract FDI to maintain a healthy level of foreign reserves and fuel economic development. Since Sri Lanka’s major export destinations predominantly comprise markets of the developed world (e.g., the United States and the European Union), which often insist on stronger IP protection, an IP regime that fully complies with TRIPS standards is a sine qua non for Sri Lanka to have a healthy relationship with its key trading partners. At the same time, since FDI usually flows from the more developed countries to countries that are still developing, investors in economically powerful countries insist on the need for minimum standards of IP protection or even higher standards (TRIPS-plus standards). This is evident from 6

Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994). 7 Central Bank of Sri Lanka, Annual Report 2020 (2021), 115–117 https://www.cbsl.gov.lk/en/pub lications/economic-and-financial-reports/annual-reports/annual-report-2020.

4

1 Introduction

the numerous international investment treaties or IITs between developed nations (like the United States) and less developed countries.8 As such, Sri Lanka is not in a position to deviate from its TRIPS obligations in view of its own economic interests. However, while adhering to minimum standards of IP protection, Sri Lanka’s IP regime must be sensitive to the country’s domestic concerns and interests. A country’s development must be measured holistically and not solely on economic terms. Thus, among other things, Sri Lanka’s IP regime and legal framework must ensure that it promotes access to knowledge and new technologies, incentivises local innovation, safeguards cultural heritage, genetic resources, and traditional knowledge, and facilitates local industries and businesses to have a greater global reach. However, in the pages that follow, we demonstrate that, in certain respects, the current IP regime in Sri Lanka has failed to achieve that goal.

1.2 A Snapshot of Sri Lanka’s IP Legal Framework Owing to its historical antecedents, Sri Lanka has inherited a mixed legal system, which has been compared to a coloured mosaic, comprising many legal traditions and special laws.9 The Roman-Dutch law was introduced to the country as a result of the Dutch occupation from 1658 to 1796. The Roman-Dutch law continued in force even after the British took over in 1796. This was in view of a rule in British constitutional law according to which the law in force in a colony at the time of its conquest was to remain unchanged subject to the power of the British sovereign to alter it.10 Accordingly, the Roman-Dutch law became the common law of Sri Lanka. However, during the period of British occupation (i.e., between 1796 and 1948), principles of English law seeped into the country and have had a significant impact on the development of commercial laws. Laws that protect and enforce IP are of recent origin in Sri Lanka. Prior to the European colonisation of the country, a process that began in 1505 with the Portuguese establishing a trading post on the Western coast, IP was an alien concept to the people of Sri Lanka. Although the Roman-Dutch law made no specific reference to IP, during the British rule of Sri Lanka or “Ceylon,” as it was then called, from 1796 to 1948, the British IP system and related laws were introduced to Sri Lanka. English law was introduced to Sri Lanka’s legal system in a number of ways,11 but in the field of IP, this was done in mainly two ways. First, when the local legislature in the colony enacted statutes that were identical to statutes enacted by the UK Parliament. Second, 8

CS Talagala, Copyright Law and Translation: Access to Knowledge in Developing Economies (Routledge 2021) 182–83, 192–94. 9 LJM Cooray, An Introduction to the Legal System of Sri Lanka (Stamford Lake 2003), 1 (“Many different systems of law have affected the development of the law of Sri Lanka. These are Sinhalese law (today more commonly referred to as Kandyan law), Buddhist law, Hindu law, Tesewalamai law, Islamic law, Mukkuvar law, Roman-Dutch law and English law”). 10 Ibid, 29. 11 Ibid, 31.

1.2 A Snapshot of Sri Lanka’s IP Legal Framework

5

when statutes enacted by the UK Parliament were extended and applied in Sri Lanka due to its colonial status. These laws were devised to suit the interests of the colonial masters rather than the interests of the country. This is particularly so in the case of copyright.12 Apart from that, during this period, the British colonial administration brought Sri Lanka under the purview of the major IP treaties of the WIPO, such as the Paris Convention on the Protection of Industrial Property (“Paris Convention”)13 and the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”),14 as the accession to these treaties by the United Kingdom covered its colonies as well. The Paris Convention and the Berne Convention were instruments developed by industrially and economically more advanced European nations incorporating a set of international norms well suited to their social, economic, and political conditions as well as to meet the demands of their industries and people. In their original formulation, these instruments did not give due consideration to the socio-economic, cultural and political circumstances prevailing in the European colonies, including Sri Lanka. Nor did they cater to the interests and needs of the colonial subjects.15 Although Sri Lanka gained independence in 1948, the laws enacted during the British colonial period continued to govern IP in Sri Lanka until the Code of Intellectual Property Act 1979 (“Code of IP”)16 was enacted. The Code of IP is considered a turning point in the evolution of IP law in Sri Lanka. It was the first time that all laws governing IP were consolidated into a single statute. Apart from that, one of the main objectives of the Code of IP was to cut loose from British colonial links insofar as the protection of IP was concerned and to create a legal environment conducive to the economic and social development of Sri Lanka.17 Be that as it may, the provisions in the Code of IP were primarily based on the “model laws” prepared by the WIPO for developing countries.18 This was because when devising a new IP regime for the country, Sri Lanka had to comply with the provisions in the Paris and Berne conventions to which Sri Lanka was still a party. The

12

Parliament of Sri Lanka, Parliamentary Debates (25 May 1979), col 501 (speech by Hon. Lalith Athulathmudali). 13 Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979. 14 Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, 161 U.N.T.S. 3, as amended on 28 September 1979. 15 L Bently, “Copyright, Translations, and Relations Between Britain and India in the Nineteenth and Early Twentieth Centuries” (2007) 82 Chicago-Kent Law Review 1181, 1240. 16 Code of Intellectual Property Act No 52 of 1979. 17 DM Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Sarasavi Publishers 2010), 18. 18 Ibid.

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1 Introduction

WIPO model laws cover patents,19 trade marks,20 and copyright.21 The provisions of these model laws were derived from the Paris and Berne conventions. Although Sri Lanka became a party to the Paris and Berne conventions under British rule, even after gaining independence, it had to conform to the minimum standards of protection as set out in these instruments. Therefore, the provisions of the Code of IP had to comply with the WIPO treaties. However, Sri Lanka faced significant challenges in formulating its new IP law. On the one hand, Sri Lanka needed to urgently revise its IP regime to suit the changing conditions of the country occasioned by the introduction of the new economic policy in 1977. On the other hand, since any revision to domestic IP law had to comply with the Paris and Berne conventions, Sri Lanka required the expertise to ensure that the revised IP regime was compatible with international standards. However, the country lacked the technical expertise to formulate such a regime. It was against this background that Sri Lanka sought the assistance of the WIPO in formulating its new IP regime. The WIPO is the leading provider of technical assistance to developing countries in the field of IP.22 Through its secretariat, the WIPO “provides technical assistance to developing countries in the areas of legislative advice, human resource development and training, institutional development and automation, and enforcement.”23 However, as Susan Isiko Štrba has argued, “WIPO’s role is not to promote the needs of developing countries, but the protection and enforcement of intellectual property rights.”24 Although this may have changed since the adoption of WIPO’s Development Agenda in 2007,25 development was not a focus of the WIPO prior to that. Therefore, the technical assistance offered by the WIPO to developing countries like Sri Lanka before the adoption of its development agenda may be seen as a means of strictly incorporating the protection standards set out in the international IP conventions into the domestic laws of developing countries.26 The adoption of the WIPO model laws in formulating Sri Lanka’s Code of IP is a good example of this. Thus, despite the aims and intentions of those who proposed the Code of IP, in 19

WIPO, Model Law for Developing Countries on Inventions: Volume 1 Patents, WIPO Publication No 840 (E) (WIPO 1979). 20 WIPO, Model Law for Developing Countries on Marks, Trade Names, and Acts of Unfair Competition (BIRPI 1967). 21 WIPO and UNESCO, Tunis Model Law on Copyright for Developing Countries, WIPO Publication No 812(E) (WIPO/UNESCO 1976). 22 SI Štrba, International Copyright Law and Access to Education in Developing Countries: Exploring Multilateral Legal and Quasi-Legal Solutions (Martinus Nijhoff 2012), 182. 23 Ibid. 24 Ibid, 98. 25 J De Beer, “Defining WIPO’s Development Agenda” in J De Beer (ed), Implementing the World Intellectual Property Organization’s Development Agenda (Wilfrid Laurier University Press 2009), 2. 26 Štrba (n 22) 98 (“WIPO’s technical assistance has in the past focused on helping developing countries in drafting or implementing their laws according to international IP conventions and not to promote access to protected works. The fact that many developing countries copied the model laws of WIPO can better be explained by the fact that they lacked technical expertise and personnel to draft complicated IP laws and thus ignorantly welcomed the technical assistance of WIPO”).

1.2 A Snapshot of Sri Lanka’s IP Legal Framework

7

reality, its provisions did not introduce a home-grown IP regime that catered to local requirements. In 2003, the Code of IP was repealed and replaced by the Intellectual Property Act 2003 (“IP Act”).27 The IP Act sets out the statutory regime for the protection and enforcement of IP rights in Sri Lanka that is currently in operation. The impetus for enacting the IP Act came from Sri Lanka’s accession to the WTO, which required compliance with all the WTO agreements, including TRIPS. TRIPS was primarily a response to the inadequacies of the Paris and the Berne conventions and was an initiative of the developed countries, particularly the United States, the European Union, and Japan, which are net exporters of IP products to the developing world.28 Before TRIPS, the protection of IP rights at the international level was primarily a matter for the WIPO. Although from its inception in 1967, the WIPO has been responsible for the administration of the Paris and Berne conventions, neither the said conventions nor the initiatives of the WIPO were effective in combating the growing trade in pirated and counterfeit products, which became clearly visible from the 1970s.29 TRIPS, which created a linkage between the protection of IP and the world trade system, was a response to this. The eighth round of multilateral trade negotiations conducted within the framework of the General Agreement on Tariffs and Trade (or GATT) between 1986 and 1994, also known as the “Uruguay Round,” provided a suitable platform for developed nations led by the United States, the European Union and Japan to effectively move forward their agenda of linking the protection of IP with the world trade system, by which these countries believed that IP rights could be more effectively protected and enforced around the world.30 Sri Lanka believed that the overall outcome of the Uruguay Round of negotiations was favourable to the country, mainly because of the potential benefits the country was hoping to gain from the new multilateral trade system.31 As such, Sri Lanka signed the Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations,32 the first of the WTO agreements, on 15 April 1994 and ratified the Agreement Establishing the World Trade Organization33 on 1 June 1994.34 With this ratification, Sri Lanka joined the membership of the WTO and became bound by all its agreements, including TRIPS. 27

Intellectual Property Act No 36 of 2003 (“IP Act”). EH Smith, “Worldwide Copyright Protection under the TRIPS Agreement” (1996) 29 Vanderbilt Journal of Transnational Law 559, 560. 29 M Blakeney, Intellectual Property in World Trade (1995) 1 International Trade Law & Regulation 76. 30 MP Ryan, Knowledge Diplomacy: Global Competition and the Politics of Intellectual Property (Brookings Institution Press 1988), 92. 31 Central Bank of Sri Lanka, Annual Report 1994 (1995), 105 https://www.cbsl.gov.lk/en/public ations/economic-and-financial-reports/annual-reports/annual-report-1994. 32 Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations, 15 April 1994, 1867 UNTS 14, (1994) 33 ILM 1143. 33 Marrakesh Agreement Establishing the World Trade Organization, 15 April 1994, 1867 U.N.T.S. 154, 33 I.L.M. 1144. 34 Central Bank of Sri Lanka (n 31) 105. 28

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1 Introduction

As a result, there was a need to ensure that Sri Lanka’s domestic IP law complied with TRIPS. The IP Act was enacted on 12 November 2003. When the Bill proposing a TRIPS-compliant IP regime was introduced in Parliament, it was observed that “[i]t is […] for Sri Lanka’s sake” that the Government intended to introduce such a regime,35 the main objective of which was to assist the country “to move forward in [the] knowledge-based economy.”36 Much water has flowed under the bridge since the enactment of this law. The dimensions of the knowledge-based economy have entirely shifted with advancements and developments in new technologies, and the country has encountered many changes, challenges, and problems, the outbreak of the COVID-19 pandemic being the most recent. In particular, the COVID-19 pandemic has posed a plethora of new issues and challenges for IP regimes throughout the world, including the need for equitable access to medicines, access to knowledge for education that recognises developments in technologies and prevailing circumstances, dissemination and transfer of new technologies, the increasing need for carrying out business online, and online mechanisms for the registration, protection and enforcement of IP rights. However, it is noteworthy that the IP Act has been amended only twice since its enactment. The first37 empowered the Minister to prescribe geographical indications (“GIs”) in respect of any goods. The second38 was to give effect to the Marrakesh Treaty,39 which aims to increase access to books, magazines, and other printed materials to benefit the world’s population with print disabilities.40 At the time of writing, a Bill had been presented in Parliament to amend the provisions of the IP Act, which is intended to introduce a registration system for GIs.41 When this Bill is passed into law, the IP Act would have seen just three amendments in the 18 years it has been in operation. In our view, this in itself is a good enough and sufficient indication that the IP Act requires to be updated and revised to meet the challenges posed by technological developments and other factors.42 35 Parliament of Sri Lanka, Parliamentary Debates (23 July 2003), col 1051 (speech by Hon. Ravi Karunanayake). 36 Ibid, col 1047. See also Karunaratna (n 17) 19 (where it is noted that the parliamentary debates on the Intellectual Property Bill emphasised “[t]he promotion of national creativity and protection of creative efforts, the enhancement of the possibility of the integration of the national economy into the knowledge driven global scenario, the attraction of more investment and the protection of consumer interests”); DM Karunaratna, An Introduction to the Law of Copyright and Related Rights in Sri Lanka (Sarvodaya Vishva Lekha Publishers 2006), 8 (where it is noted that the rationale underlying the introduction of the IP Act was the need to “promote creative activities and investment and the integration of the national economy into the knowledge driven global environment”). 37 Intellectual Property (Amendment) Act No 7 of 2018. 38 Intellectual Property (Amendment) Act No 8 of 2021. 39 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, 27 June 2013, 52 I.L.M. 1312. 40 WIPO, Main Provisions and Benefits of the Marrakesh Treaty (2013) (WIPO 2016), 5. 41 Intellectual Property (Amendment) Bill 2022. 42 In 2021, the Cabinet of Ministers appointed a committee of experts to examine the areas of IP law that require amendment in order to ensure that IP is adequately protected in Sri Lanka while

1.3 Approach of the Book and Its Scalability

9

1.3 Approach of the Book and Its Scalability In this book, we reflect on domestic IP lawmaking from the perspective of Sri Lanka– a South Asian jurisdiction with a socio-economic, cultural, and political landscape similar to other developing nations in the region, but the IP regime of which has been less explored. We aim to fill that void and address the discrepancies, gaps and flaws in Sri Lanka’s national IP legal framework. In doing so, we pay close attention to Sri Lanka’s obligations under TRIPS and other related WIPO treaties to which the country is a party. In the core areas of IP (i.e., patents, copyright, and trade marks) and other related areas, we closely scrutinise the existing provisions of Sri Lanka’s IP law (i.e., the IP Act) as against the country’s obligations under international IP law. Such an exercise is necessary to suggest reforms that would allow Sri Lanka to better comply with its international obligations and, more importantly, enable domestic IP law to make effective use of the permitted flexibilities enshrined in international IP agreements, including TRIPS. By mapping Sri Lanka’s IP law with international norms flowing from TRIPS and other treaties, this book provides a helpful framework for policymakers, legislators, academics, legal practitioners and judges in other developing nations to perform a similar mapping exercise, whether it is to formulate new IP laws, amend existing ones, or simply to interpret provisions in IP statutes in ways that better represent domestic concerns and interests. By focusing on Sri Lanka, a unique opportunity is presented to consider some of the fundamental challenges faced by many developing nations around the world, particularly in Asia, that are similarly circumstanced in terms of their economic, social, political, and cultural contexts. These critical challenges cut across areas such as education, medicine (including traditional medicine and knowledge), innovation and technology, art and culture (including traditional cultural expressions), and business and entrepreneurship. Since this book suggests how the IP legal framework of Sri Lanka could be calibrated or reframed to better deal with the key challenges the nation faces, it provides a valuable reference point for many developing jurisdictions grappling with similar issues, especially in the region. Although this book focuses on Sri Lanka, in considering how the country’s IP law should be revised, reference is made to the domestic laws of other jurisdictions. The book investigates and draws inspiration from the approaches adopted in neighbouring India and other developing Asian countries. Reference is also made to more developed jurisdictions such as the United Kingdom, European Union, Singapore, and Australia. Such a comparative approach provides a more holistic understanding of how other countries, both in the region and beyond, have approached domestic problems and addressed national and regional interests through effective IP lawmaking.

achieving a balance in meeting local needs and the public interest. But neither the deliberations nor the recommendations of this committee have been made public.

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1 Introduction

1.4 A Roadmap of the Book We trust that this book will take you through a voyage of reflection about the variables and parameters that developing countries like Sri Lanka can adopt and the strategies that can be employed in crafting their domestic IP regimes to meet local socioeconomic and cultural contexts while adhering to the expectations and fundamental norms of international IP law. In writing this book, we have covered the key areas of IP–i.e., patents, trade marks, and copyright. We also deal with specific related topics–i.e., plant varieties, farmers’ rights and access to genetic resources, GIs, and traditional cultural expressions–which are important to most developing countries, including Sri Lanka. The substantive chapters begin with a discussion on inventions and their protection under the patent regime (Chap. 3), followed by a discussion on Sri Lanka’s approach to protecting plant varieties, addressing farmers’ rights, and granting access to genetic resources (Chap. 4). Next, the discussion focuses on signs and indicia used in trade to designate the origin of goods and services–namely, trade marks (Chap. 5) and GIs (Chap. 6). Then, the focus shifts to creative expressions and the copyright regime (Chap. 7), followed by a discussion on the challenges of protecting Sri Lanka’s traditional cultural expressions (Chap. 8). Finally, we share our thoughts about the “way forward” (Chap. 9) for Sri Lanka to become an IP hub in South Asia. However, before we move on to the substantive aspects of this book, in Chap. 2, we reflect on how domestic IP law should be formulated. Thus, the next chapter offers guidance on approaches and best practices that may be adopted in formulating domestic IP policy and law that is consistent with the international framework while being sensitive to local needs and contexts.

References 1. Abeywardana N et al (2019) Indigenous agricultural systems in the dry zone of Sri Lanka: management transformation assessment and sustainability. Sustainability 11:910 2. Bently L (2007) Copyright, translations, and relations between Britain and India in the nineteenth and early twentieth centuries. Chicago-Kent Law Rev 82:1181 3. Blakeney M (1995) Intellectual property in world trade. Int Trade Law Reg 1:76 4. Central Bank of Sri Lanka (1995) Annual report 1994. https://www.cbsl.gov.lk/en/publicati ons/economic-and-financial-reports/annual-reports/annual-report-1994 5. Central Bank of Sri Lanka (2021) Annual report 2020. https://www.cbsl.gov.lk/en/publicati ons/economic-and-financial-reports/annual-reports/annual-report-2020 6. Cooray LJM (2003) An introduction to the legal system of Sri Lanka. Stamford Lake 7. De Beer J (2009) Defining WIPO’s development agenda. In: De Beer J (ed) Implementing the world intellectual property organization’s development agenda. Wilfrid Laurier University Press 8. Gould DM, Gruben WC (1996) The role of intellectual property rights in economic growth. J Dev Econ 48:323 9. Gurgula O, Hull J (2021) Compulsory licensing of trade secrets: ensuring access to COVID-19 vaccines via involuntary technology transfer. J Intellect Prop Law Pract 16:1242

References

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10. Jecker NS, Atuire CA (2021) What’s yours is ours: waiving intellectual property protections for COVID-19 vaccines. J Med Ethics 47:595 11. Karunaratna DM (2006) An introduction to the law of copyright and related rights in Sri Lanka. Sarvodaya Vishva Lekha Publishers 12. Karunaratna DM (2010) Elements of the law of intellectual property in Sri Lanka. Sarasavi Publishers 13. McMahon A (2021) Global equitable access to vaccines, medicines and diagnostics for COVID19: the role of patents as private governance. J Med Ethics 47:142 14. Parliament of Sri Lanka (1979) Parliamentary debates 15. Parliament of Sri Lanka (2003) Parliamentary debates 16. Raghupathi V, Raghupathi W (2017) Innovation at country-level: association between economic development and patents. J Innov Entrepreneurship 6:1 17. Ryan MP (1988) Knowledge diplomacy: global competition and the politics of intellectual property. Brookings Institution Press 18. Smith EH (1996) Worldwide copyright protection under the TRIPS agreement. Vanderbilt J Transnational Law 29:559 19. Štrba SI (2012) International copyright law and access to education in developing countries: exploring multilateral legal and quasi-legal solutions. Martinus Nijhoff 20. Talagala CS (2021) Copyright law and translation: access to knowledge in developing economies. Routledge 21. WIPO (1967) Model law for developing countries on marks, trade names, and acts of unfair competition. BIRPI 22. WIPO (1979) Model law for developing countries on inventions: volume 1 patents. WIPO Publication No 840 (E). WIPO 23. WIPO and UNESCO (1976) Tunis model law on copyright for developing countries. WIPO Publication No 812(E). WIPO/UNESCO 24. WIPO (2016) Main provisions and benefits of the Marrakesh Treaty (2013). WIPO 25. World Bank (2021) Gross Domestic Product (GDP) per capita in the Asia-Pacific region in 2020, by country. https://www.statista.com/statistics/632340/asia-pacific-gross-domestic-pro duct-per-capita-by-country/

Chapter 2

Crafting Domestic Intellectual Property Law–International Obligations, Flexibilities, and Approaches

Sri Lanka is a party to several international agreements that deal with the protection and enforcement of intellectual property (“IP”). Some of these agreements, such as the Paris Convention on the Protection of Industrial Property (“Paris Convention”)1 and the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”),2 are administered by the World Intellectual Property Organization (“WIPO”).3 Sri Lanka is also a founding member of the World Trade Organization (“WTO”). In view of its WTO membership, Sri Lanka must comply with the provisions of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”),4 which is one of the several covered agreements of the WTO. The WIPO treaties and WTO’s TRIPS set out international standards with regard to the acquisition, scope and protection of IP. As a party to some of the WIPO treaties and as a member of the WTO, Sri Lanka must give effect to these standards under its domestic IP law. But that does not mean that national concerns and the public interest have to be ignored in crafting domestic laws that give effect to international IP standards. An analysis of the provisions of the various international IP agreements reveals that many flexibilities exist that can be used to address the domestic interests of individual states. 1

Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979 (“Paris Convention"). 2 Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, 161 U.N.T.S. 3, as amended on 28 September 1979 (“Berne Convention”). 3 The other WIPO treaties to which Sri Lanka is a party include the following: Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, 14 April 1891, 828 U.N.T.S. 389, as revised on 31 October 1958, with the Additional Act of Stockholm of 14 July 1967; Nairobi Treaty on the Protection of the Olympic Symbol, 26 September 1981, 1863 U.N.T.S. 367; Patent Cooperation Treaty, June 19, 1970 28 U.S.T. 7645; 1160 U.N.T.S. 231; 9 I.L.M. 978 (1970); Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, 27 June 2013, 52 I.L.M. 1312. 4 Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_2

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First, this chapter provides a general background to the various international IP agreements and treaties to which Sri Lanka is a party. It sets out the expectations and norms that arise from such international instruments and the flexibilities that typically allow individual states the wriggle room to address domestic interests. Second, the chapter considers approaches that may be adopted in formulating domestic laws that implement the standards as envisaged by the various international instruments dealing with IP protection. These approaches focus on how domestic law should be framed by setting out some of the best practices that may be useful in guiding the domestic lawmaking process.

2.1 International Obligations and Flexibilities International IP agreements may fall into several classes. First, most commonly, international agreements seek to establish minimum standards with respect to the protection and enforcement of IP rights across states.5 The Paris Convention, Berne Convention, and TRIPS are examples of agreements that set out such minimum standards. Second, some international agreements, such as the Patent Cooperation Treaty6 and the Madrid Agreement Concerning the International Registration of Marks7 and its Protocol,8 seek to facilitate the registration and acquisition of IP rights across the contracting states.9 Third, a smaller number of international agreements seek to create classification systems that organise information concerning inventions, trade marks, and industrial designs into indexed and manageable structures.10 Together, these international instruments enable a certain degree of harmonisation of the standards for IP protection and provide an efficient means of acquiring IP rights across multiple jurisdictions. The objective is to ensure uniformity and certainty in the standards pertaining to the acquisition, scope and protection of IP rights across states. However, this will only be possible if individual states incorporate the mandated minimum standards in their domestic laws. In the following part, we consider the minimum standards of IP protection Sri Lanka must guarantee under domestic law in view of its obligations under the various agreements to which it is a party. We also consider the flexibilities that Sri Lanka 5 S Frankel and DJ Gervais, Advanced Introduction to International Intellectual Property (Edward Elgar 2016), 3. 6 Patent Cooperation Treaty, June 19, 1970 28 U.S.T. 7645; 1160 U.N.T.S. 231; 9 I.L.M. 978 (1970). 7 Madrid Agreement Concerning the International Registration of Marks, 14 April 1891, 23 U.S.T. 1353, 828 U.N.T.S. 389, as amended on 28 September 1979. 8 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 27 June 1989, S Treaty Doc No 106-41. 9 Frenkel and Gervais (n 5) 3. 10 See, e.g., Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 15 June 1957, 505 U.N.T.S. 45, as amended on 28 September 1979.

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can utilise in framing the country’s IP law so that domestic and national interests are addressed effectively.

2.1.1 Minimum Standards Any discussion on minimum standards of IP protection must begin with TRIPS. As a member of the WTO, Sri Lanka is bound by the provisions of TRIPS, which in Article 1.1 provides that: Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

The above provision confirms that WTO members must give effect to the obligations imposed by TRIPS within their respective jurisdictions.11 It also clarifies that the provisions contained in TRIPS constitute “minimum standards of protection.”12 At the same time, WTO members are free to decide how they implement those standards in their domestic law.13 Importantly, by reference, TRIPS requires WTO members to give effect to several WIPO treaties irrespective of whether they are party to those treaties. Thus, for instance, Article 2.1 of TRIPS provides that “[i]n respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).” Similarly, Article 9.1 of TRIPS provides that WTO members “shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto.” Likewise, Article 35 of TRIPS provides that WTO members “agree to provide protection to the layout-designs (topographies) of integrated circuits (referred to in this Agreement as “layout-designs”) in accordance with Articles 2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual Property in Respect of Integrated Circuits….” In essence, by referring to the WIPO treaties, TRIPS establishes minimum standards based on those treaties. A crucial difference between the WIPO treaties and the WTO’s TRIPS is that the latter provides for an effective dispute settlement mechanism14 capable of resolving disputes between states concerning the implementation of TRIPS standards. This addressed a major shortcoming of the WIPO treaties, which lack a similar dispute settlement mechanism that states could utilise to ensure compliance on the part of 11

CM Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (2nd edn, Oxford University Press 2020), 21. 12 Ibid, 23. 13 Ibid, 26. 14 TRIPS, Art. 64.

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their counterparts.15 In essence, this means that WTO members must comply with the minimum standards set out in TRIPS, which, by reference, give effect to key WIPO treaties. Failure to do so may result in the non-complying state having to face cross retaliatory measures (which may include trade sanctions) at the instance of an aggrieved WTO member. This means that it is critical for WTO members, including Sri Lanka, to comply with the minimum standards set out in TRIPS. But this does not mean that domestic concerns and interests unique to each state have to be ignored in favour of strict compliance with TRIPS standards. There is much wriggle room for such concerns and interests to be addressed in implementing TRIPS standards under domestic law. In the next part, we explore some of these flexibilities.

2.1.2 Flexibilities Although TRIPS and the WIPO treaties referred to therein require compliance with specific minimum standards, there are numerous flexibilities that can provide the space to make suitable adjustments to calibrate domestic law in the implementation process. It is crucial that developing countries make use of these flexibilities to ensure that domestic concerns and interests are addressed in complying with the minimum standards of IP protection. To begin with, it is important to note that the major WIPO treaties, such as the Berne Convention16 and Paris Convention,17 and WTO’s TRIPS, are not selfexecuting.18 This means that in order to comply with the minimum standards set out in these international instruments, states must enact implementing national legislation.19 In any case, Sri Lanka’s legal system adopts dualism (to be contrasted with monism), under which a clear distinction is drawn between international law and domestic law.20 Accordingly, acceding to or ratifying an international treaty or joining the membership of an international organisation will not automatically result 15

M Kennedy, WTO Dispute Settlement and the TRIPS Agreement (Cambridge University Press 2016), 4–5. 16 P Goldstein and PB Hugenholtz, International Copyright: Principles, Law, and Practice (3rd edn, Oxford University Press 2013), 30. 17 SB Crandall, Treaties: Their Making and Enforcement (2nd edn, Lawbook Exchange Ltd 2005), 236. 18 Frenkel and Gervais (n 5) 50. 19 DCK Chow and TJ Schoenbaum, International Business Transactions (Wolters Kluwer 2020), 587. 20 Singarasa v Attorney General [2013] 1 Sri LR 245, 260 (“When the President in terms of Customary International Law acts for the Republic and enters into a treaty or accedes to a covenant the content of which is not inconsistent with the Constitution or the written law, the act of the President will bind the Republic qua state - but such a treaty or a covenant has to be implemented by the exercise of legislative power by Parliament and where found to be necessary by the people at a referendum to have internal effect and attribute rights and duties to individuals - This is in keeping with the dualist theory which underpins our Constitution”).

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in international law having direct effect under domestic law.21 Rules and norms that emerge from international agreements must first be translated into national legislation before they can be applied by national courts.22 In the specific context of TRIPS, it has been noted that WTO members “are free to limit the impact of these rules to the process of domestic legislation in the dualist tradition of international law which clearly separates the spheres of national and international law.”23 The need for implementing legislation to give effect to obligations arising under international agreements is an important flexibility that dualist countries like Sri Lanka can make use of in addressing domestic concerns and interests. While there is no doubt that compliance with the minimum standards set out in TRIPS and the WIPO treaties is mandatory, developing countries can take the time to evaluate how such compliance could be achieved without ignoring or neglecting domestic concerns and interests. There are also many flexibilities that arise from the text of TRIPS itself. For instance, although TRIPS refers to numerous concepts and terms in setting out the minimum standards for IP protection, not all of these concepts and terms are defined in the text. The result is that implementing states have some flexibility in defining key concepts and terms that determine the scope of IP protection under domestic law.24 For instance, in the case of copyright, a reading of Article 2 of the Berne Convention, read with Article 9.1 of TRIPS, reveals that protection is extended only in respect of “original” works of authorship. This is a well-established principle in copyright law.25 However, the concept of originality has not been defined in the Berne Convention or TRIPS. This means that implementing states have some flexibility in calibrating this concept by introducing a suitable definition in their domestic copyright laws to meet local expectations and requirements. Similarly, Article 27.1 of TRIPS provides that patent protection should extend in respect of “inventions” that are “new,” “involve and inventive step,” and are capable of “industrial application.” However, TRIPS does not define these concepts. This means, subject to the principle of non-discrimination,26 implementing states have a free hand to determine what constitutes an invention. They can exercise considerable freedom in determining when an invention becomes 21

T Cottier, The Challenges of WTO Law: Collected Essays (Cameron May 2007), 311. WO Rodrigo, “As Assessment of the Potential of Human Rights Protection in Sri Lanka in the Context of the Dualist Nature of the Constitution” (2021) 1 KDU Law Journal 225. 23 T Cottier, “The Agreement on Trade-Related Aspects of Intellectual Property Rights” in PFJ Macrory, AE Appleton and MG Plummer (eds), The World Trade Organization: Legal, Economic and Political Analysis (Springer 2005), 1059. 24 CM Correa, “Interpreting the Flexibilities Under the TRIPS Agreement” in CM Correa and RM Hilty (eds), Access to Medicines and Vaccines: Implementing Flexibilities Under Intellectual Property Law (Springer 2022), 2. 25 PB Hugenholtz, “Limits, limitations and exceptions to copyright under the TRIPS Agreement” in CM Correa (ed), Research Handbook on the Protection of Intellectual Property under WTO Rules (Edward Elgar 2010), 322; S Ricketson, “Reflections on Authorship and the Meaning of a ‘Work’ in Australian and Singapore Copyright Law” (2012) 24 Singapore Academy of Law Journal 792, 798. 26 TRIPS, Art. 27.1 (“patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced”). 22

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worthy of protection by calibrating the threshold requirements of novelty, inventive step and industrial applicability to suit local innovation and industrial capabilities. The above examples taken from the domain of copyright and patents illustrate that TRIPS and the WIPO treaties it incorporates by reference afford implementing states some degree of flexibility in translating minimum standards into domestic IP law. Apart from the implicit flexibilities that can be derived from undefined concepts, TRIPS also expressly incorporates a variety of explicit flexibilities that developing countries may use to their advantage. One such flexibility is the specific exclusion of particular subject matter from the scope of protection. For instance, in the area of patents, inventions that are contrary to public order or morality27 or inventions that involve diagnostic, therapeutic or surgical methods for the treatment of humans or animals28 can be excluded from patentability. Similarly, trade marks contrary to public order or morality or of such a nature as to deceive the public29 can be excluded from protection. In the case of copyright, ideas, procedures, methods of operation or mathematical concepts as such30 are excluded from protection. These exclusions seek to achieve a specific public policy objective and can be incorporated into implementing legislation. The possibility of introducing limited exceptions to IP rights is another flexibility that is worth mentioning. The rights conferred under TRIPS may be restricted under domestic law provided that it is done in conformity with the limited exceptions expressly permitted under TRIPS. Thus, for instance, the rights conferred with regard to copyright-protected works,31 trade marks,32 and patents33 can be restricted under domestic law to achieve specific public policy objectives. Although these limited exceptions are narrow in nature,34 they are helpful in ensuring a balance between the exclusivity of IP rights and the interests of the public. Another flexibility that can effectively meet domestic concerns and interests is the scheme that permits compulsory licences. In relation to patents, compulsory licences may be issued under domestic law to address varying concerns such as national emergencies or other circumstances of extreme urgency,35 anti-competitive conduct,36 and the failure to sufficiently work a patent.37 In the area of copyright, the Appendix to the Berne Convention, which was specifically crafted to meet the needs of the developing world, permits the grant of compulsory licences in certain 27

Ibid, Art. 27.2. Ibid, Art. 27.3. 29 Paris Convention, Art. 6quinquies B. 30 TRIPS, Art. 9.2. 31 Ibid, Art. 13. 32 Ibid, Art. 17. 33 Ibid, Art. 30. 34 Canada–Patent Protection of Pharmaceutical Products WT/DS114/R (17 March 2000), para 7.30. 35 TRIPS, Art. 31(b). 36 ibid, Art. 31(k). 37 Paris Convention, Art. 5A(4). 28

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specific circumstances. Thus, for instance, a compulsory licence may be issued in respect of a copyright-protected work to translate it into a language generally used in a developing country where a translation of that work had not been published within three years of first publication.38 Despite the numerous conditions that have to be satisfied and the many bureaucratic hurdles that must be overcome,39 compulsory licensing schemes provide developing countries with some degree of flexibility to balance IP rights and the public interest. Finally, reference must be made to the principle of exhaustion of rights, which can help limit the control that IP owners can exercise in relation to goods already placed on the market. The flexibility arises from the fact that TRIPS leaves it to the discretion of each WTO member to determine the domestic policy on exhaustion.40 Thus, the manner in which the provision on exhaustion of rights is crafted under domestic law could determine when and to what extent IP owners can exercise their rights to prevent the further commercialisation of goods already placed on the market. Notably, a choice between national and international exhaustion can determine whether IP proprietors are permitted to exercise their rights to prevent the parallel importation of goods placed in foreign markets. In making these choices about the operation of the exhaustion principle, developing counties can take into account factors that are important to them, such as the interests of consumers and local industries, so that domestic concerns and interests can be better addressed in determining the scope of IP rights under domestic law. The flexibilities that we set out above are not to be treated as exhaustive. Our intent in setting them out was to illustrate the wriggle room that developing countries such as Sri Lanka have in giving effect to the minimum standards of IP protection. Our analysis of the provisions of Sri Lanka’s Intellectual Property Act 2003 (“IP Act”)41 in the chapters that follow, among other things, reveals the extent to which the flexibilities under international IP law have been put to use in addressing domestic concerns and interests. To the extent they fail to do so, we have made recommendations on how Sri Lankan law may be reframed to address local interests more effectively.

2.2 Formulating Domestic Intellectual Property Law and Addressing National Interests So far, we have looked at obligations and flexibilities under international IP law. Although WTO’s TRIPS and the WIPO treaties referred to therein mandate minimum standards of IP protection, in implementing those standards, individual states can make use of numerous explicit and implicit flexibilities to address domestic concerns 38

Berne Convention, Appendix, Art. II(2)(a). See, e.g., AJC Silva, “Beyond the Unrealistic Solution for Development Provided by the Appendix of the Berne Convention on Copyright” (2013) 60 Journal of the Copyright Society of the USA 581. 40 TRIPS, Art. 6. 41 Intellectual Property Act No 36 of 2003. 39

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and interests. However, for domestic IP law to truly cater to local needs, the lawmaking process must adopt a transparent and robust approach. In this part, we explore a few good practices that can help ensure that the lawmaking process yields useful and meaningful outcomes. In particular, we posit that a consultative, evidence-based and comparative approach should be adopted in crafting domestic IP law.

2.2.1 Legislating Through Consultation In drafting IP legislation and in proposing amendments to such legislation, it is imperative that key stakeholders are consulted during the lawmaking process. Although it may be argued that laws, prior to their enactment, are debated by the duly appointed representatives of the public in Parliament, it is possible for specific stakeholder interests and important public policy concerns to be left out or omitted in such debates. Thus, involving the key stakeholders, and where possible, the public, in the legislative process has its advantages. Adopting a consultative approach to legislating increases transparency.42 This could establish greater public confidence in the lawmaking process and enhance trust in the legitimacy of political decisions.43 Indeed, by inviting public participation, “legislators not only garner information on which to base better legislation, they also express their respect for the citizens whom they consult. In turn, those citizens may become more engaged and less apathetic about public life.”44 Particularly in complex areas like IP, where the rights and interests of multiple stakeholders come into play and even collide, it is vital that relevant stakeholders are heard so that the domestic IP regime can address their concerns, interests and expectations. This will ensure that the law is not a quick fix to achieve a particular end or address a specific problem but rather an inclusive tool with significant foresight. Singapore’s recent effort to revamp its copyright law provides an excellent example of the consultative lawmaking process. The reforms took place over several

42

C Guy-Ecabert, “The Pre-parliamentary Phase in Lawmaking: The Power Issues at Stake” in A Ladner et al. (eds) Swiss Public Administration: Governance and Public Management (Palgrave Macmillan 2019), 97. 43 HK Leong, “Citizen Participation and Policy Making in Singapore: Conditions and Predicaments” (2000) 40 Asian Survey 436, 455. See also L McKay-Panos, “Public Influence in Law and PolicyMaking” (2001) 25 LawNow 17. 44 KS Czapanskiy and R Manjoo, “The Right of Public Participation in the Law-Making Process and the Role of Legislature in the Promotion of this Right” (2008) 19 Duke Journal of Comparative & International Law 1, 39.

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years, during which public consultations were held in 2016,45 201746 and 2020.47 A further public consultation was held in 202148 to ascertain the views of the public on whether the Bill that was eventually drafted appropriately implements the changes that had been proposed to existing copyright law. As seen from the number of public consultations and the time involved, the enactment of Singapore’s Copyright Act 2021, which replaced the Copyright Act 1987, was a result of a transparent and inclusive process. Similar public consultations have been held in Singapore, more generally, concerning IP law reforms49 and in specific areas like IP dispute resolution.50 It is also noteworthy that other jurisdictions, such as Hong Kong,51 Australia52 and the United Kingdom,53 have adopted the practice of encouraging public participation in the process of reforming IP laws. However, as Singapore’s copyright reforms demonstrate, participatory lawmaking can be a complex and time-consuming exercise. This means that “modern demands for a more efficient legislative process, which is also transparent and encourages citizen participation are not easy to combine.”54 But despite the challenges, it is important to ensure public participation in areas such as IP that are vital to the economy. Even if the general public cannot be included, at least there must be an

45

Ministry of Law and IPOS, Public Consultation on Proposed Changes to Singapore’s Copyright Regime, 23 August 2016 https://www.mlaw.gov.sg/files/news/public-consultations/2021/copyright bill/Annex_A-Copyright_Consultation2016.pdf . 46 Ministry of Law and IPOS, Public Consultation on the Copyright Collective Rights Management Ecosystem in Singapore, 16 May 2017. https://www.mlaw.gov.sg/files/news/public-consultations/ 2021/copyrightbill/Annex_A-CMO_Consultation2017.pdf. 47 Ministry of Law and IPOS, Public Consultation on Proposed Licence Conditions and Code of Conduct for Collective Management Organisations, 3 June 2020 https://www.mlaw.gov.sg/files/ news/public-consultations/2021/copyrightbill/Annex_A-CMO_Consultation2020.pdf. 48 Ministry of Law and IPOS, Public Consultation on the Proposed Copyright Bill, 5 February 2021 https://www.mlaw.gov.sg/files/news/public-consultations/2021/copyrightbill/Copyright_Con sultation2021.pdf. 49 IPOS, Public Consultation: Intellectual Property (Amendment) Bill 2021, July 2021 https:// www.ipos.gov.sg/docs/default-source/default-document-library/public-consultation-ip-(amendm ent)-bill.pdf. 50 Ministry of Law, Public Consultation on Draft Intellectual Property Dispute Resolution Bill, 11 March 2019 https://www.mlaw.gov.sg/news/public-consultations/public-consultation-on-draftintellectual-property-dispute-resol/. 51 See, e.g., Government of Hong Kong, Public Consultation on Updating Hong Kong’s Copyright Regime, 24 November 2021 https://www.info.gov.hk/gia/general/202111/24/P2021112400481. htm. 52 See, e.g., Government of Australia, Copyright Modernisation Consultation Paper, March 2018 https://www.infrastructure.gov.au/sites/default/files/documents/copyright-modernisation-con sultation-paper.pdf. 53 UKIPO, Public Consultation on Artificial Intelligence and Intellectual Property: Copyright and Patents, 29 October 2021 https://www.gov.uk/government/consultations/artificial-intelligence-andip-copyright-and-patents/artificial-intelligence-and-intellectual-property-copyright-and-patents. 54 W Voermans, H-M ten Napel and R Passchier, “Combining Efficiency and Transparency in Legislative Processes” (2015) 3 Theory and Practice of Legislation 279, 293.

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opportunity for key stakeholders to submit their views in response to proposed laws that seek to regulate IP protection.

2.2.2 Legislating with Evidence The law does not exist in a vacuum. It very much interacts with and influences society and industry. Law, in this sense, has a regulatory effect–in that it can shape behaviour and promote change. The reverse is also true. More often than not, laws are formulated to address problems and gaps that emerge from time to time. These problems or gaps can arise in the broader social context or in connection with specific industries. In particular, scientific and technological innovations have required the law to play catch-up and address novel problems and gaps in existing legal and regulatory frameworks. This is inevitable because people and industries do not remain constant. They evolve over time due to varying factors, including necessity, crises and innovation. But for the law to have a meaningful impact in its interactions with other domains and disciplines, it must not be based on mere speculation, conjecture or false myths but rather on sound policy grounded in proper empirical or scientific evidence.55 These observations are applicable when legislating in the area of IP. After all, IP law directly interacts with human creativity and ingenuity, which are attributes that go to the heart of who we are. Thus, when formulating laws that protect IP or enacting laws limiting such protection, it is crucial for the law to be based on sound policy backed by evidence so that domestic IP laws are not disjoint from reality. In the case of Sri Lanka, the IP Act was formulated to comply with TRIPS obligations. But aside from that, there is very little, if not nothing, that can be said about Sri Lanka’s national IP policy. It appears that no such policy exists. Even if it did, it has not been made public. The provisions of the IP Act, in most instances, are mere reproductions of the provisions in TRIPS and the WIPO treaties. They do not reflect a genuine effort to engage with ground reality. Interestingly, when the Intellectual Property Bill was introduced in Parliament in May of 2003, it did not contain a provision for the grant of compulsory licences in respect of patents. From a developing country’s perspective, this was a grave omission that signals the lack of a sound IP policy. In our view, it is crucial for a country’s IP law to be based on evidence-backed policy. Evidence can come from many sources, such as industry stakeholders, data and statistics held by government agencies, the private sector, and scientific research.56 For instance, when we consult the data relating to the number of patent filings in Sri Lanka and patent grants by the National Intellectual Property Office in recent years,57 it becomes evident that relatively fewer local innovators have been 55

JJ Rachlinski, “Evidence-Based Law” (2011) 96 Cornell Law Review 901. J de Beer, “Evidence-Based Intellectual Property Policymaking: An Integrated Review of Methods and Conclusions” (2016) 19 Journal of World Intellectual Property 150. 57 See discussion in Chap. 3 dealing with patents. 56

2.2 Formulating Domestic Intellectual Property Law …

23

successful in acquiring patent rights. This requires policymakers to seriously reconsider whether the current patent-related provisions of the IP Act are geared towards promoting local innovation. Of course, there could be more than one factor having a bearing on local innovation and the process of commercialisation. However, from a policy perspective, it is essential to consider whether the law as it stands forms an obstacle in the process of securing patents for local innovations. Addressing such matters from an evidence-based perspective could lead to the formulation of an IP law that is better geared to meet domestic concerns and interests. On the other hand, even when laws are proposed to limit the availability, scope or exercise of IP rights, it is equally, if not more, important for such laws to be based on sound evidence-backed policy. For any restriction imposed on the scope of IP protection to be lawful, it must be based on a specific public policy objective. Therefore, it is vital to ensure that any law restricting IP rights is based on evidence capable of justifying such intervention in line with the stated public policy objective.58 Otherwise, if a law restricting IP rights is challenged before a local court or the WTO, it would be more difficult for the regulating state to justify it even though it achieves a legitimate public policy objective. What is necessary is to find the proper equilibrium between IP protection and the interests of third parties, including users of IP and the public. Although finding that delicate balance will undoubtedly entail an arduous exercise, it is important to venture towards that goal by making small adjustments to the law based on available evidence. Neither too much nor too little IP protection is conducive to creativity and innovation.59

2.2.3 Legislating with a Comparative Lens Comparative law denotes a method of study and research.60 It signifies the systematic application of the comparative technique to law. The comparative methodology contemplates the “study of, and research in, law by the systematic comparison of two or more legal systems; or of parts, branches or aspects of two or more legal systems.”61 Therefore, it is not surprising that the comparative method has played, and continues to play, an essential role in both international62 and domestic63 lawmaking. It can be used as a tool in the formulation of international treaties because, more often than not, this requires an appreciation of common ground and perspectives among 58

R Towse, “The Quest for Evidence on the Economic Effects of Copyright Law” (2013) 37 Cambridge Journal of Economics 1187. 59 S van Gompel, “Copyright, Doctrine and Evidence-Based Reform” (2017) 8 Journal of Intellectual Property, Information Technology and E-Commerce Law 304, 307. 60 HC Gutteridge, Comparative Law (Cambridge University Press 1946), 1. 61 WJ Kamba, “Comparative Law: A Theoretical Framework” (1974) 23 International and Comparative Law Quarterly 485, 486. 62 O Lando, “The Contribution of Comparative Law to Law Reform by International Organizations” (1977) 25 American Journal of Comparative Law 641. 63 AK Saidov, “Comparative Law and Law-Making” (2007) 2 Journal of Comparative Law 67.

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the negotiating states, which the comparative method can help achieve. The comparative method can also help in formulating domestic law. In this regard, Edward J Eberle has set out the utility of the comparative method in the following way: Comparative law is a quest for the exotic, the different, the other. It examines the dimensions and forms of law and culture outside the normal ken of one’s visage in the hope that one can gain new and different perspectives on law, culture, and patterns of order. Equally important, comparative law ultimately focuses back on local culture: it asks, by comparison, is our culture better or worse; in what way; and if so, what is to be done? The real aim of comparative law is to offer insight and perspective so that we are better equipped to reflect critically about ourselves and our own legal culture. Comparison can help us assess where we came from, where we are, and where we go from here. By making this kind of comparison, we obtain some perspective about whether we are what we want to be, or how we can find a way to be all that we would like to be.64

TRIPS and the WIPO treaties have achieved a certain degree of harmonisation in the standards for IP protection across individual states. However, that does not mean that the domestic approach to IP protection across states is identical. Indeed, as we have noted above, flexibilities under TRIPS and the WIPO treaties make it possible for states to craft domestic IP laws that are most appropriate and suitable for local conditions and contexts. This means that a comparative analysis of IP laws across countries is bound to reveal both similarities and differences in how they achieve the minimum standards of protection mandated under international law. Studying these similarities and differences could provide valuable insights to policymakers and legislators tasked with formulating or reforming domestic IP law. Indeed, many developing countries grapple with identical, if not similar, problems and have adopted varying approaches to address those problems by calibrating and adjusting their IP systems to best suit domestic conditions and contexts. Thus, developing countries like Sri Lanka have much to learn from one another. It is also helpful to compare and contrast the approaches of the more developed nations. After all, countries that have advanced economically were once less developed and faced the same problems that the developing world faces today. There is much for developing countries, such as Sri Lanka, to learn from comparing the approaches that developed countries had adopted in the past to get to where they are now. These assessments and studies require the comparative method and can provide meaningful inputs for policymakers and legislators in formulating or reforming domestic IP law.

64

EJ Eberle, “The Method and Role of Comparative Law” (2009) 8 Washington University Global Studies Law Review 451, 471–472. See also J Karhu, “How to Make Comparable Things: Legal Engineering at the Service of Comparative Law” in M Van Hoecke (ed), Epistemology and Methodology of Comparative Law (Hart Publishing 2004), 80–81; I Calboli, “The Role of Comparative Legal Analysis in Intellectual Property Law: From Good to Great?” in GB Dinwoodie (ed), Methods and Perspectives in Intellectual Property Law (Edward Elgar 2013), 9.

References

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2.3 From Process to Substance In lawmaking, the process is as important as the substance. We have written this chapter to guide policymakers and legislators in Sri Lanka (and elsewhere) on the approach and process they may adopt to formulate or reform domestic IP law. Following the right approach and process can often help ensure that the lawmaking process yields a positive outcome in terms of substance. In the chapters that follow, we focus on the substance of the law–i.e., we explore and analyse the existing provisions of Sri Lanka’s IP Act and suggest ways in which they can be reframed to better comply with international IP standards while ensuring that domestic concerns and interests are adequately addressed.

References 1. Calboli I (2013) The role of comparative legal analysis in intellectual property law: from good to great? In Dinwoodie GB (ed) Methods and perspectives in intellectual property law. Edward Elgar 2. Chow DCK, Schoenbaum TJ (2020) International business transactions. Wolters Kluwer 3. Correa CM (2020) Trade related aspects of intellectual property rights: a commentary on the TRIPS agreement, 2nd edn. Oxford University Press 4. Correa CM (2022) Interpreting the flexibilities under the TRIPS agreement. In: Correa CM, Hilty RM (eds) Access to medicines and vaccines: implementing flexibilities under intellectual property law. Springer 5. Cottier T (2005) The agreement on trade-related aspects of intellectual property rights. In Macrory PFJ, Appleton AE, Plummer MG (eds) The world trade organization: legal, economic and political analysis. Springer 6. Cottier T (2007) The challenges of WTO law: collected essays. Cameron May 7. Crandall SB (2005) Treaties: their making and enforcement, 2nd edn. Lawbook Exchange Ltd 8. Czapanskiy KS, Manjoo R (2008) The right of public participation in the law-making process and the role of legislature in the promotion of this right. Duke J Comp Int Law 19:1 9. De Beer J (2016) Evidence-based intellectual property policymaking: an integrated review of methods and conclusions. J World Intell Prop 19:150 10. Eberle EJ (2009) The method and role of comparative law. Washington Univ Glob Stud Law Rev 8:451 11. Frankel S, Gervais DJ (2016) Advanced introduction to international intellectual property. Edward Elgar 12. Goldstein P, Hugenholtz PB (2013) International copyright: principles, law, and practice, 3rd edn. Oxford University Press 13. Government of Hong Kong (2021) Public consultation on updating Hong Kong’s copyright regime. https://www.info.gov.hk/gia/general/202111/24/P2021112400481.htm 14. Government of Australia (2018) Copyright modernisation consultation paper. https://www.inf rastructure.gov.au/sites/default/files/documents/copyright-modernisation-consultation-paper. pdf 15. Gutteridge HC (1946) Comparative law. Cambridge University Press 16. Guy-Ecabert C (2019) The pre-parliamentary phase in lawmaking: the power issues at stake. In: Ladner A et al (eds) Swiss public administration: governance and public management. Palgrave Macmillan

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17. Hugenholtz PB (2010) Limits, limitations and exceptions to copyright under the TRIPS agreement. In: Correa CM (ed) Research handbook on the protection of intellectual property under WTO rules. Edward Elgar 18. IPOS (2021) Public consultation: Intellectual Property (Amendment) Bill 2021. https://www. ipos.gov.sg/docs/default-source/default-document-library/public-consultation-ip-(amendm ent)-bill.pdf 19. Kamba WJ (1974) Comparative law: a theoretical framework. Int Comp Law Q 23:485 20. Karhu J (2004) How to make comparable things: legal engineering at the service of comparative law. In: Van Hoecke M (ed) Epistemology and methodology of comparative law. Hart Publishing 21. Kennedy M (2016) WTO dispute settlement and the TRIPS agreement. Cambridge University Press 22. Lando O (1977) The contribution of comparative law to law reform by international organizations. Am J Comp Law 25:641 23. Leong HK (2000) Citizen participation and policy making in Singapore: conditions and predicaments. Asian Surv 40:436 24. McKay-Panos L (2001) Public influence in law and policy-making. LawNow 25:17 25. Ministry of Law and IPOS (2016) Public consultation on proposed changes to Singapore’s copyright regime. https://www.mlaw.gov.sg/files/news/public-consultations/2021/cop yrightbill/Annex_A-Copyright_Consultation2016.pdf 26. Ministry of Law and IPOS (2017) Public consultation on the copyright collective rights management ecosystem in Singapore. https://www.mlaw.gov.sg/files/news/public-consultations/2021/ copyrightbill/Annex_A-CMO_Consultation2017.pdf 27. Ministry of Law and IPOS (2020) Public consultation on proposed license conditions and code of conduct for collective management organisations. https://www.mlaw.gov.sg/files/news/pub lic-consultations/2021/copyrightbill/Annex_A-CMO_Consultation2020.pdf 28. Ministry of Law and IPOS (2021) Public consultation on the proposed Copyright Bill. https://www.mlaw.gov.sg/files/news/public-consultations/2021/copyrightbill/Copyright_ Consultation2021.pdf 29. Ministry of Law (2019) Public consultation on draft Intellectual Property Dispute Resolution Bill. https://www.mlaw.gov.sg/news/public-consultations/public-consultation-on-draft-int ellectual-property-dispute-resol/ 30. Rachlinski JJ (2011) Evidence-based law. Cornell Law Rev 96:901 31. Ricketson S (2012) Reflections on authorship and the meaning of a “Work” in Australian and Singapore copyright law. Singapore Acad Law J 24:792 32. Rodrigo WO (2021) As assessment of the potential of human rights protection in Sri Lanka in the context of the dualist nature of the constitution. KDU Law J 1:225 33. Saidov AK (2007) Comparative law and law-making. J Comp Law 2:67 34. Silva AJC (2013) Beyond the unrealistic solution for development provided by the Appendix of the Berne Convention on copyright. J Copyright Soc USA 60:581 35. Towse R (2013) The quest for evidence on the economic effects of copyright law. Cambridge J Econ 37:1187 36. UKIPO (2021) Public consultation on artificial intelligence and intellectual property: copyright and patents. https://www.gov.uk/government/consultations/artificial-intelligence-and-ipcopyright-and-patents/artificial-intelligence-and-intellectual-property-copyright-and-patents 37. Van Gompel S (2017) Copyright, doctrine and evidence-based reform. J Intell Property 304 Inf Technol E-Commerce Law 8:307 38. Voermans W, ten Napel H-M, Passchier R (2015) Combining efficiency and transparency in legislative processes. Theor Pract Legislation 3:279

Chapter 3

Patents

This chapter focuses on the law relating to patents in Sri Lanka. A patent is granted in respect of an invention—whether a product or a process—that discloses a new way of doing something or offers a novel technical solution to an existing problem. Once a patent is granted, it confers on the inventor or patent owner certain exclusive rights enabling the exploitation of the underlying invention for a prescribed period—the usual being 20 years. By granting the inventor a monopoly limited by time over the manufacture, production, sale, importation and distribution of an invented product, or the exploitation of an invented process, patents seek to promote and incentivise a culture of innovation. The patent system can achieve this by guaranteeing the inventor exclusivity over the exploitation of the patented invention in response to making a disclosure of all the relevant technical information about the invention. However, it is vital to ensure that the patent system is calibrated carefully to create the right balance between protecting the rights of inventors and safeguarding the public interest. Sri Lanka is obligated to give effect to the minimum standards set out in the Agreement on the Trade-Related aspects of Intellectual Property Rights (“TRIPS”)1 and the Paris Convention on the Protection of Industrial Property (“Paris Convention”).2 But that does not mean that a “one-size-fits-all” approach should have been adopted in crafting the country’s law relating to patents. What is required is a nuanced approach that effectively makes use of the flexibilities under TRIPS and the Paris Convention to meet the country’s specific domestic needs and encourage small-scale and incremental innovation. It is time for Sri Lanka to learn from the experiences of other countries in reforming its patent law so that the country can continue to comply with international norms while addressing various domestic concerns and needs.

1

Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). 2 Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979 (“Paris Convention”). © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_3

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First, this chapter provides an overview of the history and development of patent law in Sri Lanka and sets out the overall trends in the grant of patents in Sri Lanka and the contribution of research and development (“R&D”) in generating patentable inventions. In doing so, the chapter demonstrates the importance of patent law and the patent system in encouraging innovation and incentivising patent filings in Sri Lanka. Second, the chapter evaluates the patent-related provisions of the Intellectual Property Act 2003 (“IP Act”),3 with a focus on patentable subject matter. This discussion investigates whether the various threshold requirements set out in the IP Act to determine the patentability of an invention support the objectives of the patent system. Third, the chapter considers the nature and scope of patent rights. In particular, this discussion focuses on the extent to which the IP Act accommodates domestic needs and interests in setting out the various limitations to patent rights. The chapter ends by making specific recommendations to reform the patent-related provisions of the IP Act so that the law addresses Sri Lanka’s domestic concerns and needs while complying with the minimum standards set out in TRIPS and the Paris Convention.

3.1 The Evolution of Patent Law Sri Lanka’s recorded history dates back more than 2,500 years. Technological innovations are deeply entrenched in its history and culture.4 It has been recorded that between the third and seventh centuries, ancient engineers were pioneers in irrigation—they were experimenting on the design of sluices, the size of cisterns, the gradient of water flow, and the tapering of outlet conduits. They also experimented on the use of obtuse angled elbows when releasing water from reservoirs.5 Before the sixteenth century, the country’s standing as an innovator in irrigation systems was comparable to that of most developed societies at the time. For instance, referring to the status of engineering in ancient Sri Lanka, Sir James Emerson Tennent stated that “no people in any age or country had so great practice and experience in the construction of works for irrigation.”6 Sri Lanka’s 12th-century irrigation technology was not only reported as unique but also was not seen in the rest of the world until the seventeenth century.7 The ancient Sinhalese developed a highly sophisticated 3

Intellectual Property Act No 36 of 2003 (“IP Act”). MA De Silva, Evolution of Technological Innovations in Ancient Sri Lanka (Vijitha Yapa Publishers 2011). 5 K Pieris, “Science and Technology in Ancient Sri Lanka” The Island (10 October 2010) http:// www.island.lk/2005/10/20/features4.html. 6 JE Tennent, Ceylon: An Account of the Island (vol 1) (Longman, Green, Longman and Roberts 1859), 468. 7 DLO Mendis, “Technology of Development and the Underdevelopment of Technology in Sri Lanka” in Proceedings of the 31st Annual Session of the Sri Lanka Association for the Advancement of Science (1974). See also K Kariyawasam, Women and IP Commercialisation in the Asian Region: Case Study of Sri Lanka (WIPO 2018), 8. 4

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irrigation system in which technical skills of an extraordinary nature were demonstrated. The construction of canals and channels exhibited an amazing knowledge of trigonometry, while the design of tanks and reservoirs demonstrated a thorough grasp of hydraulic principles.8 These scientific and technological developments in ancient Sri Lanka were neither accidental nor intuitive. It was the result of experimentation and innovation.9 Although Sri Lanka has a proud history associated with ancestral wisdom, architectural marvels, literary and artistic works, and several other kinds of intellectual creations, no recorded evidence can be found of the existence of a law relating to the protection of intellectual creations in the pre-colonial period. The Sri Lankan experience on patent protection dates back to the colonial era when the British law on patents was introduced to the colonies, including Ceylon (the official name given to the country by its colonial masters and used until 1972). Colonial rule lasted for almost 200 years, during which time British laws were introduced to Ceylon, particularly in the area of commercial law.10 Under these imperial statutes, the British laws in relation to innovations were extended to Ceylon with the introduction of the British Inventors’ Ordinance 1859.11 This Ordinance was followed by a long line of statutory enactments,12 which continued to shape the intellectual property (“IP”) regime of Sri Lanka. The Patents Ordinance 1906 replaced the British Inventors’ Ordinance 1859. It continued to remain in force until the enactment of the Code of Intellectual Property Act 1979 (“Code of IP”).13 The IP Act is the most recent legislative enactment that, among other things, deals with patent protection in Sri Lanka. Given the lengthy period of British imperial rule in Sri Lanka, the legislative framework on patent protection was built on the fundamental principles of the British legal tradition. However, subsequent legislative enactments (in 1979 and 2003) represent attempts by the Sri Lankan legislature to ensure that the country’s patent law aligned with its socio-economic context and complied with the international minimum standards of IP protection.14 The Code of IP, which was enacted in 1979, has been 8

KM De Silva, “Historical Survey in Sri Lanka” in KM de Silva (ed), Sri Lanka: A Survey (University Press of Hawaii 1977), 32. 9 Pieris (n 5). 10 DM Karunaratne, “A General Overview of the National Intellectual Property Regime in Sri Lanka Since Independence” in Aspects of 50 Years of Law, Justice and Governance in Sri Lanka– A Compilation of Papers Presented at The Conference on 50 Years of Law, Justice and Governance in Sri Lanka (Law and Society Trust 2005), 229; M Birnhack, “Colonial Intellectual Property” in I Calboli and ML Montagnani (eds), Handbook on Intellectual Property Research (Oxford University Press 2019), 2. 11 D Llewelyn, Invisible Gold in Asia: Creating Wealth Through Intellectual Property (Marshall Cavendish 2011), 241. 12 These enactments include the Merchandise Marks Ordinance 1888, Designs Ordinance 1904, Patents Ordinance 1906, Copyright Act 1911, Copyright Ordinance 1912, Trade Marks Ordinance 1925 and the Patents, Designs, Copyright and Trade Marks (Emergency) Ordinance 1942. 13 Code of Intellectual Property Act No 52 of 1979 (“Code of IP”), as amended by Act No 30 of 1980, Act No 2 of 1983, Act No 17 of 1990, Act No 13 of 1997 and Act No 40 of 2000. 14 See NSP Hewage, Promoting a Second-Tier Protection Regime for Innovation of Small and

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identified as marking a turning point in the evolution of Sri Lanka’s IP system.15 The Code of IP established a comprehensive legal framework to deal with copyright, industrial designs, patents, trade marks, and unfair competition based on the “model laws” prepared by the World Intellectual Property Organization (“WIPO”). Then, Sri Lanka became a signatory to the Patent Corporation Treaty in 1986, thereby becoming a party to the global protection system where an invention protected in one of the member countries results in simultaneous protection in all member countries (subject to fulfilling domestic requirements) via the single international application process. These developments demonstrate Sri Lanka’s intent in becoming part of the global economy. In 1994, that intent was taken a step further when Sri Lanka became a founding member of the World Trade Organization (“WTO”). But in order to become part of the WTO’s multilateral trading system, Sri Lanka had to give effect to a bundle of multilateral agreements of the WTO. In 2003, Sri Lanka enacted a new law—i.e., the IP Act. The promotion of national creativity, the protection of creative efforts, the enhancement of possibilities to integrate the national economy with the knowledge-driven global economy, the attraction of foreign investment, and the protection of consumer interests16 were identified as some of the key aims of the IP Act. Although the IP Act has much in common with the former Code of IP, it brought about significant changes to bring Sri Lanka’s IP law in tune with its international treaty obligations.17 In particular, this included WTO’s TRIPS. Thus, in order to comply with the patent-related provisions of TRIPS, Part IV of the IP Act was introduced, which establishes the current legislative framework governing the grant, administration and enforcement of patents in Sri Lanka. However, it must be emphasised that although TRIPS establishes minimum standards in respect of the grant and availability of patent rights, it confers on WTO members sufficient discretion and flexibility in implementing those standards so that domestic interests can be addressed.18 Article 1 of TRIPS explicitly states that WTO members are not required to give more extensive protection than what is required by the agreement and shall be free to determine the appropriate method of implementing the provisions of the agreement in keeping with their own legal framework and practice. Taking into account the

Medium-Sized Enterprises in South Asia: The Case of Sri Lanka (Nomos Verlag 2015). Sri Lanka is a party to an array of international conventions including the Paris Convention for the Protection of Industrial Property (since 1952), Madrid Agreement for the Repression of False or Deceptive Indication of Source on goods (since 1952), Nairobi Treaty for the Protection of Olympic Symbol (since 1984), Patent Co-operation Treaty (since 1982), Berne Convention (since 1959), Universal Copyright Convention (since 1983), Convention establishing the World Intellectual Property Organization (since 1978), TRIPS (since 1995), and the Trademarks Law Treaty (since 1996). 15 DM Karunaratna, Issues Related to the Enforcement of IP Rights: National Efforts to Improve Awareness of Decision Makers and Education of Consumers, WIPO/ACE/3/5 (26 April 2006), 2. 16 Ibid. 17 Hewage (n 14) 85. 18 TRIPS, Art. 1.

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domestic needs of WTO members, TRIPS repeatedly places emphasis on the flexibilities it affords as regards the domestic implementation of TRIPS standards.19 Thus, when framing domestic legislation that gives effect to TRIPS standards, a careful examination of the exact scope of the available flexibilities is warranted. Every one of those flexibilities represents a decision point for policymakers in framing domestic IP law.20 Unfortunately, the drafters of the patent-related provisions of Sri Lanka’s IP Act have made very little effort to engage with the flexibilities in TRIPS. As such, there is a need to carefully evaluate the IP Act’s current provisions that govern patents to reposition the law to meet Sri Lanka’s domestic concerns and needs more effectively while adhering to international minimum standards of IP protection. But before moving on to discuss the provisions of the IP Act, we briefly consider the link between R&D and innovation in the Sri Lankan context.

3.2 Role of R&D in Driving Innovation It is well known that a strong correlation exists between R&D inputs and innovation. Even after 70 years since gaining independence from British rule, Sri Lanka lags far behind in innovation and technological advancements compared to its neighbouring Asian counterparts, also colonies of the British Empire. For example, Sri Lanka was ranked 90th out of a 128 countries in the Global Innovation Index (“GII”) in 2017, a drop of five places compared with the GII for 2015, and dropping further to 95th position in the GII for 2021.21 Although the Gross Domestic Expenditure on R&D (“GERD”) has increased over the years, as a percentage of the Gross Domestic Product (“GDP”), it has declined significantly in recent years. The rate of R&D activities remains very low, with only 0.1% of the GDP in 2014 being invested in R&D, which was the lowest recorded in Sri Lanka since independence.22 In 2015,

19

See e.g., Doha Ministerial Declaration on the TRIPS agreement and Public Health, WT/MIN(01)/DEC/2 (20 November 2001) (“Doha Declaration on TRIPS and Public Health”) (which recognises in para 4 that TRIPS should be interpreted and implemented “in a manner supportive of WTO members’ right to protect public health and, in particular, to promote access to medicines for all”) and Article 66 of TRIPS (which explicitly granted Least-Developed Countries a grace period in the implementation of TRIPS standards). 20 DJ Gervais, “Patentability Criteria as TRIPS Flexibilities: The Examples of China and India” in RL Okediji and MA Bagley (eds), Patent Law in Global Perspective (Oxford University Press 2014), 541. 21 S Dutta, B Lanvin and S Wunsch-Vincent (eds), The Global Innovation Index 2015: Effective Innovation Policies for Development (Cornell University, INSEAD and WIPO 2015), 17; S Dutta, B Lanvin and S Wunsch-Vincent (eds), The Global Innovation Index 2017: Innovation Feeding the World (10th edn, Cornell University, INSEAD and WIPO 2017), 15; S Dutta, B Lanvin and S Wunsch-Vincent (eds), Global Innovation Index 2021: Tracking Innovation through the COVID-19 Crisis (14th edn, WIPO 2021), 4. 22 National Science Foundation, Sri Lanka Science, Technology & Innovation Statistical Handbook 2014 (May 2017), 3.

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Fig. 3.1 GERD spending (1966–2018), Sri Lanka. Source National Science Foundation

GERD as a percentage of the GDP had increased by only 0.01% to reach 0.11%,23 and between 2016 and 2018, it has remained at 0.13%.24 As a general trend, the agricultural sector fetches the highest percentage of GERD expenditure, followed by the engineering and technology sector, the natural sciences, and the social sciences and humanities.25 Figure 3.1 highlights that GERD allocation as a percentage of the GDP has declined from 1966 to 2018. Innovation is generally driven by funding. The lack of R&D funding at universities and other research institutions has led to fewer local patent filing and grants. As seen in Fig. 3.2, from 1995 to 2018, when compared with local patent applicants, a significantly larger number of non-resident applicants have secured patents. For instance, in 2017, 183 patents were granted by the National Intellectual Property Office (“NIPO”), but Sri Lankan residents secured only 54 of them.26 In 2018, the NIPO had granted 212 patents, of which only 64 went to local applicants.27 In Fig. 3.3, the pie chart, based on patent data from 2010 to 2017, highlights the breakdown of total patents granted across all sectors, including single inventors. Accordingly, 76% of patent grants went to single inventors, both men and women, 23

National Science Foundation, Sri Lanka Science, Technology & Innovation Statistical Handbook 2015 (January 2018), 3. 24 National Science Foundation, Statistical Handbook on Research and Development of Sri Lanka 2018 (February 2021), 7. 25 D Hirimuthugoda, “Reaching Greater Heights in Innovations: A Sri Lankan Perspective” Talking Economics (26 April 2015) http://www.ips.lk/talkingeconomics/2015/04/26/reaching-greater-hei ghts-in-innovations-a-sri-lankan-perspective/. 26 National Science Foundation, Statistical Handbook 2018 (n 24) 32. 27 Ibid.

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Fig. 3.2 Total number of patents granted to local and international applicants. Source National Science Foundation

Fig. 3.3 Proportion of total patents granted across all sectors (2010–2017). Source Primary data collected from the NIPO in 2018

while other sectors took up only 24%. For example, 10% of patents were granted to individuals in small-group collaborations, 2% to universities, 6% to government and semi-governmental institutions, and 5% to private-sector organisations. The data from Fig. 3.3 demonstrates that the R&D initiatives and spending that result in patentable inventions in the university, private, and government sectors are lacking. There are also fewer collaborative research initiatives that contribute to local innovation and patent filings. The data shows that Sri Lankan universities and the private sector need to engage in more R&D activities that lead to inventions that can be commercialised. Indeed, the ideal setting would be for universities and the private sector (and perhaps also the public sector) to partner with one another in increasing their involvement in R&D that can propel the country’s economy. In essence, the point we seek to drive across by referring to the statistics and data is that local innovation in Sri Lanka requires a boost. Sri Lanka needs to shift its

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focus towards promoting a culture of innovation as a matter of policy. Unless this is done, any change to the legal framework will not bring about a significant change. Having said that, it is vital to ensure that the law itself does not create obstacles to the inventive process. We emphasise that a country’s patent law must reflect its socioeconomic and cultural context. In particular, when the law sets out the threshold requirements that an invention must meet before qualifying for a patent, it must do so by considering the country’s prevailing inventive capability. With that in mind, in the next part of this chapter, we consider the provisions of Sri Lanka’s IP Act that set out the threshold criteria for patentable inventions.

3.3 Patentable Inventions Article 27.1 of TRIPS provides that patent rights must be made available in cases where an invention satisfies three cumulative threshold requirements—namely the invention must be new (or novel), involve an inventive step (or non-obvious), and be capable of industrial application (or useful).28 However, TRIPS affords WTO members substantial flexibility with respect to how broadly or narrowly they wish to set out the criteria for patentability under domestic law. This means that WTO members may implement the patentability criteria according to what is most appropriate to the implementing country’s level of development, as long as the approach does not run counter to the basic definitions and the common understanding of the said criteria. In the Sri Lankan context, a patent is subject to a grant by the NIPO. The next section of this chapter examines how Sri Lanka has utilised TRIPS flexibilities to define patentability criteria and whether the approach must change to reflect local conditions more effectively.

3.3.1 Inventions In terms of section 63 of the IP Act, patents are granted in respect of inventions that are (i) new (or novel), (ii) involve an inventive step (or non-obviousness), and (iii) industrially applicable (or useful). This, in essence, is a verbatim adaptation of the requirements set out in Article 27.1 of TRIPS. The IP Act defines the term “invention” in section 62(1) as “an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.”29 Section 62(2) expressly recognises that an invention may be or may relate to a product or process. However, it must be 28

TRIPS, Art. 27.1. This definition is a direct reproduction of the definition found in the former Code of IP (section 59(1)), which, in turn, was based on section 112(1) of the WIPO Model Law on Patents (see WIPO, Model Law for Developing Countries on Inventions: Volume 1 Patents, WIPO Publication No 840 (E) (WIPO 1979), 19).

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noted that the IP Act does not expressly provide that “patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced,” a requirement that appears in Article 27.1 of TRIPS. While there is no express reference to this requirement, nothing in Chap. XI of the IP Act appears to impose any conditions regarding the availability of patent rights that discriminate based on the underlying technology, place of invention, or whether the resulting products are imported or locally produced. It is also notable that Articles 27.2 and 27.3 of TRIPS exclude specified subject matter from patentability. The IP Act has opted to give effect to these exclusions in section 62(3). The following observations are noteworthy as regards the Sri Lankan exclusions. First, paragraphs (a) and (c) of subsection (3) of section 62, respectively, exclude “discoveries, scientific theories and mathematical methods” and “schemes, rules, or methods for doing business, performing purely mental acts or playing games.” Notably, these exclusions are not to be found in Articles 27.2 and 27.3 of TRIPS, which set out excluded subject matter. However, since TRIPS does not provide a definition for “invention,” and given the general flexibility that WTO members possess in determining that definition, the exclusions described above merely give effect to that flexibility by seeking to define the scope of patentable inventions under the IP Act. The subject matter mentioned above refers to things that already exist in nature or laws, principles, and theories that describe nature or set out an abstract concept.30 There is no justification for conferring exclusive rights in respect of such subject matter. They ought to be retained in the public domain for the benefit of all. It is doubtful that discoveries, theories, principles, and abstract concepts fit the definition of an “invention.”31 Accordingly, these exclusions are consistent with TRIPS and reflect the approach in most countries. Second, it appears that section 62(3)(b) seeks to give effect to the exclusion set out in TRIPS Article 27.3(b), which permits the exclusion from patentability “plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.” However, there is a crucial difference between section 62(3)(b) and Article 27.3(b). The Sri Lankan provision excludes “plants, animals, and other microorganisms other than transgenic micro-organisms.” Thus, although TRIPS does not permit WTO members to exclude micro-organisms from patentable subject matter (an exception to the exception), under Sri Lankan law, micro-organisms are expressly 30

These exclusions are derived from the former Code of IP (section 59(3)(a) and (c)), which, in turn, were derived from section 112(3)(i) and (iii) of the WIPO Model Law on Patents (Ibid, 19). 31 The IP Act (section 62(1)), the former Code of IP (section 59(1)) and the WIPO Model Law on Patents [section 112(1)] define “invention” in a very similar way. As such, it is useful to refer to the following explanation attaching to the definition of “invention” in the WIPO Model Law on Patents—“An invention must first be conceived in the mind of a person (the inventor) as an idea. A mere idea, however, according to the definition of subsection (1), is not sufficient to qualify as an invention. The idea must, when it is practiced, permit a problem to be solved. Moreover, the problem to be solved must be a specific one. However, the idea need not be the solution to the problem itself but need only permit in practice the solution” (Ibid, 57).

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excluded, although patents concerning transgenic micro-organisms are eligible for protection. In short, micro-organisms other than transgenic micro-organisms are excluded from patentability. Such an approach is seemingly inconsistent with Article 27.3(b) of TRIPS.32 Dr. DM Karunaratna, a former Director-General of IP in Sri Lanka, in his commentary on the IP Act, has made the following remarks regarding the Sri Lankan exclusion on micro-organisms: “Transgenic” means an organism that expresses a characteristic not attainable normally by the species under natural circumstances, but which has been added by means of direct human intervention in its genetic composition. Even without the word “transgenic” in section 62(3)(b), [..] naturally occurring micro-organisms are not patentable. A microorganism can be patented only if it fulfils the requirements of an invention as well as of patentability including novelty. Only […] transgenic micro-organisms can therefore be patented.33

The explanation above seems to posit that micro-organisms as such are naturally occurring entities and, therefore, do not possess the characteristics of an invention capable of attracting exclusive patent rights.34 But that does not mean that only transgenic micro-organisms can be patented. For instance, it has been observed that micro-organisms that are isolated from their natural surroundings, cultivated through a laboratory process and manipulated may possess the requisite characteristic of an invention.35 Indeed, there are many ways by which a micro-organism can be genetically engineered. In scientific literature, it has been suggested that: Several terms are used to describe genetically engineered animals: genetically modified, genetically altered, genetically manipulated, transgenic, and biotechnology-derived, amongst others. In the early stages of genetic engineering, the primary technology used was transgenesis, literally meaning the transfer of genetic material from one organism to another. However, with advances in the field, new technology emerged that did not necessarily require transgenesis: recent applications allow for the creation of genetically engineered animals via the deletion of genes, or the manipulation of genes already present.36

In other words, there could be micro-organisms that are not necessarily transgenic but nevertheless have been manipulated or genetically engineered in such 32

Interestingly, the former Code of IP [at section 59(3)(b)], which was modelled on section 112(3)(ii) of the WIPO Model Law on Patents (Ibid, 19), did not exclude micro-organisms from patentability. It stopped short at “plant or animal varieties or essentially biological processes for the production of plants or animals.” 33 DM Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Sarasavi Publishers 2010), 143–144. 34 See, e.g., Funk Brothers Seed Co v Kalo Inoculant Co 333 U.S. 127 (1948) (a US Supreme Court decision where it was held that bacteria in their natural form, without any alternation by the patentee, cannot be patented). Contrast, Diamond v Chakrabarty 447 U.S. 303 (1980) (where the US Supreme Court decided that a man-made and genetically engineered bacterium was patentable). 35 S Gupta, “Patenting Microorganisms” (1999) 4 Journal of Intellectual Property Rights 89, 90 (“For example, a particular bacterial strain may first be isolated in a natural sample and thereafter reproduced by laboratory cultivation. In the course of this, it may be manipulated, for instance, so as to purify the strain […] The strain so modified, by a specified process is likely to be patentable”). 36 EH Ormandy, J Dale and G Griffin, “Genetic Engineering of Animals: Ethical Issues, Including Welfare Concerns” (2011) 52 Canadian Veterinary Journal 544.

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a way that they no longer represent the naturally occurring micro-organism. This means that a blanket exclusion of micro-organisms (other than transgenic microorganisms) from patentability could result in inventions that relate to microorganisms being denied patent protection even though they concern manipulated micro-organisms that are novel and do not occur in nature. Accordingly, it is necessary to rethink section 62(3)(b) of the IP Act. Of course, any concerns regarding the patenting of micro-organisms may be addressed in other ways. For instance, even if section 62(3)(b) is redrafted so that it complies with TRIPS, the removal of “micro-organisms” from excluded subject matter does not necessarily imply that such micro-organisms are always eligible for patent protection. Since the IP Act defines an invention as “an idea of an inventor” as opposed to a “discovery” (which Sri Lanka is permitted to do in view of the flexibility afforded under TRIPS in this regard), the mere discovery of a micro-organism, or even its mere isolation from the natural environment, may not qualify as an invention, to begin with. Such an approach is not only consistent with TRIPS but is also capable of addressing domestic concerns, such as the need to permit the unrestricted use of micro-organisms in agriculture and other industries. In addition, section 62(3)(b) of the IP Act is tainted with confusion when it ends with the following proviso—“[p]rovided, however, that a patent granted in respect of micro-organisms shall be subject to the provisions of this Act.” Thus, although the said provision begins by excluding micro-organisms (other than transgenic microorganisms) from patentable subject matter, the proviso seemingly contradicts that position. Perhaps, what the legislature might have intended in drafting the proviso was to refer to “transgenic micro-organisms.” In any case, it is unclear as to why such a proviso is even necessary, as section 63 clearly sets out the requirements for a patentable invention (i.e., novelty, non-obviousness, and industrial applicability), which applies to all inventions including those expressly mentioned in section 62(3)(b). As such, it is clear that any invention, even one relating to microorganisms, would have to satisfy the three threshold requirements before a patent could be awarded. Thus, the utility of the proviso in section 62(3)(b) is questionable. Third, the exclusion in Article 27.3(a) of TRIPS has been given effect to in section 62(3)(d) of the IP Act. Article 27.3(a) provides that WTO members may exclude from patentability “diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.” Accordingly, section 62(3)(d) of the IP Act excludes from patentability “methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.”37 Notably, the proviso to section 62(3)(d) provides a clarification that “any product used in any such method shall be patentable.” A point to note about the Sri Lankan exclusion is that its scope is seemingly narrower than what is permitted under TRIPS, as section 62(3)(d) refers to treatment or diagnostic methods “practised on 37

This exclusion is identical to the exclusion set out under the former Code of IP [section 59(3)(d)], which in turn was derived from section 112(3)(iv) of the WIPO Model Law (see WIPO, Model Law on Patents (n 29) 19).

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the human or animal body.” Thus, the exclusion does not cover diagnostic methods practised on blood or tissue outside the human body and methods practised immediately before treatment.38 For the Sri Lankan context, it may be prudent to simply adopt the language in TRIPS and exclude “diagnostic methods for the treatment of humans or animals” from patentability. Alternatively, Sri Lanka may consider adopting broader language in framing the exclusion. The corresponding exclusion in India39 may provide a suitable example to follow. Lastly, Article 27.2 of TRIPS permits WTO members to exclude from patentability inventions the exploitation of which must be prohibited to protect ordre public or morality, including to protect human, animal, or plant life or health or to avoid serious prejudice to the environment. This exclusion has been directly incorporated into section 62(3)(f) of the IP Act. However, section 62(3)(e) provides a much more specific exclusion. It excludes from patentability “an invention which is useful in the utilisation of special nuclear material or atomic energy in an atomic weapon.” Although TRIPS does not expressly provide for such an exclusion, it can be argued that inventions relating to nuclear weapons come within the scope of the ordre public exclusion in Article 27.2. While the IP Act implements the exclusions set out in Articles 27.2 and 27.3 of TRIPS, it does not contain any specific provision to exclude any invention that incorporates traditional knowledge belonging to Sri Lanka’s indigenous or local communities.40 Such a provision is imperative in view of Sri Lanka’s biological diversity and rich traditional knowledge that have been preserved for many generations. Of course, one might argue that an invention derived from traditional knowledge may be denied patent protection because it is contrary to ordre public or that it is disclosed in the prior art and therefore not novel. However, it may be prudent to include a provision in the IP Act that expressly excludes inventions derived from traditional knowledge from the scope of patentable inventions. For instance, this is the case in New Zealand. Thus, under section 15 of the Patents Act 2003, while inventions the exploitation of which is contrary to ordre public cannot be patented,41 the statute goes on to provide that “[t]he Commissioner may, for the purpose of making a decision under this section, seek advice from the M¯aori advisory committee or any person that the Commissioner considers appropriate.” One of the functions of the M¯aori advisory committee is to advise the Commissioner on whether “an invention claimed in a patent application is derived from M¯aori traditional knowledge or from indigenous plants or animals” and if so, 38

A Neef and S Reyes-Knochein, “Article 27–Patentable Subject Matter” in P–T Stoll, J Busche and K Arend (eds), WTO—Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 499–500. 39 The Indian Patents Act 1970 in section 3(i) excludes “any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.” 40 SS Latha, “Biopiracy and Patent Protection of Traditional Medicine in India” (2009) 31 European Intellectual Property Review 465. 41 Patents Act 2003, section 15(1).

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“whether the commercial exploitation of that invention is likely to be contrary to M¯aori values.” Accordingly, where the commercial exploitation of an invention is likely to be offensive to a significant section of the indigenous community in New Zealand, or the claimed invention is derived from traditional knowledge, a patent application incorporating such an invention may be refused. In India, legislation has addressed concerns regarding traditional and indigenous knowledge in more direct terms. For example, section 3(p) of the Indian Patents Act 1970 contains an exclusion according to which “an invention, which in effect is traditional knowledge or an aggregation or duplication of known properties of a traditionally known component or components,” is not to be regarded as patentable.42 This exclusion has already led to some useful outcomes in relation to the protection of traditional knowledge. For instance, recently, the High Court of Himachal Pradesh, among other things, made use of section 3(p) of the Patents Act 1970 in revoking a patent in respect of a “device used for manually hauling agricultural produce” given its similarities with a traditional handicraft known as “Kilta” (an all-purpose bamboo basket used to carry any load, supported by a rope and tied to the forehead).43 Considering the developments elsewhere, it is high time for Sri Lanka to reform its patent law to include provisions to prevent the misappropriation of traditional knowledge and indigenous genetic resources in the guise of inventions. In this regard, it should also be noted that Sri Lanka is a party to the Convention on Biological Diversity, in terms of which “[a]ccess to genetic resources shall be subject to prior informed consent of the Contracting Party providing such resources.”44 However, the patent-related provisions of the IP Act do not include a requirement compelling patent applicants to disclose the source and geographical origin of any biological material made use of in respect of an invention. Nor is there any provision requiring patent applicants to provide proof of prior informed consent in respect of access to biological material utilised in a given invention. Incorporating provisions into the IP Act that compel disclosures on biological material and prior informed consent may be crucial for the NIPO to determine whether a particular application violates ordre public.

3.3.2 Novelty Novelty has been the critical criterion used to demarcate the boundary between inventions that are truly contributions to society from those that merely seek to reinvent the wheel. Unless an invention is novel, the grant of an exclusive right to its inventor in respect of its exploitation cannot be justified. While Article 27.1 of TRIPS mandates that patents be granted in respect of inventions that are “new,” it does not define that

42

The term “traditional knowledge” is not defined in the Indian statute. Dhanpat Seth and others v M/s Nilkamal Plastic Ltd Civil Suit No 69 of 2005 (29 June 2018). 44 Convention on Biological Diversity, 5 June 1992, 1760 U.N.T.S. 69, Art. 15(5). 43

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concept, thereby affording some flexibility as regards its implementation and interpretation under domestic law. Accordingly, WTO members may define novelty in a manner best suited to their domestic socio-economic, cultural and developmental needs. It has long been usual to consult “prior art,” i.e., the body of existing knowledge in the technical field pertaining to an alleged invention, in determining its novelty. However, in establishing the body of knowledge that comprises the prior art, a few varying standards may be employed—i.e., absolute, relative, and local novelty. It is, therefore, important from the point of view of developing countries to adopt a novelty standard that is most suited to their domestic contexts, with the aim of revising that standard over time as they develop economically. While most developed nations, including a majority of the EU member states, have opted for absolute novelty, where “prior art” encompasses information available and use of the invention anywhere in the world, some countries,45 irrespective of their developmental status, have opted for a relative novelty standard.46 Unlike in the case of absolute novelty, under a relative novelty standard, an invention’s novelty is destroyed if information relating to that invention has been published anywhere in the world, although its novelty will not be lost unless the invention has been used locally. Until 2014, New Zealand was one of the only developed nations to adopt a local novelty standard. Under that standard, the assessment of prior art is limited to published information and the invention’s use within the country. In Sri Lanka’s case, section 64(1) of the IP Act provides that “an invention is new if it is not anticipated by prior art.” Notably, section 64(2) of the statute defines “prior art” to include the following items: (a) everything disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the filing or, where appropriate, priority date of the patent application claiming the invention; (b) the contents of a patent application made in Sri Lanka having an earlier filing or, where appropriate, priority date than the patent application referred to in paragraph (a), to the extent that such contents are included in the patent granted on the basis of the said patent application made in Sri Lanka.47 A perusal of section 64(1) of the IP Act reveals that in Sri Lanka’s case, novelty (as understood by the concept of prior art) is consistent with the absolute standard. The standard of novelty that is appropriate for a particular country has to be determined upon considering factors, both endogenous and exogenous to the patent system, and would typically involve a lengthy process involving numerous policy and legal

45

Most notably, the United States adopts a standard of relative novelty. See DS Chisum, “Sources of Prior Art in Patent Law” (1976) 52 Washington Law Review 1. 46 See WIPO, Certain Aspects of National/Regional Patent Laws, SCP/12/3 Rev. 2, Revised Annex II: Novelty (March 2019) https://www.wipo.int/export/sites/www/scp/en/national_laws/novelty.pdf (for a summary of novelty standards). 47 A disclosure made under section 64(2)(a) of the IP Act will be disregarded if the public disclosure made by an inventor occurred within one year preceding the date of the patent application or was disclosed by reason of abuse by a third party within the period of six months preceding the date of application. This is a safeguard against the loss of novelty.

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considerations.48 However, a cost–benefit analysis that compares, on the one hand, the absolute novelty standard and, on the other hand, the relative novelty standard can be the first step in determining the optimal standard of novelty appropriate for a developing country such as Sri Lanka. Under an absolute standard of novelty, prior art encompasses all information available globally. Therefore, a higher level of inventiveness is ensured. It further ensures the conformity of patent laws with global principles and a higher level of certainty regarding the quality, validity, and enforceability of a patent once granted. Strong patents are vital for countries that have achieved a minimum level of technological growth. Absolute novelty encourages the transfer of the most advanced technologies and induces the most productive local R&D.49 However, it is important to note that the benefits of technology transfer and knowledge exchange would largely depend on the technological capacity of individual countries. While countries like China and India have the requisite technological capacity, other developing countries may lack this capacity.50 Moreover, the scepticism concerning the role of patents in the transfer of technology in developing countries,51 the existence of a relatively small population of potential consumers, a low level of manufacturing and technological capacity to reap the benefits of licensing arrangements are suggestive of the limited relevance of the absolute novelty standard to developing countries. Since the absolute novelty standard requires a consideration of everything disclosed to the public about an invention anywhere in the world in the form of written publication, oral disclosure, use or in any other way, the process of examining the novelty of an invention is highly complex. In contrast, a relative novelty standard is premised on documentary anticipation measured on a global basis but using a local novelty standard regarding anticipation by prior use.52 Although the examination of documentary anticipation is relatively easier, even where novelty is tested against the whole world, examining anticipation by prior use or publicly known matters with the same absolute novelty standard is challenging. After all, 48

C Correa, “Designing Patent Policies Suited to Developing Countries Needs” (2008) 10 Revista Econômica 82, 90 (“in most developing countries the innovation systems are fragmented and weak, and they overwhelmingly depend on innovations made abroad. In many countries, which followed the ‘linear model’ of scientific and technological development, the public sector modestly invests in scientific activities—generally focussed on subjects of research of interest to developed countries—while domestic firms largely generate ‘minor’ or ‘incremental’ innovations derived from the routine exploitation of existing technologies. Domestic firms generally follow ‘imitative’ or ‘dependent’ technological strategies, usually relying on external sources of innovation, such as suppliers, customers and competitors”). 49 JA Erstling and RE Strom, “Korea’s Patent Policy and Its Impact on Economic Development: A Model for Emerging Countries?” (2010) 11 San Diego International Law Journal 441. 50 G Mengistie, “The Impact of the International Patent System on Developing Countries” (2009) 23 Journal of Ethiopian Law 161, 172. 51 Ibid, 170. 52 A Franklin, “Flexibility vs Certainty in Patent Law–Australia vs the UK and South Africa” (2004) 58 Intellectual Property Forum: Journal of the Intellectual Property Society of Australia and New Zealand 24.

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the need for a comprehensive global search for prior art under an absolute novelty standard is “extremely costly, time-consuming and scarcely feasible in practice”53 in view of the limited administrative capacity of national IP offices in developing countries. In contrast, a relative novelty standard would ensure that the investigation and examination process is efficient and not overly cumbersome while also providing a comparatively accurate assurance as to the inclusion of prior art in the national context. Accordingly, this is a good reason to replace Sri Lanka’s absolute novelty standard with a relative standard. A report published jointly by the United Nations Conference on Trade and Development (“UNCTAD”) and WIPO highlighted that in 1970 developing countries had granted only 6% of the world’s stock of patents and their nationals held less than 1% of those patents.54 Nearly 50 years later, the combined share of the patent applications by countries representing low and lower-middle-income groups was 2.8% of the total patent applications filed in 2017.55 It is important to note that the number of patent applications filed by residents of Sri Lanka between 1995 and 2021 was approximately 5,148, which is comparatively lower than those filed by foreigners (which was approximately 6,384).56 In terms of patent grants in Sri Lanka, there is a consistent pattern where non-residents have received twice and, in some years, thrice the number of patents compared to resident applicants.57 The lower number of patent filings and success rates on the part of residents of developing countries, such as Sri Lanka, could be a result of many factors.58 However, it is suggested that a significant contributing factor could be the absolute novelty standard that these countries have adopted under their national laws.59 A higher standard of novelty is most undoubtedly advantageous to non-resident patent applicants, often the large multinational corporations (“MNCs”), capable of amassing resources necessary to take advantage of the patent system. On the other hand, such a high threshold could deter local inventors and small and medium-sized enterprises (“SMEs”) from filing patent applications for minor inventions.60 Accordingly, “a relative standard [of novelty] would be viable, workable, and appropriate”61 to the context of developing countries such as Sri Lanka. 53

MW Tvedt, “One Worldwide Patent System: What’s in It for Developing Countries?” (2010) 31Third World Quarterly 277, 286. 54 UNCTAD and WIPO, The role of the Patent System in the Transfer of Technology to Developing Countries (United Nations 1975), 38 https://digitallibrary.un.org/record/526090. 55 WIPO, World Intellectual Property Indicators 2018 (WIPO 2018), 27 https://www.wipo.int/ edocs/pubdocs/en/wipo_pub_941_2018wipo_pub_941_2018.pdf. 56 NIPO, Statistics https://www.nipo.gov.lk/ 57 Ibid. 58 These factors include but are not limited to capacity, awareness, costs of processing patent applications and enforcement. 59 Mengistie (n 50) 165. 60 Correa, “Designing Patent Policies” (n 48) 93. 61 J Otieno-Odek, “Public Domain in Patentability after the Uruguay Round: A Developing Country’s Perspective with Specific Reference to Kenya” (1995) 4 Tulane Journal of International and Comparative Law 15, 22.

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Since a relative novelty standard implies that all or most foreign inventions are excluded from the body of prior art, such a standard would provide the opportunity for individuals and enterprises in developing countries to imitate foreign inventions, use reverse engineering techniques, and perform incremental technological development to enhance technological and local adaptive research capacity.62 For developing countries, such as Sri Lanka, which are in the “catching-up” phase, the relative novelty standard provides the necessary incentive and encouragement to local inventors and SMEs to engage more with the IP system.63 Such encouragement is vital in developing countries where revenue from R&D is not identified as a funding mechanism and public research institutions and universities dominate research.64 A low-threshold patent regime can initially incentivise minor innovations that can be used to encourage major inventions giving rise to technological and economic security,65 as well as the establishment of whole new industries.66 It must be noted that China’s long yet enterprising journey to become a world leader in innovation, signified, for instance, by its IP office receiving over 1.3 million patent applications just in 2017,67 is reflective of the strategic use of appropriate novelty standards within the patent regime.68 Until 2008, China adopted a relative novelty standard, which helped establish a strong local innovation base.69 Once the capacity and capability of the local innovators became sufficiently enhanced to compete on a global scale, China amended its national law and adopted an absolute novelty standard. Developing countries, including Sri Lanka, have much to learn from this approach. The above discussion demonstrates that Sri Lanka must seriously explore the possibility of adopting a relative novelty standard, which it is free to do given the flexibility that TRIPS affords to developing countries to achieve their economic and social goals better.70 Recognising that TRIPS is to be “implemented in a context of profound asymmetry in the distribution of scientific and technological capabilities 62

Ibid. SP Ladas, Patents, Trademarks, and Related Rights: National and International Protection (Harvard University Press 1975), 291. 64 Mengistie (n 50) 166. 65 Correa, “Designing Patent Policies” (n 48) 93. 66 Otieno-Odek (n 61) 102. 67 WIPO, IP Indicators 2018 (n 55) 7. 68 See AG Hu and GH Jefferson, “A Great Wall of Patents: What Is behind China’s Recent Patent Explosion?” (2009) 90 Journal of Development Economics 57; AG Hu, P Zhang and L Zhao, “China as Number One? Evidence from China’s Most Recent Patenting Surge” (2017) 124 Journal of Development Economics 107. 69 See W-N Yang and AY Yen, “The Dragon Gets New IP Claws: The Latest Amendments to the Chinese Patent Law” (2009) 21 Intellectual Property and Technology Law Journal 18; Z Liang and L Xue, “The Evolution of China’s IPR System and Its Impact on the Patenting Behaviours and Strategies of Multinationals in China” (2010) 51 International Journal of Technology Management 469. 70 CM Correa, “Implementing the TRIPS Agreement in the Patents Field: Options for Developing Countries” (2005) 1 Journal of World Intellectual Property 75, 82. 63

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in the world,”71 it is crucial for developing countries like Sri Lanka to implement a novelty standard that is “based on a real perception of their underlying economic role rather than the abstract notions of novelty.”72 More importantly, Sri Lanka does not have a system that protects petty patents or utility models, a type of protection that is even available in technologically more advanced countries like China and Japan. If such a system was in place, it could be used to protect inventions by residents and local SMEs that do not satisfy the high threshold of patentability but are still capable of providing creative and innovative solutions to existing problems. Therefore, the absence of a petty patents or utility models system in Sri Lanka further strengthens the argument for lowering the novelty standard. Such a standard should continue at least until the capacity and capability of local innovators improve to a level that will empower them to benefit from a stronger patent regime. It has to be emphasised that in granting patents, the NIPO should be less concerned about whether a particular invention is absolutely new and instead focus on whether the patent grant would trigger the development and local exploitation of the technology concerned.73

3.3.3 Inventive Step Before granting exclusive rights to an inventor, it is not sufficient that the underlying invention is new as against the prior art. It must also be established that the invention is not obvious to a person having ordinary skill in the art. This is an additional check to ensure that only those inventions that are genuine contributions to the field are awarded patents. While section 63 of the IP Act incorporates the need for non-obviousness before a patent could be granted in respect of an invention, section 65 defines non-obviousness in the following manner—“[a]n invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the patent application claiming the invention, such inventive step74 would not have been obvious to a person having ordinary skill in the art.” In essence, the assessment of non-obviousness outlines two stages. That is identification of the relevant prior art and then testing whether the invention is not obvious to a person having ordinary skill in the art. The assessment of non-obviousness as incorporated into the Sri Lankan statute is consistent with the criteria adopted 71

Ibid, 91. C Vaitsos, “Patents Revisited: Their Function in Developing Countries” (1972) 9 Journal of Development Studies 71, 88. 73 DG Lichtman, “The Economics of Innovation: Protecting Unpatentable Goods” (1997) 81 Minnesota Law Review 693. See also T Sichelman, “Commercializing Patents” (2010) 62 Stanford Law Review 341. 74 This definition is flawed, possibly due to a typographical error. What must not be obvious to the person having ordinary skill in the art is the invention and not the inventive step. After all, the said provision is seeking to define the meaning of “inventive step.” Therefore, we believe that those involved in the drafting of this provision meant “invention” and not “inventive step” when defining non-obviousness. 72

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by most developed countries.75 However, Article 27.1 of TRIPS affords WTO members some freedom in determining the degree of strictness to be applied in assessing non-obviousness.76 Developing countries, including Sri Lanka, must make use of this freedom in setting out the most optimal level of strictness for assessing non-obviousness. Arguably, the non-obviousness criterion is the biggest hurdle that inventors must pass in securing patent rights. A significant drawback in determining nonobviousness is that it is subject to the examiner’s opinion, which may be hindsight biased.77 This happens when examiners work backwards from the solution to the problem to ascertain inventiveness rather than considering the state of the prior art when the invention was conceived. This is in addition to the considerable time and resources required to correctly identify and review all the relevant information about the prior art.78 There is also the added difficulty of identifying the problem being solved by the invention and determining the level of skill to be attributed to the person skilled in the art.79 After all, “an invention that seems obvious to a person having ordinary skills in the field might nonetheless seem patent worthy to a person who lacks such skill, even after reading the prior art record.”80 According to Carlos Correa, there could be differences in evaluating non-obviousness even between persons skilled in the art but possessing different educational and cultural backgrounds: A person with ordinary skills is a legal fiction. Patent offices and courts may apply different notions of a skilled person, according to their own policies and the technical fields concerned. Thus, something that may be obvious to a healer or professional trained in Ayurveda traditional medicine may not be so for somebody trained in the Western medical tradition (the reverse may also be true, of course), thereby allowing for the granting of a patent.81

Together, the factors above combine to make the test to ascertain non-obviousness extremely subjective (and arbitrary) than an objective one. There are no uniform standards for the determination of inventive step. Many countries have developed their own secondary indicators for the positive assessment of non-obviousness. These indicators include the following: 75

See, e.g., Patents Act 1990 (Australia), section 7(2), read with section 7(3); Patents Act 1952 (United States), 35 USC §103 and the Convention on the Grant of European Patents (European Patent Convention), 5 October 1973, Art. 56 (applicable in Europe). See also WIPO, Certain Aspects of National/Regional Patent Laws SCP/12/3 Rev.2, Revised Annex II: Inventive Step (Obviousness) (March 2019) https://www.wipo.int/export/sites/www/scp/en/national_laws/inventive.pdf (for a summary of non-obviousness standards). 76 Neef and Reyes-Knochein (n 38) 484. 77 See BM Simon, “Rules, Standards, and the Reality of Obviousness” (2014) 65 Case Western Reserve Law Review 25, 31; RS Eisenberg, “Obvious to Whom–Evaluating Inventions from the Perspective of PHOSITA” (2004) 19 Berkeley Technology Law Journal 885, 887; WIPO, Study on Inventive Step: Summary, SCP/22/3 (July 2015) https://www.wipo.int/meetings/en/doc_details. jsp?doc_id=304236. 78 Simon (n 77) 46; Eisenberg (n 77) 889–890. 79 Simon (n 77) 45–46; Eisenberg (n 77) 890–891; WIPO, Study on Inventive Step (n 77). 80 Eisenberg (n 77) 887. 81 Correa, “Designing Patent Policies” (n 48) 97.

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(a) (b) (c) (d) (e) (f) (g) (h)

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the claimed invention solves a long-felt need; efforts by other inventors to solve the identical problem have been unsuccessful; the claimed invention overcomes technical difficulties not solvable by other means; the claimed invention produces unexpected technical effects or results; the claimed invention offers a surprisingly simple solution; commercial success directly derived from the claimed invention; industry praise or scepticism about the claimed invention; copying of the invention by competitors as opposed to relying on prior art.82

For instance, in China, examiners may consider secondary indicia to determine non-obviousness.83 When such secondary indicators are present, the examiner is instructed not to make a “rash determination” concerning the inventive step requirement.84 In China, the administrative guidance has been detailed and compressive, thereby limiting discretion and possible abuse. The consideration of secondary indicators as an alternative mechanism to determining non-obviousness could, theoretically, allow examiners to arrive at a fair decision since it provides them with sufficient guidance to make the assessment. These indicators can be persuasive evidence to support a finding of non-obviousness (or otherwise) on a case-by-case basis. Secondary indicators are more important when there are doubts. For developing countries, such as Sri Lanka, applying secondary indicators will increase the chances of facilitating innovation through an appropriate level of recognition. The use of secondary indicators could supplement the limited resources at the disposal of examiners in discovering prior art and distributes the burden of assessing inventiveness on examiners who have to independently search for prior art and applicants who have to submit evidence backing their claims. More importantly, these indicators could aid the decision-making process by moderating the subjective assessment of whether an invention is obvious to a person with ordinary skills in the art by providing an opportunity for assessment using objective criteria. For developing countries like Sri Lanka, the utility of these secondary indicators is underscored as a means to ensure that inventions are given due consideration before dismissing them for not satisfying the non-obviousness criterion. Hence, secondary indicators are equally (if not more) important to developing countries where the assessment made during the examination process can be influenced by hindsight bias. It should be noted that: A developing country might well decide to adopt fairly high standards, so as to exclude inventions that have no clear usefulness or that seem such a small incremental step that they could be considered “obvious.” Yet, the patent system was not designed only for pioneer 82

WIPO, Study on Inventive Step (n 77). D Liu, “Now the Wolf Has Indeed Come! Perspective on the Patent Protection of Biotechnology Inventions in China” (2005) 53 American Journal of Comparative Law 207, 232–233. 84 Gervais (n 20) 552 citing the State Intellectual Property Office of China (SIPO) Guidelines for Examination, available at https://wipolex-res.wipo.int/edocs/lexdocs/laws/en/cn/cn192en.pdf (note that China’s SIPO has now been renamed as the China National Intellectual Property Administration, abbreviated as CNIPA). 83

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inventions, those major technological breakthroughs capable of transforming an industry or indeed establishing a new one; the obviousness is more typically filters that apply to “close calls.” If the standard is too high, local inventors might be discouraged. Efforts in China and India to develop indigenous standards should be welcomed by policymakers in the developing world as they are likely to broaden the palette of options available to them in that regard.85

It should also be noted that the inventive step doctrine was developed when inventions were largely mechanical and non-obviousness was easily determined.86 The patent law requirements of explanation and description that were historically based on the mechanistic form of technology are difficult to apply to more recent forms of innovations in biotechnology, pharmaceuticals, computer software, and artificial intelligence. For instance, it is a well-known factor that small changes in chemical compounds may result in significant and dramatic results. Hence, determining the non-obviousness of an invention in such fields has proven more difficult for examiners and the courts, as the doctrines developed for mechanical inventions are not always easily applied to these technologies.87 In view of these challenges, relevant secondary indicators can be used to establish the non-obviousness of an invention.88 For this reason, at times, these secondary indicators have been described as a test that has assisted in overcoming the “stumbling blocks of patentability.”89 Accordingly, secondary indicators may be considered an alternative form of evidence for assessing the non-obviousness of an invention. The NIPO in Sri Lanka (and its counterparts in other developing countries) should make a more conscious effort to use these secondary indicators in determining the patentability of inventions. It may be prudent to include these secondary indicators in the IP Act as a nonexhaustive list of factors that may be consulted in determining non-obviousness. Such a step might be the first in the long-term improvement of the patentability requirements under Sri Lankan law.

3.3.4 Industrial Applicability Industrial applicability is dealt with in section 66 of the IP Act, which provides that “an invention shall be considered industrially applicable if it can be made or used in any kind of industry.” However, the statute does not define “made or used” and “any kind of industry.” Although the requirement of industrial application stems from the minimum standards set out in Article 27.1 of TRIPS, any guidance on how that phrase should be defined is limited to a footnote attached to Article 27.1, which 85

Ibid, 568. HVJ Moir, Patent Policy and Innovation—Do Legal Rules Deliver Effective Economic Outcomes? (Edward Elgar 2013), 5. 87 Ibid. 88 Ibid, 286. 89 Ibid. 86

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provides that “capable of industrial application” may be deemed by WTO members to be synonymous with “useful.” Beyond that, TRIPS does not provide any guidance on determining the industrial applicability of inventions. The obvious implication of this is that WTO members are free to implement a standard suitable to determine the “industrial application” of inventions taking into consideration their stage of development and socio-economic concerns. Correa has suggested that “industrial” must be interpreted in the same sense as Article 1(3) of the Paris Convention,90 which provides: Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.

Although the term “industrial” itself attracts a broad meaning and should be understood in that way, there is still room for adjustments under domestic law in regard to when an invention is to be treated as industrially applicable. While TRIPS allows WTO members to treat “industrial application” synonymously with “useful,” in reality, industrial application and usefulness do not necessarily mean the same thing. For instance, Correa has pointed out that: ‘useful’ is much broader than industrial applicability. Thus, research tools, business and other methods and computer programs may be patentable under the former, while they do not meet the industrial patentability requirement.91

In essence, the adoption of a utility or usefulness standard, as opposed to industrial applicability, may increase opportunities for innovators, especially in sectors such as software and artificial intelligence. For instance, in the United States, which adopts the criteria of utility in determining the patentability of inventions,92 there was a period during which thousands of software-related patents were filed until the US Supreme Court made a specific adjustment to the patentability criteria of softwarerelated inventions.93 This demonstrates that the standard of utility or usefulness, as opposed to industrial applicability, may incentivise innovation in specific sectors that developing countries such as Sri Lanka could benefit from. After all, the utility of an invention can be framed in a broader sense as one capable of “providing an immediate, well-defined, real-world benefit to the public.”94 For this reason, there may be utility in considering a shift from the industrial applicability standard, currently applicable in Sri Lanka, to a usefulness-based standard.

90

CM Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (2nd edn, Oxford University Press 2020), 268. 91 Ibid, 269. 92 Patents Act 1952, 35 USC §103. 93 Alice Corp v CLS Bank International 573 U.S. 208 (2014). 94 In re Fisher [2005] 421 F 3d 1365, 1371.

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3.4 Nature and Scope of Patent Rights Chapter XV of the IP Act sets out the rights of a patent owner. Section 84(1)(a) to (c) specifies that the owner of a patent shall have the exclusive right to exploit the patented invention, assign or transmit the patent, and conclude licence contracts. The term “exploitation” has been defined in relation to “products” and “processes” separately. As regards patented products, the proprietor may make, import, offer for sale, sell, export or use the product, or stock such product for the purposes mentioned above.95 As regards patented processes, the proprietor may use the process, as well as make, import, offer for sale, sell, export, use or stock for any of these purposes any product obtained directly by means of the process, and prevent third parties from using that process or doing any of the acts mentioned above in respect of any product obtained directly by means of that process, except with the authorisation of the proprietor.96 Notably, the IP Act protects the patent owner’s interests from infringement by prohibiting third parties from doing any of the aforementioned acts without the requisite consent having first been obtained from the proprietor.97 The provisions set out above, which deal with the rights of patent owners, give effect to Sri Lanka’s obligations under Article 28 of TRIPS. In fact, the Sri Lankan provisions go beyond the minimum standards under TRIPS, as section 84(1)(a) seemingly confers on patent owners a positive right to exploit their invention, whereas TRIPS frames this right in a negative fashion—“to prevent third parties” from exploiting patents without the requisite consent. Whether it is prudent to confer a positive right of exploitation is debatable. However, as the discussion in the chapter on trade marks (i.e., Chap. 5) demonstrates, the grant of positive rights could have undesirable and unintended effects on regulatory freedom. As such, it may be wise to do away with any positive rights and simply frame patent rights in the negative form as required by TRIPS. While the provisions mentioned above determine how patent owners exercise their rights and exploit their inventions, the IP Act also imposes certain limitations, which ultimately determine the true scope of patent rights. The imposition of such limitations is made possible because of Article 30 of TRIPS, which provides: Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

However, the freedom to introduce limitations to the exercise of patent rights is truly very limited, as “limited exceptions” are “narrow exceptions” that make “only a small diminution of the rights in question.”98 95

IP Act, section 84(3)(a)(i) and (ii). Ibid, section 84(3)(b)(i), (ii) and (iii). 97 Ibid, section 84(2). 98 Canada–Patent Protection of Pharmaceutical Products WT/DS114/R (17 March 2000) (“Canada–Pharmaceutical Patents”), para 7.30. 96

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In addition to the possibility of introducing limited exceptions, WTO members may also permit “other uses” (i.e., uses other than those envisaged by Article 30)99 of patented subject matter, provided such other uses comply with Article 31 of TRIPS. Article 31 permits WTO members to issue compulsory licences in certain specified circumstances. Despite the aforesaid flexibilities that TRIPS affords to WTO members, it is noteworthy that when the Intellectual Property Bill 2003 (which later became the IP Act) was initially introduced in Parliament, it did not incorporate any of the exceptions to patent rights, including the possibility for the grant of compulsory licences. Fortunately, the Bill’s constitutionality was challenged by a group of public-spirited citizens. The Supreme Court of Sri Lanka determined that unless the exceptions permitted under TRIPS were incorporated, the provisions conferring patent rights would be rendered unconstitutional. The Court observed: None of these measures have been incorporated in the Bill on Intellectual Property. The provisions of the TRIPS Agreement clearly specify that it has incorporated mitigatory provisions, as the Agreement would be applicable [to] developed countries as well as to the less developed nations. In fact, World Trade Organization (WTO) has recognized the inequality of nations in respect of the TRIPS Agreement by prescribing a staggered time frame for the implementation of the Agreement among countries of different economic levels. Therefore it is an accepted fact that the provisions of the TRIPS Agreement would be applicable to countries developed as well as developing, which cannot be treated as equals. Article 12(1) of the Sri Lanka Constitution not only guarantees equality before the law, but also provides for the equal protection of the law. It is well settled law that just as much as equals should not be placed unequally, at the same time unequals should not be treated as equals.100

Accordingly, after a considerable struggle, the exceptions to patent rights permitted under TRIPS have become part of the law in Sri Lanka by virtue of section 86 of the IP Act. The exceptions under Sri Lankan law are as follows. First, the rights granted to patent owners under section 84 are limited to prohibiting third-party acts done for industrial or commercial purposes and do not extend to acts done only for the purpose of scientific research (“the scientific research exception”).101 Second, the grant of a patent does not extend to prevent third parties that engaged in the prior manufacture or use of the patented product or process102 or against persons who are licensees.103 Third, the rights granted under section 84 do not extend to “the presence or use of products on foreign vessels, aircraft, spacecraft, or land vehicles which temporarily or accidentally enter the waters, airspace or territory of Sri Lanka.”104 Fourth, patent rights cannot be used to prevent the further commercialisation of patented products already placed on the market with the consent of the proprietor—i.e., “in respect of articles which have been put in the 99

As per footnote 7 attached to Article 31 of TRIPS. Supreme Court Special Determination Nos 14/2003, 15/2003 and 16/2003 on the Intellectual Property Bill SC Minutes of 6 June 2003 and 9 June 2003. 101 IP Act, section 86(1)(i). 102 Ibid, section 87. 103 Ibid, section 86(1)(ii). 104 Ibid, section 86(1)(iii). 100

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market by the owner of the patent or by a manufacturer under licence.” And lastly, section 86(2) of the IP Act incorporates the possibility for the grant of compulsory licences. Although the exceptions noted above give effect to the flexibilities that TRIPS extends to WTO members so that domestic socio-economic concerns are taken into account in implementing TRIPS standards, the limitations under the IP Act do not make the best use of these flexibilities. More can be done to make better use of TRIPS flexibilities, and our thoughts in this regard are set out below.

3.4.1 Scientific Research and Experimental Use Exception The possibility of experimenting on a patented invention is vital to generating new knowledge concerning that invention and improving the invention. Unless researchers and scientists are freely permitted to conduct experiments on patented inventions, technology is unlikely to flourish. To that end, a statutory exception to patent rights that demarcates permissible research and experimental activities in respect of patented inventions is crucial to ensure that researchers and scientists have the requisite freedom to contribute to a country’s innovation. The research and/or experimental use exception is found in patent statutes worldwide. Some examples are noted here. In India, the Patents Act 1970 provides that a patented product or process may be used “by any person, for the purpose […] of experiment or research including the imparting of instructions to pupils.”105 In Singapore, an act that is capable of infringing a patent is deemed not to constitute an infringement if it is “done for experimental purposes relating to the subject matter of the invention.”106 A similar exception is found under the patent law of the United Kingdom.107 More recently, the Canadian Patent Act 1985 was amended to include an experimental use exception on the following terms— “An act committed for the purpose of experimentation relating to the subject matter of a patent is not an infringement of the patent.”108 In the Sri Lankan context, section 86(1)(i) of the IP Act provides that the “rights of a patent owner must extend only to acts done for industrial or commercial purposes and shall not extend to acts undertaken only for the purpose of scientific research.” This provision aims to promote scientific research in respect of patented inventions. A plain reading of this provision suggests that an act done purely for scientific research does not infringe a patent so long as the act does not involve any commercial activity. Unfortunately, however, the Sri Lankan exception contains a few problems. First, it does not define what “scientific research” is. Although “scientific” suggests a certain technical flavour to the research that must be conducted, it is unclear whether 105

Patents Act 1970, section 47(3). Patents Act 1994, section 66(2)(b). 107 Patents Act 1977, section 60(5)(b). 108 Patent Act 1985, section 55.3(1). 106

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the exception applies only in respect of research on the patented invention as opposed to research conducted with the patented invention. This is an important distinction, and, arguably, the lack of clarity in this regard could leave researchers and scientists uncertain about what they are permitted to do under the exception. The lack of clarity could also be problematic in terms of justifying the exception under Article 30 of TRIPS as a “limited” exception. This is because permitting research or experimentation on a patented invention does not unreasonably conflict with the normal exploitation of the patent. In contrast, permitting research or experimentation with a patented invention could produce unreasonable outcomes for the patent owner, especially where the invention concerned is a research tool—i.e., an invention the sole use of which is research. In this regard, it has been pointed out that: The distinction between “experimenting on” and “experimenting with” appears logical and consistent with the broad rationales underlying patent grants. While experimenting with an invention, particularly research tools, would significantly impact a patentees’ exclusive rights and thereby impact the “incentive” to create such an invention, experimenting on an invention may not disturb the putative patentees’ incentive for innovation to the same degree.109

Accordingly, when interpreting the scope of section 86(1)(i) of the IP Act, it is necessary to ensure that an interpretation consistent with Article 30 of TRIPS is afforded. For the avoidance of doubt, it would be best for a clarificatory amendment to be introduced so that the exception is limited to research or experimental use on (and not with) patented inventions. Second, the focus of the Sri Lankan exception is on “research” and not “experimentation.” Although “research” and “experimentation” mean different things, both terms have often been used interchangeably in framing the exception under domestic patent laws. A large proportion of the patent statutes in developing countries contain some form of research or experimental use exception.110 These exceptions are coined in the form of a scientific research exception, an experimental use exception, or both. Nevertheless, it should be noted that while experimentation generally follows from research, “not all experimentation actually entails research (e.g., the execution of a patented invention in order to test whether it is reproducible or not as disclosed).”111 At the same time, research can generally be conducted without experimentation, as in the case of purely theoretical investigations.112 Essentially, the distinction between “scientific research and experimentation is that with research, study is undertaken of the subject matter in its pure form (without any additional influence thereon), whereas with experimentation, the subject being studied is placed under certain

109

S Basheer and P Reddy, “The ‘Experimental Use’ Exception Through a Developmental Lens” (2010) 50 IDEA–The Intellectual Property Law Review 831, 853. 110 See S Musungu and C Oh, The Use of Flexibilities in TRIPS by Developing Countries: Can They Promote Access to Medicines? (South Centre 2006); C Correa, The International Dimension of the Research Exception (American Association for the Advancement of Science 2005). 111 Correa (n 110) 5. 112 Ibid.

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conditions, i.e., under a certain influence from external forces.”113 The latter, in particular, comprises acts involving the making and/or using of patented subject matter to generate new knowledge. In Sri Lanka, as the statistics suggest, there has been considerably less effort on the part of universities and other research institutions, as well as the private sector, to engage in research and experimentation in technologies in respect of which patents have been granted. The statistics also suggest that in comparison with locals, a greater number of foreigners, primarily comprising MNCs, hold patents in Sri Lanka. This suggests that innovative activity among local scientists and SMEs is stifled. In the circumstances, it should be the Sri Lankan Government’s objective to promote pure scientific research and applied experimental research on patented inventions. A move in this direction will provide the requisite freedom for researchers and scientists to conduct experimental research on patented inventions to generate new knowledge, which could provide the basis for further R&D in areas that are vital for a developing country like Sri Lanka. A distinct benefit of introducing the possibility for experimental use of patents in developing countries, particularly in those without sufficient manufacturing capacity, is that it can serve as the foundation for sustainable innovation that is a primary driver of economic growth. This is especially so as cumulative innovation—i.e., inventing around a patented invention or making improvements to it114 —may be the norm in such countries, given their limited resources. To sum up, in developing countries such as Sri Lanka, limiting the scope of the exception to purely research will have a stifling effect on experiment-based research and innovation. The time is ripe for Sri Lanka to rethink its strategy in this regard and extend the current “scientific research” exception to include experimentation.

3.4.2 The Regulatory Review or Bolar Exception None of the patent-related provisions of the IP Act recognises or gives effect to a regulatory review exception. Incorporating a regulatory review exception is crucial to ensure that generic products (especially pharmaceutical products), which have to go through a process of regulatory review, can enter the market immediately after the corresponding patents have expired. This exception is popularly known as the Bolar exception in view of its history. That is, in the United States, the regulatory review exception was first introduced to overturn a decision of the Court of Appeals for the Federal Circuit in Roche Products Inc v Bolar Pharmaceutical Co Inc, where the Court held that the experimental use exemption (35 USC §271(a)) did not apply to pre-market testing performed by a generic manufacturer of a patented product 113

WIPO, Constraints Faced by Developing Countries and Least Developed Countries (LDCs) in Making Full Use of Patent Flexibilities and their Impacts on Access to Affordable Especially Essential Medicines for Public Health Purposes in those Countries, SCP/26/5 (2 June 2017), 8. 114 Basheer and Reddy (n 109) 832.

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for the purpose of submitting information relating to the generic product in order to seek regulatory approval. Accordingly, US patent law was amended to introduce the following exception: It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention […] solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.115

The history behind the Bolar exception reveals that the research use exception is not sufficiently broad to cover uses made of a patented product for regulatory review. In the Sri Lankan context, this problem is even more acute given the narrowness of the current scientific research exception (that exception being limited to non-commercial activities). As such, the lack of a regulatory review exception under the IP Act is a problem—in that a local manufacturer intending to produce the generic version of a patented product must wait till the patent expires before any regulatory approval for that product can be obtained. In effect, the patent owner will enjoy a de facto monopoly for a certain period even after the patent has expired—an advantage that a WTO Panel had found goes beyond the normal exploitation of a patent.116 Before TRIPS came into existence, many developing countries, particularly in Asia, had excluded product patents in relation to medicines from patentable subject matter under their domestic laws, which allowed for the rapid growth of the pharmaceutical sector in those countries, in turn, positioning them as suppliers of affordable generic drugs to other poorer developing countries.117 Post-TRIPS, however, countries were required to grant product patents in respect of medicines, as TRIPS Article 27.1 prohibits discrimination based on the field of technology. Accordingly, this restriction curtailed the freedom that developing countries had in producing generic drugs, making it unlawful to manufacture drugs under patent protection in the absence of a compulsory licence. Against this backdrop, the regulatory review exception plays a crucial role in ensuring that generic drug manufacturers are permitted to manufacture and make use of patented drugs to obtain regulatory approval from government authorities so that such drugs can be sold under a compulsory licence or immediately after patent rights expire.118 In view of this, the Bolar exception has facilitated the immediate availability of generic drugs in the developing world, a necessary condition to improve public health not only in the countries in which such generic drugs 115

Patents Act 1952, 35 USC §271(e)(1). Canada–Pharmaceutical Patents, para 7.59 (“By inference, Canada’s assertion that ‘normal exploitation’ is sufficiently safeguarded by protecting market exclusivity during the term of the patent amounted to an assertion that these post-expiration forms of market exclusivity should not be considered as normal exploitation”) and para 7.57 (“The Panel considered that Canada was on firmer ground, however, in arguing that the additional period of de facto market exclusivity created by using patent rights to preclude submissions for regulatory authorization should not be considered ‘normal’…”). 117 WHO, Intellectual Property Rights and Access to Medicines: A South-East Asia Perspective on Global Issues, SEA-TRH-3 (2008) http://www.who.int/iris/handle/10665/205352. 118 SK Rathod, “The Curious Case of India’s Bolar Provision” (2018) 14 Journal of Generic Medicines 16. 116

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are produced but also in other less fortunate countries that heavily depend on others for their generic drugs supply.119 Some countries have identified the Bolar exemption as instrumental to the effective implementation of compulsory licences.120 In India, for instance, the Bolar exemption was credited to have played “a vital role in the entry of a more affordable generic of a cancer drug.”121 This was pursuant to India’s Patent Office issuing its first-ever compulsory licence in 2012 on a drug used to treat kidney and liver cancer.122 Given that the regulatory review exception permits the manufacture and use of a patented product solely to seek regulatory approval, the exception comes within the confines of Article 30 of TRIPS as a limited exception to patent rights.123 As such, this exception, in various forms and shapes, can be seen in patent legislation worldwide. For instance, in China, it is not an infringement for any person to produce, use, or import patented drugs or patented medical apparatus and instruments “for the purpose of providing information required for administrative examination and approval.”124 Similarly, in Singapore, doing any act that would otherwise infringe a patent is not regarded as an infringement, if it is done “to support any application for marketing approval for a pharmaceutical product, provided that any thing produced to support the application is not—(i) made, used or sold in Singapore; or (ii) exported outside Singapore, other than for purposes related to meeting the requirements for marketing approval for that pharmaceutical product” (Patents Act 1994, section 66(2)(h)). Both the Canadian and Indian patent laws provide for a much broader regulatory review exception. Thus, in Canada, it is not “an infringement of a patent for any person to make, construct, use, or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province, or a country other than Canada that regulates the manufacture, construction, use, or sale of any product.”125 In essence, under the Canadian exception, a patented product may be made and used even if it was for the purposes 119

A Tridico, J Jacobstein and L Wall, “Facilitating Generic Drug Manufacturing: Bolar Exemptions Worldwide” WIPO Magazine (June 2014) https://www.wipo.int/wipomagazine/en/2014/03/articl e0004.html; C Garrison, Exceptions to Patent Rights in Developing Countries, UNCTAD–ICTSD Project on IPRs and Sustainable Development, Issue Paper No 17 (August 2006); CM Correa, The Bolar Exception: Legislative Models and Drafting Options, South Cenre Research Paper 66 (March 2016); Musungu and Oh (n 110). 120 C Saez, “WTO TRIPS Council Looks At IP And The Public Interest, Importance Of Research Exemption” Intellectual Property Law Watch (28 February 2018) https://www.ip-watch. org/2018/02/28/wto-trips-council-looks-ip-public-interest-importance-research-exemption/. 121 Ibid. 122 Ibid. 123 Canada–Pharmaceutical Patents, para 7.59 (“In sum, the Panel found that the regulatory review exception of section 55.2(1) [in Canada’s patent law] does not conflict with a normal exploitation of patents, within the meaning of the second condition of Article 30 of the TRIPS Agreement”). See also WHO, Advancing the Right to Health: The Vital Role of Law (WHO 2017); Garrison (n 119); Correa, The Bolar Exception (n 119). 124 Patent Law, Art. 69(5). 125 Patent Act 1985, section 55.2(1).

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of obtaining regulatory approval from a foreign government. The regulatory review exception in India126 is very much identical to that of Canada. In view of the benefits of the regulatory review exception, it is vital for developing countries such as Sri Lanka to incorporate this exception into domestic patent law. In doing so, a choice has to be made between two approaches—that is, the narrow approach (as in China or Singapore) and the broad approach (as in Canada and India). For a country such as Sri Lanka, it would be advisable to adopt the broader approach for at least two reasons. First, because Sri Lanka is predominantly an agricultural country, the potential use of the regulatory review exception in respect of patents covering agricultural chemicals cannot be dismissed—such chemicals commonly require some kind of governmental/regulatory approval before they can be introduced into the market.127 As such, a broader regulatory review exception that not only covers pharmaceutical products but also other products will be more beneficial. Second, limiting the regulatory review exception to a particular field of technology (such as pharmaceuticals or medical products) may be regarded as a violation of the non-discrimination principle enshrined in Article 27.1 of TRIPS and should be avoided.128 Accordingly, in reforming the patent-related provisions of the IP Act, it would be advisable for Sri Lanka to introduce a provision comparable to the regulatory review exception as framed under either the Canadian or Indian patent laws.

3.4.3 Compulsory Licensing and the Local Working Requirement 3.4.3.1

Compulsory Licensing

A compulsory licence is a mechanism by which governments can counteract the monopolistic effects of patents in certain specified circumstances. Section 86(2)(a) of the IP Act provides the legal basis for compulsory licences in the Sri Lankan context. Accordingly, any person, body of persons, a government department, or statutory body may make an application to the Director-General of IP to obtain a 126

Patents Act 1970, section 107A(a) (“For the purposes of this Act—any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product”). 127 Canada–Pharmaceutical Patents, para 7.95. 128 Ibid, para 7.99 (“With regard to the issue of de jure discrimination, the Panel concluded that the European Communities had not presented sufficient evidence to raise the issue in the face of Canada’s formal declaration that the exception of section 55.2(1) was not limited to pharmaceutical products. Absent other evidence, the words of the statute compelled the Panel to accept Canada’s assurance that the exception was legally available to every product that was subject to marketing approval requirements”).

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licence to exploit a patent. Section 86(2)(a) provides specific substantive and procedural requirements relating to the issuance of compulsory licences. The substantive requirements deal with when compulsory licences may be issued. The procedural requirements concern how they are issued. We first discuss the procedural requirements. A plain reading of the Sri Lankan compulsory licence provision suggests that any person, body of persons, a government department, or statutory body can apply for a licence to exploit an already patented product or process. However, according to section 86(2)(b) of the IP Act, the Director-General should confirm that the applicant has satisfied two requirements before granting a licence.129 The first requirement is that the applicant must have made efforts to obtain approval from the patent owner on “reasonable commercial terms and conditions.” The second requirement is that the applicant must have failed to secure approval from the patent owner despite making such efforts within a “reasonable period of time.” These requirements are collectively referred to as the “prior negotiation” requirement. The prior negotiation requirement is derived from the first sentence of Article 31(b) of TRIPS. However, the IP Act is silent on what amounts to “reasonable commercial terms and conditions” and “reasonable period of time.” Instead, the Director-General has been given the discretion to determine the circumstances in which the two requirements are met. While permitting discretion in this regard is no doubt prudent, especially on the matter of what constitutes “reasonable commercial terms and conditions,” it may be helpful to provide some guidance on what constitutes a “reasonable period of time.” Although there is some doubt as to whether the “failure to obtain a voluntary licence under reasonable terms within a reasonable period” by itself could amount to a substantive ground upon which a compulsory licence may be issued,130 it is not difficult to see that the need for “prior negotiation,” at the very least, amounts to a procedural requirement that must be satisfied before such a compulsory licence could be issued.131 While the prior negotiation requirement was introduced to ensure that the rights of patent owners are not abrogated unjustifiably,132 the requirement will be satisfied if it can be established that the effort to obtain approval from the patent owner had not been successful within a reasonable period of time. The purpose behind 129

IP Act, section 86(2)(b). X Lin, “Prior Negotiation and Remuneration for Patent Compulsory Licensing: Practice, Problem, and Proposal” in RM Hilty and K-C Liu (eds), Compulsory Licensing: Practical Experiences and Ways Forward (Springer 2015), 167 (“It has been controversial whether the prior negotiation under Art. 31(b) of the TRIPS Agreement is a substantive ground for granting a CL or simply a procedure before an applicant seeks a CL”). For instance, a report of the WIPO has indicated that “failure to obtain a voluntary licence under reasonable terms within a reasonable period” is one of the grounds upon which compulsory licences are issued by some WTO members (see WIPO, Patent Related Flexibilities in the Multilateral Legal Framework and their Legislative Implementation at the National and Regional Levels, CDIP/5/4 (1 March 2010), para 49 https:// www.wipo.int/edocs/mdocs/mdocs/en/cdip_5/cdip_5_4-main1.pdf. 131 Lin (n 130) 167. 132 Ibid. 130

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limiting prior negotiations to a reasonable period of time is to ensure that patentees do not intentionally stall negotiations with the hope of delaying the issuance of a compulsory licence.133 While what is reasonable in a given context would largely depend on the subject matter of the negotiation and the purpose for which a compulsory licence is sought, it is important for domestic legislation to set out an outer limit for what might constitute a reasonable period. In this regard, some inspiration may be drawn from other jurisdictions that expressly provide a specified period of time that is deemed reasonable. In India, for instance, anything beyond a period of six months is deemed unreasonable.134 Sri Lanka should follow this example. Another requirement that must be complied with in the grant of compulsory licences is found in Article 31(f) of TRIPS. Accordingly, a compulsory licence may only authorise the use of a patented invention “predominantly for the supply of the domestic market of the Member authorising such use.” The IP Act of Sri Lanka has transposed this requirement into domestic law through section 86(2)(d). However, this presents a significant problem for developing countries like Sri Lanka. First, unlike larger markets such as India and China, Sri Lanka’s domestic market is relatively small. This stands as a major disincentive for the use of compulsory licences, as the operations of licensees may become uneconomical given the limitations imposed on the exportation of the manufactured generic product.135 After all, although the exportation of products manufactured under a compulsory licence is not entirely prohibited, it is limited to the “non-predominant” part of the production.136 That said, the term “predominantly” may be interpreted and applied in several ways. It is vital for Sri Lanka to pick the most favourable interpretation. One school of thought is that the WTO member granting the compulsory licence must absorb the greatest share of supply among all WTO members receiving products produced under that licence.137 Another school of thought is that a more quantitative approach must be adopted.138 Under that approach, precisely 49.9% of generic products manufactured

133

Ibid, 174 citing UNCTAD-ICTSD, Resource Book on TRIPS and Development (Cambridge University Press 2005), 470 (“A patent holder that does not wish to licence its technology, but that also does not wish to see a compulsory licence granted, may well attempt to prolong negotiations using a variety of tactics. Such tactics may include appearing to be engaged in serious negotiations over detailed terms and conditions that do not reach a conclusion. Negotiators seeking licences on reasonable commercial terms are perfectly justified in setting an outer limit for successfully concluding licences, and refusing to negotiate beyond that point”). 134 Patents Act 1970, section 84 (explanation regarding clause (iv)). 135 A Marsoof, “Local Working of Patents: The Perspective of Developing Countries” in A Bharadwaj, V Devaiah and I Gupta (eds), Multi-dimensional Approaches Towards New Technology (Springer 2018), 334. 136 A Eikerman, “Article 31–Other Use Without Authorization of Right Holder” in P–T Stoll, J Busche and K Arend (eds), WTO—Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 573. 137 FM Abbott, Compulsory Licensing for Public Health Needs: The TRIPS Agenda at the WTO after the Doha Declaration on Public Health, Quaker United Nations Office, Occasional Paper No 9 (February 2002), 26 https://ssrn.com/abstract=1977304. 138 Correa, Commentary on TRIPS (n 90) 321.

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under a compulsory licence may be exported without violating Article 31(f).139 Yet another possible approach is that “the intentions of Members should be decisive in determining what constitutes a ‘predominant’ use of the compulsory licence,”140 according to which WTO members will not violate their obligation under Article 31(f) if the granting of a compulsory licence is primarily aimed at supplying the domestic market.141 It has been posited that unless the last of these interpretations is adopted, WTO members “with a small market would possibly be obliged either to allow for only uneconomical production or not to issue compulsory licences at all,”142 which defeats the very purpose of Article 31 of TRIPS. Interestingly, section 86(2)(d) of the IP Act, which implements Article 31(f), may permit such an interpretation. There is a slight but important difference between “predominantly for the supply of the domestic market” appearing in Article 31(f) and “predominantly for the purpose of supply to the domestic market.” The Sri Lankan implementation is similar to that in India, which permits compulsory licences for the “predominant purpose of supply in the Indian market.”143 Thus, so long as the grant of a compulsory licence is justified based on a domestic need for the ensuing generic product, it should not be difficult to suggest that such a licence was granted for the predominant purpose of supply to the domestic market. Therefore, from a pragmatic and economic standpoint, the current Sri Lankan provision must be interpreted in a manner that does not unduly restrict licensees from exporting generic products manufactured under compulsory licences, although the grant of such licences must be justified by a genuine domestic need for the patented products. Second, and in the specific area of pharmaceuticals, Article 31(f) presents problems in respect of least-developed and developing countries that do not possess the capacity to manufacture generic drugs to meet the demands of their domestic markets. As noted above, the restriction against export imposed by Article 31(f) limits the freedom of countries that possess the capacity to produce generic drugs from exporting such drugs to countries that do not possess any capacity. It was to address this specific problem that the Doha Declaration on TRIPS and Public Health144 directed the Council of TRIPS to find an “expeditious solution,” which resulted in a decision to the following effect: The obligations of an exporting Member under Article 31(f) of the TRIPS Agreement shall be waived with respect to the grant by it of a compulsory licence to the extent necessary 139

J Reichmann and C Hasenzahl, Non-voluntary Licensing of Patented Inventions: Historical Perspective, Legal Framework under TRIPS, and an Overview of the Practice in Canada and the United States of America, ICTSD Issue Paper No 5 (June 2003), 16. See also J Kuanpoth, “Compulsory Licences: Law and Practice in Thailand” in RM Hilty and K-C Liu (eds), Compulsory Licensing: Practical Experiences and Ways Forward (Springer 2015), 70. 140 NP de Carvalho, The TRIPS Regime and Patent Rights (3rd edn, Kluwer Law International 2010), 241. 141 Eikerman (n 136) 574. 142 Ibid. 143 Patents Act 1970, section 90(1)(vii). 144 Doha Declaration on TRIPS and Public Health, para 6.

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3 Patents for the purposes of production of a pharmaceutical product(s) and its export to an eligible importing Member(s) in accordance with the terms set out below in this paragraph…145

Eventually, the aforesaid waiver became the basis for introducing Article 31bis into TRIPS, which came into effect in January 2017. Accordingly, the condition set out in Article 31(f) will not apply to instances where pharmaceutical products are exported to an eligible importing country.146 Any least-developed country or developing country that notifies the TRIPS Council of its intent to use the system as set out in Article 31bis of TRIPS and complies with the terms set out in the Annex to TRIPS will become eligible to issue compulsory licences to engage in the importation of drugs needed for domestic consumption. An exporting country must also issue a compulsory licence to export drugs to an eligible importing country. The system, therefore, envisages the grant of two “back-to-back” compulsory licences, one for exportation and the other for importation. Insofar as Sri Lanka is concerned, it does not have the capacity to manufacture generic drugs. Most of Sri Lanka’s pharmaceutical needs are met through importation, although some local production does take place. The State Pharmaceutical Manufacturing Corporation dominates local production but only for 72 off-patent drugs.147 The remaining demand is met by importing drugs, which fall into two categories—i.e., drugs originating from the major pharmaceutical companies and generic drugs originating from manufacturers in India and Bangladesh. Sri Lanka’s state hospitals, clinics, and laboratories are supplied with drugs exclusively procured by the State Pharmaceutical Corporation making use of these channels. Given the present state of Sri Lanka’s pharmaceutical sector and its lack of manufacturing capacity, it is surprising that Sri Lanka has never made use of the system put into place by Article 31bis of TRIPS, especially in respect of patented drugs that are needed to treat terminal illnesses such as cancer. Such drugs are beyond the reach of most Sri Lankans, who are compelled to rely on older, off-patent generic drugs of much lower quality. In fact, in October 2018, in a bid to make essential and life-saving drugs more accessible to Sri Lankan consumers, the National Medicines Regulatory Authority (which comes under the purview of the Ministry of Health) imposed a price cap on specific drugs, resulting in some of those drugs being withdrawn from the Sri Lankan market by the big pharmaceutical companies.148 These drugs included Pemetrexed marketed by Eli Lilly as “Alimta” for lung cancer, Sitagliptin Phosphate marketed as “Januvia” by MSD Italy for diabetes, and Diltiazem marketed as “Herbesser” by Tenable Pharma Corp for heart disease.149 Arguably, the withdrawal of these drugs should have prompted the Sri Lankan Government to use the TRIPS 145

Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health, WT/L/540 and Corr.1 (30 August 2003). 146 TRIPS, Annex para 1(b). 147 See official website of the SPMC at https://www.spmclanka.lk. 148 K Hettiarachchi, “Many Essential Drugs Being Withdrawn from Sri Lanka” Sunday Times (14 October 2018) http://www.sundaytimes.lk/181014/news/many-essential-drugs-being-withdr awn-from-sri-lanka-315790.html. 149 Ibid.

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Article 31bis system to acquire generic versions of the patented drugs. After all, Sri Lanka already has in place the necessary legal framework to import generic drugs as an eligible importing country—i.e., the existing compulsory licensing scheme in section 86(2) of the IP Act may be used for this purpose. However, it would be advantageous if section 86(2) could be amended to expressly provide for the possibility to issue compulsory licences as an eligible importing country under the TRIPS Article 31bis regime. Although Sri Lanka has a limited manufacturing capacity for pharmaceutical products, the Sri Lankan Government plans to expand the local pharmaceutical industry. We are already seeing the establishment of manufacturing facilities150 and pharmaindustrial zones151 in various parts of the island. By forging partnerships and joint ventures with generic drugs manufacturers in neighbouring countries, in time, Sri Lanka can build the necessary infrastructure and know-how to establish a profitable pharmaceutical industry.152 However, these local manufacturing facilities ought not to be used merely to produce generic off-patent drugs for the local market. It is also necessary for the Sri Lankan Government to utilise the compulsory licensing framework to authorise local manufacturers to produce generic versions of patented drugs in cases where the big pharmaceutical companies fail to make those drugs available in Sri Lanka at a reasonable price. Importantly, with the increased manufacturing capacity, Sri Lanka may become an exporting country for the purposes of the system put into place by Article 31bis of TRIPS (as and when the need arises). Therefore, it would be necessary for Sri Lanka to introduce a provision into the IP Act that implements the conditions and terms set out in Article 31bis of TRIPS and its Annex. In this regard, inspiration may be drawn from India, where a compulsory licence may be issued “for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided a compulsory licence has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India” (Patents Act 1970, section 92A(1)). Sri Lanka requires a similar provision if it wishes to make strides in the pharmaceutical sector. While an evaluation of the procedural requirements that determine how compulsory licences are granted is important from the perspective of developing countries such as Sri Lanka, it is equally, if not more, important to evaluate the substantive 150

A number of local companies have set up plants for the production of generic pharmaceutical products. See U Lugoda, “Hemas to Diversify Sri Lanka’s Export Basket through Pharma” The Morning (28 September 2019) http://www.themorning.lk/hemas-to-diversify-sri-lankas-exp ort-basket-through-pharma/. 151 Such zones have been initiated in various parts of the country with the help of foreign investment. See CB Wijekoon, “First Ever Pharma Zone in Sri Lanka Becomes a Reality” Daily News (11 January 2018) http://www.dailynews.lk/2018/01/11/business/139546/first-ever-pharma-zone-sri-lanka-bec omes-reality. 152 S Jayasuriya, “Pharma Sector Needs a Level Playing Field, Says Astron MD” Sunday Observer (8 September 2019) http://www.sundayobserver.lk/2019/09/08/business/pharma-sectorneeds-level-playing-field-says-astron-md.

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requirements—i.e., when such licences could be issued. Article 31 of TRIPS itself sheds some light in this regard. First, it must be noted that Article 31(b) provides that the prior negotiation requirement does not extend to certain specified circumstances. These circumstances have been transposed into Sri Lankan law through section 86(2)(c) of the IP Act, which provides that the Director-General may waive the prior negotiation requirement “where he has satisfied himself of the existence of a national emergency or any other circumstances of extreme urgency or in case of public non-commercial use for the purposes such as national security, nutrition, health, or for the development of others vital section of the national economy.” In other words, it may be argued that the three circumstances mentioned above (i.e., national emergency, extreme urgency or public non-commercial use) constitute grounds upon which the Director-General may grant a compulsory licence. Second, Article 31(k) of TRIPS provides that the prior negotiation requirement (Article 31(b)) and the restriction against export (Article 31(f)) do not apply to the grant of compulsory licences issued to remedy “a practice determined after judicial or administrative process to be anti-competitive.” The Sri Lankan IP Act captures this in section 86(2)(m). Accordingly, where the exploitation of a patent leads to anti-competitive conduct, this would be a ground upon which a compulsory licence may be granted. Third, TRIPS Article 31(l) permits WTO members to grant compulsory licences to address the issue of dependent patents. Making use of this flexibility, section 86(2)(g) of the IP Act enables the Director-General to issue a compulsory licence in respect of a patent, the exploitation of which is necessary to work another patent (the dependent patent). However, the five grounds referred to in Article 31 of TRIPS are not exhaustive and compulsory licences may be granted in a broader range of circumstances. After all, Article 31 begins by permitting “other use of the subject matter of a patent without the authorization of the right holder,” where “other use” is defined as “use other than that allowed under Article 30.”153 As such, a compulsory licence may be issued even in cases where the impact of such a licence is more than that of a typical “limited exception.”154 Moreover, the Doha Declaration on TRIPS and Public Health provides that a WTO member has the right to grant compulsory licences and the freedom to determine the grounds for granting such licences.155 This does not mean governments may grant compulsory licences according to their whims and fancies.156 But aside from the five grounds that have been expressly mentioned in Article 31 itself, the text of TRIPS does not shed much light on when a compulsory licence should be granted. Nevertheless, it is generally understood that compulsory licences may be granted in the public interest.

153

TRIPS, footnote 7 attached to Art. 31. Eikerman (n 136) 564. 155 Doha Declaration on TRIPS and Public Health, para 5(b). 156 Eikerman (n 136) 566. 154

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Unfortunately, the Sri Lankan IP Act merely reproduces Article 31 of TRIPS without elaborating on the grounds upon which a compulsory licence could be granted. For instance, nothing in section 86(2) determines what constitutes a national emergency or circumstance of extreme urgency. Nor does it seek to set out what constitutes an anti-competitive practice. While the lack of precise definitions could work as an advantage—in that, it can promote flexibility, in our view, it is helpful when domestic law sets out in some detail a non-exhaustive list of grounds upon which compulsory licences may be granted. Such an approach will provide muchneeded clarity to local SMEs, government departments, and individuals to apply for compulsory licences. Sri Lanka should learn from India, which has put into place a robust policy and legal framework on compulsory licensing. Thus, some space is devoted below to consider the approach in India.

3.4.3.2

The Indian Approach to Compulsory Licensing

India has redesigned its patent policies and included effective provisions in its patent law to ensure a better balance between the interests of patent owners and the public interest, such as the guarantee of access to patented products and processes in areas that are important to India’s socio-economic development. A vital component of the framework that achieves this balance is the robust system for compulsory licences that India has implemented.157 Indian patent law envisages three categories of compulsory licences—general compulsory licences, special compulsory licences in cases of national emergency, other circumstances of emergency, or public non-commercial use, and compulsory licences for export to countries with no manufacturing capabilities.158 The provisions of India’s Patents Act 1970 that relate to compulsory licences (i.e., sections 83 to 94) not only deal with procedural and regulatory aspects but also set out the policy objectives that are to be achieved through the grant of compulsory licences. The informed and policy-oriented legislative drafting that has gone into the framing of these provisions assists patent owners to determine their obligations under Indian law well before they apply for patents. At the same time, the law provides potential applicants for compulsory licences with clear and comprehensive information on matters relevant to determining the legitimacy of their applications. Section 83 sets out in unambiguous terms certain expectations to be achieved through the grant and exploitation of patents in India. These expectations reflect the Indian Government’s interest in ensuring that: (a) (b)

157 158

the grant of patents encourages innovation by guaranteeing the local working of patents; patents are not used as a vessel merely to secure a monopoly to import a patented product; Gopalakrishnan and Anand (n 142) 19. Ibid, 20.

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(c)

(d) (e) (f)

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the grant of patents contributes to the promotion of technological innovation and the transfer and dissemination of technology, and the promotion of public interest, especially in sectors vitally crucial for India’s technological and socioeconomic development; patents do not impede the protection of public health, and they in no way prohibit the government from taking steps to protect public health; patents are not abused, and patent owners do not engage in practices that unfairly restrain trade or adversely affect the transfer of technology; and products manufactured from working a patent are made available to the public at reasonably affordable prices.159

By setting out these expectations, patent owners are put on notice as to what is expected of them in return for the grant and maintenance of their exclusive rights. In a sense, this obligates patent owners to ensure that they exploit their patents in a manner conducive to achieving the expectations set out above or otherwise risk the grant of compulsory licences in respect of their inventions to third parties. In addition, section 83 provides valuable guidance to the Controller of Patents in exercising his discretion under the statute. More importantly, section 84(1) of the Indian Patents Act 1970 provides that after the expiration of three years from the grant of a patent, an application for a compulsory licence can be made on the following grounds: (a) (b) (c)

the reasonable requirements of the public with respect to the patented invention have not been satisfied; the patented invention is not available to the public at a reasonably affordable price; or the patented invention is not worked in India.160

Section 84(7) provides a further explanation of what constitutes “reasonable requirements of the public.” Accordingly, this requirement is deemed not to have been met, for instance,161 where “the demand for the patented article has not been met to an adequate extent or on reasonable terms.” Thus, when the pharmaceutical giant, Bayer Corp, challenged the Indian Government’s move to issue a compulsory licence in respect of a drug for cancer treatment, the Bombay High Court decided that the compulsory licence was justified because the demand for the drug had not been met to an adequate extent.162 The Court held: 159

Patents Act 1970, section 83(a) to (g). Ibid, section 84(1)(a) to (c). 161 Other instances where this requirement is deemed not to have been met, among other things, include: (1) the refusal of the patentee to grant a licence or licences on reasonable terms as a result of which existing or new industries are prejudiced; (2) the imposition of conditions by the patent owner upon the grant of licences under the patent or upon the purchase, hire or use of the patented article or process as a result of which the establishment or development of any trade or industry in India is prejudiced; (3) the failure to work the patent in India to the fullest practicable extent possible. 162 Bayer Corporation v Union of India and others WP No 1323/2013 (15 July 2014) (“Bayer v Union of India”). 160

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In respect of medicines the adequate extent test has to be 100%, i.e., to the fullest extent. Medicine has to be made available to every patient and this cannot be deprived/scarified at the altar of rights of patent holder. In fact, this is the mandate of Parliament by providing for Compulsory Licensing. This would also be in accord with Doha Declaration 2001 which inter alia reiterates flexibility to member countries so as to ensure access to medicines for all. Undisputedly the requirement of all the patients are not being met by the patented drug. In view of all the above reasons, we find no merit in the petitioner’s submission that it has met the reasonable requirement of the public in respect of the patented drug under Section 84(1)(a) of the Act.163

The Court also found that the issuance of the compulsory licence was justified on the basis that the drug was “not available to the public at a reasonably affordable price,” the cost of the patented drug for a month’s use being Rs. 284,000, whereas the generic drug costs only Rs. 8,800 per month.164 As you can see, the non-specific language in the Indian statute has allowed for better accommodation of local needs. Indeed, Indian courts have made use of the flexible language to address the public interest. We are of the view that Sri Lanka would benefit by adopting an approach that is similar to what India has implemented in respect of compulsory licences. Both patent owners and potential applicants for compulsory licences in Sri Lanka will have better clarity if the IP Act explicitly lays down a defined number of grounds for issuing compulsory licences in Sri Lanka. These grounds could broadly mirror those available under the Indian statute. Moreover, the grounds that are chosen for incorporation must be non-exhaustive.

3.4.3.3

Local Working Requirement

Although section 84 of the Sri Lankan IP Act provides that patent owners shall have the exclusive right to exploit and prevent unauthorised third parties from exploiting their patented inventions, the exclusivity that the law guarantees to patent owners is premised on the relative benefits that accrue to the country.165 In order to derive benefits from the grant of patents, it is crucial to, among other things, ensure that such patents are worked locally—i.e., the patented products are produced, or the patented processes are utilised within the territory in which such patents are granted. When domestic law incorporates such a requirement as a condition for the maintenance of exclusive patent rights, it is an implementation of a local working requirement. In effect, once a patent is granted, unless the patented invention is worked locally after a defined period of time, the law will permit the grant of a compulsory licence so that the underlying invention can be worked within the country. From the point of view of a country granting exclusive patent rights, a local working requirement obligates the patent owner or a licensee to work the patent locally, as opposed to merely using the patent “as an exclusive right to prevent 163

Ibid, para 13(f). Ibid, para 14(a). 165 Marsoof (n 135) 333. 164

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others from doing so or to control importation.”166 The purpose behind the inclusion of such a requirement under domestic law is to mitigate the exclusivity of patent monopolies by requiring patent owners or their licensees to set up local factories or manufacturing plants, which can facilitate the transfer of technology and knowhow,167 and create employment opportunities.168 After all, patents are granted with the hope that the underlying invention will be used in a manner beneficial to the patent-granting country. Insofar as Sri Lanka is concerned, its domestic laws do not in any direct sense implement a local working requirement. In fact, the general approach adopted by those who drafted the patent-related provisions in the IP Act indicates that a local working requirement had not even been contemplated. Section 83 of the IP Act sets out the exclusive right of patent owners to exploit their invention. Notably, exploitation includes the right to import the patented article or the product manufactured by a patented process. As was noted earlier, this goes beyond Sri Lanka’s TRIPS obligations—Article 28 of TRIPS merely requires WTO members to guarantee a right to prevent third parties from exploiting a patent without the owner’s authorisation. In other words, the Sri Lankan statute expressly confers on patent owners a positive right to exclusively import the patented article into Sri Lanka without having to manufacture the article within the country. Thus, under Sri Lanka law, importing the patented product into the country suffices to work the patent locally—a position requiring serious reflection. On the other hand, the Sri Lankan provisions dealing with compulsory licences do not directly address the possibility for the Sri Lankan Government to issue a compulsory licence in cases where the patent owner resorts to exclusively importing the patented article without manufacturing it in Sri Lanka. We are of the view that in appropriate circumstances, the law should permit the issuance of a compulsory licence for failure to work the patent locally. Of course, before recommending changes to domestic law, it is necessary to consider whether the inclusion of a local working requirement contradicts Sri Lanka’s obligation under Article 27.1 of TRIPS, which expressly provides that WTO members cannot engage in discrimination as to the availability of patent rights on, among other things, the ground that the patented article is manufactured abroad. In this regard, it is necessary to consider the implications of Article 27.1 in light of Article 5A(2) (read with Article 5A(4)) of the Paris Convention. The Paris Convention expressly permits state-parties to issue compulsory licences “to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.” However, such licences for failure to work could only be issued after the expiration of four years from the date of the patent application or three years from 166

GCC Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI 1968), 70. 167 R Dreyfuss and S Frankel, “From Incentive to Commodity to Asset: How International Law Is Reconceptualizing Intellectual Property” (2015) 36 Michigan Journal of International Law 557, 576. 168 M Trimble, “Patent Working Requirements: Historical and Comparative Perspectives” (2016) 6 UC Irvine Law Review 498.

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the date of patent grant, whichever expires later, and in cases where the patent owner cannot justify the failure to work. Although there is an apparent contradiction between Article 5A(2) (read with Article 5A(4)) of the Paris Convention and the principle against non-discrimination in Article 27.1 of TRIPS, the compulsory licensing mechanism that is provided in TRIPS’s Article 31 could effectively be utilised to implement a local working requirement. After all, it has been argued that Article 27.1 does not create an absolute bar against the forms of discrimination specified therein169 and a WTO Panel has held that: The context to which the Panel may have recourse for purposes of interpretation of specific TRIPS provisions, in this case Articles 27 and 28, is not restricted to the text, Preamble and Annexes of the TRIPS Agreement itself, but also includes the provisions of the international instruments on intellectual property incorporated into the TRIPS Agreement, as well as any agreement between the parties relating to these agreements within the meaning of Article 31(2) of the Vienna Convention on the Law of Treaties.170

Thus, it is clear that in interpreting Article 27.1 of TRIPS, other provisions of TRIPS and the provisions of the Paris Convention may be considered where they provide useful context.171 Given that Article 5A(2) of the Paris Convention regards the failure to work as an instance of abuse, and the provisions regarding compulsory licences in Article 31 of TRIPS expressly refer to grounds such as refusal to deal and anti-competitive practices, failure to work could justifiably provide a ground upon which compulsory licences may be granted.172 Of course, any grant on this ground must comply with the conditions expressly set out in Article 31 of TRIPS and Article 5A(4) of the Paris Convention. Once again, in this regard, inspiration may be drawn from India. As noted above, in the discussion on compulsory licences, India has a well-structured approach towards compulsory licensing. The failure to work a patent is an explicit ground upon which such licences may be granted.173 In addition, in determining whether the “reasonable requirements of the public with respect to the patented invention”174 have been met, the Controller of Patents may consider the following: 169

B Mercurio and M Tyagi, “Treaty Interpretation in WTO Dispute Settlement: The Outstanding Question of the Legality of Local Working Requirements” (2010) 19 Minnesota Journal of International Law 275. 170 Canada–Pharmaceutical Patents, para 7.14. 171 C-L Lee, “The Legality of Local Patent Working Requirements under the TRIPS Agreement” (2013) 2 NTUT Journal of Intellectual Property Law and Management 39; J Kuanpoth, “Appropriate Patent Rules in Developing Countries–Some Deliberations Based on Thai Legislation” (2008) 13 Journal of Intellectual Property Rights 447; P Champ and A Attaran, “Patent Rights and Local Working Under the WTO TRIPS Agreement: An Analysis of the US–Brazil Patent Dispute” (2002) 27 Yale Journal of International Law 365. 172 S Frankel and JC Lai, “Recognised and Appropriate Grounds for Compulsory Licences: Reclaiming Patent Law’s Social Contract” in RM Hilty and K-C Liu (eds), Compulsory Licensing: Practical Experiences and Ways Forward (Springer 2015), 156. 173 Patents Act 1970, section 84(1)(c). 174 Ibid, section 84(1)(a).

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(b)

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whether the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable; and whether the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or persons claiming under him.175

In fact, it is made clear under Indian patent law that patents cannot be used as a vessel merely to establish a monopoly over the importation of the patented article into the country176 unless the non-working of the patent could be justified on reasonable grounds. For instance, the Bombay High Court in the Bayer compulsory licensing case confirmed this position: It would, therefore, follow that when a patent holder is faced with an application for Compulsory License, it is for the patent holder to show that the patented invention/drug is worked in the territory of India by manufacture or otherwise. Manufacture in all cases may not be necessary to establish working in India as held by the Tribunal. However, the patent holder would nevertheless have to satisfy the authorities under the Act as to why the patented invention was not being manufactured in India keeping in view section 83 of the Act. This could be for diverse reasons, but it would be for the patent holder to establish those reasons which makes it impossible/prohibitive for it to manufacture the patented drug in India. However, where a patent holder satisfies the authorities, the reason why the patented invention could not be manufactured in India then the patented invention can be considered as having been worked in the territory in India even by import.177

Although there was an appeal from the High Court’s decision, the Indian Supreme Court did not interfere with the lower court’s findings,178 further confirming that local working is a possible ground upon which a compulsory licence may be issued. Accordingly, it is clear that the Indian approach to local working has effectively been utilised, especially to increase access to medicines. Sri Lanka has much to learn from the Indian experience. We are of the view that the provision dealing with compulsory licences under Sri Lanka’s IP Act (section 86(2)) will benefit from an amendment that expressly incorporates the failure to locally work a patent as a ground for the grant of such licences. However, such a provision must comply with Article 31 of TRIPS and Article 5A(4) of the Paris Convention. Notably, a determination as to the grant of a compulsory licence on the ground of failure to work must be made on a case-by-case basis consequent to an administrative or judicial hearing where the patent owner is duly heard. Doing so will no doubt ensure compliance with Article 27.1 of TRIPS, as it is less likely that determining these matters on a case-by-case basis will be regarded as discriminatory.

175

Ibid, section 84(7)(d) and (e). Ibid, section 83(g). 177 Bayer v Union of India, para 15(b). 178 Bayer Corp v Union of India and others Special Leave to Appeal Case No 30145/2014 (12 December 2014). 176

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3.4.4 Exhaustion of Rights and Parallel Imports When patented goods are placed on the market by the patent owner or by someone authorised, patent rights can no longer prevent the further commercialisation of such goods already placed on the market. Once patented goods are placed on the market, patent rights are deemed to have become exhausted in respect of those goods. Insofar as Sri Lanka is concerned, section 86(1)(iv) of the IP Act provides that the rights of a patent owner do not extend “in respect of articles which have been put in the market by the owner of the patent or by a manufacturer under licence.” In effect, this provision seeks to introduce the concept of exhaustion of rights. However, it is not entirely clear what type of exhaustion is contemplated. The only reference in TRIPS to the rule on exhaustion is found in Article 6, which provides that “[f]or the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.” In effect, TRIPS does not seek to harmonise the rule on exhaustion and allows WTO members to determine their own policies in respect of it. This can be in the form of national, regional, or international exhaustion. Under the scheme of national exhaustion, the IP rights of a patent owner become exhausted upon the first sale of the patented product within a country. However, the right holder may still prevent the importation of the patented product from overseas, even in circumstances where such imports originate from sources authorised by the patent owner. This means that adopting a policy of national exhaustion would effectively prevent the parallel importation of patented products. In contrast, regional exhaustion permits parallel trade between states from within a designated region (e.g., the European Union) but not outside the designated region. The scheme of international exhaustion is the least restrictive on parallel trade/parallel imports. This is because, unlike in the case of national exhaustion, international exhaustion results in the patent owner being prohibited from asserting his rights in respect of goods placed on the market by him or with his authority anywhere in the world. The outcome is that patent owners cannot prevent the parallel importation of goods placed by them or with their authority exclusively in the foreign market. It is clear that adopting a standard of international exhaustion is crucial for parallel trade to flourish. It is also consistent with the notion of free trade that the WTO advocates. Indeed, para 5(d) (read with para 4) of the Doha Declaration on TRIPS and Public Health makes it clear that developing counties should be encouraged to make use of the flexibility afforded to them under Article 6 of TRIPS in picking a form of exhaustion that would better facilitate parallel trade and, in turn, improve access to essential medicines.

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The utility of permitting parallel importation of patented products is well documented in the literature.179 Most importantly, parallel importation has been identified as an important tool for promoting access to essential products, including medicines.180 Given the price variation implemented by manufacturers between their products in different geographical markets, parallel imports can provide consumers in developing countries access to products at competitive prices, and in the case of pharmaceuticals, this could enhance access to cheaper medicine.181 In principle, therefore, for developing countries, a policy of international exhaustion will be more beneficial, especially because it promotes access to essential goods at competitive prices as a result of the ensuing competition between importers and patent holders. For example, emerging economies such as Hong Kong, Singapore, Argentina, Thailand, and some Latin American countries have opted for international exhaustion in their domestic laws, thus enabling parallel trade.182 At least 22 of the 54 African countries have adopted international or regional exhaustion regimes to allow parallel importation, especially in pharmaceutical products.183 The Indian experience too provides many valuable lessons to developing countries with regard to enacting statutory provisions that facilitate parallel trade and avoiding potential pitfalls.184 For example, the rights of a patentee guaranteed under section 48 of the 179

See FM Abbott, Parallel Importation: Economic and Social Welfare Dimensions (International Institute for Sustainable Development 2007); M Barrett, “The United States’ Doctrine of Exhaustion: Parallel Imports of Patented Goods Intellectual Property Law: Issues in the New Millennium” (2000) 27 Northern Kentucky Law Review 911; TN Bart, “Parallel Trade of Pharmaceuticals: A Review of Legal, Economic, and Political Aspects” (2008) 11 Value in Health 996; D Chow, “Exhaustion of Trademarks and Parallel Imports in China” (2011) 51 Santa Clara Law Review 1283; CB Conley, “Parallel Imports: The Tired Debate of the Exhaustion of Intellectual Property Rights and Why the WTO Should Harmonize the Haphazard Laws of the International Community” (2007) 16 Tulane Journal of International and Comparative Law 189; N Gallus, “The Mystery of Pharmaceutical Parallel Trade and Developing Countries” (2004) 7 Journal of World Intellectual Property 169; JS Gorelick and RK Little, “The Case for Parallel Importation” (1986) 11 North Carolina Journal of International Law and Commercial Regulation 205. 180 See CT Collins-Chase, “The Case Against TRIPS-Plus Protection in Developing Countries Facing AIDS Epidemics” (2008) 29 University of Pennsylvania Journal of International Law 763; H El-Said and M El-Said, “TRIPS-Plus Implications for Access to Medicines in Developing Countries: Lessons from Jordan–United States Free Trade Agreement” (2007) 10 Journal of World Intellectual Property 438; H Klug, “Law, Politics, and Access to Essential Medicines in Developing Countries” (2008) 36 Politics & Society 207. 181 See S Shoell, “Why Can’t the Poor Access Lifesaving Medicines? An Exploration of Solving the Patent Issue” (2002) 4 Minnesota Intellectual Property Review 151; AO Sykes, “Public Health and International Law: TRIPS, Pharmaceuticals, Developing Countries, and the Doha ‘Solution’” (2002) 3 Chicago Journal of International Law 47. 182 KE Maskus, Parallel Imports in Pharmaceuticals: Implications for Competition and Prices in Developing Countries (WIPO 2001). 183 S McKeith, “Pharmaceutical Patents in Developing Nations: Parallel Importation and the Doctrine of Exhaustion” (2013) 6 African Journal of Legal Studies 287, 302. 184 See G Budhiraja Arya and T Sebastian, “Exhaustion of Rights and Parallel Imports with Special Reference to Intellectual Property Laws in India” (2014) 2 Journal of National Law University Delhi 26; P Ram, “India’s New TRIPS-Complaint Patent Regime between Drug Patents and the Right to Health” (2005) 5 Chicago-Kent Journal of Intellectual Property 195.

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Indian Patents Act 1970 is limited by section 107A(2), which provides that importation of a patented product from a person legally authorised to produce and sell or distribute that product is not an infringement of patent rights. This provision is an amended version of the original provision introduced in 2002. The 2005 amendment removed the requirement of due authorisation by the patent owner, which was identified as “thwart[ing] the very idea of international exhaustion and laudable intent of helping Indian consumers avail of lower prices…”185 Therefore, the 2005 amendment has enhanced the scope of parallel importation in India by enabling importers to buy products from any reseller whether or not the patentee has authorised the reseller. In the case of Sri Lanka, where most consumers have limited purchasing power, a policy of international exhaustion will be beneficial. Especially in the case of pharmaceuticals, as was noted before, Sri Lanka does not possess the capacity to manufacture its medicines at present and heavily relies on imported pharmaceutical products. Having in place the necessary legal framework permitting the parallel importation of patented pharmaceutical products at lower prices will ensure greater access to medicines among consumers who otherwise do not have the financial capacity to purchase such medicines. Accordingly, section 86(1)(iv) of Sri Lanka’s IP Act must be interpreted to promote a policy of international exhaustion in order to facilitate parallel trade. Preferably, it would be beneficial to introduce a clarificatory amendment that explicitly embeds the notion of international exhaustion within the patent-related provisions of the IP Act.

3.5 Utility Models Second-tier patent protection, otherwise referred to as utility models or petty patents, offers inventors the opportunity to enjoy the benefits of the patent system but for a shorter period (typically 6–10 years) and upon fulfilling requirements that are far less stringent in comparison with the typical patentability criteria.186 The rationale for utility models is that inventions or discoveries that fall short of the required criteria for patentability or registration as industrial designs are still considered worthy of receiving some degree of legal protection. The second-tier patent system ensures that countries have more discretion to design their national IP protection regimes according to prevailing socio-economic conditions. While the patent system places limits on the protection of inventions, in that only inventions that fulfil specific criteria are protected, the second-tier patent system attempts to promote inventive activities that are excluded from the patent system with the understanding that it is irrational 185

S Basheer and M Kochupillai, “‘Exhausting’ Patent Rights in India: Parallel Imports and TRIPS Compliance” (2008) 13 Journal of Intellectual Property Rights 489. 186 DP Homme, “Constructing Utility Model Patent Systems: Lessons from Europe and China” (2016) 38 European Intellectual Property Review 437; M Davison, “The Innovation Patent System: Lessons for Australia in the IP Reform Process” (2015) 26 Australian Intellectual Property Journal 64; MD Janis, “Second Tier Patent Protection” (1999) 40 Harvard International Law Journal 151.

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and unreasonable to leave minor and incremental innovations wholly unprotected. It can protect valuable inventions that would otherwise not be protected under the standard patent regime or other IP laws.187 The relevance of protecting utility models/petty patents for a developing country like Sri Lanka needs to be considered in light of its current laws and innovation and entrepreneurial context. As noted earlier in this chapter, the IP Act presently adopts an absolute novelty standard in relation to patents, which sets domestic patentability standards on par with most developed countries. Setting a higher bar has presumably resulted in fewer local innovators acquiring patent rights. As such, it is not so surprising that Sri Lanka has often been identified as a country that is lagging in technological advancements. Reference to patent statistics, as indicated earlier, is often presented as evidence of this. In addition, SMEs in Sri Lanka constitute 70% of the workforce and 90% of all business, contributing up to 26% of the country’s GDP.188 A utility model system would be helpful in this context, especially for SMEs. Their inventions are characterised by incremental innovations, short commercial lives, susceptibility to copying, and minimal R&D investment.189 The second-tier patent system offers the same disclosure and monopoly benefits as the patent system but is more accessible to inventors who otherwise cannot secure protection.190 With a utility model system, right holders will be able to exploit their registered inventions confidently and recoup their investment, even if it is for a shorter period than what the patent system would have offered. This is most likely to spur local innovation, as there is a measure of assurance that the resulting products will be protected. Importantly, before considering the suitability of the utility model system, Sri Lanka’s international obligations need to be examined to ascertain whether such a mechanism could be introduced. Insofar as TRIPS is concerned, it does not explicitly recognise the concept of a utility model/petty patent or a second-tier patent system. Nor does it set out the criteria for protecting utility models. However, there is also nothing in TRIPS that prevents WTO members from enacting laws for utility model protection. This effectively leaves WTO members with a free hand to formulate their own laws and policies in respect of second-tier patent protection, as long as there is no conflict with any other provisions of TRIPS. While the second-tier patent system may spur more innovation, there is also some concern that the general lack of substantive examination during the process of granting protection to utility models may lead to an abuse of the system, with the registration of spurious inventions.191 This is indeed a concern worth noting 187

U Suthersanen, Utility Models and Innovation in Developing Countries (ICTSD 2006), 1. P Mendes, Integrating Intellectual Property into Innovation Policy Formulation in Sri Lanka (WIPO 2015), 37. 189 Suthersanen (n 187) 5–7; R Krasser, “Developments in Utility Model Law” (1995) 26 International Review of Intellectual Property and Competition Law 950. 190 Suthersanen (n 187) 22; Krasser (n 189). 191 J Nielsen and D Nicol, “Patent Law and the March of Technology–Did the Productivity Commission Get It Right?” (2017) 28 Australian Intellectual Property Journal 4. 188

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but could be remedied by introducing a requirement for examination (although of a lesser standard than what is employed under the patent system) with detailed guidelines to both examiners and applicants. Alternatively, as Australia has done, the enforcement of a utility model (or innovation patent as it is known there) may be made conditional upon the underlying invention being certified consequent to an examination process.192 In addition, there is some fear that foreign companies may take advantage of the system as a cheaper mechanism for protecting their inventions and increasing profits with royalties and licensing fees being diverted overseas.193 Nevertheless, evidence suggests that the availability of the utility model system in East Asian countries such as Japan and China has been instrumental to their fast-paced technological advancement.194 In the face of historical pressure from the international community to strengthen the patent system for the country’s rapidly expanding industries, it is likely that Sri Lanka, which currently does not have a second-tier patent system, could have benefitted from its early adoption. Another argument in favour of the use of utility models/petty patents in a developing country is the increased revenue to the economy from patent protection that would otherwise not have been gained.195 These highlighted benefits of the second-tier patent system indicate that it is appropriate for Sri Lanka to seriously consider adopting this model. We are of the view that the adoption of a system for second-tier patent protection will boost local innovation and improve the country’s technological capabilities. Sri Lanka can take advantage of the flexibilities afforded by the absence of an international regime for the protection of utility models and design its national regime in a manner that reflects its specific economic needs and goals.

3.6 Recommendations The patent-related provisions in the IP Act are largely reflective of Sri Lanka’s attempt to comply with its international IP obligations flowing from various treaties to which it is a party, including TRIPS. Although TRIPS mandates minimum standards of IP protection, it affords WTO members some room to manoeuvre and customise their own patent laws in accordance with their unique legal systems and domestic interests. Unfortunately, the patent-related provisions of Sri Lanka’s IP Act do not 192

However, innovation patents have been phased out in Australia. Accordingly, since 26 August 2021, innovation patent applications are no longer accepted by the Australian Intellectual Property Office. These changes are brought about pursuant to the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020. 193 Suthersanen (n 187) xi. 194 BMK Mwiya, “Trends of Patent and Utility Model Activities in Asia and Africa: A Comparison of Regional Innovation, FDI and Economic Activity” (2012) 3 World Intellectual Property Journal 255; KS Kardam, Utility Model–A Tool for Economic and Technological Development: A Case Study of Japan (WIPO/Japan Paten Office 2007), 24. 195 Suthersanen (n 187) xi; Mwiya (n 194); Davison (n 186).

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fully make use of these flexibilities. Nor do they adequately respond to Sri Lanka’s domestic needs and interests. Therefore, it is crucial for Sri Lanka to make use of TRIPS flexibilities in repositioning its patent law. It is imperative that in doing so, Sri Lanka takes into account its current economic situation, the stage of the country’s development, and the public interest. In developing countries, the right to serve the public interest must prevail over all other considerations, unlike in the case of developed countries where welfare objectives may no longer be a significant consideration. Sri Lanka must therefore ensure that there is a proper correlation between the patent system and its current developmental needs. The patent system in Sri Lanka should undeniably be based on the principle of reciprocity that places emphasis on the need to balance the rights of patent owners against the interest of the state and the public. This chapter identified several concerns and shortcomings that arise from the patent-related provisions of the IP Act. In light of this, we make the following recommendations so that Sri Lanka’s domestic and national interests may be addressed more effectively while also ensuring compliance with the country’s obligations under TRIPS and related international treaties. As regards patentable subject matter, we make the following recommendations. First, we propose an amendment to section 62(3)(b) of the IP Act so that Sri Lankan law meets the requirements in Article 27.3(b) of TRIPS. Article 27.3(b) permits WTO members to exclude “plants and animals” from patentability, although “micro-organisms” cannot be excluded. But under current Sri Lankan law, “plants, animals, and other micro-organisms” are excluded, although “transgenic” microorganisms are not excluded from patentability. While there might be merit in limiting patentability to transgenic micro-organisms, especially from an agricultural point of view, such an outcome could be achieved using other patentability criteria such as novelty and non-obviousness. Therefore, we believe that Sri Lankan law in this regard should comply with Article 27.3(b) of TRIPS so that it will not be called into question. To that end, section 62(3)(b) of the IP Act should be amended so that only plants and animals, and essentially biological processes for the production of plants or animals, are excluded from patentability. In contrast, micro-organisms and other non-biological and microbiological processes for the production of plants and animals should remain patentable. Second, we also noted that the proviso attached to section 62(3)(b), which provides that “a patent granted in respect of micro-organisms shall be subject to the provisions of this Act” causes confusion as to the true scope of the exclusion as it seemingly suggests that micro-organisms are patentable, although section 62(3)(b) itself seeks to exclude it. Given the confusion, we recommend that the proviso be removed. We also suggest the following recommendations in respect of the patentability requirements. First, in respect of the novelty requirement as incorporated by section 64 of the IP Act, we believe that a relative novelty standard (as opposed to the current absolute novelty standard) would better suit Sri Lanka at least until the capacity and capability of local innovators improve to make use of a stronger patent regime. It is an alternative approach that may be adopted by a country that lacks a second-tier patent system. In particular, a relative novelty standard can promote innovation among individual inventors and SMEs in Sri Lanka. In addition to our

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proposal regarding the relative novelty standard, we also believe that Sri Lanka will stand to benefit by introducing a second-tier patent system that could recognise minor and incremental inventions that fail to meet the stringent patentability requirements. The recognition of minor and incremental innovation is vital for Sri Lanka to promote a culture of innovation. Second, as regards the non-obviousness requirement, although section 63 (read with section 65) of the IP Act provides that only those inventions that are not obvious from the perspective of a person skilled in the art qualify for protection, it does not provide any guidance on how non-obviousness could in practice be determined. In this regard, we recommend that the IP Act expressly incorporate a non-exhaustive list of secondary indicators that could be utilised to determine the non-obviousness requirement. Alternatively, such secondary indicators may be introduced through subsidiary legislation/regulations. Third, as regards the industrial applicability requirement that section 66 of the IP Act incorporates, we are of the view that Sri Lanka will benefit by framing the requirement on the basis of usefulness as opposed to industrial applicability. Although TRIPS permits WTO members to treat industrial applicability synonymously with usefulness, utility is a broader concept that would better suit a developing country like Sri Lanka. In addition, we make the following recommendations regarding the nature and scope of patent rights. Insofar as the nature of patent rights is concerned, we noted that section 84(1)(a) of the IP Act confers on patent owners the right to exploit their inventions, which seemingly is a positive right. We believe that this is unnecessary because TRIPS merely requires WTO members to guarantee every patent owner the right to exclude third parties from exploiting their inventions. In view of this, we recommend that the IP Act be amended so that patent rights are framed as a negative right. We make the following recommendations concerning the scope of patent rights. First, as regards the scientific research exception as set out in section 86(1)(i) of the IP Act, we note that the provision does not explicitly define “scientific research.” This is problematic because for this exception to be permitted under Article 30 of TRIPS, it must be narrowly defined. As such, we recommend a clarificatory amendment to this provision to ensure that what is permitted is research on patented inventions and not research with patented inventions. Moreover, we recommend that in addition to permitting scientific research, the Sri Lankan exception should also expressly incorporate “experimentation” into its scope so that not only pure but also applied research can be carried out without any interference from patent owners. Second, we noted that the Sri Lankan IP Act does not include a regulatory review or Bolar exception. Given that some products, especially pharmaceuticals, require to go through a process of regulatory review before they are introduced into the market, the regulatory review exception could ensure that generic versions of patented products can enter the market immediately after the respective patents expire. Therefore, we recommend the incorporation of a regulatory review exception into the existing provisions of the IP Act, which will undoubtedly benefit any initiative in establishing a manufacturing base for generic pharmaceuticals in Sri Lanka.

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Third, we also make several recommendations concerning Sri Lanka’s compulsory licensing provision. Although section 86(2) of the IP Act incorporates Article 31 of TRIPS into Sri Lankan law, we feel there is much room for improvement. These improvements are as follows. As regards the “prior negotiation” requirement that usually must be satisfied before granting a compulsory licence, we recommend that an upper time limit be prescribed to determine the “reasonable period of time” within which such prior negotiation should occur and be concluded. Drawing inspiration from the Indian regime, a period of six months will be ideal. On the use of compulsory licences to import and export pharmaceutical products, we recommend the introduction of a special provision into the IP Act that gives effect to Article 31bis of TRIPS. Although section 86(2) of the IP Act, as it stands, does permit the Sri Lankan Government to issue a compulsory licence to import generic drugs as an eligible importing country, in our view, an express provision that facilitates the importation of generic versions of patented drugs will provide better clarity in this regard. In addition, we also recommend that the IP Act incorporate a provision that would expressly facilitate the issuance of compulsory licences to export pharmaceutical products to countries without sufficient manufacturing capacity. Given the recent efforts to improve domestic pharmaceutical manufacturing capacity, Sri Lanka may build sufficient capacity to manufacture pharmaceutical products not only for supply to the domestic market but also for exportation. Our recommendation seeks to put into place the necessary legal framework to give effect to this possibility (if and when this happens) in line with Article 31bis of TRIPS. With regard to the grounds upon which compulsory licences are granted, we recommend including a broad and non-exhaustive list of grounds upon which such licences may be issued. In this regard, we feel that adopting a position similar to what is found under Indian law will provide more certainty to both patent owners and potential applicants for compulsory licences. Fourth, we recommend incorporating a local working requirement for patents, which could be given effect through the compulsory licensing scheme permitted under Article 31 of TRIPS. In this regard, we endorse the adoption of an approach similar to that in India, whereby the failure to work a patent in Sri Lanka on an adequate commercial scale or to the fullest extent that is reasonably possible or where the importation of the patented product is preventing the local working of the underlying patent could be regarded as a stand-alone ground upon which compulsory licences are granted. Lastly, we believe that section 86(1)(iv) of the IP Act, which deals with the exhaustion of patent rights, ought to be given an interpretation that would facilitate rather than prohibit the parallel importation of patented products. By permitting the parallel importation of patented products procured from lawful foreign sources, Sri Lankan consumers will gain access to those products at a more completive price. This could mean a great deal, particularly from the point of view of improving access to cheaper medicines. In order to set aside any doubt concerning its scope, we recommend an amendment to section 86(1)(iv) that makes it explicitly clear that a policy of international exhaustion applies in Sri Lanka, which, in effect, would facilitate the parallel importation of patented products.

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The current patent regime in Sri Lanka makes very little use of the flexibilities that TRIPS affords to WTO members. On the whole, Sri Lanka needs to substantially revamp the patent-related provisions of the IP Act in order to make better use of these flexibilities. We hope that the recommendations set out above will enable Sri Lanka to craft a patent regime that is better balanced and sensitive to its domestic needs and interests while at the same time being fully compliant with the country’s obligations under TRIPS and other international IP treaties.

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45. Hu AG, Zhang P, Zhao L (2017) China as number one? Evidence from China’s most recent patenting surge. J Dev Econ 124:107 46. Janis MD (1999) Second tier patent protection. Harvard Int Law J 40:151 47. Jayasuriya S (2019) Pharma sector needs a level playing field, says Astron MD. Sunday Observer. http://www.sundayobserver.lk/2019/09/08/business/pharma-sector-needs-level-pla ying-field-says-astron-md 48. Kardam KS (2007) Utility model–a tool for economic and technological development: a case study of Japan. WIPO/Japan Paten Office 49. Kariyawasam K (2018) Women and IP commercialisation in the Asian Region: case study of Sri Lanka. WIPO 50. Karunaratne DM (2005) A general overview of the national intellectual property regime in Sri Lanka since independence. In: Aspects of 50 years of law, justice and governance in Sri Lanka–a compilation of papers presented at the conference on 50 years of law, justice and governance in Sri Lanka. Law and Society Trust 51. Karunaratna DM (2010) Elements of the law of intellectual property in Sri Lanka. Sarasavi Publishers 52. Karunaratna DM (2006) Issues related to the enforcement of IP rights: national efforts to improve awareness of decision makers and education of consumers. WIPO/ACE/3/5 2006 53. Klug H (2008) Law, politics, and access to essential medicines in developing countries. Polit Soc 36:207 54. Krasser R (1995) Developments in utility model law. Int Rev Intellect Prop Competition Law 36:950 55. Kuanpoth J (2008) Appropriate patent rules in developing countries–some deliberations based on Thai legislation. J Intellect Prop Rights 13:447 56. Kuanpoth J (2015) Compulsory licences: law and practice in Thailand. In: Hilty RM, Liu K-C (eds) Compulsory licensing: practical experiences and ways forward. Springer 57. Ladas SP (1975) Patents, trademarks, and related rights: national and international protection. Harvard University Press 58. Latha SS (2009) Biopiracy and patent protection of traditional medicine in India. Eur Intellect Prop Rev 31:465 59. Lee C-L (2013) The legality of local patent working requirements under the TRIPS agreement. NTUT J Intellect Prop Law Manage 2:39 60. Liang Z, Xue L (2010) The evolution of China’s IPR system and its impact on the patenting behaviours and strategies of multinationals in China. Int J Technol Manage 51:469 61. Lichtman DG (1997) The economics of innovation: protecting unpatentable goods. Minnesota Law Rev 81:693 62. Lin X (2015) Prior negotiation and remuneration for patent compulsory licensing: practice, problem, and proposal. In: Hilty RM, Liu K-C (eds) Compulsory licensing: practical experiences and ways forward. Springer 63. Liu D (2005) Now the wolf has indeed come! Perspective on the patent protection of biotechnology inventions in China. Am J Comp Law 53:207 64. Llewelyn D (2010) Invisible gold in Asia: creating wealth through intellectual property. Marshall Cavendish 65. Lugoda U (2019) Hemas to diversify Sri Lanka’s export basket through pharma. The Morning. http://www.themorning.lk/hemas-to-diversify-sri-lankas-export-basket-through-pharma/ 66. Marsoof A (2018) Local working of patents: the perspective of developing countries. In: Bharadwaj A, Devaiah V, Gupta I (eds) Multi-dimensional approaches towards new technology. Springer 67. Maskus KE (2001) Parallel imports in pharmaceuticals: implications for competition and prices in developing countries. WIPO 68. McKeith S (2013) Pharmaceutical patents in developing nations: parallel importation and the doctrine of exhaustion. Afr J Legal Stud 6:287 69. Mendes P (2015) Integrating intellectual property into innovation policy formulation in Sri Lanka. WIPO

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70. Mendis DLO (1974) Technology of development and the underdevelopment of technology in Sri Lanka. In: Proceedings of the 31st Annual Session of the Sri Lanka Association for the Advancement of Science 71. Mengistie G (2009) The impact of the international patent system on developing countries. J Ethiopian Law 23:161 72. Mercurio B, Tyagi M (2010) Treaty interpretation in WTO dispute settlement: the outstanding question of the legality of local working requirements. Minnesota J Int Law 19:275 73. Moir HVJ (2013) Patent policy and innovation–do legal rules deliver effective economic outcomes? Edward Elgar 74. Musungu S, Oh C (2006) The use of flexibilities in TRIPS by developing countries: can they promote access to medicines? South Centre 75. Mwiya BMK (2012) Trends of patent and utility model activities in Asia and Africa: a comparison of regional innovation, FDI and economic activity. World Intellect Prop J 3:255 76. National Science Foundation (2017) Sri Lanka science, technology & innovation statistical handbook 2014 77. National Science Foundation (2018) Sri Lanka science, technology & innovation statistical handbook 2015 78. National Science Foundation (2021) Statistical handbook on research and development of Sri Lanka 2018 79. Neef A, Reyes-Knochein S (2009) Article 27–patentable subject matter. In: Stoll P-T, Busche J, Arend K (eds) WTO–trade-related aspects of intellectual property rights. Koninklijke Brill NV 80. Nielsen J, Nicol D (2017) Patent law and the march of technology–did the productivity commission get it right? Austr Intellect Prop J 28:4 81. NIPO, Statistics. https://www.nipo.gov.lk/ 82. Otieno-Odek J (1995) Public domain in patentability after the uruguay round: a developing country’s perspective with specific reference to Kenya. Tulane J Int Comp Law 4:15 83. Ormandy EH, Dale J, Griffin G (2011) Genetic engineering of animals: ethical issues, including welfare concerns. Can Vet J 52:544 84. Pieris K (2010) Science and technology in ancient Sri Lanka. The Island. http://www.island. lk/2005/10/20/features4.html 85. Rathod SK (2018) The curious case of India’s Bolar Provision. J Generic Med 14:16 86. Ram P (2005) India’s new TRIPS-complaint patent regime between drug patents and the right to health. Chicago-Kent J Intellect Prop 5:195 87. Reichmann J, Hasenzahl C (2003) Non-voluntary licensing of patented inventions: historical perspective, legal framework under TRIPS, and an overview of the practice in Canada and the United States of America. ICTSD Issue Paper No 5 88. Saez (2018) WTO TRIPS council looks at IP and the public interest, importance of research exemption. Intellect Prop Law Watch. https://www.ip-watch.org/2018/02/28/wto-trips-cou ncil-looks-ip-public-interest-importance-research-exemption/ 89. Shoell S (2002) Why can’t the poor access lifesaving medicines? An exploration of solving the patent issue. Minnesota Intellect Prop Rev 4:151 90. Sichelman T (2010) Commercializing patents. Stanford Law Rev 62:341 91. Simon BM (2014) Rules, standards, and the reality of obviousness. Case Western Reserve Law Rev 65:25 92. Suthersanen U (2006) Utility models and innovation in developing countries. ICTSD 93. Sykes AO (2002) Public health and international law: TRIPS, pharmaceuticals, developing countries, and the Doha “Solution”. Chicago J Int Law 3:47 94. Tennent JE (1859) Ceylon: an account of the Island, vol 1. Longman, Green, Longman and Roberts 95. Tridico A, Jacobstein J, Wall L (2014) Facilitating generic drug manufacturing: Bolar exemptions worldwide. WIPO Magazine. https://www.wipo.int/wipomagazine/en/2014/03/ article_0004.html

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96. Trimble M (2016) Patent working requirements: historical and comparative perspectives. UC Irvine Law Rev 6:498 97. Tvedt MW (2010) One worldwide patent system: what’s in it for developing countries? Third World Q 31:277 98. UNCTAD and WIPO (1975) The role of the patent system in the transfer of technology to developing countries. United Nations. https://digitallibrary.un.org/record/526090 99. UNCTAD-ICTSD (2005) Resource book on TRIPS and development. Cambridge University Press 100. Vaitsos C (1972) Patents revisited: their function in developing countries. J Dev Stud 9:71 101. WHO (2017) Advancing the right to health: the vital role of law. WHO 102. WHO (2008) Intellectual property rights and access to medicines: a South-East Asia perspective on global issues. SEA-TRH-3. http://www.who.int/iris/handle/10665/205352 103. Wijekoon CB (2018) First ever pharma zone in Sri Lanka becomes a reality. Daily News. http://www.dailynews.lk/2018/01/11/business/139546/first-ever-pharma-zonesri-lanka-becomes-reality 104. WIPO (2019) Certain aspects of National/Regional patent laws SCP/12/3 Rev. 2, Revised Annex II: inventive step (Obviousness). https://www.wipo.int/export/sites/www/scp/en/nat ional_laws/inventive.pdf 105. WIPO (2019) Certain Aspects of National/Regional Patent Laws SCP/12/3 Rev.2, Revised Annex II: Novelty. https://www.wipo.int/export/sites/www/scp/en/national_laws/novelty.pdf 106. WIPO (2017) Constraints faced by developing countries and Least Developed Countries (LDCs) in making full use of patent flexibilities and their impacts on access to affordable especially essential medicines for public health purposes in those countries. SCP/26/5 107. WIPO (1979) Model law for developing countries on inventions: volume 1 patents. WIPO Publication No 840 (E). WIPO 108. WIPO (2010) Patent related flexibilities in the multilateral legal framework and their legislative implementation at the national and regional levels. CDIP/5/4. https://www.wipo.int/edocs/ mdocs/mdocs/en/cdip_5/cdip_5_4-main1.pdf 109. WIPO (2015) Study on inventive step: summary. SCP/22/3. https://www.wipo.int/meetings/ en/doc_details.jsp?doc_id=304236 110. WIPO (2018) World intellectual property indicators 2018. WIPO. https://www.wipo.int/ edocs/pubdocs/en/wipo_pub_941_2018.pdf 111. Yang W-N, Yen AY (2009) The dragon gets new IP claws: the latest amendments to the Chinese patent law. Intellect Prop Technol Law J 21:18

Chapter 4

Plant Varieties, Farmers’ Rights, and Access to Genetic Resources

This chapter focuses on the protection of plant varieties, farmers’ rights, and genetic resources. Sri Lanka’s proximity to the equator, its diverse landscape spanning over three distinct climatic zones, and status as an island nation have contributed to its biodiversity and the adoption of unique traditional practices by its people for farming and medicinal purposes. Indeed, Sri Lanka is very much an agricultural nation. It is a major exporter of tea, rubber, coconut, and cinnamon. It was also home to a flourishing rice industry, but climate change and bad government policy have impacted its success. In light of these factors, it is crucial to ensure that the Sri Lankan legal framework promotes and protects the interests of local farmers and traditional communities. First, this chapter provides an overview of Sri Lanka as an agricultural nation and outlines the international framework that deals with the protection of plant varieties and access to genetic resources. As a member of the World Trade Organization (“WTO”), Sri Lanka must comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”),1 which requires WTO members to protect plant varieties. Sri Lanka is also a signatory to the Convention on Biological Diversity (“CBD”),2 in terms of which it must, among other things, implement a framework for providing equitable access to genetic resources. Second, the chapter analyses the provisions of a draft Bill on the protection of new plant varieties and plant breeders’ rights (“PBR”), which was introduced in 2001 but never became part of the country’s statute books. The analysis identifies gaps and deficiencies in the Bill and sets out recommendations that may be considered in further strengthening the draft law to 1 Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). 2 Convention on Biological Diversity, 5 June 1992, 1760 U.N.T.S. 69 (“CBD”).

The original version of this chapter was revised: Abstract has been updated in Chapter 4. The correction to this chapter can be found at https://doi.org/10.1007/978-981-19-4582-3_10 © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022, corrected publication 2023 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_4

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ensure that the interests of all stakeholders are adequately met. Reference is made to developments in India and to approaches of other countries to craft a suitable model to address Sri Lanka’s needs. Third, the chapter examines Sri Lanka’s policy on providing access to its genetic resources. Unfortunately, Sri Lanka does not have a law to regulate access to genetic resources. This chapter considers how Sri Lanka could implement a national regime regulating access to genetic resources within its control in terms that give effect to the provisions of the CBD.

4.1 A Snapshot of Sri Lanka as an Agricultural Nation Sri Lanka is a biological hub of the world thanks to its rich natural resources and agriculture-friendly terrains. It is home to a vast and diverse range of edible species, including wild plants, local animal breeds, food crops, and traditional nutrient-rich varieties of fruits and vegetables.3 Sri Lanka has been an agrarian-based society for more than 2,500 years.4 Farming has been one of the oldest and most celebrated vocations in Sri Lanka. The country earns much of its income from the export of agricultural products. It was almost self-sufficient in the production of certain agricultural products—rice providing a notable example.5 However, recent trends indicate that Sri Lanka’s economic structure is changing with increased contributions from other sectors and a declining contribution to the Gross Domestic Product (“GDP”) from agriculture. Thus, the agricultural sector’s contribution to the GDP has dramatically dropped from close to 30% in the 1960s6 to just 7% in 2019.7 In 2020, this figure was at 8.36%.8 Many factors could have resulted in this decline. However, the most prominent factors are likely to be climate change, urbanisation, and the substantial growth in the apparel, construction, tourism, communications, trade, and financial service industries in the period following 2009, which marked the end of a 30-year-old civil conflict. Despite the steady decline, however, agriculture remains indispensable to the economy. The agricultural sector of Sri Lanka mainly comprises the crop subsector (which includes plantation and non-plantation crop segments), livestock and poultry, and fisheries and aquaculture subsectors.9 The importance of the agricultural sector can 3

D Rathnasinghe et al., “True Sri Lankan Taste’ Food Outlets: Promoting Indigenous Foods for Healthier Diets’ Nutrition Exchange (12 July 2019) www.ennonline.net/nex/12/truesrilankantaste. 4 Ministry of Forestry and Environment, Biodiversity Conservation in Sri Lanka: A Framework for Action (Ministry of Forestry and Environment 1999), 39. 5 Ministry of Agriculture, Sri Lanka: Overarching Agriculture Policy (August 2019), 11. 6 P Athukorala et al., ‘The Sri Lankan Economy: Achievements, Prospects, and Policy Issues’ in P Athukorala et al. (eds), The Sri Lankan Economy: Charting a New Course (Asian Development Bank 2017), 22. 7 Central Bank of Sri Lanka, Economic and Social Statistics of Sri Lanka 2020 (August 2020), 2. 8 World Bank, Sri Lanka: Share of Economic Sectors in the Gross Domestic Product (GDP) from 2010 to 2020 (21 July 2021) https://www.statista.com/statistics/728539/share-of-economic-sectorsin-the-gdp-in-sri-lanka/. 9 Ministry of Agriculture, Sri Lanka Agriculture Policy (n 5) 9.

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be clearly understood when the figures surrounding the labour market are considered. Agriculture remains one of the most dominant vocations in Sri Lanka, with 25.3% of the total labour force of Sri Lanka engaging in agriculture or related activities as of 2019.10 This figure rose to 26.5% in the first quarter of 2020.11 Especially in the rural areas, agriculture is of even greater importance, with a significant proportion of the rural workforce relying on agricultural livelihoods.12 Approximately 865,000 hectares of land in the country is utilised for permanent crops, such as tea, rubber, coconut, and spices, while paddy is grown on approximately 850,000 hectares of land,13 and other food crops occupy 200,000 hectares.14 Yet another 200,000 hectares of land is used for Chena cultivation,15 an ancient and traditional form of agriculture.16 In performing agricultural activities, Sri Lankan farmers and cultivators are mindful of monsoon and inter-monsoon rainfall patterns. A majority of the agricultural lands are located in the dry zone, which contains most of the country’s irrigation infrastructure.17 Sri Lanka still reaps the rewards of some of the world’s most advanced irrigation systems built during the ancient kingdoms.18 The major crops in the plantation sector are tea, rubber, and coconut, followed by palm, and sugarcane.19 These crops dominate the export market. Minor export crops include “spices such as cinnamon, pepper, cloves, cardamom, and vanilla, and other perennial crops such as cocoa, coffee, cashew, and palmyra.”20 The production of cinnamon and pepper has been on an upward trend from 2008 onwards. Sri Lanka is the world’s largest producer and exporter of true cinnamon, the third largest for cloves and fifth for nutmeg.21 The non-plantation food crops comprise mainly “rice, maize, fruits, vegetables, and other minor food crops,” which are cultivated in individual land areas smaller than 2 hectares in extent.22 The floriculture industry, too, is quite lucrative in Sri Lanka and greatly contributes to the economy and generates employment.23 10

Ministry of Finance, Sri Lanka Labour Force Survey: Annual Report–2019 (16 September 2020). Ministry of Finance, Sri Lankan Labour Force Statistics Quarterly Bulletin: Sri Lanka Labour Force Survey 1st Quarter–2020 http://www.statistics.gov.lk/Resource/en/LabourForce/Bulletins/ LFS_Q1_Bulletin_2020. 12 B Byiers et al., Manufacturing Progress? Employment creation in Sri Lanka (Overseas Development Institute 2015), 19. 13 Paddy is regularly cultivated in approximately 700,000 ha of land with close to 150,000 ha remaining abandoned. 14 Ministry of Agriculture, Sri Lanka Agriculture Policy (n 5) 10. 15 Ibid. 16 MKL Irangani, “Sustainable Principles of Indigenous Chena Cultivation and Management in Sri Lanka: Lessons for Contemporary Agricultural Problems” (2020) 10 International Journal of Scientific and Research Publications 46. 17 Ministry of Agriculture, Sri Lanka Agriculture Policy (n 5) 11. 18 See discussion in Chap. 3 under 3.1. 19 Central Bank of Sri Lanka (n 7) 3. 20 Ministry of Agriculture, Sri Lanka Agriculture Policy (n 5) 12. 21 Ibid. 22 Ibid, 13. 23 Ibid. 11

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4.2 The International Framework Numerous international instruments deal with the protection of plant varieties and access to genetic resources. These instruments include the International Undertaking on Plant Generated Resources (“IU”),24 the International Treaty on Plant Genetic Resources for Food and Agriculture (“ITPGR”),25 the International Convention for the Protection of New Varieties of Plants (“UPOV Convention”),26 TRIPS, and the CBD. The IU came into effect in 1983 under the patronage of the Food and Agricultural Organisation of the United Nations (“FAO”). The IU was the first comprehensive international instrument to recognise the global relevance of plant genetic resources (“PGR”) and the need for an international approach to “explore, preserve, and evaluate these resources available for plant breeding and scientific purposes.”27 The objective of the IU was to address the inequity in the exchange of PGR.28 The universally accepted principle that “all PGR are the heritage of humankind and consequently should be available without restriction” was expressly inscribed into Article 1 of the IU. However, this principle was not acceptable to the developed world “particularly because many believed the common heritage principle would undermine the patent protection of new plant varieties.”29 Therefore, although over a hundred countries signed the IU, it is not surprising that countries like the United States did not.30 In any case, the IU was merely a declaration—thus a source of non-binding soft law. Between 1983 and 1991, negotiations were held, making it possible to reach interpretations of the IU acceptable to all countries—and later, between 1993 and 2001, renegotiations of the IU took place in order to transform it into a binding instrument.31 This sequence of events led to the adoption of the ITPGR on 3 November 2001. It is 24

International Undertaking on Plant Genetic Resources, 23 November 1983, UN Doc C/83/REP (1983) (“IU”). 25 International Treaty on Plant Genetic Resources for Food and Agriculture, 3 November 2001, 2400 U.N.T.S. 303 (“ITPGR”). 26 International Convention for the Protection of New Varieties of Plants, 2 December 1961, as revised in 1972, 1978 and 1991 (“UPOV Convention”). 27 E Gotor, F Caracciolo and F Scafetti, On the International Flow of Plant Genetic Resources: Forecasting the Impacts of an Evolving Legal Framework on CGIAR Genebanks (Biodiversity International 2019), 6. 28 DM Strauss, “The Application of TRIPS to GMOS: International Intellectual Property Rights and Biotechnology” (2009) 45 Stanford Journal of International Law 287, 314. 29 JM Spectar, “Patent Necessity: Intellectual Property Dilemmas in the Biotech Domain and Treatment Equity for Developing Countries” (2002) 24 Houston Journal of International Law 227, 244. 30 Strauss (n 28) 314. 31 J Esquinas-Alcázar, A Hilmi and IL Noriega, “A Brief History of the Negotiations on the International Treaty on Plant Genetic Resources for Food and Agriculture” in M Halewood, IL Noriega and S Louafi (eds), Crop Genetic Resources as a Global Commons: Challenges in International Law and Governance (Routledge 2012), 138.

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a legally binding instrument and covers all PGR relevant to food and agriculture. The treaty’s objectives are to enhance the protection and sustainable use of PGR for food and agriculture while facilitating fair and equitable sharing of the benefits arising out of PGR, in harmony with the Convention on Biological Diversity or CBD.32 This treaty strengthens the protection of farmers’ rights, as opposed to breeders’ rights, encouraging the protection of traditional knowledge by recognising farmers’ rights in managing PGR. The ITPGR places the responsibility on national governments to take measures to protect and promote farmers’ rights, including: (a) (b) (c)

protection of traditional knowledge relevant to PGR for food and agriculture; the right to equitably participate in sharing benefits arising from the utilisation of PGR for food and agriculture; and the right to participate in making decisions, at the national level, on matters related to the conservation and sustainable use of PGR for food and agriculture.33

In the same vein, Article 10.1 of the ITPGR recognises the sovereignty of nation states over their PGR for food and agriculture. Further, it provides that the authority to determine access to such resources rests with the respective national governments and is subject to national legislation. Although Sri Lanka is a party to the ITPGR, it has yet to enact legislation to implement the treaty’s provisions.34 The CBD, which came into force in June 1992, pays special attention to the sovereign rights of contracting states to develop their domestic regulatory frameworks to regulate access to and use of biological resources within their respective territories in accordance with their national environmental policies. The CBD incorporates several notable features to protect and promote biological diversity. Among those features, the concept of “prior informed consent” or PIC takes a prominent place. Accordingly, the CBD provides that “[a]ccess to genetic resources shall be subject to prior informed consent of the Contracting Party providing such resources, unless otherwise determined by that Party.”35 Other important features of the CBD include equitable sharing of benefits arising from the utilisation of genetic resources36 and the facilitation of access to and transfer of technology37 on mutually agreed terms.38 Notably, several provisions of the CBD give effect to the sovereign rights of nation states in respect of genetic resources located within their respective territories. For instance, Article 3 of the CBD provides that: 32

ITPGR, Art. 1.1. Ibid, Art. 9.2(a) to (c). 34 MDM Cooray, “Reconciling Breeder’s Rights and Farmer’s Rights for Food Security in Sri Lankan Context: A Comparison with India” in Proceedings of 10th International Research Conference, General Sir John Kotelawala Defence University, Sri Lanka (August 2017) http://ir.kdu.ac.lk/ handle/345/1662. 35 CBD, Art. 15(5). 36 Ibid, Arts. 1, 8(j) and 15(7). 37 Ibid, Art. 16. 38 Ibid, Arts. 15(4) and 16(3). 33

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4 Plant Varieties, Farmers’ Rights, and Access to Genetic Resources States have, in accordance with the Charter of the United Nations and the principles of international law, the sovereign right to exploit their own resources pursuant to their own environmental policies and the responsibility to ensure that activities within their jurisdiction or control do not cause damage to the environment of other States or of areas beyond the limits of national jurisdiction.

Article 15 of the CBD reaffirms this position in practical terms. It provides that the authority to determine access to genetic resources rests with the national governments and is subject to national legislation.39 Sri Lanka ratified the CBD in 1994 but is yet to introduce legislation regulating access to its genetic resources. The UPOV Convention provides a framework for the protection of new plant varieties by explicitly recognising and protecting the rights of plant breeders. The UPOV Convention adopts a sui generis system of protection (that is, a system that is unique or of its own kind) especially tailored to the needs of plant breeders. The Convention provides comprehensive guidelines to member states on the award of intellectual property (“IP”)-styled rights in respect of new plant varieties to protect the rights of plant breeders and those who develop new plant varieties.40 It introduces the concept of plant breeders’ rights or PBR to encourage the private sector to invest in commercial plant breeding. However, a problematic consequence of the Convention’s focus on PBR is that it disregards the inherent rights of farmers to save and replant seeds based on customs and traditions that have lasted for generations. In other words, farmers cannot lawfully save seeds protected by PBR for replanting. Nor are they permitted to sell or reuse seeds protected by PBR. Although Sri Lanka is not a party to the UPOV Convention, it has attempted (but without any success for many years) to enact a law based on the Convention in view of its obligations under TRIPS, as explained below. As a member of the WTO and a party to TRIPS, Sri Lanka is obligated to afford protection to plant varieties “either by patents or by an effective sui generis system or by any combination thereof.”41 The difficulty is that TRIPS does not provide a clear idea of the kind of sui generis legislation that WTO members may adopt. Indeed, the absence of rules in TRIPS regarding PBR leaves the UPOV Convention “as the single international instrument to provide for minimum standards of protection for plant varieties.”42 Of course, TRIPS affords much flexibility to WTO members in implementing its provisions into national law. Therefore, it is imperative for developing countries to fully appreciate the legal and policy alternatives that may be employed to protect PBR so that national laws that best meet their individual circumstances can be introduced. In 2001, with the hope of providing for a sui generis regime to protect new plant varieties, the Sri Lankan Government formulated a draft Bill titled 39

Ibid, Art. 15(1). R Jordens, “Progress of Plant Variety Protection Based on the International Convention for the Protection of New Varieties of Plants (UPOV Convention)” (2005) 27 World Patent Information 232. 41 TRIPS, Art. 27.3. 42 CM Correa, Signposts to Sui Generis Rights 5: TRIPS and the Protection of Community Rights (1 February 1998) https://grain.org/en/article/118-signposts-to-sui-generis-rights-5-trips-and-theprotection-of-community-rights. 40

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the Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 (“PPV Bill”).43 In 2011, some revisions were made to the PPV Bill, leading to a revised draft.44 However, the revised draft has never been published by any official source or in any official document of the Sri Lankan Government. We also gathered from published literature on the PPV Bill that in 2019, further revisions were made to the PPV Bill. As with the 2011 draft, the 2019 draft is not publicly available. Nor has its contents been referred to in any published academic literature.45 Although two decades have elapsed since the 2001 draft, the PPV Bill and its revisions still remain as drafts. The PPV Bill is yet to be introduced in Parliament for debate. Perhaps this is a blessing in disguise given the many anomalies in the draft Bill, which we set out in detail below. We hope these anomalies are rectified before the PPV Bill is passed into law.

4.3 Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 The Sri Lankan Government’s objective in introducing the PPV Bill was to enact a law to recognise an IP-styled regime for new plant varieties. The TRIPS transition period ended on 1 January 2000 for developing countries such as Sri Lanka. This meant that such countries should have implemented TRIPS under their national laws by then. In Sri Lanka’s case, the Code of Intellectual Property Act 1979, which was in operation before 2003, expressly excluded plants from the scope of patentable inventions.46 This exclusion is continued under the current Intellectual Property Act 2003.47 This means that for Sri Lanka to comply with Article 27.3 of TRIPS, it must enact a sui generis law that protects new plant varieties. However, although the Department of Agriculture and National Intellectual Property Office (“NIPO”) collectively prepared the draft of the PPV Bill in 2001, it has still not been passed into law. The following discussion contains an overview of the substantive elements of the PPV Bill as it was initially drafted in 2001. 43

Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 (“PPV Bill”). The PPV Bill can be accessed on the Food and Agriculture Organization’s website at https://www.fao.org/faolex/res ults/details/en/c/LEX-FAOC061689/. 44 Protection of New Plant Varieties Bill 2011 (“Revised PPV Bill”). See A Perera, “Legal Framework for Plant Breeders’ Rights in Sri Lanka: A Review” (2017) 39 European Intellectual Property Review 286, 295; A Perera and K Adhikari, “From Neglect to Protection: Recognising the Importance of Farmers’ Varieties in Sri Lanka” in K Adhikari, Intellectual Property Law and Plant Protection (Routledge 2020), 164. 45 A Perera, “Searching for a Balance: Realisation of Farmers’ Rights in Sri Lanka: A Case Study on Ownership and Stewardship” (2021) 43 European Intellectual Property Review 665, 670 (the author makes the following remark at footnote 60—“The Department of Agriculture of Sri Lanka is currently in the process of finalising the 2019 version of the Bill, but the author has no access to this Bill for any comment”). 46 Code of Intellectual Property Act No 52 of 1979, section 59(3)(b). 47 Intellectual Property Act No 36 of 2003, section 62(3)(b).

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4.3.1 Overview of the Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 The PPV Bill provides that a breeder or his successor in title may apply to the NIPO to secure PBR in respect of a new plant variety.48 An application may be filed by a single breeder or jointly by several breeders when more than one breeder was involved in the breeding process.49 However, where several persons have independently bred or discovered and developed the variety, then only the first applicant is entitled to protection.50 In cases where a new plant variety was bred in the course of employment, unless there is any contractual provision to the contrary, the employer may apply for PBR.51 The applicant must be a citizen or resident of or have a registered office in Sri Lanka, a convention country, or any country with which Sri Lanka has entered into reciprocal arrangements.52 Applicants who reside outside Sri Lanka must appoint an agent residing in the country for the purposes of submitting an application on their behalf.53 The agent shall be given the power in writing to act on the principal’s behalf before the NIPO or any other authority and in legal proceedings relating to the protection of new plant varieties.54 The PPV Bill begins with definitions.55 The 2001 draft Bill only defines six terms—i.e., “authority of a Convention Country,”56 “breeder,”57 “holder,”58 “office,”59 “protected variety,”60 and “variety.” Notably, the PPV Bill defines “variety” as: a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a Breeder’s Right are fully met, can be–

48

(a)

defined by the expression of the characteristics resulting from a given genotype or combination of genotypes;

(b)

distinguished from any other plant grouping by the expression of at least one of the said characteristics; and

PPV Bill, clause 8(1). Ibid, clause 8(2). 50 Ibid, clause 8(3). 51 Ibid, clause 8(4). 52 Ibid, clause 11(1). 53 Ibid, clause 11(2). 54 Ibid, clause 11(3). 55 Ibid clause 1. 56 “Authority of a Convention Country” means “the Authority entrusted with the implementation of the law on the protection of new varieties of plants for that country.” Strangely, although the PPV Bill refers to “convention country” on numerous occasions, this term has not been defined. 57 “Breeder” means “the person who has bred, or discovered and developed, a variety.” 58 “Holder” means “the holder of a breeder’s right.” 59 “Office” means “the National Intellectual Property Office of Sri Lanka.” 60 “Protected variety” means “any variety that is the subject of a breeder’s right.” 49

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considered as a unit with regard to its suitability for being propagated unchanged.61

Clause 2 of the PPV Bill specifies the characteristics of plant varieties that qualify for protection. Thus, plant varieties that possess novelty, distinctiveness, uniformity, and stability can be granted protection.62 An application may be refused if it is determined that the criteria above are not satisfied.63 A variety shall be considered new if the propagating or harvested material of the variety has not been sold or otherwise disposed of to others with the authorisation of the plant breeder or their successor in title (a) in Sri Lanka for longer than one year before the date on which protection is applied for and (b) outside Sri Lanka, for longer than six years in the case of trees or vines or longer than four years in the case of other plants, before the effective filing date in Sri Lanka.64 According to clause 4, read with the definition of “variety” as set out in clause 1 of the PPV Bill, a variety is considered to be registrable as a new variety if the characteristics resulting from a given genotype or combination of genotypes can be distinguished from any other plant grouping by the expression of at least one of the said characteristics.65 A candidate plant variety must be different from any other known variety whose existence is a matter of common knowledge when the application is made. Common knowledge includes varieties already being cultivated or exploited for commercial purposes in Sri Lanka and varieties described in a publication that is available to the public.66 Clause 14(3)(a) of the PPV Bill affords rights in respect of a plant variety that is essentially derived from a protected variety.67 Thus, the PPV Bill confers extended PBR over varieties that are essentially derived from a protected variety. If any person wishes to commercially exploit such essentially derived plant varieties, they must obtain the consent of and pay a royalty to the party that owns PBR in respect of the initial variety. A breeder is free to use a protected variety and make changes to it, but this is subject to any rights relating to the initial variety unless it could be established that the derived variety is not “predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotypes of the initial variety.”68 In essence, further breeding is restricted under the PPV Bill. A 61

PPV Bill, clause 1. Ibid, clause 2. The criteria for the grant of PBR are identical to those set out in Article 5 of the 1991 Act of the UPOV Convention. 63 Ibid, clause 29(8). 64 Ibid, clause 3(1). 65 Ibid, clause 4, read with clause 1 (definition of “variety”). In this regard, the PPV Bill follows the 1991 Act of the UPOV Convention (see Articles 1(vi) and 7). 66 Ibid, clause 4(3). 67 The PPV Bill defined “essentially derived varieties” in the same way as it has been defined in the 1991 Act of the UPOV Convention (see Article 14(5)(b)). 68 PPV Bill, clause 14(3)(b). This clause is an exact reproduction of Article 14(5) of the 1991 Act of the UPOV Convention. 62

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plant variety will not be considered new if it is essentially derived from a protected variety. Clause 14(1)(a) of the PPV Bill deals with the scope of PBR. Accordingly, the following acts will require the authorisation/consent of the holder of PBR: (a) (b) (c) (d) (e) (f) (g)

production or reproduction (multiplication); conditioning for the purpose of propagation; offering for sale; selling or other marketing; exporting; importing; stocking for any of the purposes referred to above.69

Accordingly, a right holder can assert PBR to prevent an unauthorised party from attempting to commit or committing any of the acts stated above. Notably, the acts set out above require the authorisation/consent of the holder of PBR in respect of a protected plant variety even in respect of harvested material, including entire plants and parts of plants, obtained through the unauthorised use of the propagating material of the protected variety.70 In essence, the monopoly vested in plant breeders will extend to farmers’ crops when such crops are propagated from the unauthorised use of propagating material of a protected variety. However, the rights of breeders are subject to certain limitations and exceptions. Thus, the rights conferred to breeders do not extend to: (a) (b) (c)

acts done privately and for non-commercial purposes; acts done for experimental purposes; and acts done for the purpose of breeding other varieties, except where they are essentially derived from a protected variety.71

In addition, clause 14(5) deals with the exhaustion of rights.72 Thus, a plant breeder’s rights do not extend to acts concerning any material73 of a protected variety or of a variety essentially derived from a protected variety, which has been sold or otherwise marketed by the breeder or with his consent in Sri Lanka or any material derived from the said material. But importantly, the rule on exhaustion does not prevent the exercise of PBR in respect of any acts that “involve further propagation of the variety in question.”74 69

Ibid, clause 14(1)(a)(i) to (vii). This clause is an exact reproduction of Article 14(1) of the 1991 Act of the UPOV Convention. 70 Ibid, clause 14(2). This clause is an exact reproduction of Article 14(2) of the 1991 Act of the UPOV Convention. 71 Ibid, clause 14(4). This clause is an exact reproduction of Article 15(1) of the 1991 Act of the UPOV Convention. 72 This clause is an exact reproduction of Article 16 of the 1991 Act of the UPOV Convention. 73 “Material” means “in relation to a variety—(a) propagating material of any kind; and (b) harvested material, including entire plants and parts of plants” (PPV Bill, clause 14(5)(II)). 74 Ibid, clause 14(5)(I)(a).

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The PPV Bill’s focus on plant breeders and PBR will have significant implications for Sri Lankan farmers if the PPV Bill becomes law in its original form as drafted in 2001. The rights set out in the PPV Bill will prevent the unauthorised propagation of a protected plant variety. This right will extend to situations where such propagation occurs from harvested materials derived from a protected variety. Even the rule on exhaustion will not limit this right of plant breeders. This means that farmers will not be permitted to save and reuse seeds of a protected variety without the breeder’s consent.

4.3.2 A Critical Evaluation of the Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 Regrettably, the PPV Bill 2001 is nothing more than a poorly justified copy of the 1991 Act of the UPOV Convention without provisions that adequately protect farmers’ rights. This is somewhat surprising because Sri Lanka is not a party to the UPOV Convention or any of its Acts. The PPV Bill does not recognise the vital role farmers play in developing local agriculture. Nor does it recognise their longstanding customs and traditional practices. Moreover, there are many weaknesses that could potentially undermine domestic interests. In this part, we consider the key shortcomings of the PPV Bill so that we can consider whether the 2011 revisions to the Bill have addressed those shortcomings. First, a fundamental weakness of the PPV Bill is that it does not contain a broad enough farm-saved seed exception under which farmers can lawfully retain farmsaved seeds and use them to grow their crops, as well as to harvest further propagating material from plants grown from such seeds. There is no express provision in the PPV Bill that would generally entitle farmers to save harvested seeds obtained by planting a protected variety to grow subsequent crops. Of course, clause 14(4)(II) of the PPV Bill will empower the Minister in charge of the subject to make regulations to restrict PBR in respect of specified plant varieties within reasonable limits and subject to safeguarding the legitimate interests of the holders of PBR. Once the Minister passes regulations in respect of specified plant varieties, the law would allow farmers to use the product of the harvest which they obtain by planting such specified varieties for propagation purposes within their own holdings. Clause 14(4)(II) of the PPV Bill reads as follows: The Minister may by regulations, within reasonable limits and subject to the safeguarding of the legitimate interests of the holders of breeder’s right, restrict the breeder’s right in relation to the varieties of any specified plant genera or species in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety.

As the wording of the clause set out above suggests, this is an extremely narrow exception and raises some problems for farmers.

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By default, the PPV Bill bars certain traditional practices and customs that come within the farmers’ privilege. These are age-old practices and customs, including the practice of saving seeds for future cultivation cycles and the sharing of crops and seeds freely with neighbouring cultivators/farmers. For instance, about 90% of Sri Lanka’s paddy farmers that cultivate rice utilise seeds acquired from crops they had grown previously or by borrowing seeds from neighbouring farmers.75 Farmers acquire the remaining seeds they need from the Department of Agriculture.76 This practice has been a staple feature of traditional Sri Lankan farming, which has led to the improvements in agriculture that we see today. But if the PPV Bill becomes law on the basis of its 2001 draft, farmers will entirely lose the entitlement to share seeds/propagating material with neighbouring cultivators/farmers insofar as such seeds or propagating material are derived from the harvested material obtained from a protected variety. As the wording of the exception suggests, even in respect of plant varieties specified by the Minister in terms of regulations, farmers cannot use their harvested material to extract seeds for sharing with neighbouring cultivators/farmers. This is made clear because the exception only allows farmers to use the product of their harvest obtained by planting a protected variety for propagating purposes within their own holdings. In this regard, it has been noted that: The custom of utilizing seed networks among farmers has existed for generations in developing countries. Changing it will take time because, ultimately, farmers will decide if they wish to transfer or save seeds according to the circumstances at hand.77

Thus, the practice among Sri Lankan farmers of sharing seeds, if at all, must only be gradually discouraged. Attempting to change this practice overnight could cause more significant harm to the farming community compared to any disadvantage that the practice itself might bring to plant breeders. In our view, a blanket prohibition on the sharing of seeds between farmers should not be implemented until Sri Lankan farmers are sufficiently educated about PBR. After all, “farmers in developing countries may not be aware of these rights or of the need to protect plant varieties, and this is particularly true of smallholders.”78 The lack of an innocent infringer defence (which we discuss later) exacerbates the problem further. It is also notable that the exception in clause 14(4)(II) of the PPV Bill protects farmers only upon the Minister passing relevant regulations. If the regulations promulgated by the Minister do not include certain specific protected plant varieties, farmers who engage in the practice of saving or sharing seeds obtained from the product harvested from planting such protected varieties will not be able to invoke this exception to PBR. In other words, such farmers will be in direct infringement 75

D Hirimuthugodage and PA Samaratunga, Intellectual Property Rights in Protecting New Plant Varieties and Farmers’ Traditional Knowledge: The Case of Rice in Sri Lanka, Institute of Policy Studies of Sri Lanka, Working Paper Series No 24 (September 2016), 1. 76 Ibid, 7. 77 HBH Nguyen and K Weckström Lindroos, “The Regulation of Farmer’s Privilege Under Vietnamese IP Law and the Law of the European Union” (2021) 52 International Review of Intellectual Property and Competition Law 677, 680. 78 Ibid.

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of PBR. If and when a dispute arises, an infringing farmer would never be able to plead the exception as a defence. This position could significantly undermine the farmers’ privilege entirely. As a matter of policy, the PPV Bill should include the farm-saved seed exception as a general exception (as opposed to being triggered by government regulations/subsidiary legislation) that could allow farmers to save and/or share seeds of a protected plant variety for propagation purposes. However, since acts that come within this exception ought not to unduly undermine the interests of plant breeders, reasonable limits should be imposed on the operation of the farm-saved seed exception. The PPV Bill should empower the Minister to determine the circumstances and conditions under which the operation of the exception is to be regarded as exceeding reasonable limits and unduly interfering with the legitimate interests of the holders of PBR. The PPV Bill should expressly set out a non-exhaustive list of factors that the Minister may consider in limiting the operation of the farm-saved seed exception. These factors could include the purpose for which the farm-saved seeds are to be used, farm size, and the types of plant/seed varieties. For instance, the Minister may prescribe that certain acts relating to the use of propagating material obtained from a protected plant variety will be excluded from the farm-saved seed exception. These acts might include the sale or sharing of such propagating material in circumstances that could undermine the interests of plant breeders. The Minister may also determine that the exception should not apply to large-scale farms. Thus, the exception can continue to apply to small and mediumsized farms. The Minister may also determine that the farm-saved seed exception should not apply to certain types of varieties, such as hybrid or synthetic varieties. Plant breeders are likely to have incurred more expenditure in producing such hybrid and synthetic plant varieties, and this should be factored in determining the scope of the exception.79 We feel that adopting this approach could help progressively strengthen PBR without unduly impacting the interests of Sri Lankan farmers. Indeed, unlike Sri Lanka’s PPV Bill, neighbouring India’s Protection of Plant Varieties and Farmers’ Rights Act 2001 (“PPVFR Act”) extensively recognises farmers’ rights, allowing farmers to save, use, sow, resow, exchange, share, or sell their farm produce, including seeds of a protected variety.80 The exception is carved out expressly in the PPVFR Act itself. Its operation does not depend on the passing of any subsidiary legislation. However, the exception comes with a limitation. Farmers are not entitled to sell branded seeds of a variety protected under the Indian Act.81 Branded seeds are seeds placed in packaging or any other container and labelled in a manner to indicate that such seeds are of a variety protected under the PPVFR Act. Subject to that limitation, farmers can save, use, sow, resow, exchange, share, or sell seeds derived from a protected variety. Thus, the PPVFR Act not only allows farmers to save farm produce (including seeds) obtained from a protected variety for propagating purposes but also the Act permits farmers to exchange, share, and

79

Ibid, 682. Protection of Plant Varieties and Farmers’ Rights Act 2001 (“PPVFR Act”), section 39(1)(iv). 81 Ibid, section 39(1)(iv). 80

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even sell such produce, including seeds. In other words, all aspects of the farmers’ privilege remain intact and unaffected by PBR. The Indian exception also addresses a practical problem that arises from how the Sri Lankan exception is worded. That is, clause 14(4)(II) of the PPV Bill will empower the Minister to restrict PBR in order to permit farmers to use the product of their harvest, which they have obtained by planting on their own holdings a protected variety, for propagating purposes. The Sri Lankan exception is explicitly limited to permitting farmers to use farm produce harvested from a protected variety solely for propagating purposes. Against this backdrop, let us assume that a farmer acquires seeds of a protected variety from the breeder (thus with the breeder’s consent) and sows them in his own holding (first cultivation cycle). In this scenario, the farmer is free to sell the resulting produce for profit. Although PBR extends to harvested material, since the farmer had obtained the seeds directly from the breeder for a fee, the breeder’s PBR are deemed to have been exhausted in respect of those seeds and any resulting harvest (see clause 14(5)(II)(b) of the PPV Bill). The farm-saved seed exception will also allow the farmer to use a part of the produce to propagate his next cycle of crop in his own holding. Let us now assume that the farmer uses produce from his first cultivation cycle to extract seeds and resows them in his own holding (second cultivation cycle). The farmer does this without the breeder’s consent, but he is permitted to do this in view of the farm-saved seed exception. Once the farmer reaps his next harvest, he can use the resulting produce to propagate his next cycle of the crop (third cultivation cycle). This is explicitly covered by the farm-saved seed exception. But does the farm-saved seed exception permit the farmer to sell the produce obtained from the second cultivation cycle? Since the breeder’s rights extend to the resulting harvest (see clause 14(2) of the PPV Bill), it appears that the produce from the farmer’s second cultivation cycle cannot be sold for profit without the breeder’s consent. The extension of PBR to harvested material derived from a protected variety is subject to clause 14(4), which provides for the farm-saved seeds exception. However, the exception specifically permits farmers to use the product of the harvest which they have obtained by planting a protected variety for propagating purposes. The exception does not permit acts of exchange, sale, or any other transaction pertaining to the harvest, which includes produce and any propagating material derived from a protected plant variety cultivated from farm-saved seeds. In essence, in cases where a farmer uses farm-saved seeds for his cultivation, the narrow wording of the plant-saved seed exception and the broad protection afforded to breeders, which extends to the farmer’s harvest, will seemingly prevent the farmer from selling the produce from his second and subsequent cultivation cycles. This anomaly can easily be remedied if an Indian-styled farm-saved seed exception is incorporated into the PPV Bill. Second, the PPV Bill does not contain an innocent infringer defence that sufficiently protects farmers. This significantly undermines the longstanding custom and traditional practice of farmers in terms of which they share produce and seeds with neighbouring farmers and cultivators. In a country like Sri Lanka, where rural farming communities have limited access to education, farmers are not likely to possess sufficient knowledge to differentiate between propagating material/seeds protected by

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PBR and those that are not.82 It has been suggested that “[o]nce they get seeds, they are not interested in whether it is a seed protected under PBR or any other law. They believe they have the freedom to use the seed for any reason, as it is a right they have been exercising for generations.”83 But if farmers sow their fields with seeds of a protected variety without the breeder’s consent (and hence without paying royalty), they will be liable for infringing the breeder’s PBR. As noted before, the breeder’s rights are extensive—ranging from activities relating to the propagation of a protected variety to the sale of produce derived from the resulting harvest. In the event farmers engage in the unauthorised use of propagating material derived from protected plant varieties, they could be dragged into long-drawn-out lawsuits with a disproportionately better-resourced opponent.84 Even farmers who borrow seeds from neighbouring cultivators in accordance with their customary practices could get caught up in such lawsuits in cases where they end up using seeds of a protected variety. This is problematic because breeders have a wide range of remedies against infringers. Courts can issue injunctions to prohibit the infringement of PBR,85 order the forfeiture, seizure, and destruction of propagating material,86 and award damages taking into account the pecuniary and non-pecuniary losses suffered by the aggrieved breeder.87 Of course, clause 33(3) of the PPV Bill seeks to limit the remedies available against innocent infringers by providing that: Where the person alleged to have infringed a right did not know or could not be reasonably expected to know that he was engaged in activity that infringed a right the Court may limit damages to the profits attributable to the infringement.

However, clause 33(3) only limits the quantum of damages to the account of profits. Yet, in cases of farmers who innocently infringe PBR, this is not particularly helpful because they would have to forego their entire profit from selling the produce derived from a protected plant variety. In addition, the other remedies such as injunctions and orders for the seizure, forfeiture, and destruction of unauthorised propagating material will still apply. Given the vulnerable economic status of Sri Lankan farmers, they would have no means of paying such damages, leaving breeders with no compensation and the farmers unable to continue with their livelihood.88 Hence, it is crucial for the PPV Bill to recognise innocent infringement in more comprehensive terms. There is much to learn from the Indian PPVFR Act, which provides a broader innocent infringer defence to farmers. Thus, section 42 of the Indian PPVFR Act provides that: 82

A Perera, “Plant Variety Protection in Sri Lanka and its Impact on Sri Lanka’s Agricultural Economy: A Critical Analysis” (2011) 14 Journal of World Intellectual Property 301, 318. 83 Ibid. 84 Ibid. 85 PPV Bill, clause 33(2)(a). 86 Ibid, clause 33(2)(b). 87 Ibid, clause 33(2)(c). 88 Perera, “Plant Variety Protection in Sri Lanka” (n 82) 307.

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4 Plant Varieties, Farmers’ Rights, and Access to Genetic Resources Notwithstanding anything contained in this Act– (i)

a right established under this Act shall not be deemed to be infringed by a farmer who at the time of such infringement was not aware of the existence of such right; and

(ii)

a relief which a court may grant in any suit for infringement referred to in section 65 shall not be granted by such court, nor any cognizance of any offence under this Act shall be taken, for such infringement by any court against a farmer who proves, before such court, that at the time of the infringement he was not aware of the existence of the right so infringed.

The Indian innocent infringement provision eliminates both civil and criminal liability. Notably, an innocent infringer will not be required to account for his profits. Nor is there a requirement to destroy any innocently infringed material, including the harvest. These are important ways by which the Indian provision safeguards farmers and their livelihoods. For the provision to apply, there must be proof of the farmer’s lack of knowledge or awareness of the protected status of the plant variety at the time of infringement—matters such as the farmer’s literacy/education levels being a relevant consideration in this regard.89 We believe that an innocent infringer defence on the same terms as the Indian PPVFR Act should be introduced into the PPV Bill before it is passed into law. Only then will Sri Lankan farmers be safeguarded, at least until they are adequately educated about PBR. Third, there is nothing in the PPV Bill that provides for farmers to benefit financially from their traditional varieties utilised to develop new plant varieties. This can be contrasted with the position in neighbouring India, where the PPVFR Act expressly recognises the concept of a farmers’ variety. A farmers’ variety is a variety that has been “traditionally cultivated and evolved by the farmers in their fields” or a variety that is “a wild relative or land race of a variety about which the farmers possess the common knowledge.”90 Where a breeder develops a variety derived from a farmers’ variety, the exercise of certain aspects of the breeder’s rights is subject to the authorisation of the farmers or group of farmers or community of farmers that had contributed towards the preservation or development of the farmers’ variety.91 In addition, when a breeder seeks to register a new plant variety, which had been derived from a farmers’ variety, there is a possibility for a person or group of persons, which, arguably, could include individual farmers and communities of farmers, to make a claim for benefit sharing.92 In addition, the Indian PPVFR Act provides that a farmer who is engaged in the conservation of genetic resources of land races and wild relatives of economic plants and their improvement through selection and preservation

89

S Ragavan and JM O’Shields, “Has India Addressed Its Farmers’ Woes? A Story of Plant Protection Issues” (2007) 20 Georgetown International Environmental Law Review 97, 121. 90 PPVFR Act, section 2(l). 91 Ibid, section 43. See also Ragavan and O’Shields (n 89) 119; S Sahai, “India’s plant variety protection and Farmers’ Rights Act, 2001” (2003) 84 Current Science 407, 409. 92 PPVFR Act, section 26(2).

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is entitled to be recognised and rewarded by the National Gene Fund,93 which is an institution set up under the Indian law.94 The Sri Lankan PPV Bill should include provisions equivalent to those found in the Indian statute. In particular, provisions requiring breeders to share benefits arising from commercialising any variety that belongs to local or farming communities should be added to the PPV Bill. The breeder should pay royalties or compensation to the farmer for using land races or traditional varieties to develop new commercialised varieties. The royalties collected from the breeder should flow into a Farmers’ Gene Fund, which could be utilised as an institutional mechanism to provide financial support to farmers and their communities to continue improving their conservation efforts. An independent body representing farmers or an assigned public authority should be empowered to decide how the fund’s resources are to be shared among the relevant stakeholders. Introducing benefit-sharing arrangements between breeders and farmers will be crucial in balancing the rights conferred to breeders and the interests of farmers that emerge from their traditional practices and custom. More importantly, there is currently no provision in the PPV Bill that requires a breeder applying to register a plant variety to disclose the parental lines and country of origin of applied-for varieties.95 The outcome of this omission is that there is a possibility for breeders to claim ownership rights to varieties derived from the abundantly available and existing traditional plant varieties of Sri Lanka without any compensation to the resource’s original holder. An application to register a new plant variety must contain information disclosing the immediate parental lines of the applied-for variety and its origin so that benefit-sharing arrangements can be made in the event the variety is derived from commonly known traditional plant varieties. In contrast to the Sri Lankan PPV Bill, the Indian PPVFR Act stipulates that a breeder or other person applying for registration of any plant variety shall disclose information regarding the use of genetic material conserved by any tribal or rural families in the breeding or development of such variety.96 In addition, the PPVFR Act provides that any “person, group of persons (whether actively engaged in farming or not), or any governmental or non-governmental organisation may, on behalf of any village or local community in India,” may make a claim setting out the “contribution of the people of that village or local community, as the case may be, in the evolution of any variety for the purpose of staking a claim on behalf of such village or local community.”97 Where a claim is successful, an order can be made compelling the breeder with rights over the variety to pay any compensation, the sum of which

93

Ibid, section 39(1)(iii). See also M Blakeney et al., “Agricultural Innovation and the Protection of Traditional Rice Varieties: Kerala a Case Study” (2020) 3 Frontiers in Sustainable Food Systems 1 https://www.frontiersin.org/articles/10.3389/fsufs.2019.00116/full. 94 The National Gene Fund is set up under section 45 of the Indian PPVFR Act. 95 K Kariyawasam, Protection of Plant Genetic Resources in Sri Lanka (Ph.D. Thesis, Griffith University 2006), 137. 96 PPVFR Act, section 40. 97 Ibid, section 41(1).

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must be deposited with the National Gene Fund.98 Similar provisions need to be introduced into the proposed law in Sri Lanka, compelling applicants for new plant varieties to reveal the origins of the applied-for variety and identify its parent lines. Moreover, in cases where such disclosure is not made, and a variety is registered, a suitable mechanism must be available for aggrieved farming communities to claim compensation. Lastly, another weakness of the PPV Bill concerns the mechanism for compulsory licences. Compulsory licences are permitted when the holder of the PBR fails to address the public interest in Sri Lanka. The PPV Bill envisages the possibility for any interested party to apply to the relevant court for a compulsory licence to be granted with respect to any registered variety on the grounds that it is necessary to safeguard the public interest.99 Such an application can only be made after the “expiration of three years” from the date on which the breeder acquired rights in respect of a new plant variety.100 When an application for a compulsory licence is made, the court must determine whether the grant of such a licence is in the public interest. In deciding whether to grant a compulsory licence, the court needs to satisfy itself that the applicant for the licence is “financially able and otherwise in a position to exploit the plant breeder’s right in a competent and business-like manner.”101 The court must also be satisfied that the right holder “has refused to permit the applicant for the licence to produce or market propagating material of the protected variety in a manner sufficient for the needs of the general public […] or is not prepared to give such permission under reasonable terms.”102 Notably, the court must ensure that “no conditions exist under which the holder of the plant breeder’s right cannot be expected to permit the use of his variety in the manner requested.”103 In addition, the court must be satisfied that “the applicant for the compulsory licence has paid the prescribed fee for the grant of such licence.”104 Before granting a compulsory licence, the court may seek input from national non-governmental organisations in the field of plant breeding and the seed trade.105 Although the inclusion of a mechanism for the grant of compulsory licences will help reach a better balance between the rights of breeders and the interests of local farming communities, there are some curious, if not ambiguous and problematic, aspects to the draft provision in the PPV Bill. First of all, a potential application for a compulsory licence can only be made after the expiration of three years from the date the breeder acquires rights in respect of a new plant variety. It is unclear why a three-year period was chosen. It is equally unclear why the PPV Bill seeks to impose such a requirement. Interestingly, although the PPV Bill seems to have been 98

Ibid, section 41(3) read with section 41(4). PPV Bill, clause 41(1). 100 Ibid. 101 Ibid, clause 41(6)(a). 102 Ibid, clause 41(6)(b). 103 Ibid, clause 41(6)(c). 104 Ibid, clause 41(6)(d). 105 Ibid, clause 41(8). 99

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modelled after the 1991 Act of the UPOV Convention, the Convention itself does not impose a similar condition with regard to limiting the rights of breeders in the public interest.106 In the context of patents, the Paris Convention for the Protection of Industrial Property107 imposes a time period within which compulsory licences cannot be issued with respect to a patent on the ground that it had not been worked or was insufficiently worked.108 Thus, patent owners usually have a grace period of three or four years (depending on how the period is calculated) within which their patents must be worked in the country where protection is granted. Arguably, this time restriction is extended to all WTO members in terms of Article 2 of TRIPS. However, the restriction specifically relates to compulsory licences with respect to patents, and that too, in cases where such licences are issued on the basis that the patent was insufficiently worked. Whereas TRIPS itself does not impose any time restrictions with respect to the grant of compulsory licences for patents. Accordingly, the threeyear time restriction set out in the PPV Bill cannot be a result of any obligation arising from an international treaty to which Sri Lanka is a party. As such, we feel that the time restriction is unnecessary. Whether or not a breeder has had sufficient time to exploit the rights ensuing from registering a new plant variety must be determined on a case-by-case basis rather than with reference to a predefined time period. The compulsory licensing provision does not define or, at the very least, provide any guidance on what might constitute the public interest. Nor does the draft provision provide guidance on what kinds of measures can be regarded as “necessary to safeguard the public interest in Sri Lanka.” However, the PPV Bill provides that a compulsory licence shall not be granted unless, among other things, it can be established that the holder of the PBR had refused to permit the applicant for the licence to produce or market propagating material of the protected variety in a manner sufficient for the needs of the general public or is not prepared to give such permission on reasonable terms. Thus, a right holder’s failure to grant a licence at all or refusal to grant one on reasonable terms so that the protected plant variety can be propagated to meet the demand of the general public is a ground upon which a compulsory licence can be issued. Arguably, such a failure or refusal on the part of a breeder can be regarded as contrary to the public interest. However, the PPV Bill does not provide any guidance on what terms could be regarded as reasonable, which would eventually have to be determined on a case-by-case basis. While such an approach could provide flexibility in resolving disputes, it could give rise to uncertainty.

106

UPOV Convention (1991 Act), Art. 17(1) (“Except where expressly provided in this Convention, no Contracting Party may restrict the free exercise of a breeder’s right for reasons other than of public interest”). The UPOV Convention or any of its subsequent Acts do not specifically refer to compulsory licences. 107 Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979. 108 Ibid, Art. 5A(4) (“A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last”).

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The corresponding provision in the Indian PPVFR Act is much more comprehensive in how it approaches compulsory licensing, as it expressly sets out the grounds upon which a compulsory licence can be issued. In India, a compulsory licence can be granted in respect of a registered plant variety where the “the reasonable requirements of the public for seed or other propagating material of the variety have not been satisfied” or “the seed or other propagating material of the variety is not available to the public at a reasonable price.”109 The first of the two grounds is broader than the second—in that it captures a wider range of situations. Although the Indian PPVFR Act itself does not provide examples of when the reasonable requirements of the public are deemed not to have been satisfied, guidance in this regard can be sought from India’s patent law, which uses similar language.110 Accordingly, a right holder’s refusal to grant a licence on reasonable terms, thereby prejudicing an existing industry or trade or the development of a new trade or industry, is one scenario where it may be deemed that the reasonable requirements of the public have not been satisfied.111 Similarly, the reasonable requirements of the public are deemed not to have been met where such refusal on the part of the right holder results in a failure to fulfil domestic demand112 or establish an export market for the underlying product113 or where such refusal prejudices the establishment of commercial activities.114 We believe that the Sri Lankan PPV Bill should adopt a similar approach. This could be achieved by simply adding a clear and precise non-exhaustive list of scenarios, such as acts or omissions that could prejudice the country’s food security, give rise to unreasonably high prices, or fail to produce propagating material in reasonable quantities and in keeping with acceptable quality, the existence of which are to be considered contrary to the public interest. As a final point, a notable feature of the compulsory licensing provision in the PPV Bill is that it does not permit the award of such licences unless the applicants can establish that they are “financially able and otherwise in a position to exploit the plant breeder’s right in a competent and business-like manner.” The capacity and competence of the applicant for a compulsory licence is an important factor that must be considered before determining whether or not to grant such a licence to a particular applicant. For instance, the Indian PPVFR Act provides that “the capacity, ability, and technical competence of the applicant to produce and market the variety to meet the requirement of the public”115 is a factor that will be taken into account before determining an application for a compulsory licence. However, it is rather strange 109

PPVFR Act, section 47(3). Patents Act 1970, section 84 (1) (“At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied”). 111 Ibid, section 84(7)(a)(i). 112 Ibid, section 84(7)(a)(ii). 113 Ibid, section 84(7)(a)(iii). 114 Ibid, section 84(7)(a)(iv). 115 PPVFR Act, section 48(2). 110

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and imprudent for the Sri Lankan PPV Bill to require an applicant to establish that it is capable of conducting its affairs in a business-like manner. It is unclear as to what that even means. A compulsory licence is not to enable the licensee to profit but rather to protect the public interest. To that end, a requirement that a licensee must demonstrate its capacity to exploit the PBR in respect of a plant variety in a business-like manner is not sensible and should be removed. In sum and as an overall observation, the PPV Bill provides the legislative basis for granting IP-styled rights to new varieties of plants. Although Sri Lanka is not a signatory to the UPOV Convention or its Acts, the PPV Bill is modelled on the 1991 Act of the UPOV Convention, which grants a strong set of rights to plant breeders. Most of the provisions of the PPV Bill are derived almost verbatim from the 1991 Act of the UPOV Convention, making it highly restrictive to farmers and impinging upon their communal and traditional practices to resow, share, and preserve seeds. It is also unfortunate that the PPV Bill fails to recognise the necessity for farmers to benefit from their own innovations with regard to traditional plant varieties. TRIPS affords WTO members the necessary flexibility so that domestic laws can be crafted to suit their particular local needs and national interests.116 The PPV Bill has neither taken advantage of the TRIPS flexibilities nor addressed the country’s needs. Sri Lanka needs to introduce a regime that protects the rights of plant breeders but at the same time safeguards the interests of farmers. Attempting to do so through legislation that adopts norms of IP protection may not necessarily be in the best interest of the country and its farming community.117 Article 27.3(b) of TRIPS allows WTO members to use their discretion when determining the extent to which inventions in this technological field are to be given protection.118 This leaves individual countries free to develop and frame national legislation according to their respective domestic interests. Sri Lanka is primarily an agricultural country. A large proportion of the nation’s farmers, primarily small-scale holders, depend on farm-saved seeds and the longstanding practice of exchanging seeds. Sri Lanka is not home to large seed companies that engage in commercial breeding. This means that recognising the farmers’ right to PGR is crucial. Therefore, to safeguard the local farming communities of Sri Lanka, the legislative framework should be designed to support farmers and local innovative practices that have been key in conserving the country’s biodiversity for generations.119 The introduction of PBR would have a negative impact on Sri Lankan farmers unless the competing rights and interests of farmers and traditional breeders are taken into consideration. We hope that before the PPV Bill is passed 116

G Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, Intellectual Property, Biogenetic Resources and Traditional Knowledge (Earthscan 2004), 68 (Commenting that the sui generis clause in TRIPS gives governments a certain amount of freedom to cater to their domestic concerns in framing laws to protect plant varieties). 117 See Perera, “Searching for a Balance” (n 45), 679. 118 G Dutfield, “Biotechnology and Patents: What Can Developing Countries Do About Article 27.3 (b)?” (2001) 5 Bridges 17. 119 K Kariyawasam, “The Recent Law Reforms and Plant Intellectual Property Law in Sri Lanka: Compliance with the TRIPS and CBD” (2005) 7 Australian Journal of Asian Law 169, 179–182.

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into law, its scope and provisions are reconsidered in light of our observations above. Failure to do so could spell disaster for Sri Lankan farmers and local agriculture.

4.3.3 A Revised Bill After a Decade, But Still No Law in Place Given the deficiencies in the 2001 draft of the PPV Bill, it is not surprising that efforts have been made to revise the original draft. As we have mentioned earlier in this chapter, it appears that revisions to the draft Bill were made in 2011 and 2019. However, the revised drafts have never been published by any official source or in any official document of the Sri Lankan Government. Fortunately, we managed to secure a document from a fellow researcher that purports to represent the 2011 draft of the PPV Bill. Therefore, any comment we make regarding these revisions is limited to the 2011 revised draft, which we refer to as the “Revised PPV Bill.” That too, only to the extent that its provisions can be corroborated by other published academic literature. As a preliminary matter, it must be noted that the 2011 revisions to the PPV Bill reflect a change in the short title. Thus, if the Revised PPV Bill becomes law, it will be referred to as the “Protection of New Plant Varieties Act,”120 which drops the words “Breeder’s Rights” that were previously included in the title of the 2001 draft. In addition, the Revised PPV Bill contains several new definitions. Notably, the revised draft of 2011 provides definitions for “farmer”121 and “farmer variety.”122 Arguably, these changes indicate a shift in policy—i.e., to formulate a law that draws a better balance between the rights of plant breeders and the interests of local farmers. As we gather from published academic discourse on the 2011 revisions, the Revised PPV Bill introduces some fundamental changes that further establish the policy shift. First, the Revised PPV Bill introduces a broader farm-saved seed exception. In the preceding section of this chapter, we have highlighted several limitations in the farm-saved seed exception set out in the 2001 draft of the PPV Bill. It appears that the 2011 revisions have sought to address these concerns. According to Kamardeen, a provision in the Revised PPV Bill entitles farmers “to save, use, sow, resow, exchange, share, or sell their farm produce including seed of a variety 120

N Kamardeen, “Proposed Plant Variety Legislation in Promoting Economic Growth” Sunday Times (10 November 2013) https://www.sundaytimes.lk/131110/business-times/proposed-plantvariety-legislation-in-promoting-economic-growth-68091.html. 121 Perera, “Searching for a Balance” (n 45), 670–671 (citing clause 4 of the Revised PPV Bill) (“Farmer” means “any individual who—(i) cultivates crops by cultivating the land himself; or (ii) gets crops cultivated in a land by any other person; or (iii) is a tenant cultivator in terms of the law relating to tenant cultivators or (iv) conserves and preserves, severally or jointly, with any person any wild species or traditional varieties or adds value to such wild species or traditional varieties through selection and identification of their useful properties”). 122 Ibid, 671 (citing clause 4 of the Revised PPV Bill) (“Farmers’ variety” means “a variety which (i) has been traditionally cultivated and evolved by the farmers in their fields; or (ii) is a wild relative or land race of a variety about which the farmers possess the common knowledge”).

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protected under the legislation in the same manner as they were entitled to, prior to the legislation coming into force.”123 Perera has confirmed this position in two separate publications.124 Both Kamardeen and Perera refer to clause 34(ii) of the Revised PPV Bill in their analysis of the 2011 revisions. Thus, we take the liberty to reproduce that provision from the unofficial copy of the draft 2011 Bill that we have secured. It reads as follows: Notwithstanding anything contained in this Act– (i) (ii)

[…] a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share, or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act:

Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act. Under the 2001 draft and (presumably) in the 2011 revised draft of the PPV Bill, PBR does not extend to private and non-commercial acts.125 However, this limitation to PBR alone does not help reinforce the farmers’ privilege. After all, when farmers engage in acts such as sowing, resowing, saving, sharing, and selling seeds, such acts are not necessarily private or non-commercial acts.126 In other words, the private and non-commercial use limitation to PBR does not extend to acts that typically fall within the farmers’ privilege. As such, it is clear that the farm-saved seed exception must override any other provision that limits its operation. Clause 34(ii) of the Revised PVV Bill achieves this by ensuring that it will operate notwithstanding anything contained in any other provision. Indeed, the farm-saved seed exception that the Revised PPV Bill introduces is identical to the same exception found under the Indian PPVFR Act. In our analysis above, we noted that the Indian farm-saved seed exception does well to preserve the rights and interests of farmers. Therefore, if clause 34(ii) of the Revised PPV Bill is included in the final draft Bill that will eventually be presented in Parliament, much of the problems we have highlighted concerning the 2001 draft can be avoided. This is undoubtedly a step in the right direction. Second, commentaries on the 2011 revisions to the PPV Bill also reveal that the Revised PPV Bill introduces an innocent infringer provision. For instance, Perera has pointed out that the “2011 Bill also would exempt farmers from penalties for the infringement of plant breeders’ intellectual property rights under certain situations.”127 Kamardeen, citing clauses 35(i) and (ii) of the Revised PPV Bill, has 123

Kamardeen (n 120). Perera, “Searching for a Balance” (n 45), 670; Perera and Adhikari, “From Neglect to Protection” (n 44), 164. 125 PPV Bill, clause 4(I)(a); Revised PPV Bill, clause 25(1)(a). 126 Perera, “Legal Framework for Plant Breeders’ Rights” (n 44), 294. 127 Perera, “Searching for a Balance” (n 45), 670. See also Perera and Adhikari, “From Neglect to Protection” (n 44), 164. 124

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pointed out that “[i]t is heartening that such protection has been given to the farming community, as many of them will not even be aware of the existence of the new law when it does come into operation, and they should be shielded from unnecessary prosecution.”128 Upon a perusal of the innocent infringer exception that the Revised PPV Bill seeks to introduce (i.e., in clause 35), we find that it is identical to the corresponding provision under the Indian PPVFR Act. As such, it is clear that the 2011 revisions represent a significant departure from the original draft of 2001 and signals a shift in policy in favour of local farmers in Sri Lanka. Third, based on the commentaries on the 2011 revisions, it appears that the Revised PPV Bill introduces an explicit researchers’ exception to PBR. Based on a reading of the revised 2011 draft, this exception is set out in clause 36. The 2001 and 2011 drafts already have a clause that limits the operation of PBR such that it does not extend to acts done for experimental purposes.129 However, the new provision that the PPV Bill seeks to introduce reinforces the rights of researchers in more concrete terms. Kamardeen has noted that the researchers’ exception will entitle any person “to use registered varieties for experimentation and research, or as an initial source of variety for the purpose of creating other varieties: provided that the authorisation of the holder of the rights to the registered variety is required where the repeated use of such variety as a parental line is necessary for commercial production of such other newly bred variety.”130 According to Kamardeen, the Revised PPV Bill further provides that: Where a variety has been bred in any public agricultural research institute or public university and is commercialized, the breeders who have actively contributed to the breeding of the variety shall receive an honorarium from the commercialization price as decided by the Minister under regulations.131

The provision set out above is identical to the corresponding provision that exists under Indian law.132 Arguably, the inclusion of the researchers’ exception should promote research in developing new plant varieties that produce higher yields and are resilient to climate change. This is undoubtedly going to be important in ensuring that agriculture in Sri Lanka is capable of withstanding the challenges of the future. Finally, commentaries on the Revised PPV Bill have referred to its compulsory licensing mechanism.133 Upon a perusal of the 2011 revised draft, we note that the compulsory licensing provision in the PPV Bill has undergone some fundamental changes. First, unlike the 2001 draft, which seeks to empower the relevant court to grant compulsory licences, under the Revised PPV Bill, the Competent Authority empowered to issue compulsory licences is the Director-General of IP. Second, we note that some of the problematic conditions that applicants for compulsory licences 128

Kamardeen (n 120). PPV Bill, clause 4(I)(b); Revised PPV Bill, clause 25(1)(b). 130 Kamardeen (n 120). 131 Ibid. 132 Indian PPVFR Act, section 30. 133 See, e.g., Hirimuthugodage and Samaratunga (n 75), 11. 129

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were expected to satisfy under the 2001 draft have been removed. Thus, for instance, if the Revised PPV Bill becomes law, applicants for compulsory licences will not be required to satisfy the Competent Authority that they have the ability to exploit the PBR in a business-like manner. In our view, these are sensible changes. However, the provision in the Revised PPV Bill that provides the basis for compulsory licences follows the approach adopted by Sri Lanka’s IP Act in dealing with patent-related compulsory licences. As such, the comments and recommendations we make to improve the patent-related compulsory licensing mechanism under the IP Act will also apply to the provision in the Revised PPV Bill. The discussion above demonstrates that the concerns that we have raised about the 2001 draft of the PPV Bill are addressed to some degree by the 2011 Revised PPV Bill. However, we wish to stress that our comments on the Revised PPV Bill relate to its provisions that have been discussed in published academic discourse. We are not in a position to comment beyond that since the 2011 revisions have not been published by any official source or in any official document of the Sri Lankan Government, and we only had access to an unofficial copy of the revised Bill we obtained from a fellow researcher. Nor are we in a position to comment on the rumoured 2019 revisions for the same reasons. This lack of transparency on the part of the Sri Lankan Government is a cause for concern. It runs counter to the best practices relating to lawmaking that we have highlighted in Chap. 2 of this book. Be that as it may, what is most unfortunate is that despite successive revisions and two decades on, the PPV Bill still remains a mere draft leaving Sri Lankan law inconsistent with Article 27.3(b) of TRIPS.

4.4 Biopiracy and Access to Genetic Resources Sri Lanka is an island nation that exhibits remarkable biological diversity and is considered the richest country in Asia in terms of species concentration.134 Sri Lanka has high proportions of endemic species among its flora and fauna. It has a wealth of cultural diversity, and its Ayurvedic medicine industry occupies an important place in the nation’s cultural heritage. Sustainably utilising Sri Lanka’s genetic resources, sharing the resulting benefits, and increasing the recognised value of its resources are effective ways to derive economic benefits from the country’s resources and conserve its biological diversity. However, there have been numerous instances in which Sri Lanka’s genetic resources have become the subject of biopiracy over the years. In the late 1970s, the endemic Binara flower (Exactum trivernium) was smuggled out of Sri Lanka, and foreign companies later patented minor variations of the species. One of these patents covered Maha Binara (Eitrinervum macranthum), a version of the plant

134

See country profile for Sri Lanka on CBD website at https://www.cbd.int/countries/profile/?cou ntry=lk.

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with drooping stems.135 In 1985, 12 medicinal plants, including Nutmeg or Sadikka (Myristica fragrans), Black Cumin or Kaluduru (Nigella sativa), Heenbabila (Sida alnifolia), Weniwalgata, and Clove or Karabu Nati (Syzygium aromaticum), were patented in Japan (JP No 60054312 of 28 March 1985) under the title “preventive for dental caries.”136 Extracts from these plants were used to produce several dental care products, including toothpaste, gargles, ointments, and chewing gum, manufactured by Nissan, Tsurui, and Yakuhin.137 A plant protein extracted from Batu Karawila (Mormodica chrantia) has also been patented by Sylvia Lee Huang of New York University (US patent 5,484,889). This protein is helpful in treating tumours and HIV infections. In 1997, a Japanese pharmaceutical company, Morganite Jintan KK, and an American company, Shaman Pharmaceuticals Inc, developed a medicinal product for diabetes that was derived from the biomaterials of Kothala Himbutu (Salicia reticulate), an endemic plant of Sri Lanka.138 This product has since become a popular means of controlling diabetes. But traditional Ayurvedic practitioners of Sri Lanka have known the medicinal value of Kothala Himbutu for centuries. They have advised people suffering from diabetes to drink water that had been left overnight in a mug carved out of the Kothala Himbutu wood. From this plant, Japanese researchers isolated Salacinol, which is described as a potent glucose inhibitor. Salacinol has since been patented. The unrestricted use of native genetic resources for scientific or commercial purposes continues to this day without a proper mechanism to share the benefits derived from such use. The successful implementation of the CBD could help Sri Lanka ensure that the use and exploitation of its PGR are subject to the country’s sovereign rights, which, in turn, has the right to determine conditions of access. At the domestic level, a nationally consistent approach to access and benefit sharing is also urgently required so that Sri Lanka’s obligations under the CBD, including the obligation to encourage the equitable sharing of benefits arising from the usage of genetic resources, are met.139 For Sri Lanka to meet the obligations under the CBD, there is a necessity to introduce a legal framework to ensure that the collection of genetic resources for research and development purposes does not adversely affect the viability or conservation status of such biological resources. Moreover, the legal framework must also ensure that 135

Z Dawoodbhoy, “Why Sri Lanka Urgently Needs Plant Patents to Protect its Natural Wealth” Roar Media (26 March 2019) https://roar.media/english/life/environment-wildlife/ending-biopir acy-sri-lanka. 136 S Fernandopulle, “Sri Lanka Affected by Bio Piracy Menace” Daily Mirror (6 December 2017) https://www.dailymirror.lk/News-Features/Sri-Lanka-affected-by-bio-piracy-menace/131141649. 137 D Hirimuthugodage, Trade Related Intellectual Property Rights (TRIPS) Agreement and the Agriculture Sector in Sri Lanka, Asia–Pacific Research and Training Network on Trade Working Paper Series No 92 (January 2011), 13. 138 K Amarasinghe, “Bio-piracy and its Impact on Biodiversity: A Special Review on Sri Lankan Context” (2018) Journal of Environmental Protection 268, 271. 139 Sri Lanka should ensure that the collection of biological resources for research and development purposes does not adversely affect the viability or conservation status of biological resources and, more importantly, ensure that the social and economic benefits of the use of biological resources derived from Sri Lanka’s biological diversity accrue to Sri Lanka and its communities.

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the social and economic benefits of using such biological resources from Sri Lanka’s vast biologically diverse landscape accrue to Sri Lanka and its citizens. Several laws regulate and deal with natural resources.140 There are also ongoing national law reform initiatives, action plans, projects, and policies that focus on the conservation and sustainable use of biological diversity in Sri Lanka.141 Notably, the Sri Lankan Government has introduced a National Policy on Access to Biological Material and Benefit Sharing142 to deal with access to biological material for their genetic or biochemical features or informational value.143 Under the Policy, “access” to biological material covers access to the genetic or biochemical features or information relating to any animal, plant, micro-organism, or other material sought for commercial or other uses.144 This Policy also encourages fair and equitable benefit sharing, considering all rights of in-country parties over the biological resources and their derivatives, technologies, and traditional knowledge.145 The goal of the Policy is to ensure the fair and equitable sharing of benefits arising from genetic material while securing the ownership of such material and associated traditional knowledge for the people of Sri Lanka, with appropriate public participation, to support the conservation and sustainable use of biological material in the country.146 However, there is no legal framework that explicitly regulates access to Sri Lanka’s genetic resources and provides for incidental matters such as benefit sharing. In 2000, 140

These laws include the Fauna and Flora Protection Ordinance 1937 (providing for the protection and conservation of the fauna and flora of Sri Lanka and their habitats; for the prevention of commercial and other misuse of such fauna and flora and their habitats, for the conservation of the biodiversity of Sri Lanka; and matters connected therewith or incidental thereto), Forest Ordinance 1908 (consolidating and amending the law relating to the conservation, protection, and management of forest and forest resources), Coast Conservation Act 1981 (among other things providing for the conservation and management of development activities within the coastal zone), Plant Protection Act 1999 (providing for measures against the introduction into Sri Lanka and the spreading therein, of any organism harmful to, or injurious to, or destructive of, plants, and for the sanitation of plants in Sri Lanka), Marine Environment Protection Act 2008 (providing for the prevention, control, and reduction of pollution in the territorial waters of Sri Lanka or any other maritime zone, its fore-shore, and the coastal zone of Sri Lanka and for matters connected therewith or incidental thereto), and the National Environmental Act 1980 (establishing the Central Environmental Authority and generally providing for the protection and management of the environment). 141 These initiatives include the National Conservation Strategy, National Conservation Review, National Environmental Action Plan, National Forest Policy, Forestry Sector Master Plan, Biodiversity Conservation Action in Sri Lanka: A Framework for Action, Wetland Conservation Plan, Coast Conservation Master Plan and the National Wildlife Conservation Policy, Pollution Abatement Strategy, Clean Air 2000 Action Plan, Climate Change Action Plan and the National Biosafety Guidelines. See Ministry of Forestry and Environment, Status Report on Convention on Biological Diversity in Sri Lanka: Second National Report 2000 (14 May 2001), 8. 142 Ministry of Environment and Wildlife Resources, National Policy on Access to Biological Material and Fair and Equitable Benefit Sharing (2020) (this Policy was approved by the Cabinet of Ministers on 14 December 2020). 143 Ibid, 4. 144 Ibid. 145 Ibid, 6. 146 Ibid, 5.

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a task force appointed by the Ministry of Forestry and Environment formulated a draft law to regulate access to the country’s genetic resources.147 But in all these years, the draft never became part of the country’s statute books. In the next part, we set out the salient features of the draft law and consider ways of improving the draft so that a more robust law can be enacted to regulate access to Sri Lanka’s biological resources.

4.4.1 Draft Law on Access to Genetic Resources The draft law formulated by the ministerial task force was titled “Genetic Resources– Access and Benefit Sharing Act of 2000”148 (“Draft Law”).149 Under the Draft Law, a party seeking access to genetic resources in Sri Lanka must first apply for an access permit that controls the use, export, and import of genetic resources and sets out the conditions upon which such use, export, and import can occur. The Draft Law aims to provide an effective mechanism for the conservation of genetic diversity, sustainable use of its components, and equitable sharing of the benefits arising from the use of genetic resources and related traditional biodiversity-related knowledge. Its key objectives are to: (a) (b)

(c)

establish processes and procedures to facilitate and regulate access to genetic resources and to share benefits arising out of such access; conserve genetic resources (the conservation of biodiversity is related to the appropriate financial mechanisms, which could include the flow of benefits to stakeholder communities, which in turn act as incentives for such communities to engage in conservation); develop an in-country capacity for research on and in relation to Sri Lanka’s genetic resources.150

The Draft Law establishes an Inter-Agency Committee as the focal point for making decisions about access to genetic resources and benefit sharing. The InterAgency Committee will comprise an interdisciplinary group of members from the public, private, scientific, and non-governmental sectors.151 Among other things, the Committee will have the power to review applications for access to genetic resources, make decisions on prior informed consent, and negotiate mutually agreed terms for benefit sharing. Notably, the Committee will monitor the activities being carried out 147

United Nations Environment Programme, Sri Lanka: State of the Environment 2001 (UNEP 2001), 83. 148 Perera (n 82) 317. 149 Draft Law titled “Genetic Resources–Access and Benefit Sharing Act of 2000” (“Draft Law”). 150 Ibid, clause 3(1). 151 Members will include secretaries of the key ministries such as Forestry and Environment, Foreign Affairs, Wildlife Conservation etc., the Director-General of IP, Attorney General, the Commissioner of Ayurveda, two members of the scientific community, and two members from the non-governmental sector.

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in terms of material access agreements and coordinate activities between institutions with regard to the grant of access to genetic resources. Under the proposed regime, any legal or natural person requiring access to genetic resources for purposes other than traditional uses must apply to the Inter-Agency Committee. Once the Committee is satisfied that the application meets relevant requirements, it may issue a permit. The application requires comprehensive information to be furnished with regard to, among other things, its purpose, details of activities and information about the genetic resources, details about the exportation of any genetic resources, and the projected adverse impact on the environment.152 Unless otherwise requested, the information included in a material access application will be kept confidential.153 Prior to making a decision, the Inter-Agency Committee will be required to determine the reasonableness of an application in its entirety or in part.154 The Draft Law applies to: (a) (b) (c)

genetic resources and derivatives of genetic resources; both in situ and ex situ sources; all species indigenous to the territory of Sri Lanka and of migratory species naturally occurring within the territory of Sri Lanka and of varieties of species non-indigenous to the territory of Sri Lanka that have developed distinct characteristics within the territory of Sri Lanka.155 The following matters are excluded from the scope of the proposed law:

(a) 152

traditional uses of genetic resources;

Here is a complete list of information that applicants will be required to furnish to the InterAgency Committee: (a) title of objectives of the proposed activity; (b) details of the activity including details of the genetic resources and derivatives to be collected, times and locations for collection, collection methodology, quantities; (c) where available details of the conservation status of the species to be collected; (d) details relating to the funding including details of any corporate or individual sponsors of the activity; (e) details of the applicant including the identity of the principal where relevant; (f) description of the persons responsible for the project and other individuals expected to work on the project; (g) details of local collaborators and details of such collaboration; (h) where relevant, details of any previous and ongoing collecting/research in Sri Lanka conducted by the applicants, their principals and other organizations and individuals connected to the project; (i) details of any previous applicants; (j) details of any export of the genetic resources (to whom, sample types, quantities, dead/live, time of export); (j) in the case of access to genetic resources and/or associated knowledge that are held ex situ, details of the relevant institutions and any agreements entered into with such institutions; (k) the possible and/or projected adverse environmental consequences resulting from the activity; (l) details of the ownership and other rights over the genetic resources and associated knowledge to which access is sought; (m) any known uses, both published and unpublished, of the biological material to which access is sought; (n) the expected results of the research programme, both scientific and financial; (o) the geographical location in which each component of the activity accrues to Sri Lanka; (p) any other information likely to be relevant to making an informed decision on access; (q) any other informed consent already obtained from the resource owner where the resource is owned by any entity other than the state. 153 Draft Law, clause 14(1). 154 Ibid, clause 14. 155 Ibid, clause 4(1).

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(b) (c)

human genetic resources; any provision in any other law that permits access to biological material (any permit, licence, or any other authorisation issued under any such law for access to biological material shall be construed as lawfully granting access to genetic resources).156

The CBD mandates that access to genetic resources shall be subject to the prior informed consent of the providing state,157 requiring that such access be granted on mutually agreed terms between the resource provider and resource seeker.158 In line with Article 15 of the CBD, the Draft Law provides that access to genetic resources shall be subject to the prior informed consent of the Inter-Agency Committee and that such access will be on the basis of an agreement (representing the mutually agreed terms) entered into pursuant to the proposed law.159 A material access agreement imposes a number of obligations on the party seeking access to genetic resources.160 Genetic resources that are subject to a material access agreement cannot be sold or supplied to third parties without the consent of the Inter-Agency Committee. Nor can such genetic resources be used for purposes other than those specified in the agreement without the Inter-Agency Committee’s consent. For any new uses of the genetic resources not specified in a material access agreement, the party seeking access is obligated to enter into a new agreement with the Inter-Agency Committee, which is responsible for granting the requisite prior informed consent and making appropriate arrangements for benefit sharing.161 The material transfer agreement will also specify a designated depository for representative samples or specimens of the genetic resource collected to be deposited. The party given access is under an obligation to notify all discoveries arising out of research involving the genetic resources or associated traditional knowledge. Such party must also provide periodic status reports of the research activities involving the genetic resources or associated knowledge. Moreover, a party that has been given access to genetic resources under a material access agreement is obligated to furnish information relating to any environmental or social impact arising from the underlying activities concerning the genetic resources. Any person or party in breach of the provisions of the material access agreement will be guilty of an offence and shall, on conviction, be liable to a fine not exceeding Rs. 500,000 or imprisonment for 12 months or both.162 In addition, according to the Draft Law, no person is allowed to export any of Sri Lanka’s genetic resources, or derivatives thereof, for research or commercial or industrial application without obtaining the prior informed consent of the Inter-Agency Committee and other than 156

Ibid, clause 4(2), (3), and (4). CDB, Art. 15(5). 158 Ibid, Art. 15(4). 159 Draft Law, clause 11(1). 160 Ibid, clause 17. 161 Ibid, clause 17(3) and (4). 162 Ibid, clause 11(2). 157

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in accordance with the provisions of the proposed law.163 Such export controls are used to limit the unauthorised access to biological resources by foreign entities. As noted above, a fundamental precondition for granting access to genetic resources in Sri Lanka is that applicants for access must agree to benefit-sharing arrangements on mutually agreed terms. Such benefits will include: (a)

(b) (c) (d) (e)

provisions to enable Sri Lankan citizens and Sri Lankan institutions to participate in activities involving the collection and use of genetic resources at all possible stages; royalties and other monetary payments; reasonable access to the genetic resources collected where such material is deposited with a depository; transfer of technology; and other monetary or non-monetary benefits.164

Benefit sharing aims to provide Sri Lanka and its citizens with an equitable share of the benefits derived from the commercial use of genetic resources, thus rewarding the efforts that go into conserving these biological resources. The Draft Law also contemplates the establishment of a Biodiversity Fund to be used for the conservation of Sri Lanka’s biological diversity, sustainable use of its components, and fair and equitable sharing among all citizens of the benefits arising from the utilisation of genetic resources.165

4.4.2 A Critical Review of the Draft Law The Draft Law on access to genetic resources addresses the basic concerns of access, collection and utilisation of genetic resources, the sharing of benefits arising from such access, and the protection of traditional knowledge. It ensures that access to Sri Lanka’s genetic resources is granted only with the prior informed consent of the relevant stakeholders and on mutually agreed terms. According to the draft, genetic materials and related traditional knowledge can only be transferred lawfully if proper benefit-sharing agreements are in place, allowing the source country to share in the proceeds derived from the commercial exploitation of the material or traditional knowledge concerned. Although the Draft Law seeks to give effect to the National Policy on Access to Biological Material and Benefit Sharing, it still remains 163

Ibid, clause 24(1). Ibid, clause 16(2). 165 Ibid, clause 18(1) read with clause 18(2). The Biodiversity Fund will receive funds from the following sources: (i) all sums of money as may be voted from time to time by Parliament for the Biodiversity Fund; (ii) all sums of money as may be received as royalties; (iii) all sums of money as may be received as access fees; (iv) all sums of money as may be received as benefits through material transfer agreements; (v) all sums of money as may be received as fines or damages awarded by courts; (vi) all sums of money as may be received for the Biodiversity Fund by way of loans, donations, gift, or grants from any source whatsoever, whether in or outside Sri Lanka. 164

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a draft. Indeed, the National Policy and the Draft Law represent the only institutional initiatives in Sri Lanka that focus explicitly on proposing a framework to regulate access to the country’s biological resources in response to the CBD. It is high time for the Sri Lankan Government to introduce the Draft Law in the form of a Bill in Parliament so that its provisions can be debated and passed into law. As noted in the previous part, the Draft Law contains several positive features. It facilitates the conservation of biodiversity, sustainable use of biological diversity, and equity in the use and benefits derived from such resources. Under the scheme proposed by the Draft Law, any person who seeks access to Sri Lanka’s genetic resources must first obtain the prior permission of the Inter-Agency Committee and abide by the terms of a material access agreement that, among other things, provides for benefit-sharing conditions. The Draft Law also recognises the significance of institutions of local governance in preserving biological diversity and providing sustainable access to such resources. Notably, the Draft Law prohibits the exportation of Sri Lanka’s genetic resources or their derivatives for the purpose of research or any commercial or industrial application without obtaining prior informed consent. But despite these positive features, there are several deficiencies and gaps in the Draft Law that require attention. First, although the Draft Law provides for securing prior informed consent, its provisions refer to consent from the Inter-Agency Committee. The provisions of the Draft Law do not provide for a mechanism for the Inter-Agency Committee to consult the local custodians of genetic resources or traditional knowledge before such prior informed consent is given. This, in our view, is a grave omission. Article 8(j) of the CBD expressly requires contracting parties to “respect, preserve, and maintain knowledge, innovations, and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity and promote their wider application with the approval and involvement of the holders of such knowledge, innovations, and practices and encourage the equitable sharing of the benefits arising from the utilisation of such knowledge, innovations, and practices.” Thus, according to the CBD, access to biological resources should be based on the prior informed consent of the country of origin and with the approval and involvement of the indigenous and local communities. This means that when granting access to genetic resources and traditional knowledge associated with such resources, it is imperative that the indigenous and local communities are at the very least consulted in the process. When any person or entity has made an application seeking access to Sri Lanka’s genetic resources, the indigenous and local communities that hold the body of traditional knowledge associated with such resources must be notified. Particulars relating to such an application have to be disclosed to them. In particular, the indigenous and local communities must be informed of the reasons for collection, modes of use, direct and indirect benefits from such use, the possible negative implications to the resources and the environment, and direct and indirect implications to the local/indigenous communities. This would enable the affected indigenous and local communities to voice their concerns or notify their dissent regarding any particular application for access. To facilitate this process, it would be appropriate for

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the indigenous and local communities to nominate a representative who can represent their respective interests at the Inter-Agency Committee. It is crucial that we respect and preserve the knowledge, innovations, and practices of the indigenous and local communities of Sri Lanka and establish minimum standards for obtaining prior informed consent with the involvement of such indigenous and local communities. We firmly believe that access to Sri Lanka’s genetic resources should not depend solely on the Inter-Agency Committee’s prior informed consent. Instead, the consent of the indigenous and local communities responsible for conserving the genetic resources and protecting the associated traditional knowledge should also be obtained in granting such prior informed consent, ensuring that they or their representatives are involved in the decision-making process. This will allow indigenous and local communities to prohibit access to resources or withdraw consent where such access is detrimental to the integrity of their natural or cultural heritage. Sri Lanka can learn from other developing countries and regional arrangements that have implemented legal frameworks regulating access to genetic resources. The Philippines is a noteworthy example. Thus, in terms of an executive order, the prospecting of biological and genetic resources will be allowed within the ancestral lands and domains of indigenous cultural communities “only with the prior informed consent of such communities; obtained in accordance with the customary laws of the concerned community.”166 The executive order creates an obligation to obtain prior informed consent from both the relevant government authority and the indigenous cultural communities. The decision of the Andean Pact (compromising Latin American countries) establishing a Common System on Access to Genetic Resources provides another good example. The decision provides that “[t]he Member Countries, in accordance with this decision and their complementary national legislation, recognise and value the rights and decision-making capacity of indigenous, AfroAmerican, and local communities with regard to their traditional practices, knowledge, and innovations connected with genetic resources and their derivatives.”167 Yet another example is the African Model Law for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources (“African Model Law”).168 It provides that “[a]ny access to biological resources, knowledge, and or technologies of local communities shall be subject to the written prior informed consent of: (i) the National Competent Authority; as well as that of: (ii) the concerned local communities, ensuring that women are also involved in decision-making.”169 The African Model Law also provides that the “[t]he National Competent Authority shall consult with the local community or communities in order to ascertain that its/their consent is sought and granted. Any 166

Executive Order No 247 of 1995, section 2(a). Andean Community Decision on a Common System on Access to Genetic Resources, Decision 391 adopted in 1996, Art. 7. 168 African Model Legislation for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources, adopted in 2000 by the Organisation of African Unity. 169 Ibid, Art. 5(1). 167

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access granted without consultation with the concerned community or communities shall be deemed to be invalid and in violation of the principle and requirement for prior informed consent as required under this Article.”170 Moreover, the African Model Law provides that “[a]ny access to a biological resource, innovation, practice, knowledge, or technology shall be subject to the prior informed consent (pic) of the concerned community or communities ensuring that women fully and equally participate in decision-making.”171 The Sri Lankan Draft Law should reflect the approaches adopted by the instruments referred to above as examples so that the country’s indigenous and local communities are consulted and are given an opportunity to actively participate in granting the requisite prior informed consent. Second, although the Draft Law requires the prior informed consent of the InterAgency Committee and provides that no person shall be granted access to any genetic resources or their derivatives without the Committee’s consent and in terms of a material access agreement, the draft does not specify how such agreement should be executed. The Draft Law does not specify whether a material access agreement should be in writing or in any particular form. We believe that the material access agreement and the grant of prior informed consent must be in writing and signed by the parties concerned. For instance, Article 7(2) of the African Model Law provides that “any access permit has to be granted through a signed written agreement between the National Competent Authority and the concerned local community or communities on the one hand, and the applicant or collector on the other hand.” Most importantly, Article 7(3) of the Model Law provides that “[t]he access permit shall only be valid if there is a written prior informed consent.” In a similar vein, the grant of access to genetic resources and their derivatives utilising written and signed agreements and written documents establishing the prior informed consent of the indigenous and local communities and the Inter-Agency Committee has to be guaranteed under the Sri Lankan Draft Law. Third, under the Draft Law, there are no direct controls on bioprospecting activities on private land in Sri Lanka. This potentially leaves a significant loophole in the system. To remedy this, the Draft Law should incorporate provisions that regulate owners of private lands or properties from negotiating and entering into access agreements with persons or entities seeking access to genetic resources or their derivatives within such private lands or properties. In particular, bioprospecting activities undertaken on private lands or properties must require the approval of the Inter-Agency Committee, which should directly control and manage the relationship between bioprospectors and private land or property owners. The Draft Law should also restrict the removal of biological resources from private lands and properties. Lastly, under the Draft Law, the Inter-Agency Committee will comprise government officials (secretaries to ministries, the Attorney General, Director-General of IP etc.), two members of the scientific community, and two members of the nongovernmental community. The Minister in charge of the subject will have the power 170 171

Ibid, Art. 5(3). Ibid, Art. 18.

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to appoint all members of the Committee.172 However, as noted earlier, the InterAgency Committee does not include membership from indigenous and local communities. This remains a concern as there is a potential that the decision-making process could be unduly influenced by disregarding the interests of the indigenous and local communities. There is a potential for conflicts of interest when deciding how benefits will be shared. There is also a potential for corruption in the decision-making process because it contemplates prior informed consent to be given by the InterAgency Committee on behalf of the indigenous and local communities. To remedy these potential issues, all interested parties should be represented in the membership of the Inter-Agency Committee, including members of local/indigenous communities or their representatives. The meaningful participation and involvement of indigenous and local communities in decision-making would thus minimise the influence of a bureaucratic hierarchy. This may help maintain a healthy balance in the membership of the Inter-Agency Committee. On the whole, the Draft Law on access to genetic resources and benefit sharing addresses the fundamental issues regarding access to and the collection and utilisation of genetic resources, as well as the sharing of benefits arising from such access and use. It emphasises the need to protect Sri Lanka’s rich biodiversity and traditional knowledge from misappropriation, especially at the hands of multinational corporations. Nonetheless, as discussed, the Draft Law could be improved. While controlling access to biological resources remains vital, more attention needs to be given to the historical contribution made by indigenous and local communities to Sri Lanka’s biodiversity and body of traditional knowledge. Perhaps even more importantly, Sri Lanka should take appropriate steps to protect its indigenous and local communities from their traditional knowledge being exploited for monetary gain without regard to their well-being and interests. The successful implementation of the CBD could help Sri Lanka ensure that the use and exploitation of its genetic resources are subject to the country’s sovereign rights. Similarly, by controlling access, the Sri Lankan Government can also establish long-term benefits and increased incentives for biodiversity conservation. We hope that the Draft Law will be reconsidered in light of the recommendations we have set out above before it is passed into law in the near or distant future.

4.5 Recommendations This chapter examined the current framework in Sri Lanka for the protection of plant varieties, farmers’ rights, and genetic resources. Our analysis of the 2001 draft of the PPV Bill, which identified gaps and deficiencies, indicates that it disregards Sri Lanka’s domestic interests, especially local farmers. The PPV Bill does not recognise the vital role farmers play in local agriculture. Nor does it recognise their longstanding customs and traditional practices. We also noted that, although Sri Lanka is not a 172

Draft Law, clause 6(2).

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signatory to the UPOV Convention or any of its Acts, most provisions of the PPV Bill are derived almost verbatim from the 1991 Act of the UPOV Convention. Such an approach is highly restrictive to farmers and ignorant of their customary and traditional practice of preserving, sharing, and resowing seeds. In light of this, we make the following recommendations. We hope that if and when the PPV Bill is passed into law, it will be revised to ensure that the interests of local farmers are better protected. First, we recommend that, for Sri Lanka to comply with Article 27.3(b) of TRIPS, it must enact a sui generis law that protects the rights of plant breeders while, at the same time, safeguarding the interests of farmers. We argue that Sri Lanka must make maximum use of the flexibilities enshrined in TRIPS to fully implement the legal and policy alternatives that may be employed to protect and meet the national interest. We suggest that Sri Lanka enact a law that gives a greater emphasis to famers’ rights. In particular, such a law must fully recognise farmers’ traditional and customary practices with respect to conserving or saving seeds, sharing seeds, and breeding new plant varieties using traditional methods. Sri Lanka will also benefit from introducing a law that specifically sets out an innocent infringer provision without which the traditional and customary practices of local farmers could be severely undermined. Any law introduced must also contain a comprehensive framework for benefit sharing, catering to situations where new plant varieties are derived from traditional varieties grown by local farmers. Finally, while the 2001 draft PPV Bill does contain a provision with regard to compulsory licensing, there are many ambiguities and defects that we have identified concerning that provision. It is crucial that a robust compulsory licensing mechanism is introduced into the law so that the interests of farmers and other public interests can be met. The provision dealing with compulsory licences must be clear and not unnecessarily restrictive. Sri Lanka should learn from the approaches adopted in other countries such as India in crafting a suitable law that better addresses the country’s needs. We note that the 2001 draft of the PPV Bill has been subject to revisions in 2011 and 2019. Neither of these revisions have been published by official sources or in official documents of the Sri Lankan Government. However, we have considered the 2011 revisions to the extent that they can be corroborated by other published academic literature and find that the said revisions to some degree have addressed the concerns we have raised about the 2001 draft PPV Bill. Whether these revisions will ultimately get into the final draft of the PPV Bill is something we will have to wait and see. Further scrutiny of the final draft of the PPV Bill may be required to determine whether previous concerns have been fully addressed and whether new ones have been introduced. That we will know for sure when these revisions are officially published by the Sri Lankan Government. We also hope that the revised Bill will soon be introduced in Parliament for debate. Two decades to finalise a draft law is simply unacceptable. Second, this chapter examined Sri Lanka’s policy on how its biological and genetic resources are accessed and exploited, explaining that the country still does not have a law regulating access to its genetic resources. We acknowledge that the draft “Genetic Resources–Access and Benefit Sharing Act of 2000” on access to genetic resources (which we have referred to as the Draft Law as it has for over 20 years remained a mere

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draft) contains several positive features. But there are many deficiencies and gaps that have to be addressed. The CBD, to which Sri Lanka is a party, mandates a prior informed consent requirement upon which access to the country’s genetic resources must be granted. Although prior informed consent is given by the country granting access, the CBD requires that such consent be given with the approval and involvement of the indigenous and local communities, which act as custodians of the genetic resources concerned. However, Sri Lanka’s Draft Law does not provide a mechanism for local and indigenous communities to participate in the grant of prior informed consent, which is granted by an Inter-Government Committee to be appointed under the law. In this regard, Sri Lanka has much to learn from the approaches adopted by other countries, such as the Philippines, and in regional arrangements or instruments, such as the Andean Pact and the African Model Law. We also found other inadequacies in Sri Lanka’s Draft Law. For instance, the Draft Law does not set out the formalities with regard to prior informed consent and material transfer agreements under which access to Sri Lanka’s genetic resources may be granted. We argue that the Draft Law must provide in clear terms that any consent and agreement required under the law must be in writing and signed by the relevant stakeholders, including the indigenous and local communities concerned. Another problem we noted was that the Draft Law does not apply to privately held land in Sri Lanka. While there should be minimal government interference in how private landowners utilise their properties, we argue that the Draft Law should incorporate provisions that regulate owners of private lands or properties from negotiating and entering into access agreements with persons or entities seeking access to genetic resources within such private lands or properties. Lastly, we also noted that the Inter-Government Committee contemplated by the Draft Law does not include membership from indigenous and local communities. We see this as a shortcoming as local and indigenous communities must participate and be involved in the process of granting access to genetic resources, especially when such resources comprise traditional knowledge that local/indigenous communities have held for centuries. To ensure greater participation, accountability, and transparency, we recommend that all interested parties be represented in the membership of the Inter-Agency Committee, including members of local communities or their representatives. Sri Lanka is a “natural jewel” in Asia, rich in biodiversity and natural resources. It is also an agricultural nation that relies on traditional methods and conventional techniques in farming and cultivation. For Sri Lanka to thrive as a modern nation, there is a significant need to engage in research and innovation so that its biological and natural resources can benefit its people and farmers can develop more efficient and resilient agricultural methods. However, it is crucial to ensure that the country’s biological and natural resources are accessed in a sustainable and equitable manner. It is equally important to ensure that the traditional and customary practices of local farmers are upheld and protected. In order to achieve these goals, we hope that a comprehensive and robust system of sui generis laws will be introduced urgently. We also hope that our reflections on the present draft laws as set out in this chapter will benefit the policymakers and legislators of Sri Lanka.

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References 1. Amarasinghe K (2018) Bio-piracy and its impact on biodiversity: a special review on Sri Lankan context. J Environ Prot 268 2. Athukorala P et al (2017) The Sri Lankan economy: achievements, prospects, and policy issues. In: Athukorala P et al (eds) The Sri Lankan economy: charting a new course. Asian Development Bank 3. Blakeney M et al (2020) Agricultural innovation and the protection of traditional rice varieties: Kerala a case study. Front Sustain Food Syst 3:1. https://www.frontiersin.org/article/10.3389/ fsufs.2019.00116 4. Byiers B et al (2015) Manufacturing progress? Employment creation in Sri Lanka. Overseas Development Institute 5. Central Bank of Sri Lanka (2020) Economic and social statistics of Sri Lanka 2020 6. Cooray MDM (2017) Reconciling breeder’s rights and farmer’s rights for food security in Sri Lankan context: a comparison with India. In: Proceedings of 10th International Research Conference, General Sir John Kotelawala Defence University, Sri Lanka. http://ir.kdu.ac.lk/ handle/345/1662 7. Correa CM (1998) Signposts to sui generis rights 5: TRIPS and the protection of community rights. https://grain.org/en/article/118-signposts-to-sui-generis-rights-5-trips-and-the-pro tection-of-community-rights 8. Dawoodbhoy Z (2019) Why Sri Lanka urgently needs plant patents to protect its natural wealth. Roar Media. https://roar.media/english/life/environment-wildlife/ending-biopiracy-sri-lanka 9. Dutfield G (2001) Biotechnology and patents: what can developing countries do about article 27.3(b)? Bridges 5:17 10. Dutfield G (2004) Intellectual property, biogenetic resources and traditional knowledge, intellectual property, biogenetic resources and traditional knowledge. Earthscan 11. Esquinas-Alcázar J, Hilmi A, Noriega IL (2012) A brief history of the negotiations on the international treaty on plant genetic resources for food and agriculture. In: Halewood M, Noriega IL, Louafi S (eds) Crop genetic resources as a global commons: challenges in international law and governance. Routledge 12. Fernandopulle S (2017) Sri Lanka affected by bio piracy menace. Daily Mirror. https://www. dailymirror.lk/News-Features/Sri-Lanka-affected-by-bio-piracy-menace/131-141649 13. Gotor E, Caracciolo F, Scafetti F (2019) On the international flow of plant genetic resources: forecasting the impacts of an evolving legal framework on CGIAR genebanks. Biodiversity International 14. Hirimuthugodage D (2011) Trade related intellectual property rights (TRIPS) agreement and the agriculture sector in Sri Lanka, Asia–Pacific Research and Training Network on Trade Working Paper Series No 92 15. Hirimuthugodage D, Samaratunga PA (2016) Intellectual property rights in protecting new plant varieties and farmers’ traditional knowledge: the case of rice in Sri Lanka, Institute of Policy Studies of Sri Lanka, Working Paper Series No 24. https://www.ips.lk/wp-content/upl oads/2017/01/Intelletual-Property.pdf 16. Irangani MKL (2020) Sustainable principles of indigenous Chena cultivation and management in Sri Lanka: lessons for contemporary agricultural problems. Int J Sci Res Publ 10:46 17. Jordens R (2005) Progress of plant variety protection based on the international convention for the protection of new varieties of plants (UPOV Convention). World Patent Inf 27:232 18. Kamardeen N (2013) Proposed plant variety legislation in promoting economic growth. Sunday Times. https://www.sundaytimes.lk/131110/business-times/proposed-plant-varietylegislation-in-promoting-economic-growth-68091.html 19. Kariyawasam K (2005) The recent law reforms and plant intellectual property law in Sri Lanka: compliance with the TRIPS and CBD. Aust J Asian Law 7:169 20. Kariyawasam K (2006) Protection of plant genetic resources in Sri Lanka. Ph.D. Thesis, Griffith University

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21. Ministry of Agriculture (2019) Sri Lanka: overarching agriculture policy 22. Ministry of Environment and Wildlife Resources (2020) National policy on access to biological material and fair and equitable benefit sharing 23. Ministry of Finance (2020) Sri Lanka labour force survey: annual report–2019 24. Ministry of Finance (2020). Sri Lankan labour force statistics quarterly bulletin: Sri Lanka labour force survey 1st quarter–2020. http://www.statistics.gov.lk/Resource/en/LabourForce/ Bulletins/LFS_Q1_Bulletin_2020 25. Ministry of Forestry and Environment (1999) Biodiversity conservation in Sri Lanka: a framework for action. Ministry of Forestry and Environment. https://www.cbd.int/doc/world/lk/lknbsap-01-en.pdf 26. Ministry of Forestry and Environment (2001) Status report on convention on biological diversity in Sri Lanka: second national report 2000. https://www.cbd.int/doc/world/lk/lk-nr-02-en.pdf 27. Nguyen HBH, Weckström Lindroos K (2021) The regulation of farmer’s privilege under Vietnamese IP law and the law of the European union. Int Rev Intellect Property Competition Law 52:677 28. Office of the Cabinet of Ministers (2020) Press briefing of cabinet decision taken on 14 Dec 2020. http://www.cabinetoffice.gov.lk/cab/index.php?option=com_content&view=art icle&id=16&Itemid=49&lang=en&dID=10804 29. Perera A (2011) Plant variety protection in Sri Lanka and its impact on Sri Lanka’s agricultural economy: a critical analysis. J World Intellect Property 14:301 30. Perera A (2017) Legal framework for plant breeders’ rights in Sri Lanka: a review. European Intellect Property Rev 39:286 31. Perera A (2021) Searching for a balance: realisation of farmers’ rights in Sri Lanka: a case study on ownership and stewardship. Eur Intellect Property Rev 43:665 32. Perera A, Adhikari K (2020) From neglect to protection: recognising the importance of farmers, varieties in Sri Lanka. In: Adhikari K (ed) Intellectual property law and plant protection. Routledge 33. Ragavan S, O’Shields JM (2007) Has India addressed its farmers’ woes? A story of plant protection issues. Georgetown Int Environ Law Rev 20:97 34. Rathnasinghe D et al (2019) True Sri Lankan taste food outlets: promoting indigenous foods for healthier diets. Nutr Exch. www.ennonline.net/nex/12/truesrilankantaste 35. Sahai S (2003) India’s Plant Variety Protection and Farmers Rights Act, 2001. Curr Sci 84:407 36. Spectar JM (2002) Patent necessity: intellectual property dilemmas in the biotech domain and treatment equity for developing countries. Houston J Int Law 24:277 37. Strauss DM (2009) The application of TRIPS to GMOS: international intellectual property rights and biotechnology. Stanford J Int Law 45:287 38. United Nations Environment Programme (2001) Sri Lanka: state of the environment 2001. UNEP. http://www.rrcap.ait.ac.th/Publications/srilanka%20soe.pdf 39. World Bank (2021) Sri Lanka: share of economic sectors in the Gross Domestic Product (GDP) from 2010 to 2020. https://www.statista.com/statistics/728539/share-of-economic-sectors-inthe-gdp-in-sri-lanka/

Chapter 5

Trade Marks

The focus of this chapter is exclusively on the law governing the protection of registered trade marks in Sri Lanka. Trade marks communicate important commercial information to consumers and by doing so make markets efficient. Primarily, they indicate the trade origin of goods or services but can do more–such as guaranteeing the quality of the underlying products and advertising them. For this reason, trade marks constitute an important intangible asset worthy of protection under the law. This chapter evaluates the trade mark provisions of the Intellectual Property Act 2003 (“IP Act”),1 which governs the statutory protection of intellectual property (“IP”) in Sri Lanka. The main focus is on the extent to which the present law complies with international standards and caters to modern expectations while addressing domestic interests. Sri Lanka is a member of the World Trade Organization (“WTO”) and must comply with the provisions of the Agreement on the Trade-Related Aspects of Intellectual Property (“TRIPS”).2 Sri Lanka is also a member of the Paris Union and must give effect to the provisions of the Paris Convention on the Protection of Industrial Property (“Paris Convention”).3 Both TRIPS and the Paris Convention contain several provisions dealing with the protection of trade marks. Collectively these provisions set out the minimum standards of protection that members of the WTO/Paris Union must guarantee under their national laws in respect of trade marks. Besides meeting Sri Lanka’s obligations under international IP law, complying with the minimum standards of trade mark protection is strategically important for Sri Lanka to attract quality foreign investment and businesses and promote innovation in how local businesses engage with consumers within the country and in international 1

Intellectual Property Act No 36 of 2003 (“IP Act”). Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). 3 Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979 (“Paris Convention”). 2

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_5

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markets. However, in considering such compliance, the law must address domestic interests by using the various flexibilities made available under TRIPS and the Paris Convention. First, this chapter provides a brief introduction to the history and development of statutory trade mark law in Sri Lanka, which is helpful in appreciating how this area of law has evolved since colonial times. Second, the chapter deals with the acquisition of trade mark rights through registration. This part of the chapter places emphasis on the subject matter of protection by focusing on what can be registered as trade marks. Third, the chapter considers the nature and scope of trade mark rights. The discussion about the nature of trade mark rights considers the implications of characterising such rights as a positive right, as the Sri Lankan courts have done. The discussion on the scope of trade mark rights focuses on infringement provisions, particularly whether well-known marks are sufficiently protected in Sri Lanka. The chapter ends by making specific recommendations to reform the provisions of the IP Act dealing with the subject matter, nature, and scope of trade mark protection to better comply with international standards, meet the expectations of the modern world, and make better use of flexibilities in promoting domestic interests.

5.1 The Evolution of Trade Mark Law The first signs of a trade mark registration system appeared when Sri Lanka, formerly Ceylon, was under the rule of the British Empire (1796–1948). Before the British occupation, Sri Lanka was a colony of both the Portuguese (1505–1658)4 and the Dutch (1658–1796). However, there is no indication that a law relating to trade marks was introduced during that period. The following extract from an early judicial decision sheds some light on the history of trade mark law: The right to a trade name or trade mark, and its protection against other traders, does not appear to have been considered by writers on Roman Dutch Law, probably because the necessity for such consideration had in those days not arisen. Neither does it appear to have been considered in England until comparatively recent times, and it is not until the commencement of the nineteenth century that we find the English Courts of Equity interfering at the suit of one trader against another to prevent a person from ‘passing off’ his goods as the goods of another.5

The first law on trade marks in the country can be traced back to a statute enacted during British rule in 1888.6 The first trade mark, “Aurora,” was registered on the 28th day of March a year later.7 Subsequently, the Trade Marks Ordinance 1925 4

The Portuguese played no role in the development of Sri Lanka’s legal framework and allowed existing local laws to continue during their rule. 5 Kapadiya v Mohamad 20 NLR 314, 316. 6 Trade Marks Ordinance 1888. 7 D Llewelyn, Invisible Gold in Asia: Creating Wealth through Intellectual Property (Marshall Cavendish 2010), 241.

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was introduced, which replaced the 1888 ordinance and was based on the Trade Marks Act 1919 that was applicable in the United Kingdom. Later on, to deal with the special exigencies of the Second World War, the Patents, Designs, Copyright, and Trade Marks (Emergency) Ordinance 1942 and the Patents, Designs, and Trade Marks (Neuchetal Agreement) Ordinance 1949 were enacted. After Sri Lanka gained its independence in 1948, the Trade Marks Act 1964 was enacted by the Sri Lankan legislature. The law was primarily based on the Trade Marks Act 1938, applicable at the time in the United Kingdom. However, this statute never came into force, resulting in the older 1925 ordinance continuing to apply.8 It was not until the late 1970s that the Code of Intellectual Property Act 1979 (“Code of IP”) was enacted to “revise, consolidate, amend, and embody in the form of a code the law relating to copyright, industrial designs, patents, marks, trade names, and unfair competition and provide for better registration, control, and administration.”9 The Code of IP marked a turning point as it repealed all previous enactments dealing with IP and was based on the model laws10 prepared by the World Intellectual Property Organization (“WIPO”),11 thus severing all ties with the laws of Britain that were previously followed in the country. Much later, in 2003, the Code of IP too was repealed. This was achieved by enacting the IP Act, the objective of which was to align Sri Lanka’s IP framework with the country’s obligations under TRIPS. Although originally several statutes relating to trade marks were introduced during the British rule, today, the law applicable in Sri Lanka is largely harmonised with the rest of the world. A thorough analysis of the key statutory provisions dealing with the subject matter, nature, and scope of trade mark protection is undertaken below. The analysis will reveal that some provisions in the IP Act dealing with the registration and protection of marks are not aligned with TRIPS standards. Nor do they reflect the modern perceptions of trade and consumers. Whereas a few other provisions may hinder domestic interests.

5.2 Registrable Trade Marks The law governing registered trade marks is found in Part V of the IP Act, comprising Chaps. XIX and XXIX and sections 101 to 142. Trade mark rights under the IP Act are acquired through registration and held for consecutive periods of ten years subject to renewal.12 Section 102(1) of the IP Act provides that “[t]he exclusive right to a 8

DM Karunaratna, A Guide to the Law of Trademarks and Service Marks in Sri Lanka (2nd edn, Sarvodaya Vishva Leka 2007), 7. 9 Code of Intellectual Property Act No 52 of 1979, Preamble. 10 WIPO has published model laws in the key areas of intellectual property including trade marks. See WIPO, Model Law for Developing Countries on Marks, Trade Names, and Acts of Unfair Competition (BIRPI 1967). 11 DM Karunaratna, Issues Related to the Enforcement of IP Rights: National Efforts to Improve Awareness of Decision Makers and Education of Consumers, WIPO/ACE/3/5 (26 April 2006), 2. 12 IP Act, sections 118 and 119.

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mark conferred by this Part shall be acquired, subject to the succeeding provisions, by registration.” As such, registration is vital in acquiring exclusive rights in respect of trade marks. This could be contrasted with some jurisdictions, such as the United States,13 where prior use of a trade mark is a precondition for registration. Of course, unregistered trade marks are protected by the common law of Sri Lanka. However, the full extent of protection under the IP Act is only conferred to registered trade marks.14 In the following part of this chapter, we consider the subject matter of trade mark protection or what can be protected as a registered trade mark.

5.2.1 Signs Capable of Being Registered as a Trade Mark Section 101 of the IP Act defines a trade mark as “[a]ny visible sign serving to distinguish the goods of one enterprise from those of another enterprise.” With regard to services, section 101 refers to “service marks,” defined as “any visible sign serving to distinguish the services of one enterprise from those of another enterprise.”15 Section 102(3) provides a non-exhaustive list of signs that may comprise a mark within the meaning of the statute: A mark may consist in particular, of arbitrary or fanciful designations, names, pseudonyms, geographical names, slogans, devices, reliefs, letters, numbers, labels, envelopes, emblems, prints, stamps, seals, vignettes, selvedges, borders and edgings, combinations or arrangements of colours and shapes of goods or containers.

It is notable immediately from the provisions set out above that only visible signs can be registered as trade marks in Sri Lanka. The non-exhaustive list of marks referred to in section 102(3) are examples of such visible signs. As a result, signs that

13 See Lanham Act 1946, 15 USC § 1051(1) (“The owner of a trademark used in commerce may request registration of its trademark on the principal register...”). See also D Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets (3rd edn, Cengage Learning 2009), 23 (“In most foreign countries, trademark rights arise from registering the mark with a governmental entity. The law in the United States is quite different: Trademark rights arise from adoption and use of a mark, not from registration”). 14 For instance, no trade mark can be registered under the IP Act if such mark conflicts with an existing unregistered mark (section 103(1)(b)). This is a subtle way by which the IP Act extends protection to unregistered marks. However, an action for infringement under the IP Act cannot be brought unless a mark is registered under the IP Act. In cases of unregistered marks, a common law action based on the tort of passing off would provide the appropriate cause of action. 15 In this chapter, a reference to “trade mark” or “mark” includes a reference to “service mark” where the context requires a broader reading.

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do not have a visually perceptible form, such as sound,16 smell,17 and even taste,18 are incapable of being registered as trade marks. This, however, is not inconsistent with Sri Lanka’s obligations under Article 15.1 of TRIPS. Article 15.1 provides that “[a]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.” However, the last sentence of that provision provides the following qualification—“Members may require, as a condition of registration, that signs be visually perceptible.” Accordingly, WTO members may choose to incorporate the visual perceptibility requirement as a precondition for trade mark registration under their national laws, as in the case of Sri Lanka. Also notable is that TRIPS does not require all signs that are distinctive to be registered as trade marks. Apart from the possibility of imposing the optional requirement of visual perceptibility, Article 15.2 of TRIPS permits WTO members to deny trade mark registration on “other grounds.” Indeed, Article 6(1) of the Paris Convention also affords states the same freedom to deny the registration of marks under domestic legislation—“[t]he conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.” In the Sri Lankan context, sections 103 and 104 of the IP Act set out specific grounds upon which a trade mark can become inadmissible for registration. Section 103 deals with objective (or absolute) grounds for denying registration, whereas section 104 deals with relative grounds.

5.2.2 Inadmissibility of Marks on Objective Grounds Section 103(1)(a)–(m) of the IP Act lists several objective grounds upon which an application to register a trade mark can be denied. These objective grounds are identical to the grounds for denying trade mark registrations under the Code of IP, which was previously the applicable law in Sri Lanka. It also appears that the basis for section 103(1) of the IP Act, and the corresponding provision in the 16

Sound marks have been registered in a number of jurisdictions. For instance, in India, Sri Lanka’s closest neighbour, Yahoo!’s sound mark described as “the sound of a human voice yodelling the word YAHOO!” was registered in 2008. Similarly in Singapore, a number of sound marks have been registered–e.g., Metro-Goldwyn-Mayer’s famous Lion Roar. Such registrations have been made possible because unlike in Sri Lanka, in these jurisdictions a trade mark is capable of getting onto the register provided the mark is capable of being represented graphically. See Indian Trade Marks Act 1999, section 2(zb) and Singapore Trade Marks Act 1998, section 2(1). 17 Smell marks are more difficult to register. The first smell mark to be registered in the United States in 1990 was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” for sewing thread and embroidery yarn. More recent smell marks include the bubble gum scent for sandals, the scent of strawberry for toothbrushes and strawberry, cherry and grape scents for engine lubricants. 18 Taste marks are by far the most challenging to register, as consumers are not likely to find them distinctive. For instance, an attempt by Eli Lilly & Co, a pharmaceutical company, to register the taste of artificial strawberry flavour for pharmaceuticals was rejected in the European Union.

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Code of IP, was section 5(1) of the WIPO Model Law for Developing Countries on Marks, Trade Names and Acts of Unfair Competition (“WIPO Model Law on Trade Marks”).19 Identical, if not similar, grounds, sometimes referred to as absolute grounds, may be found in trade mark statutes around the world.20 These grounds are considered in detail below.

5.2.2.1

Non-distinctive Signs

Grounds (a)–(d) specified in section 103(1) of the IP Act deal with marks that lack distinctiveness. Since trade marks are defined as visible signs capable of distinguishing the goods or services of one enterprise from those of others, unless a mark is distinctive, it will not be admissible for registration. These grounds touch on numerous types of non-distinctive marks, which are set out below: Ground (a): Marks that comprise shapes or forms imposed by the inherent nature of the goods or services or their industrial function. Ground (b): Marks that consist exclusively of a sign or indication which may serve, in the course of trade, to designate the kind, quality, quantity, intended purpose, value, place of origin or time of production, or supply, of the goods or services concerned. Ground (c): Marks that consist exclusively of a sign or indication which has become, in the current language or the bona fide and established practices of trade in Sri Lanka, a customary designation of the goods or services concerned. Ground (d): Marks that are incapable of distinguishing the goods or services of one enterprise from those of another enterprise. The analysis of ground (a) must begin with the general observation that shapes, subject to fulfilling the requirement of distinctiveness, can be registered as trade marks.21 However, marks that comprise shapes imposed by the underlying product’s inherent nature or shapes required to perform a technical or industrial function related to the product are not admissible for registration as trade marks. This is an important ground to maintain fair competition. If one registers a mark that comprises the inherent shape of the product to which it attaches, it would effectively curtail competition. A hypothetical example that illustrates the concerns underlying this ground of denial is the registration of the shape of a banana as a trade mark for bananas. On the one hand, it is difficult to conceive examples in which a proprietor might, in reality, wish to choose a mark comprising the inherent shape of the underlying product, as such a mark is less likely to be distinctive. On the other hand, granting exclusive rights to a mark comprising the inherent shape of the underlying product for which the mark is intended for use could lead to anti-competitive 19

WIPO, Model Law on Trade Marks (n 10) 24. These grounds for denying the registration of trade marks are also known as absolute grounds. For instance, trade marks statutes in the United Kingdom (Trade Marks Act 1994, section 3), India (Trade Marks Act 1999, section 9) and Singapore (Trade Marks Act 1998, section 7) refer to these grounds as absolute grounds. 21 Popular examples of shape marks include the shape of the Coca-Cola bottle, the distinctive shape of Toblerone and the front grille design of Chrysler’s Jeep. 20

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outcomes. After all, such a hypothetical registration would legally entitle only the proprietor of the shape mark to trade in the underlying product. A third party’s act of trading in the said product will conflict with the registered shape mark. Of course, in the hypothetical example of the registered banana-shaped mark for bananas, even assuming that the trade mark proprietor institutes an infringement action against a third-party trader of bananas, the latter is bound to succeed as no consumer would consider the inherent shape of a product to indicate its origin. As such, there is no rational basis to justify the registration of marks that comprise the inherent shape of the underlying product. In any case, it must be avoided to maintain fair competition between traders of identical products. Similar concerns arise about marks that consist of a shape entailing an industrial or technical function. For instance, if a shape mark is registered in circumstances where the underlying shape or design is required to achieve a particular technical result, trade mark registration would effectively eliminate anyone but the proprietor of the mark from using the means of attaining that technical result. In effect, this could create a monopoly over the technology concerned. In other words, trade mark protection would serve as an alternative means of exercising exclusivity over technology by enterprises whose patents have expired. The dual that evoked global interest between Philips and Remington22 is an ideal example of this situation. Given the above policy reasons, ground (a) plays a crucial role in maintaining fair competition. It is a ground of denial that is sensible to have under domestic law and is not inconsistent with the provisions of TRIPS or the Paris Convention. Grounds (b)–(d) may be considered together as they collectively protect the interests of third parties in ensuring that marks that are non-distinctive remain in the public domain–i.e., free for use by all. Ground (b) is specific to signs that may be used to describe a characteristic or feature of a product or the intended purpose of a product. Consumers are unlikely to find such signs indicative of the origin of the goods or services to which they attach. Similarly, ground (c) disqualifies signs that have become a customary designation for the underlying goods or services in the current language or as a matter of trade practice from being registered as trade marks. Again, consumers are unlikely to consider such signs as designating the origin of the underlying goods or services. No one trader ought to have exclusivity in using signs such as those described in grounds (b) and (c) above. Therefore, such signs must remain in the public domain for use by all traders. Ground (d) is a catchall provision that generally prohibits nondistinctive signs from being registered as trade marks. Arguably, given how a trade mark is defined in the IP Act, as a sign serving to distinguish the goods or services of one enterprise from those of another enterprise,23 there is an overlap between the 22

The ruling of the Court of Justice of the European Union (“CJEU”) in Case C-299/00, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-05475 and the judgement of the Full Federal Court of Australia in Koninklijke Philips Electronics NV v Remington Products Australia Pty Limited [2000] FCA 876 illustrate the public interest concerns of registering shape marks that entail a technical function. 23 IP Act, section 101.

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definition of marks and ground (d). In other words, signs that are inadmissible under ground (d) are, in fact, not even trade marks, to begin with. Since Article 15.1 of TRIPS only obligates the protection of distinctive signs, it is clear that the grounds set out in section 103(1)(a)–(d) of the IP Act are consistent with TRIPS. In any case, a consideration of these grounds reveals that they are a reproduction of the grounds set out in section 5(1)(a)–(d) of the WIPO Model Law on Trade Marks.24

5.2.2.2

Signs Contrary to Morality and Public Order or Intended for Use in Respect of Prohibited Goods or Services

Grounds (e) and (l) may be considered together as they deal with prohibitions on registering marks contrary to domestic interests. Accordingly, the following marks are disqualified from registration: Ground (e): Marks that consist of any scandalous design or sign contrary to morality or public order or which, in the opinion of the Director-General of IP or of any court to which the matter may be referred to, as the case may be, is likely to offend the religious or racial susceptibilities of any community. Ground (l): Marks the registration of which has been sought in respect of goods or services the trading of which is prohibited in Sri Lanka. Ground (e) deals with signs disqualified from registration due to reasons that relate to the nature of the sign. Thus, signs regarded as immoral or disparaging to a particular community will not qualify for registration. In contrast, ground (l) prohibits the registration of signs intended for use in relation to goods or services, the trading of which has been prohibited under the law. Arguably, ground (l) deals with signs disqualified from registration owing to the nature of the underlying goods or services. After all, when the law bans the trading of a particular class of goods or services, it is often done based on the nature or characteristics of such goods or services–e.g., goods or services that are harmful to human health or the environment. It must be noted that ground (e) in substance is derived from section 5(1)(e) of the WIPO Model Law on Trade Marks.25 But ground (l) does not have a corresponding provision in the model law. In fact, between the two grounds, ground (l) might be inconsistent with TRIPS and the Paris Convention. Article 15.4 of TRIPS explicitly provides that “[t]he nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.” The Paris Convention contains the same provision.26 Accordingly, ground (l) is inconsistent with TRIPS and the Paris Convention insofar as it denies the registration of signs due to the nature of the underlying goods or services. As was noted before, when the trading of goods/services is prohibited under the law, it is often done based on the nature of such goods/services. Accordingly, at least indirectly, the disqualification 24

WIPO, Model Law on Trade Marks, (n 10) 24. Ibid. 26 Paris Convention, Art. 7. 25

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set out in ground (l) is inconsistent with Article 15.4 of TRIPS/Article 7 of the Paris Convention. Despite being purely a matter of academic interest, it is worth considering the rationale behind Article 15.4 of TRIPS/Article 7 of the Paris Convention. After all, if certain goods or services are prohibited in a country, what is the utility of permitting the registration of marks that relate to such prohibited goods or services? The rationale for Article 15.4 of TRIPS (and Article 7 of the Paris Convention) is the necessity to eliminate any form of discrimination with regard to the availability of trade mark protection based on the type of goods or services concerned. In this regard, Carlos Correa, in his commentary on TRIPS, has suggested that “Article 15:4 would not allow a Member to deny registration of trademarks for products which are not in the public interest, such as being harmful to health.”27 The position pertaining to trade marks must be contrasted with that of patents, where WTO members are allowed to deny patent protection in respect of an invention (which often comprises a patented product or a process that leads to a product), the commercial exploitation of which must be prohibited in the interest of morality or ordre public.28 Accordingly, the prohibition under patent law is much broader than for trade marks. In sum, what is clear from this discussion is that ground (l) set out in section 103(1) of the IP Act is contrary to the letter and spirit of both TRIPS and the Paris Convention. As such, we recommend that ground (l) be removed in its entirety. Thus, the law must permit the registration of signs as trade marks, as long as they meet the criteria for distinctiveness, even when the underlying goods or services are prohibited under the law. But this does not mean that governments cannot regulate goods or services sold/supplied under a trade mark. In this regard, it has been observed: These provisions do not, of course, mean that governments cannot regulate the sale of goods bearing trademarks. […] The sale, marketing or use of socially sensitive products such as alcohol, firearms, pharmaceuticals and hazardous chemicals is usually regulated by specific areas of law other than IP, such as regulations on medicines, weapons and chemicals, and in some cases, criminal law or general civil law. Enterprises must comply with these laws before they can legitimately sell or use such products. Trademark protection only protects the enterprise’s signs against confusing use by its competitors on similar products–it does not amount to a license to sell the product–and therefore a mark may not be refused registration on grounds of the nature of the goods or services to which the mark is to be applied.29

Thus, our recommendation to remove ground (l) from section 103(1) of the IP Act will not prevent the Sri Lankan Government from regulating, if not prohibiting the sale of, any product or class of products on public interest grounds.

27

CM Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (2nd edn, Oxford University Press 2020), 168–169. 28 See TRIPS, Art. 27.2. Ordre public means more than public order. It embraces public policy considerations. 29 A Taubman, H Wager and J Watal (eds), A Handbook on the WTO TRIPS Agreement (2nd edn, Cambridge University Press 2020), 66–67.

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Deceptive Signs

Ground (f) prohibits the registration of marks that are “likely to mislead trade circles or the public as to the nature, the source, geographical indication, the manufacturing process, the characteristics, or the suitability for their purposes, of the goods or services concerned.” This ground of inadmissibility, which is also found in section 5(1)(e) of the WIPO Model Law on Trade Marks,30 is primarily aimed at protecting traders and consumers from marks that could be misleading as to certain characteristics of the underlying products. For example, a sign that could mislead consumers about the quality of a product, such as “Marlboro Lights” (“Lights” signifying a tobacco product that is less harmful than it truly is), can be prohibited under this ground. A notable difference between the provision in the WIPO Model Law on Trade Marks and its corresponding provision in the IP Act is that the latter includes the words “geographical indication.” Thus, a mark that is likely to mislead trade circles or the public as to the geographical indication of the underlying product can be denied registration. Arguably, denying the registration of marks misleading as to the “source” of the underlying goods/services could have achieved the same purpose, as source includes geographical source. However, it is possible that the specific reference to signs that mislead as to the geographical indication of a product was made to ensure that Sri Lankan law complies with provisions in TRIPS that deal with geographical indications.31 Another notable observation regarding this ground is that the elements upon which deception could be established are identical, with only minor variations, to the elements of deception that the Paris Convention regards as constituting unfair competition.32 Accordingly, it may be posited that the aim of ground (f) in section 103(1) of the IP Act, among other things, is to prevent the registration of marks that are likely to cause unfair competition.

5.2.2.4

Signs that Resemble Names: Personal, Corporate, and Geographic

Grounds (g) and (h) may be considered together as they both deal with prohibitions concerning the registration of names as trade marks. Under these grounds, the following types of marks must be excluded from registration: Ground (g): Marks that do not represent in a special or particular manner the name of an individual or enterprise. Ground (h): Marks that are, according to their ordinary signification, a geographical name or surname.

30

WIPO, Model Law on Trade Marks (n 10) 24. This point is considered later in Chap. 6 that deals with geographical indications. 32 Paris Convention, Art. 10bis(3)(iii). 31

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Ground (g) deals with names in general, while ground (h) deals specifically with geographical names and surnames. Both these grounds are problematic. Notably, none of these grounds can be found in the WIPO Model Law on Trade Marks, the provisions of which have been generally followed in framing the former Code of IP and the current IP Act. The validity of ground (g) is somewhat questionable in view of modern practices relating to assessing the distinctiveness of marks. The IP Act does not specify as to what “represent in a special or particular manner” means. Dr. DM Karunaratna, a former Director-General of Sri Lanka’s National Intellectual Property Office (“NIPO”), has written a helpful commentary on the provisions of the IP Act, in which he makes the following observation about this ground of inadmissibility: A name must be represented in a special and particular manner. An objection under this section can be raised only where the name is not so represented or, in other words, where the name is represented in the ordinary manner. A name simply printed, typewritten or written in ordinary handwriting may not be treated as represented in a special or particular manner. It should also be observed that the difference between the two words “special” and “particular” in this context is negligible. What is material is whether or not the name is represented in the ordinary manner. The logic behind this principle appears to be the protection of the interests of others who may have the same name and are likely to innocently use it.33

This, however, is problematic in today’s context. First, it assumes that names per se, or names written in their ordinary form, are non-distinctive. The prohibition assumes that names must be represented in a special or particular manner to be regarded as distinctive.34 In support of this view, Karunaratna has cited a 1915 decision of the English High Court,35 which interpreted section 9(1) of the UK Trade Marks Act 1905 that contained a similar provision. Although this provision was carried forward to the subsequent 1938 statute on trade marks, the Trade Marks Act 1994, which was enacted primarily to give effect to the EU Trade Marks Directive of 1988,36 no longer contains such a provision. Nor does such a provision exist in other common law jurisdictions like India, Singapore, and Australia. As such, the utility of this prohibition in the current context is somewhat questionable. Second, Article 15.1 (second sentence) of TRIPS provides examples of signs that are capable of constituting a trade mark, which explicitly includes, among other things, personal names. Accordingly, WTO members are obligated to accept 33

Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 53. Ibid. See also DM Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Sarasavi Publishers 2010), 199 (“The expression ‘special or particular manner’ has been held to mean an uncommon manner of expression which strikes the eye rendering the mark distinctive”). 35 British Milk Products Co’s Application [1915] 2 Ch. 202. 36 First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks [1989] OJ L 40/1 (“Trade Marks Directive of 1988”). The 1988 Directive was repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to Approximate the Laws of the Member States Relating to Trade Marks [2008] OJ L 299/25 (“Trade Marks Directive of 2008”). The 2008 Directive was repealed by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to Approximate the Laws of the Member States Relating to Trade Marks (Recast) [2015] OJ L 336/1 (“Trade Marks Directive of 2015”), which came into force on 15 January 2019. 34

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for registration signs that comprise names provided they meet the distinctiveness criteria–subject, of course, to any “other grounds” of inadmissibility that might be imposed under domestic law pursuant to Article 15.2 of TRIPS. Accordingly, a blanket prohibition against the registration of names unless represented in any special or particular manner runs counter to Article 15.1 of TRIPS. It simply cannot be assumed that names in their ordinary form cannot be distinctive when used in connection with a certain class of goods or services.37 Third, Article 15.1 of TRIPS incorporates the distinctiveness requirement in relation to the registration of trade marks. Thus, although Article 15.2 of TRIPS provides that “[p]aragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds,” the phrase “other grounds” referred to in that provision means grounds other than those specified in Article 15.1. In essence, any ground of inadmissibility relating to the distinctiveness criteria must comply with Article 15.1 of TRIPS. Accordingly, the general freedom that WTO members have in denying the registration of marks does not extend to rejections premised on the distinctiveness criteria. As such, ground (g) of section 103(1) is inconsistent with Sri Lanka’s obligations under Article 15.1 of TRIPS. Ground (h), which prohibits the registration of signs that are geographical names or surnames in their ordinary signification, is equally controversial. Karunaratna, in his commentary, has suggested that: The definition of the phrase “according to its ordinary signification” requires attention. […] It may mean “the understanding” of the ordinary people of the country. In other words, it may be described as the ordinary meaning of the particular word as understood by the average consumer concerned.38

Then, he goes on the state that “[i]f the word has any reference to a place in its primary and obvious meaning it becomes an inadmissible geographical name within the meaning of this section.”39 The problem with this prohibition is that it requires signs that are in their ordinary signification a geographical name or surname to be denied registration. However, merely because a sign in its ordinary signification is a geographical name or surname, that alone does not suggest that it is incapable of functioning as a trade mark. Take, for instance, Mont Blanc. In its ordinary signification, Mont Blanc refers to the highest peak in the European Alps range. However, “Montblanc” functions as a trade mark for, among other things, pens and clothing accessories. Interestingly, from Montbanc’s official website, it appears that the name Montblanc was established in 1909 and that, according to popular rumour, “it took place during a card game when a relative of one of the partners drew an inspired analogy between the pen, which had become the pinnacle of writing instruments, and the Mont Blanc, the most majestic 37

For instance, the CJEU in Case C-404/02 Nichols plc v Registrar of Trade Marks [2004] ECR I-08499, following a reference from the English High Court, ruled that the distinctives of surnames must be assessed in the same way as any other sign. 38 Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 54. 39 Ibid. See also Karunaratna, Elements of the Law of IP (n 34) 200.

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and highest peak in the Alps.”40 In other words, Montblanc was adopted as a trade mark precisely because of its geographic and natural significance. Accordingly, a blanket prohibition on the registration of signs that in their ordinary signification are geographical names does not stand to reason. Of course, when consumers associate one or more of the characteristics of a product with a particular geographic location, then the corresponding geographical name cannot be used as a trade mark to designate the commercial origin of that product. This is because such a geographical name will lack the necessary distinctiveness with regard to the underlying product concerned, and all traders must be free to use the geographical name to describe the characteristics of the underlying product.41 However, grounds (c) and (d) of section 103(1) of the IP Act provide for this eventuality, rendering ground (h)42 somewhat redundant. As regards surnames, the same considerations concerning geographical names come into play. Thus, it becomes necessary to consider whether signs that are in their ordinary signification understood as surnames can be denied trade mark registration for that reason alone. Just as with geographical names, surnames, even common ones, can operate as trade marks so long as they are distinctive in respect of the goods or services for which they are intended for use. For instance, Mc Donald’s, Kellogg’s and, more recently, Kardashian are popular surnames that have been registered as trade marks. In this regard, Karunartna has pointed out that “[e]very trader is entitled to use his surname without any undue restrictions. Thus, surnames are not generally admissible as marks.”43 That may be so. However, it is for that very reason that section 122(a) of the IP Act imposes a limitation on the exercise of trade mark rights against third parties who make a bona fide use of their name to identify products. Given that such a defence exists, in terms of which third parties may utilise their own name (including surnames) in trade, the explanation provided by Karunaratna rationalising the purpose of the prohibition set out in ground (h) is somewhat questionable. Notably, Article 15.1 of TRIPS mandates every WTO member to register distinctive signs, and “personal names” have been expressly included as signs that may be regarded as distinctive. Surnames fall within the category of personal names. In any case, Article 15.1 of TRIPS does not distinguish between surnames and other 40

See official website of the Montblanc company at https://www.montblanc.com/en-us/discover/ history.html. 41 See Case C-108/97, Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v Bootsund Segelzubehör Walter Huber and Franz Attenberger [1999] ECR I-02779, para 26 (“As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response”). 42 We consider ground (h) further in Chap. 6 that deals with geographical indications. 43 Karunaratna, The Law of Trademarks in Sri Lanka (n 8), 56. See also Karunaratna, Elements of the Law of IP (n 34) 200.

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names–it merely refers to personal names. Accordingly, a blanket prohibition against the registration of surnames, even if limited to cases where such names are understood as surnames in their ordinary signification, runs counter to Article 15.1 of TRIPS. It is the same for geographical names. What matters is whether or not a surname or geographical name, when used in relation to a particular class of goods or services, is distinctive and can operate as a trade mark. Importantly, surnames and geographical names can become distinctive through use and hence be registered on the basis of acquired distinctiveness. Also, it must be noted that the prohibition against the registration of geographical names and surnames was found in the 1905 and 1938 trade mark statutes that were previously in force in the United Kingdom. However, such a prohibition does not exist in the present Trade Marks Act 1994, which further questions the validity of this prohibition in today’s context. For all these reasons, we recommend the removal of grounds (g) and (h) from section 103(1) of the IP Act.

5.2.2.5

Signs that Resemble Armorial Bearings, Flags, and Emblems or Official Signs and Hallmarks

Grounds (i) and (j), which are derived from paragraphs (f) and (g) in section 5(1) of the WIPO Model Law on Trade Marks,44 have been incorporated to ensure that trade marks are neither registered nor used in circumstances where they conflict with state emblems including armorial bearings and flags.45 Accordingly, the following marks are disqualified from registration: Ground (i): Marks that reproduce or imitate armorial bearings, flags or other emblems, initials, names, or abbreviated names of any State or any intergovernmental international organisation or any organisation created by international convention, unless authorised by the Competent Authority of that State or international organisation. Ground (j): Marks that reproduce or imitate official signs or hallmarks of a State, unless authorised by the Competent Authority of that State. A failure to avoid such conflict could “violate the right of the State to control the use of symbols of its sovereignty and furthermore might mislead the public with respect to the origin of goods to which such marks would be applied.”46 Notably, grounds (i) and (j) give effect to Sri Lanka’s obligations under Article 6ter of the Paris Convention. However, it is somewhat puzzling why these two grounds have been included with other objective grounds for denying the registration of marks. After all, a determination denying the registrability of a mark under ground (i) or (j) will be premised on the similarity between the mark under consideration and an armorial bearing of 44

WIPO, Model Law on Trade Marks (n 10) 24. GCC Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI 1968), 96. 46 Ibid. 45

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a state or international organisation (which relates to the interests of a third party). This is relative and does not arise from anything inherent to the mark itself–such as distinctiveness or morality. As such, grounds (i) and (j) are a special category and ought not to be classified with objective (or absolute) grounds for denying trade mark registration.47

5.2.3 Grounds of Inadmissibility and the Paris Convention Although Article 15.2 of TRIPS permits WTO members to deny trade mark registrations on “other grounds,” i.e., on grounds other than those permitted under Article 15.1,48 such other grounds must not “derogate from the provisions of the Paris Convention.” In addition, Article 2 of TRIPS provides: 1. In respect of Parts II, III, and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). 2. Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention, and the Treaty on Intellectual Property in Respect of Integrated Circuits.

In light of the above, the objective grounds of inadmissibility set out in the IP Act must not conflict with the provisions of the Paris Convention, especially when they relate to the obligations of convention states. Among the provisions of the Paris Convention, Article 6quinquies and Article 7 are relevant to the context of trade mark registration.

5.2.3.1

Article 7 of the Paris Convention

Article 7 of the Paris Convention provides that “[t]he nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark.” It should become apparent that this provision is identical to Article 15.4 of TRIPS. It was noted earlier in this chapter that ground (l) in section 103(1) of the IP Act, which precludes the registration of marks intended for use in respect of goods or services the trading of which is prohibited in Sri Lanka, runs counter to Article 15.4 of TRIPS. For the same reasons, the said ground of inadmissibility is also inconsistent with Article 7 of the Paris Convention, which is made relevant to the context of TRIPS through the gateway of Article 15.2.

47

For instance, the UK Trade Marks Act 1994 deals with the prohibition on the registration of armoreal bearings as part of a special category called “specially protected emblems” (section 4) and not under absolute grounds (section 3). 48 Correa (n 27) 166. See also JH Schmidt-Pfitzner, “Article 15–Protectable Subject Matter” in P-T Stoll, J Busche and K Arend (eds), WTO—Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 308-309.

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Article 6quinquies of the Paris Convention

Article 6quinquies deals with “tell quelle” marks. These are marks that have already been registered in a country belonging to the Paris Union. Thus, Article 6quinquies A(1) provides: Every mark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article.

In terms of the above provision, except upon one or more of the specific grounds expressly provided in Article 6quinquies B, a telle quelle mark must not be denied registration and protection in another country of the Union. Accordingly, telle quelle marks may be denied registration in another Paris Union country only: (i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;49 (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;50 (iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.51

A feature of Article 6quinquies B is its apparent permissive language resulting from its wording that begins with “[t]rademarks covered by this Article may be neither denied registration nor invalidated except in the following cases.” However, the original French version of Article 6quinquies B reads “Les marques de fabrique ou de commerce, visées par le présent article, ne pourront être refusées à l’enregistrement ou invalidées que dans les cas suivants,” which translates into “trademarks covered by this section shall not be denied registration nor invalidated except in the following cases.” Article 29(c) of the Paris Convention provides that the French text shall prevail in the event of any discrepancy between the French and other versions. As such, Article 6quinquies B is not permissive but mandatory. This means that when telle quelle marks are considered for registration in a Paris Union country under the priority provisions, they can be denied registration on the basis of their form only upon one of the grounds stipulated in Article 6quinquies B. In the Sri Lankan context, although section 107 of the IP Act permits the lodging of applications in reliance of an earlier application filed in a convention country,52 there is no specific provision to deal with the admissibility of telle quelle marks–i.e., marks that have already been registered in a country belonging to the Paris Union. 49

Paris Convention, Art. 6quinquies B(i). Ibid, Art. 6quinquies B(ii). 51 Ibid, Art. 6quinquies B(iii). 52 Section 212 of the IP Act defines “convention country” as a country belonging to the Paris Union. 50

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Instead, the admissibility of telle quelle marks is also governed by sections 103 and 104 of the IP Act, which apply purely to domestic trade mark applications. In view of this, it becomes necessary to consider the extent to which the general grounds for the inadmissibility of marks are compatible with the three specific grounds for denying the registration of telle quelle marks as set out in Article 6quinquies B of the Paris Convention. In so far as the registration of telle quelle marks is concerned, any domestic ground of inadmissibility that falls outside the scope of those explicitly set out in Article 6quinquies B will have to be determined as inconsistent with the Paris Convention, and hence Article 15.2 of TRIPS. It should become apparent at once that grounds (b)–(d) in section 103(1) of the IP Act are compatible with Article 6quinquies B(ii), which deals with non-distinctive signs. Similarly, grounds (e) and (f) are compatible with Article 6quinquies B(iii), which deals with signs contrary to morality or public order, as well as deceptive signs. However, nothing in Article 6quinquies B provides for the possibility of denying the registration of telle quelle marks based on the prohibition set out in ground (a) of section 103(1)–i.e., the prohibition against the registration of marks that comprise shapes imposed by the inherent nature of the goods or by their industrial or technical function. It was argued earlier that signs that comprise shapes imposed by the inherent nature of the underlying goods are unlikely to be regarded as distinctive. This aspect of the prohibition in ground (a) comes within the scope of Article 6quinquies B(ii). On the other hand, it was argued in respect of signs that comprise shapes entailing a particular technical or industrial function that they ought not to be registered to prevent unfair competition. In this regard, it must be noted that Article 6quinquies B provides that “[t]his provision is subject, however, to the application of Article 10bis,” which compels countries of the Paris Union to assure effective protection against unfair competition. Accordingly, it may be posited that this aspect of ground (a) as set out in section 103(1), which provides for the inadmissibility of shapes that entail a technical or industrial function, is consistent with Article 6quinquies B and, therefore, Article 15.2 of TRIPS. Lastly, grounds (g) and (h) of section 103(1), which contains a blanket prohibition against the registration of marks that in their ordinary signification comprise surnames or geographical names, as well as marks that comprise names not represented in any special or particular manner, have to be considered. Nothing in Article 6quinquies B permits the denial of telle quelle registrations on such grounds. Nor can it be said that marks that fit the description of the signs mentioned in grounds (g) and (h) lack distinctiveness. In fact, several examples were cited earlier in this chapter to suggest that geographical names and personal names (including surnames) are capable of functioning as trade marks. Accordingly, in respect of telle quelle marks, the blanket prohibitions stipulated in grounds (g) and (h) are inconsistent with Article 6quinquies of the Paris Convention and, therefore, Article 15.2 of TRIPS.

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Non-visual Telle Quelle Marks

Although in Sri Lanka, section 101 of the IP Act limits the registrability of trade marks to visible signs, it was noted earlier that non-visual signs, particularly smells and sounds, have been accepted for registration in other jurisdictions. This is possible because not all jurisdictions have a visual perceptibility requirement. For instance, in India,53 Singapore,54 and Hong Kong,55 signs that can be represented graphically may be registered as trade marks, provided the distinctiveness requirement is met. In the United States, the Lanham Act 194656 does not limit the registrability of trade marks to visible signs. Nor does it contain a graphical representation requirement. Whereas in the European Union, the Trade Marks Directive of 1988 and the subsequent 2008 Directive contained a graphical representation requirement. However, the more recent Trade Marks Directive of 2015 (which replaced the 2008 Directive and came into force in January 2019) has moved away from the graphical representation requirement and instead requires a sign to be capable of “being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”57 For instance, under the previous EU directives, sound marks had to be represented graphically in a “clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner.”58 In contrast, today, a sound mark may be eligible for registration even without any graphical representation, provided the aforesaid criteria are fulfilled. Thus, an audio recording of a sound mark may be accepted for registration as setting out the scope of the mark. In essence, because in some jurisdictions, including several Paris Union countries, non-visual signs may be registered as trade marks, there is always a possibility that the telle quelle provisions of the Paris Convention may be invoked to register a nonvisual mark in Sri Lanka. However, given that the Sri Lankan IP Act defines “trade marks” as visible signs, the question arises as to whether denying the registration of a non-visual telle quelle mark runs counter to Sri Lanka’s obligations under Article 6quinquies of the Paris Convention. A few points warrant attention in this regard. First, it must be noted that although Article 15.1 (last sentence) of TRIPS permits WTO members to make registration of trade marks conditional upon visual perceptibility, Article 2.2 provides that “[n]othing in Parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention.” Since Article 6quinquies A(1) creates an obligation among Paris

53

Trade Marks Act 1999, section 2(1)(zb). Trade Marks Act 1998, section 2(1). 55 Trade Marks Ordinance 2003, section 3(1). 56 Lanham Act 1946, 15 USC §1127. 57 Trade Marks Directive of 2015, Art. 3(b). 58 L Bently et al., Intellectual Property Law (5th edn, Oxford University Press 2018), 934. 54

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Union countries to ensure that trade marks registered in a convention state are registered and protected “as is” in other convention states,59 nothing in TRIPS could derogate from that obligation. Accordingly, the freedom that Article 15.1 (last sentence) of TRIPS affords WTO members, permitting them to make registrability of marks conditional upon their visual perceptibility, is, arguably, subject to the obligation arising under Article 6quinquies of the Paris Convention.60 Second, the obligation arising from Article 6quinquies of the Paris Convention is to ensure that telle quelle marks are protected “as is”–i.e., in the same form. The WTO’s Appellate Body in the US—section 211 Appropriations Act 61 dispute considered the meaning of “telle quelle” or “as is” that appears in Article 6quniquies and held: The ordinary meaning of the term “as is” and read in its context and as confirmed by the negotiating history indicates that Article 6quinquies A(1) addresses the form of the trademark; that is, those trademarks duly registered in one country, even when they do not comply with the provisions of domestic law of a Member concerning the permissible form of trademarks, have nevertheless to be accepted for filing and protection in another country.62

Therefore, an important question that ought to be raised is whether the visual perceptibility of a sign concerns the form of a trade mark. If the answer to this is in the affirmative, notwithstanding domestic legislation that limits registrability of marks to purely visible signs (such as in Sri Lanka), a non-visual telle quelle mark must be accepted for registration and protected. In this regard, the Appellate Body63 cited an expert who provided the following opinion: whenever a trademark is duly registered in the country of origin, the other countries of the Union are obliged to accept and protect it, even if, as regards its form, that is, with regard to the signs of which it is composed, such trademark does not comply with the requirements of the domestic legislation, subject to the additional rules, particularly the grounds for refusal or invalidation of any mark, considered on its individual merits, established in the Article. This rule will therefore apply to trademarks consisting of numbers, letters, surnames, geographical names, words written or not written in a certain language or script, and other signs of which the trademark is composed.64

Arguably, just as the form of a mark relates to the letters, numbers, and words, by which it is composed, the non-visual elements of an unconventional mark, such as a sound or smell mark, also concern its form.65 Therefore, any limitation regarding the 59

Bodenhausen (n 45) 110–111. J Jaconiah, “The Requirements for Registration and Protection of Non-traditional Marks in the European Union and in Tanzania” (2009) 40 International Review of Intellectual Property and Competition Law 756, 780. 61 United States–section 211 Omnibus Appropriations Act of 1998, WT/DS176/AB/R (2 January 2002) (“US—section 211 Appropriations Act”). 62 Ibid, para 127 (citing the Panel Report, para 8.83). 63 Ibid, para 138. 64 Bodenhausen (n 45) 110–111. 65 A Marsoof, “TRIPS Compatibility of Sri Lankan Trademark Law” (2012) 15 Journal of World Intellectual Property 51, 54. 60

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registrability of a non-visual sign predicated on its invisibility will amount to a prohibition that relates to the form of the mark sought to be registered. Under this logical construct, Article 6quinquies of the Paris Convention mandates that a non-visual telle quelle mark already registered in a convention state must be accepted for registration and protected in any other convention state, notwithstanding any domestic provision limiting registrability to only visually perceptible signs. Indeed, the following authoritative comment on telle quelle marks confirms this point of view: There is also widespread agreement regarding the fact that the law of the country of origin determines the legality of a particular trademark’s form. The authorities of the importing State are precluded to re-examine whether the symbol in question is actually a mark. This is significant for the so-called ‘new forms of trademarks’ (trademarks that are perceived through smell, hearing and touch), which the national laws of a number of Members do not acknowledge as trademarks.66

Third, it has to be noted that telle quelle marks may only be denied protection on one of the grounds explicitly set out in Article 6quinquies B. Thus, a telle quelle mark can be denied protection only if it violates the prior rights of a third party; is not distinctive or has become descriptive or customary in the language or bona fide and established practices of trade; is contrary to morality or public order or is of such a nature that it is likely to deceive the public; or its use can amount to an act of unfair competition. Notably, the lack of visual perceptibility is not a ground upon which a telle quelle mark can be denied protection. The points discussed above suggest that insofar as telle quelle marks are concerned, the limitation imposed under the IP Act requiring marks to be visually perceptible is seemingly inconsistent with Article 6quinquies of the Paris Convention and TRIPS by virtue of Article 2.2. However, there may be ways of reconciling this inconsistency. One approach is to claim that non-visual marks are not distinctive–i.e., they are incapable of functioning as a trade mark.67 This would bring non-visual telle quelle marks within the scope of Article 6quinquies B(ii), in which case they can be denied protection for lack of distinctiveness. However, such a claim disregards the possibility that the long-term use of a mark, even if not visually perceptible, can acquire distinctiveness over time.68 A second approach is to give Article 6quinquies of the Paris Convention a flexible interpretation so that convention states do not become obligated to “interpret the notion of a trademark in a manner which differs from that of their national legislation.”69 Under this approach, if a three-dimensional object or a signature tune is 66

O Brand, “Article 2–Intellectual Property Conventions” in P–T Stoll, J Busche and K Arend (eds), WTO–Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 127–128. 67 S Geiregat, “Trade Mark Protection for Smells, Tastes and FeelsCritical Analysis of Three NonVisual Signs in the EU” (2022) 53 International Review of Intellectual Property and Competition Law 219, 223. 68 Jaconiah (n 60) 780. 69 Bodenhausen (n 45) 111. See also HA Gill, “Object of the AIPPI and its Influence on the Drafting and Amendment of the International Convention” (1954) 44 Trademark Reporter 244, 253; DR Bereskin and A Sawchuk, “Crocker Revisited: The Protection of Trademarks of Foreign Nationals in the United States” (2003) 93 Trademark Reporter 1199, 1209.

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registered as a trademark in the country of origin “but is not considered a ‘trademark’ in another country, this latter country is not obliged to register and protect these subjects.”70 Such an interpretation will allow Sri Lanka to claim that since marks that are not visually perceptible do not qualify as trade marks under domestic law, the denial of protection to non-visual telle quelle marks is not contrary to Article 6quinquies of the Paris Convention. However, this approach has been criticised on the basis that it will adversely affect the protection and registration of non-traditional trade marks in global trade71 and that a line is deliberately drawn between traditional marks and non-traditional trademarks with respect to the application of Article 6quinquies.72 Such a distinction is illogical.73 A third approach is to claim that the Paris Convention in its entirety has no application to non-traditional trade marks, including non-visual marks. Such a claim has been put forward in the following manner: This proposition finds support in the travaux préparatoires of the Paris Convention, specifically those relating to the proceedings in the diplomatic conferences in Paris (1800–1883), Brussels (1897–1900), Washington (1911), and Lisbon (1958). These travaux préparatoires reveal that it was a big challenge to find a definition of a “trademark” that was acceptable to all the countries involved in the negotiations. In fact, it was an unsurmountable challenge. Objections were raised by various countries whenever there was a suggestion that the notion of a trademark included sound marks, smell marks, or three-dimensional marks such as the container for the product. The failure to reach a consensus on this issue means that every Paris Union member is free to determine for itself what type of sign is capable of constituting a trademark.74

If this argument is correct, then Sri Lanka’s visual perceptibility requirement applicable to all trade marks, including telle quelle marks, cannot be regarded as inconsistent with Article 6quinquies of the Paris Convention and Article 2.2 of TRIPS. The discussion above demonstrates that there is some difficulty in reconciling the visual perceptibility requirement that is permitted under TRIPS (last sentence of Article 15.1) and the requirement imposed under the Paris Convention that telle quelle marks must be accepted for registration “as is” or in the same form (Article 6quinquies). Although there is a possibility that Sri Lanka’s visual perceptibility requirement may not necessarily be regarded as inconsistent with Article 6quinquies of the Paris Convention, we are of the view that the IP Act should be amended to permit the registration of non-visual marks, provided they are distinctive and not otherwise disqualified under any other ground. Dropping the visually perceptible requirement will ensure that novel and non-traditional forms of trade marks receive 70

Bodenhausen (n 45) 111. Q Zhan, “The International Registration of Non-traditional Trademarks: Compliance with the TRIPS Agreement and the Paris Convention” (2017) 16 World Trade Review 111, 131. 72 Ibid, 134. 73 Ibid. 74 WL Ng-Loy, “Absolute Bans on the Registration of Product Shape Marks: A Breach of International Law?” in I Calboli and M Senftleben (eds), The Protection of Non-Traditional Trademarks: Critical Perspectives (Oxford University Press 2018), 150 71

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protection under Sri Lankan law. This could incentivise innovation and creativity in branding and how Sri Lankan businesses communicate with their consumers using their trade marks. In order to ensure that non-traditional marks, including non-visual marks, are capable of being registered without difficulty, Sri Lanka could introduce the graphical representation requirement, as in India, Singapore, and Australia, as a prerequisite for registration. This will ensure that non-traditional marks can be represented accurately for registration, especially when they are not visually perceptible. Alternatively, Sri Lanka can opt for the more futuristic approach that the European Union has adopted of requiring that a sign be represented in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

5.2.4 Inadmissibility of Signs on the Basis of Third-Party Rights or Interests There are a number of advantages that could be derived from registering a trade mark. First, the registration of a trade mark gives rise to a presumption that the mark is valid and enforceable.75 Second, registration reduces the possibility of disputes.76 After all, the trade mark register is available to the public. This allows third parties to avoid using signs or marks that could result in a likelihood of confusion. Third, registration of a trade mark confers on its proprietor an increased level of certainty, as the registration determines the exact scope of rights associated with a registered trade mark.77 Yet for a system dealing with the registration of marks to function smoothly, there must be a significant degree of transparency in the registration process itself.78 In this regard, Article 15.5 (first sentence) of TRIPS obligates WTO members to ensure that trade marks associated with applications for registration are published either before or promptly after they are registered. Thus, although there is an obligation to publish a trade mark consequent to an application being made for its registration, the publication may take place before or after its registration. Apart from the obligation to publish, WTO members “shall afford a reasonable opportunity for petitions to cancel the registration” of a trade mark.79 In addition, Article 15.5 (second sentence) of TRIPS provides that WTO members may allow the registration of trade marks to be opposed. In view of the permissive language used (i.e., “may” instead of “shall”), it appears that providing for opposition proceedings is optional, in contrast to cancellation proceedings, which are mandatory. 75

Bently et al. (n 58) 928. Ibid. 77 Ibid. 78 Correa (n 27) 170. 79 TRIPS, Art. 15.2 (second sentence). 76

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The Sri Lankan IP Act provides for the publication of every trade mark application containing, among other things, a representation of the applied-for mark.80 The publication of trade mark applications takes place at a relatively early stage and well before marks get onto the register. The IP Act also provides for both opposition and cancellation proceedings. Section 134(1) deals with cancellation proceedings in the following manner: The Court may on the application of any person showing a legitimate interest, or of any competent Authority including the Director-General, to which the registered owner of the mark and every assignee, licensee or sub-licensee on record shall be made party, declare the registration of the mark null and void if its registration is precluded under the provisions of sections 103 and 104.

A few points are worth mentioning about applications for cancellation of a registered mark. First, judicial proceedings have to be initiated before a registered trade mark can be declared null and void. Second, only those with a legitimate interest or the Director-General of IP can initiate such cancellation proceedings. Third, grounds for cancellation are limited to those set out in sections 103 and 104. As noted before, section 103 provides for objective/absolute grounds upon which a mark may be denied registration. Whereas section 104 deals with relative grounds. The objective grounds (discussed in the previous part) relate to the inherent characteristics of a sign, the registration of which is sought. In contrast, the relative grounds relate to instances where the registration of a sign is likely to conflict with the rights or interests of third parties. Lastly, proceedings for cancellation premised on any ground stipulated in section 104 (i.e., a relative ground) must be initiated within five years from which the mark is registered.81 Since Article 15.5 of TRIPS gives WTO members the freedom to determine how opposition and cancellation proceedings are handled under domestic law and, in any case, since only a reasonable opportunity for cancellation petitions must be afforded, the approach to cancellation proceedings under the IP Act is consistent with TRIPS. It also does not neglect the interests of third parties. Section 111(10) of the IP Act deals with opposition proceedings. It confers on “any person” the standing to oppose the registration of a trade mark in the following manner: Where any person considers that the mark is inadmissible on one or more of the grounds specified in section 103 or 104 he may, within a period of three months from the date of publication of the application, give to the Director-General in the prescribed form, and together with the prescribed fee, notice of opposition to such registration stating his grounds of opposition accompanied by evidence to substantiate such grounds.

Interestingly, any person, and not just those with a legitimate interest, may oppose the registration of a trade mark. Unlike in the case of cancellations, oppositions take place before the registration of a trade mark. It is an administrative (as opposed to a judicial) process. But, as with the case of cancellations, oppositions are also based on the grounds of inadmissibility set out in sections 103 and 104. 80

IP Act, section 111(9). An application may be refused by the Director-General of IP in the event an applicant fails to pay the publication fee within the period prescribed (section 111(8)). 81 Ibid, section 134(3).

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The objective grounds of inadmissibility (set out in section 103) have already been considered earlier on in this chapter. The relative grounds, set out in section 104(1)(a)–(f), are discussed below.

5.2.4.1

Signs that Conflict with Registered or Unregistered Marks and Trade Names

Grounds (a)–(c) of section 104(1) of the IP Act seek to ensure that marks that conflict with existing trade marks do not get onto the register. Specifically, these grounds address three distinct scenarios: Ground (a): Marks that resemble, in such a way as to be likely to mislead the public, a mark already validly filed or registered by a third party, or subsequently filed by a person validly claiming priority, in respect of identical or similar goods or services in connection with which the use of such mark may be likely to mislead the public.82 Ground (b): Marks that resemble, in such a way as to be likely to mislead the public, an unregistered mark used earlier in Sri Lanka by a third party in connection with identical or similar goods or services, if the applicant is aware, or could not have been unaware of such use.83 Ground (c): Marks that resemble, in such a way as to be likely to mislead the public, a trade name already used in Sri Lanka by a third party, if the applicant is aware or could not have been unaware of such use.84 The rationale for the grounds set out above is seemingly obvious–i.e., to reduce the likelihood of confusion between marks and avoid disputes. After all, proprietors of previously registered marks or unregistered marks that are already in commercial use have established rights in respect of those marks. The critical distinction between ground (a) and grounds (b) and (c) is that the latter contains a knowledge element. The outcome is that no applicant could be excused if he attempted to register a sign that is identical or similar to a registered trade mark in circumstances where the use of that sign could mislead the public. In contrast, the registration of a mark that is identical or similar to an unregistered trade mark or trade name must be denied only if the applicant was aware that the prior unregistered mark or trade name was being used in commerce. Article 15.2 of TRIPS confers WTO members the freedom to deny the registration of trade marks on any other ground even in circumstances where they satisfy the distinctiveness criteria set out in Article 15.1, provided that such other ground does not derogate from the provisions of the Paris Convention. Under the Paris Convention, one of the key restrictions on the freedom that convention states enjoy in determining the grounds for denying applications for trade mark registration is found in Article 6quinquies that deal with telle quelle marks. Insofar as telle quelle 82

Ibid, section 104(1)(a). Ibid, section 104(1)(b). 84 Ibid, section 104(1)(c). 83

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marks are concerned, the grounds for denying their registration must come within the scope of Article 6quinquies B of the Paris Convention. It would appear that grounds (a) to (c) of section 104(1) come within the scope of Article 6quinquies B(i), which prohibits the registration of marks that are likely to “infringe rights acquired by third parties in the country where protection is claimed.” Accordingly, grounds (a)–(c) of section 104 of the IP Act are consistent with TRIPS and the Paris Convention.

5.2.4.2

Signs that Conflict with Well-Known Marks

Ground (d) of section 104(1) of the IP Act deals explicitly with marks that conflict with well-known marks. Under ground (d), the following marks have to be denied registration: Marks that are identical with, or misleadingly similar to, or constitute a translation or transliteration or transcription of (a) a mark or trade name which is well-known in Sri Lanka for identical or similar goods or services of a third party [identical/similar goods or services scenario]; or (b) a mark or trade name that is well-known and registered in Sri Lanka for goods or services which are not identical or similar to those in respect of which registration is sought, provided in the latter case the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and that the interests of the owner of the well-known mark are likely to be damaged by such use [dissimilar goods or services scenario].85 Article 6bis of the Paris Convention and Articles 16.2 and 16.3 of TRIPS protect well-known marks. Article 6bis of the Paris Convention requires convention states to refuse or cancel ex officio or at the request of an interested party the registration and prohibit the use of a trade mark which constitutes a reproduction, an imitation, or a translation of a well-known mark, the use of which is liable to create confusion in respect of identical or similar goods. Article 6bis of the Paris Convention is limited in scope to goods. Article 16.2 of TRIPS extends this protection to include services. Article 16.3 of TRIPS extends the protection even further to include the use of marks in relation to “goods or services which are not similar” in circumstances where such use “would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.” The first part of ground (d) (identical/similar goods or services scenario) seems to have incorporated the protection that convention states must afford to well-known marks in terms of Article 6bis of the Paris Convention, read with Article 16.2 of TRIPS. Notably, when ground (d) applies in situations where the competing goods or services are identical or similar, there is no requirement for the well-known mark to be registered in the country where protection is sought. Nor is there a requirement for the well-known mark to be in actual use–knowledge of the well-known mark “in

85

Ibid, section 104(1)(d).

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the relevant sector of the public,” including knowledge “which has been obtained as a result of the promotion of the trademark” being generally sufficient.86 Section 104(2) of the IP Act sets out a number of factors that must be taken into consideration in determining whether a mark is well-known and includes, among other things, the knowledge of the mark in the relevant sector of the public and the duration, extent and geographical area of the promotion of the mark.87 These factors indicate that in the case of Sri Lanka, proprietors of well-known marks (whether registered or otherwise) may oppose the registration of a mark that is likely to conflict with their well-known marks in respect of identical or similar goods or services. Similarly, proprietors of well-known marks (whether registered or otherwise) may also seek the cancellation of a conflicting mark if it has been already registered. Thus, generally speaking, when ground (d) applies to the identical/similar goods or services scenario, it protects well-known marks to the extent required by the Paris Convention (Article 6bis) and TRIPS (Article 16.2). An interesting observation regarding ground (d) of section 104(1) is that it does not always require an aggrieved well-known mark owner to establish a likelihood of confusion. This is because all that is required for the proprietor of the well-known mark to show is that the competing mark being considered for registration is “identical with, or misleadingly similar to, or constitutes a translation or transliteration or transcription of a mark or trade name which is well-known in Sri Lanka for identical or similar goods or services of a third party.” The only aspect of this provision that introduces an element of the confusion test is when it refers to marks that are “misleadingly similar” to a well-known mark. But ground (d) will prevent a mark from being registered if it is “identical with […] or constitutes a translation or transliteration or transcription of” a well-known mark, even without establishing a likelihood of confusion, provided that the mark is intended for use in relation to identical or similar goods/services. Thus, for instance, where a mark considered for registration is a translation of a well-known mark and is intended for identical or similar goods/services, the proprietor of the well-known mark will be entitled to oppose its registration (or seek its cancellation) even without establishing a likelihood of confusion. This aspect of ground (d) clothes it with a TRIPS-plus standard. The second part of ground (d), which deals with marks conflicting with well-known marks in respect of goods or services which are not identical or similar (dissimilar goods or services scenario), contemplates a situation where the well-known mark is registered in Sri Lanka. The protection conferred is against any use of a conflicting mark that could indicate a connection between the third party’s goods or services and the proprietor of the well-known mark in circumstances where the proprietor’s interests are likely to be damaged. Thus, this aspect of ground (d) seems to be giving effect to Article 6bis of the Paris Convention, read with Article 16.3 of TRIPS. Article 16.3 86

TRIPS, Art. 16.2 (second sentence). The assessment criteria for well-known marks under section 104(2) of the IP Act is largely consistent with the non-exhaustive criteria set out in Article 2(1) of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, WIPO Publication No 833 (E) (September 1999).

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of TRIPS obligates WTO members to guarantee a broader form of protection to wellknown marks, provided they are registered in the country where protection is sought.88 Arguably, by providing this broader form of protection to well-known marks, ground (d) introduces notions of anti-dilution into Sri Lankan law. But there are some points worth noting with regard to the dilution aspect of ground (d). It is commonly understood that there is no necessity for an aggrieved proprietor of a well-known mark to establish a likelihood of confusion to receive protection from dilution.89 It is sufficient for the proprietor to demonstrate that the public is likely to draw a connection between the third party’s goods or services and the proprietor of the well-known mark. When the wording and structure of section 104(1)(d) are considered, it is apparent that a proprietor of a registered well-known mark need not establish a likelihood of confusion to prevent or cancel the registration of a mark that is identical to or constitutes a translation, transliteration, or transcription of the proprietor’s well-known mark. This conforms with Article 16.3 of TRIPS. However, it seems that the requirement of confusion may have seeped into the dilution aspect of ground (d) insofar as it applies to a mark that is similar to a registered well-known mark. Thus, where a mark, which is being considered for registration, is similar to a registered well-known mark (e.g., where the mark is not identical but its essential parts constitute a reproduction of a well-known mark), the proprietor of that wellknown mark must establish that it is misleadingly similar, in addition to satisfying the other requirements such as damage to the proprietor’s interests. This, in essence, introduces a confusion requirement in this specific scenario. To that extent, ground (d) may come into conflict with the requirements of Article 16.3 of TRIPS. Another question that potentially could arise in the Sri Lankan context is whether ground (d) would permit the Competent Authority to deny or cancel the registration of a mark that is identical or similar to a well-known mark intended to be used for identical or similar goods/services in circumstances where such use is not likely to confuse consumers but nevertheless is likely to damage the interests of the proprietor of the well-known mark. Such situations could arise in practice.90 But the manner in which the Sri Lankan provision is framed suggests that the dilution aspect of ground (d) is strictly limited to situations where the parties trade in dissimilar goods/services (“goods or services which are not identical or similar”). 88

Correa (n 27) 181 (“the trademark must be registered. […] Article 16.3, hence, significantly departs from the concept underlying the protection of unregistered well-known trademarks”). 89 See, e.g., Louis Vuitton Malletier v Haute Diggity Dog 507 F.3d 252, 265 (4th Cir. 2007) (for the US perspective) and Case C-487/07 L’Oréal SA v Bellure NV [2009] ECR I-05185, para 50 (for the EU perspective). 90 See, e.g., Zino Davidoff SA v Gofkid Ltd [2003] ECR I-00389 (suggesting that in cases where it is difficult to establish a likelihood of confusion, the proprietor of a well-known mark (or mark with a reputation) may still have a legitimate interest in protecting the mark against dilution). Take for instance the use of a mark by a third party for a comparative advertisement. Here, the third party is most likely to be using the mark in respect of identical or similar goods/services without causing source confusion. But the trade mark proprietor may still have a legitimate interest in preventing the comparative advertisement if the third party’s use of the mark is capable of resulting in dilution or causing damage to the interests of the owner of the well-known mark.

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However, it is devoid of logic if registered well-known marks were to be protected against dilution when the competing goods/services are dissimilar and do not receive a higher degree of protection in cases where the competing goods/services are either identical or similar. The Court of Justice of the European Union (“CJEU”) faced this exact dilemma91 when it had to interpret a provision of the Trade Marks Directive of 1988 that protected marks with a reputation (comparable to well-known marks) against dilution. The CJEU ruled that a proprietor of a trade mark with a reputation may oppose the use of the trade mark or a sign identical or similar to it, in the manner and circumstances referred to therein, even “in relation to goods or services which are identical with or similar to those for which the trade mark is registered.”92 Although this ruling was in the context of an infringement proceeding, it would no doubt have been instructive in interpreting the corresponding provision that applied to the context of trade mark registrations. Indeed, the more recent Trade Marks Directive of 2015 expressly provides that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where: it is identical with, or similar to, an earlier trade mark irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State in respect of which registration is applied for […] and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.93

We are of the view that section 104(1)(d) of the IP Act must be given a similar interpretation. That is, the dilution aspect of ground (d) must entitle the owner of a well-known mark to prevent the registration or seek the cancellation of a conflicting mark not only when the competing goods/services are dissimilar but also when they are identical or similar. Thus, it is worth amending section 104(1)(d) of the Sri Lankan IP Act, as there is much room for clarity concerning its scope and purpose.

5.2.4.3

Signs that Conflict with Other Third-Party Rights or the Use of Which is Likely to Amount to an Unfair Competition

Ground (e) of section 104(1) prohibits the registration of marks that infringe other third-party rights or are contrary to the provisions of Chap. XXXII relating to the prevention of unfair competition. The purpose of ground (e) is clear insofar as it prohibits the registration of marks, the use of which is likely to lead to an act of unfair competition. Article 10bis of the Paris Convention, read with Article 2.1 of TRIPS, requires WTO members “to assure to nationals of such countries effective protection against unfair competition.” This aspect of ground (e) achieves precisely that. Moreover, denying the registration 91

Case C-408/01, Adidas-Saloman AG v Fitnessworld Trading Ltd [2003] ECR I-12537. Ibid, para 22. 93 Trade Marks Directive of 2015, Art. 5(3)(a). The same approach has been adopted for the infringement context as well (see Article 10(2)(c)). 92

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of telle quelle marks on this basis is also not inconsistent with Article 6quinquies B of the Paris Convention because the said provision is subject to Article 10bis of the Convention. However, ground (e) goes beyond the realms of trade mark law when it provides that marks that infringe “other third-party rights” should not be registered. Here, the reference is to other “rights” and not merely “interests.” In this regard, Karunaratna has noted: This section is general and encompasses all the other instances where the third party rights are infringed. An attempt to enumerate such instances is not feasible and practicable due to the diverse and ever-changing nature of trade related activities. It is always a matter for the Court to ascertain and decide, in […] light of the facts of a particular case, whether […] third party rights of any kind are infringed or not.94

These third-party rights are not limited to rights arising from the use of trade marks. They are much broader and may include copyright and the right to privacy. Even in connection with telle quelle marks, Article 6quinquies B(i) permits convention states to deny the registration of such marks when they “infringe rights acquired by third parties in the country where protection is claimed.” In this regard, it has been submitted that: These rights can be either rights in trademarks already protected in the country concerned, or other rights, for example, the right to a trade name or a copyright […] The provision under consideration may also be applied if a trademark would infringe a person’s right of privacy, for example, when it contains, without his authorization, his name or portrait.95

Accordingly, this aspect of ground (e) also complies with Article 6quinquies of the Paris Convention. It is, therefore, a permissible ground for denying the registration of a mark under Article 15.2 of TRIPS.

5.2.4.4

Signs Sought to Be Registered Without the Proprietor’s Authorisation

Ground (f) seeks to protect the interests of foreign trade mark proprietors by providing that “marks filed by an agent or representative without the requisite authorisation of the trade mark proprietor in another country, unless the agent or representative justifies his action” cannot be registered as trade marks. An examination of this provision reveals that, perhaps, the legislature intended to require an applicant to establish a link between himself (or itself, in the case of a legal entity) and the proprietor of the trade mark concerned in cases where the applicant for the registration of a mark and the proprietor are not one and the same person or entity. This could be regarded as a step to eliminate mala fide registrations by persons not having a legitimate interest in respect of a particular trade mark. Such malicious 94

Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 99. See also Karunaratna, Elements of the Law of IP (n 34) 230–231. 95 Bodenhausen (n 45) 115.

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forms of registration of marks, somewhat akin to cybersquatting, are commonplace. Thus, in cases where an agent or representative of a foreign trade mark proprietor seeks to register a mark that has already been registered and put to use in another country, the law requires such agent/representative to establish the requisite consent as a safeguard to limit trade mark registrations to bona fide applicants. As with the other grounds for denying trade mark registration, this ground is permissible because of the broad discretion that WTO members are allowed under Article 15.2 of TRIPS in determining what marks get onto the trade marks register. However, since Article 15.2 is subject to obligations under the Paris Convention, including Article 6quinquies, it is necessary to consider whether this ground of denial is permissible in respect of telle quelle marks. After all, a telle quelle mark must be accepted for registration in the same form it is registered in any other Paris Union country unless its registration can be denied on one of the grounds set out in Article 6quinquies B. Given that requirements as to ownership and consent do not form a ground for denying registrations under Article 6quinquies B of the Paris Convention, ground (f) may seem to contravene the Paris Convention and thus TRIPS. However, a perusal of the WTO’s Appellate Body decision in the US—section 211 Appropriations Act dispute reveals that a ground for denial based on the ownership requirement may still form a valid basis for denying the registration of telle quelle marks. This WTO dispute concerned a provision under US law on the requirement of ownership in respect of trade mark registrations. As discussed above, when dealing with nonvisual telle quelle marks, unlike the visibility requirement, which relates to the form of the mark sought to be registered, the ownership requirement does not relate to the characteristics of the mark. Instead, it relates to an existing link between the mark, the registrant, and the manufacturer of the goods or services, which does not concern the characteristics or form of the mark. As such, the Appellate Body in US—section 211 Appropriations Act, which concurred with the findings of the Panel, observed as follows: We have already stated that we agree with the Panel that Section 211(a)(1) is a measure dealing, in the particular circumstances in which it applies, with the ownership of a defined category of trademarks. We also agree that the obligation of countries of the Paris Union under Article 6quinquies A(1) to accept for filing and protect a trademark duly registered in the country of origin “as is” does not encompass matters related to ownership. For these reasons, we uphold the finding of the Panel in paragraph 8.89 of the Panel Report that Section 211(a)(1) is not inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Article 6quinquies A(1) of the Paris Convention (1967).96

Accordingly, since the ground for denying the registration of marks as set out in section 104(1)(f) of the IP Act contemplates a requirement that is somewhat akin to the requirement discussed in US—section 211 Appropriations Act, ground (f) does not relate to the form of the mark to be registered. As such, the lack of proper consent, in the circumstances set out in section 104(1)(f), even in respect of telle quelle marks, can form a valid ground for denying registration.

96

US—section 211 Appropriations Act, paras 147–148.

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5.3 Nature and Scope of Trade Mark Rights While the provisions dealing with oppositions and cancellations (considered above) are aimed at safeguarding the interests of proprietors of both registered and unregistered marks, it is also important for proprietors to prevent the unauthorised third-party use of their marks. The IP Act achieves this by conferring certain exclusive rights on trade mark proprietors. The nature and scope of these rights are considered below.

5.3.1 Nature of Trade Mark Rights Section 121 of the IP Act deals with the rights of a registered trade mark proprietor. Section 121(1) provides: Subject and without prejudice to the other provisions of this Part, the registered owner of a mark shall have the following exclusive rights in relation to the mark:— (a) to use the mark; (b) to assign or transmit the registration of the mark; (c) to conclude licence contracts.

Section 121(2) proscribes certain specific unauthorised acts on the part of third parties in connection with the use of registered trade marks. Accordingly, section 121(2) entitles the proprietor of a registered trade mark to prohibit: (a) any use of the registered mark, or a sign resembling it in such a way as to be likely to mislead the public, for goods or services in respect of which the mark is registered or for similar goods or services in connection with which the use of the mark or sign is likely to mislead the public; and (b) any other use of the registered mark, or of a sign or trade name resembling it, without just cause and in conditions likely to be prejudicial to the interests of the registered owner of the mark. Upon considering the provisions above, it is clear that only section 121(1) is directed at the “registered owner of a mark.” In contrast, section 121(2) is directed at third parties. It imposes a duty on them not to use registered trade marks in certain specified circumstances. In essence, while the first-mentioned provision confers on trade mark proprietors a number of seemingly positive rights, including the right to use their registered trade marks, the second provision confers a negative right by imposing a duty on third parties not to use registered trade marks in the circumstances specified therein. It is noteworthy that the Sri Lankan IP Act appears to confer protection beyond what is obligated under TRIPS. Article 16.1 of TRIPS, which sets out the rights conferred on a registered trade mark proprietor, provides: The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for

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goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.

Accordingly, all WTO members must guarantee to every registered trade mark proprietor the right envisaged by Article 16.1 of TRIPS, which is no more than a negative right to exclude unauthorised third parties from using identical or similar signs to registered trade marks. There is a reason for the negative formulation of this right. In this regard, the WTO Dispute Settlement Panel in EC–Trademarks and GIs observed: the TRIPS Agreement does not generally provide for the grant of positive rights to exploit or use certain subject matter, but rather provides for the grant of negative rights to prevent certain acts. This fundamental feature of intellectual property protection inherently grants Members freedom to pursue legitimate public policy objectives...97

But this does not mean that WTO members cannot afford more extensive protection than what is required under TRIPS. They are free to do so, provided that such more extensive protection does not conflict with any other provision of TRIPS.98 It would seem that the rights conferred to registered trade mark proprietors under section 121(1) of the IP Act do precisely that by guaranteeing to proprietors, among other things, a right to use their registered trade marks, in addition to the negative right to exclude unauthorised use.99 It is unclear as to how these positive rights became incorporated into the IP Act and former Code of IP, when both TRIPS (the basis for the IP Act) and the WIPO Model Law on Trade Marks100 (the basis for the Code of IP) did not prescribe such positive rights. In the Sri Lankan context, the choice to provide more extensive protection to trade mark proprietors than what is required under TRIPS has negatively impacted domestic interests. This is seen in the context of tobacco regulation.101 Thus, when the Sri Lankan Government decided to regulate tobacco packaging by mandating the display of pictorial health warnings on an area representing 80% of all retail tobacco packs,102 the tobacco industry clung to the “right to use” provision in the IP Act to challenge the regulation. The tobacco industry was able to persuade the Court of Appeal103 that imposing health warnings on a space representing 80% of retail 97

European Communities–Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs WT/DS174/R 15 March 2015 (“EC–Trademarks and GIs”). 98 TRIPS, Art. 1.1 (“Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement”). 99 The Panel in EC–Trademarks and GIs cited section 20(1)(a) of Australia’s Trade Marks Act 1995 (Cth) as an instance where a “right to use” a trade mark is afforded under domestic law. 100 WIPO, Model Law on Trade Marks (n 10) 47–48. 101 See A Marsoof, “Challenges in achieving public health objectives through product labelling regulation: reflections on Sri Lankan trademark and constitutional law” in A Alemanno and E Bonadio (eds), The New Intellectual Property of Health: Beyond Plain Packaging (Edward Elgar 2016), 184 (for a comprehensive account of Sri Lanka’s tobacco packaging measures and the consequential disputes). 102 Tobacco Products (Labelling and Packaging) Regulations 2012, promulgated by the Minister of Health in terms of the National Authority on Tobacco and Alcohol Act 2006. 103 Ceylon Tobacco Company plc v Hon Maithripala Sirisena and Others CA 336/2012 (Writ) (12 May 2014).

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tobacco packs would interfere with the right to use provision in the IP Act, which resulted in a direction from the Court to the Sri Lankan Government to reduce the extent of the health warnings to no more than 60% of the space on retail tobacco packs. In order to override the Court of Appeal’s direction, the Sri Lankan Government introduced a Bill104 in Parliament that expressly introduced the 80% requirement for pictorial health warnings. But when the constitutionality of that Bill was challenged, although the Supreme Court decided that the Bill was not unconstitutional, this was only because the amendments proposed therein did not hinder “[t]he legitimate entitlement of the Ceylon Tobacco Company PLC to continue to engage in lawful trade and to use its trade mark as provided in the Intellectual Property Act.”105 The approach of the Sri Lankan judiciary is somewhat troubling, especially when governments around the world are implementing plain packaging measures for tobacco products with the possibility of extending similar measures to other harmful industries such as alcohol and fast food. There is a good possibility that future attempts of the Sri Lankan Government to prescribe plain packaging in respect of such industries will be challenged on the basis that those attempts interfere with the right to use provision in the IP Act. Unlike the existing packaging regime for tobacco, a plain packaging regime will totally prohibit the use of trade marks on packaging. When this happens, it will be crucial for Sri Lankan courts to give priority to domestic interests, such as public health, either by ignoring the right to use provision in the IP Act106 and affirming that trade mark rights are only negative in character107 or simply acknowledging that no right, even if expressly provided, is absolute.108 104

National Authority on Tobacco and Alcohol (Amendment) Bill 2015. In the Matter of a Reference in Terms of Article 122(1)(b) of the Constitution in Relation to an Act to Amend the National Authority on Tobacco and Alcohol Act SC (SD) No 2/2015 (6 February 2015), 6. 106 For instance, a few of the justices of the Australian High Court did precisely that in JT International SA v Commonwealth of Australia; British American Tobacco Australasia Limited and others v Commonwealth of Australia [2012] HCA 43 (“JTI/BATA v Commonwealth”) when the constitutionality of the Tobacco Plain Packaging Act 2011 (Cth), which introduced plain packaging for tobacco products in Australia, was challenged. Chief Justice French (at para 37) and Kiefel J (at para 348) thought that the entitlement to use registered trade marks as guaranteed by section 20(1) of Australia’s Trade Marks Act 1995 (Cth) was nothing more than a privilege, whereas the right subsisting in the proprietor of a registered trademark is negative in character. 107 This position was recently confirmed by a WTO Dispute Settlement Panel when Australia’s tobacco plain packaging law was challenged before the WTO. See Australia–Certain Measures Concerning Trademarks, Geographical Indications, and other Plain Packaging Requirements Applicable to Tobacco Products and Packaging WT/DS435/R, WT/DS441/R, WT/DS458/R, and WT/DS467/R, para 7.1978 (“In the light of the ordinary meaning of the text and consistently with prior rulings, we agree with the parties that Article 16.1 does not establish a trademark owner’s right to use its registered trademark. Rather, Article 16.1 only provides for a registered trademark owner’s right to prevent certain activities by unauthorized third parties under the conditions set out in the first sentence of Article 16.1”). 108 This was the approach that was adopted when the Singaporean Government recently introduced a law to implement plain packaging for tobacco products. See Singapore Parliamentary Report, Parliament No 13, Session No 2, Volume No 94, Sitting No 89 (11 February 2019) (During the debates concerning the Bill that introduced plain packaging, the Senior Minister of State for Health was reported to have stated “[t]he Government maintains its strong commitment to the protection 105

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Arguably, had the Sri Lankan legislature framed the right associated with registered trade marks in a negative fashion, that would have facilitated the Sri Lankan Government to address domestic interests in a more expeditious and efficient manner. After all, the negative right as envisaged by Article 16.1 of TRIPS is more than sufficient to guarantee trade mark proprietors the exclusivity they require in respect of their trade marks.109

5.3.2 Scope of Protection 5.3.2.1

Rights Conferred

This part considers the extent of trade mark protection in Sri Lanka. Even assuming that the Sri Lankan legislature intended to afford registered trade mark proprietors a “right to use” their marks, that right could only be given full effect by excluding unauthorised third parties from the use of such registered marks.110 To that end, the rights conferred under section 121(2) of the IP Act play a crucial role. These rights, in essence, seek to give effect to Article 16 of TRIPS. While section 121(2)(a) deals with infringement, the broadly formulated section 121(2)(b) deals with dilution. However, there are some notable observations about the manner in which the Sri Lankan provision gives effect to Article 16 of TRIPS. First, Article 16.1 of TRIPS prohibits the unauthorised third-party use of registered trade marks made in the course of trade. However, in setting out the types of conduct prohibited for third parties, section 121(2)(a) of the IP Act does not expressly incorporate such a requirement. As such, on a literal interpretation of the said provision, it would seem that all forms of third-party use, and not only use in the course of trade, may become caught up within the scope of section 121(2). Limiting the scope of trade mark protection in such a way so that proprietors are only entitled to prohibit the unauthorised third-party use of their marks in the course of trade is vital in respect of non-commercial uses that could be made of trade marks, especially in political and expressive speech.111 However, the Sri Lankan law affords more extensive protection for trade marks than what is required under TRIPS, which could have negative implications in addressing domestic interests. Second, it must be noted that not all forms of third-party use of a registered trade mark can be prohibited by the proprietor. For a proprietor to exercise his right, a of IP rights. It is also our view that the [proposal for plain packaging] is consistent with Singapore’s international obligations in relation to intellectual property rights. Tobacco companies’ trade marks do not give them absolute rights to use their trade marks”). 109 HE Smith, “Intellectual Property as Property: Delineating Entitlements in Information” (2007) 116 Yale Law Journal 1742, 1752 (“Rights to exclude allow use entitlements to be treated largely as Hohfeldian privileges. A privilege does not allow me to sue others for interference; it only means that I cannot be sued for exercising it. Owners may feel that their privileges to use are like ‘rights to use’ because the right to exclude provides such robust protection”). 110 See for instance, Gummow J’s observation in JTI/BATA v Commonwealth (at paras 71 and 72) to the effect that “[t]he exclusive right of use […] is given effect and extended by the infringement provision.” 111 Correa (n 27) 173; Schmidt-Pfitzner (n 48) 318.

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third party’s use must create a likelihood of confusion among the consuming public. Again, as with the requirement for use in the course of trade, this is an important safeguard to ensure that third parties are permitted to make use of trade marks in non-confusing contexts, such as political and expressive speech. However, in the case of Sri Lanka, section 121(2)(a) refers to the likelihood of “misleading” the public, in that it is only third-party use of a registered trade mark that misleads the public, or is likely to mislead, could be prohibited by the proprietor. On its face, there seems to be a difference in the standards applied, as TRIPS adopts the notion of likelihood of confusion. If the standard to establish misleading use is higher than what is required to establish confusing use, it will have to be concluded that the Sri Lankan provision falls short of the requirements under TRIPS. However, this appears not to be the case.112 Sri Lankan courts have often used “mislead” and “confuse,”113 and also “deceive,”114 interchangeably giving rise to a similar standard. Accordingly, the use of different terminology in framing the Sri Lankan provision is not a cause for concern. Third, the protection of well-known marks must be considered. As noted before, the scope of Article 6bis of the Paris Convention, which protected well-known marks before TRIPS, has been expanded by Article 16.2 of TRIPS. Accordingly, the right conferred upon proprietors of well-known marks to prohibit the use of marks that are a reproduction, an imitation, or a translation of a well-known mark, the use of which is liable to create confusion in respect of identical or similar goods, has been extended to the context of services. Significantly, to benefit from this protection, there is no requirement for the well-known mark to have been registered in the country where enforcement is sought.115 Nor is there a necessity for the well-known mark to have been used in the country where protection is sought–often knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark, being sufficient for a mark to be regarded as well known.116 This is an important feature of the protection of well-known marks. 112

Marsoof, “TRIPS Compatibility” (n 65), 65. See, e.g., Viacom International Inc v Maharaja Organizations Ltd and others [2006] 1 Sri LR 140, 148 (“Therefore, another application to register the same trade mark or a similar trade mark which is likely to mislead or confuse the public as to the source of the service cannot be registered”). 114 See, e.g., Mohideen and others v Registrar of Trade Marks (1955) 57 NLR 535, 537 (“No standard test of what is likely to deceive the purchaser can be laid down. The tests laid down in the decided cases are rarely capable of extension to other cases. In the circumstances of this case we think the test to apply is not whether if a person is looking at the two trade marks side by side there would be a possibility of confusion; but whether the average person who sees the appellants’ trademark in the absence of the registered trade mark and in view only of his general recollection of the registered trade mark would mistake the appellants’ trade mark for the registered trade mark”’); Lipton Ltd v Rawther and others (1933) 35 NLR 129, 130 (“There are the usual allegations on behalf of respondents, denied by the applicants, that the mark sought to be registered so nearly resembles the registered mark as to be calculated to deceive, and further to create confusion between the goods of the applicants and the goods of the respondents”). 115 Correa (n 27) 181; Schmidt-Pfitzner (n 48) 324–325. 116 Correa (n 27) 179; Schmidt-Pfitzner (n 48) 326. 113

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However, a perusal of section 121 of the IP Act reveals that it applies specifically to registered trade marks. This is problematic because by requiring trade marks, whether well-known or otherwise, to be registered before they could benefit from protection against confusing third-party use, section 121(2)(a) does not afford protection to wellknown marks to the extent required by Article 16.2 of TRIPS. Notably, except in section 104, which deals with relative grounds for denying trade mark registration, there is not a single other provision in the IP Act that even refers to well-known marks. Of course, proprietors of well-known marks may still prohibit unauthorised third parties from making use of their marks (or marks that resemble them) in ways that are likely to cause confusion. But this is in terms of section 160(2) of the IP Act, which deals with unfair competition. In particular, section 160(2)(b)(i) provides that confusion may arise with respect to marks, which include well-known marks, whether registered or not. In this regard, it must be noted that although TRIPS is a minimum standard agreement, Article 2.1 provides that WTO members “shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.” Thus, Sri Lanka does not have to mirror Article 16.2 of TRIPS in the IP Act in any specific manner. It would be sufficient to protect wellknown marks under a broader provision, such as the provision on unfair competition, so long as it can meet the minimum standards set out in Article 16.2 of TRIPS. However, it must be noted that many countries have a separate provision in their trade mark statutes that explicitly protects well-known marks, including marks that are not registered in the country, from confusing third-party use.117 Lastly, Article 16.3 of TRIPS extends the protection of well-known marks even further. Thus, the basic protection that must be afforded in terms of Article 6bis of the Paris Convention has been extended even in respect of the unauthorised third-party use of well-known marks for dissimilar goods or services, provided that the interests of the proprietor are likely to be damaged by such unauthorised use. Interestingly, in respect of this broader form of protection envisaged by Article 16.3 of TRIPS, the Sri Lankan law affords a TRIPS-plus standard of protection.118 This becomes apparent upon a perusal of section 121(2)(b) of the IP Act, which guarantees protection against “any other use” of a registered trade mark, whether well-known or otherwise, in circumstances “likely to be prejudicial to the interests of the registered owner of the mark.” In essence, the broader form of protection that must be afforded to wellknown marks is also afforded to ordinary marks, so long as the mark is registered in 117

See, e.g., UK Trade Marks Act 1994, section 56(2) (“The proprietor of a trade mark which is entitled to protection under the Paris Convention or the WTO agreement as a well-known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion”); Singapore Trade Marks Act 1998 (“A well-known trade mark shall be entitled to protection under this section— (a) whether or not the trade mark has been registered in Singapore, or an application for the registration of the trade mark has been made to the Registrar; and (b) whether or not the proprietor of the trade mark carries on business, or has any goodwill, in Singapore”). 118 Marsoof, “TRIPS Compatibility” (n 65) 67.

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Sri Lanka.119 This has the effect of affording more extensive protection than what is mandated under TRIPS, which, in this instance, could be counterproductive. After all, to establish a claim on the broader basis, a proprietor does not necessarily have to establish confusion among the public. A remedy in the absence of having to establish confusion can only be justified in respect of well-known marks.120 Affording such broader protection to ordinary marks could lead to an imbalance between the rights of trade mark proprietors and the interests of third parties, especially in respect of those who engage in creative and political expression that refer to trade marks in a non-commercial/satirical sense. Based on our analysis above, it is evident that the provision in the IP Act dealing with trade mark infringement (section 121) warrants considerable rethought both in terms of substance and structure. We are of the view that it is sufficient for trade mark rights to be framed as a negative right. By doing so, we can assure that the use of trade marks can be regulated easily in the public interest. We are also of the view that the infringement provision must deal with ordinary and well-known marks separately. This will not only address the need to afford a higher degree and broader scope of protection that is usually afforded to well-known marks but also ensure that the protection of ordinary marks is not overbroad. In addition, such an approach could also address the unique features associated with the protection of well-known marks that we have identified above.

5.3.2.2

Limitations

As much as the “rights conferred” on trade mark proprietors are important in determining the scope of protection, equally important are the exceptions to those rights. Such exceptions set out the limits of trade mark rights. In this regard, exceptions under domestic law must comply with Article 17 of TRIPS, which provides: Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Section 122 of the IP Act sets out several exceptions or limitations to trade mark rights. In terms of section 122(a), a trade mark proprietor cannot prevent: (a) the use of a third party’s bona fide name, address or pseudonym; 119

Although Article 16.2 of TRIPS, read with Article 6bis of the Paris Convention, requires protection to be afforded to well-known marks without the need for the mark to be registered in the country where protection is sought, the broader anti-dilution protection is afforded by Article 16.3 of TRIPS only in respect of registered well-known marks. See Correa (n 27) 181. 120 See, e.g., M Strasser, “The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context” (2000) 10 Fordham Intellectual Property, Media and Entertainment Law Journal 375; SL Rierson, “The Myth and Reality of Dilution” (2012) 11 Duke Law & Technology Review 212; F Mostert, “The Protection of Well-Known Marks Under International Intellectual Property Law” in I Calboli and J Ginsburg (eds), The Cambridge Handbook of International and Comparative Trademark Law (Cambridge University Press 2020), 84.

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(b) the use of a geographical name;121 and (c) the use of an indication to designate the kind, quality, quantity, destination, value, place of origin, or time of production or supply of the underlying goods or services, provided that such use does no more than designate one of the above attributes. However, this is “in so far as such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.”122 This ensures that the exceptions mentioned above are “narrow exceptions” that only make a small diminution of the rights conferred by a trade mark.123 Accordingly, the exceptions set out in section 122(a) are compliant with TRIPS. They are also the kind of exceptions that are generally found in trade mark statutes around the world.124 Section 122(b) sets out the Sri Lankan stance on the exhaustion of trade mark rights. The doctrine of exhaustion is an important balancing mechanism to limit the control exercised by trade mark proprietors in respect of goods already placed on the market by them or with their consent. If not for this doctrine, we would not have witnessed a flourishing second-hand market for branded products. Nor will we have witnessed the inflow of parallel imports of branded goods. Parallel imports are genuine goods imported into a country by a third party without the authority of the trade mark proprietor. The third party usually acquires such goods from lawful sources once the goods have been placed on the market in another country by the trade mark proprietor or an authorised agent. Both second-hand goods and parallel imports enhance competition in markets providing consumers with a better choice and selection of products at accessible prices.125 A country’s exhaustion policy could take one of three forms–national, regional, or international. WTO members are given the freedom to determine the form of exhaustion to be employed under domestic law.126 Where a policy of national exhaustion is adopted, trademark proprietors cannot exercise control over goods already placed 121

The use of geographical names, however, may conflict with the use of other forms of IP, such as certification marks employed to protect geographical indications. This conflict is explored in Chap. 6 that focuses on geographical indications. 122 IP Act, section 122(a). 123 See Canada–Patent Protection of Pharmaceutical Products WT/DS114/R (17 March 2000), para 7.30 (for an explanation as to what “narrow exceptions” are). 124 For instance, in the United Kingdom, the Trade Marks Act 1994 provides for these limitations in section 11(2). In Singapore, the Trade Mark Act 1998 provides for these limitations in section 28(1). And in India, sections 30(2)(b) and 35 of the Trade Marks Act 1999 provide for these limitations. 125 See, e.g., JS Gorelick, “The Case for Parallel Importation” (1986) 11 North Carolina Journal of International Law 205; S Fisher, “The Impact of Parallel Importing on Consumer Law” (2000) 9 Auckland University Law Review 79. 126 Article 6 of TRIPS provides that “[f]or the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.” In other words, nothing in TRIPS dictates the type of exhaustion that should be employed at domestic level, although it is implied that domestic law must provide for some form of exhaustion of rights.

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on the domestic market by them or with their consent. Since trade mark proprietors cannot prevent the further commercialisation of such goods, a policy of national exhaustion permits the sale of second-hand goods. But this does not extend to parallel imports. When the laws of a country provide that trade mark rights are only nationally exhausted, trade mark proprietors may still prevent the further commercialisation of goods placed by them or with their consent on the foreign market. Thus, when such goods are imported into the country by unauthorised third parties, their circulation and sale can be prohibited under trade mark law. On the other hand, where the laws of a country provide for a policy of international exhaustion, trade mark proprietors are not allowed to prevent the further commercialisation of goods placed by them or with their consent on the market either within or outside the country. In effect, the first sale of goods under a trade mark anywhere in the world exhausts the trade mark proprietor’s rights within the country in respect of those goods. Such an approach to exhaustion will permit both the sale of second-hand goods and parallel imports. A regional exhaustion policy is a mixture of both national and international exhaustion. For instance, the European Union adopts a policy of regional exhaustion. Thus, goods placed on the market within the European Union by or with a trade mark proprietor’s consent result in the exhaustion of trade mark rights–thus preventing the trade mark proprietor from exercising his rights to prevent the further commercialisation of such goods. This essentially permits the parallel importation of goods between EU member states. However, goods placed on the market outside of the European Union by or with the consent of a trade mark proprietor will not be affected by the rule on exhaustion. Thus, trade mark rights may be lawfully exercised to prevent the parallel importation of goods originating from outside the European Union. Given that the exhaustion principle can be implemented nationally in a number of ways, it is necessary to consider the type of exhaustion policy that the Sri Lankan law stipulates for trade marks. Section 122(b) provides that the registration of a trade mark shall not confer on its registered owner the right to preclude third parties: from using the mark in relation to goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka under that mark, provided that such goods have not undergone any change.

Karunaratna, in his commentary on the IP Act, has pointed out that section 122(b) recognises and establishes the principle of national exhaustion of trade mark rights in Sri Lanka.127 In essence, once goods are placed on the domestic market by or with the consent of a trade mark proprietor, the law prohibits the exercise of trade mark rights in respect of those goods, subject to the condition that such goods have not undergone any change.

127

Karunaratna, The Law of Trademarks in Sri Lanka (n 8), 156–157. See also Karunaratna, Elements of the Law of IP (n 34) 260.

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On the question of whether the said provision accommodates a policy of international exhaustion, Karunaratna makes the following observation: The exhaustion of rights operates, in terms of section 122(b), in respect of goods lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka so far as such goods have not undergone any change. Consequently, this section has no application to goods lawfully manufactured, offered for sale, sold, use or stocked outside Sri Lanka. The resultant legal position is that section 122(b) does not recognise the principle of international exhaustion.128

If section 122(b) is interpreted in this way, it essentially shuts out lawful parallel imports. But notably, Karunaratna has also made the following observation, which indicates that there is some confusion regarding the exact scope of section 122(b): Section 122(b) concerns lawfully imported goods. The goods can be lawfully imported goods when they are imported by the owner of the mark or his licensee or any third party which lawfully purchases the goods from markets outside the country. Thus, it is arguable that Section 122(b) is applicable to all such lawfully imported goods. It does not refer to goods lawfully imported by the owner or his licensee.129

Such an interpretation does attract some merit. Indeed, the Sri Lankan Supreme Court, in a dispute between the major computer and hardware manufacturer, Hewlett Packard or HP, and Techzone, a computer and hardware retailer in Sri Lanka, confirmed that enterprises may engage in parallel importation under Sri Lankan law.130 Despite the assurance offered by the Supreme Court’s order legitimising parallel trade in Sri Lanka, we are of the view that section 122(b) of the IP Act requires clarity in respect of its scope. As the Supreme Court has suggested, if section 122(b) of the IP Act does implement a policy of international exhaustion (thus permitting parallel imports), this must be made explicitly clear. For instance, section 122(b) could be amended so that it explicitly provides that a registered trade mark is not infringed by the use of the mark in relation to goods that have been put on the market, whether in Sri Lanka or overseas, under that trade mark by its proprietor or with his express or implied consent. This effectively will ensure that Sri Lankan trade mark law implements a policy of international exhaustion. However, this limitation to the exercise of trade mark rights must not extend to situations where the condition of the goods has been altered or impaired after they have been put on the market.

128

Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 157. See also Karunaratna, Elements of the Law of IP (n 34) 260. 129 Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 159 (at footnote 15). See also Karunaratna, Elements of the Law of IP (n 34) 262–263 (at footnote 206). 130 TF Thajudeen, “HP Vs Techzone: SC says consumer the ultimate beneficiary in parallel competition” DailyFT (5 October 2012) https://www.ft.lk/Business/hp-vs-techzone-sc-says-consumerthe-ultimate-beneficiary-in-parallel-competition/34-113328. The Supreme Court’s order was made consequent to an appeal by Techzone challenging an interim order of the Commercial High Court restraining it from importing/distributing and/or selling genuine HP products acquired from alternative sources.

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Although there are mixed views131 about the benefits of parallel trade, on the whole, it is understood that permitting the parallel importation of goods is more likely to benefit developing countries.132 After all, there are instances where goods are sold in developing countries “at prices higher than in developed countries.”133 One concern about permitting parallel imports is that products of lower quality, made available for certain markets, are likely to enter the Sri Lankan market.134 This may be a genuine concern in specific areas such as pharmaceuticals. To address this concern, it would be wise to impose sector-specific laws/regulations that set out conditions that parallel imports must satisfy before they are sold in the domestic market. Such an approach would ensure that IP laws do not in any way hinder parallel trade. But at the same time, the sector-specific laws/regulations will guarantee that goods sold in Sri Lanka meet the requisite quality and other requirements, irrespective of whether they are goods introduced into the domestic market by parallel importers.

5.4 Recommendations This chapter exclusively considered the protection of registered trade marks in Sri Lanka, focusing on the acquisition, nature, and scope of rights conferred on the registered trade mark proprietor. An analysis of the trade mark related provisions of Sri Lanka’s IP Act revealed that some of the provisions do not meet Sri Lanka’s obligations under TRIPS, read with relevant provisions of the Paris Convention. Certain others require rethought to reflect modern times or to address domestic interests more effectively. In this part, we capture and summarise our key recommendations. We make a number of recommendations with regard to the registration of trade marks. First, the IP Act only permits the registration of visible signs. We recommend that this should change. Although such an approach is compliant with TRIPS, it does not reflect the new forms of indicia that consumers have become accustomed to. Accordingly, we recommend the removal of the word “visible” that appears in section 101 of the IP Act in the definition of “trade marks.” However, since registration is key to the acquisition of trade mark rights in Sri Lanka, registrability of signs must be limited to those capable of being represented on the trade marks register. In this regard, some jurisdictions adopt the requirement that marks should be capable 131

Generally, IP owners have opposed parallel importation, as it reduces their exclusive control over the domestic market. Those who oppose parallel imports claim that parallel imports free-ride on the investments of the domestic trade mark proprietor, deceive consumers, and erodes trade mark rights. See RM Andrade, “The Parallel Importation of Unauthorized Genuine Goods: Analysis and Observations of the Gray Market” (1993) 14 University of Pennsylvania Journal of International Business Law 409, 427. 132 UNCTAD-ICTSD, Resource Book on TRIPS and Development (Cambridge University Press 2005), 116–117. 133 Ibid, 117. 134 Karunaratna, The Law of Trademarks in Sri Lanka (n 8) 156. See also Karunaratna, Elements of the Law of IP (n 34) 259.

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of being represented graphically.135 Under this scheme, non-visual signs may be registered provided they are in some way capable of being represented graphically for registration purposes. More recently, however, the law in the European Union witnessed a shift from the graphical representation requirement to a more flexibly worded requirement, which merely requires that a sign must be capable of being “represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.”136 We recommend an amendment to the definition of “trade marks” in section 101 to adopt a similar stance under Sri Lankan law. A move in this direction could motivate the NIPO to innovate with regard to how trade mark registrations are recorded. For instance, this could facilitate the adoption of a digital register capable of representing marks comprising sounds, colours, and gestures in more accurate ways. The recommendation above will also permit the registration of non-visual telle quelle marks. This would eliminate any inconsistency between the current provisions of the IP Act and the requirements set out in Article 6quinquies of the Paris Convention, which must be given effect in terms of Article 2 of TRIPS. Second, we recommend the following amendments to section 103(1) of the IP Act that sets out the objective (or absolute) grounds upon which trade mark registrations may be denied. We are of the view that grounds (g), (h), and (l) in section 103(1) should be removed in their entirety. Ground (g) presupposes that marks that comprise the names of an individual or enterprise are devoid of distinctive character unless such names are represented in a “special or particular manner.” In other words, names as such cannot be registered as marks. This approach does not reflect the possibility that names may be distinctive enough to function as trade marks. Accordingly, we recommend removing ground (g) from section 103(1). Similarly, ground (h) disqualifies geographical names and surnames from being registered as trade marks. However, both geographical names and surnames can operate as trade marks. As such, a blanket prohibition against the registration of such marks should be avoided. Accordingly, we recommend removing ground (h) from section 103(1). Ground (l) denies the registration of marks that relate to goods or services, the trading of which has been prohibited in Sri Lanka. Such a prohibition, in effect, is based on the nature of the underlying product and is, therefore, a prohibition that is contrary to Article 15.4 of TRIPS/Article 7 of the Paris Convention. Accordingly, we recommend that ground (l) be removed from section 103(1). Third, we make the following recommendation concerning one of the relative grounds for denying trade mark registration that appears in section 104(1) of the IP Act. This concerns ground (d), which permits proprietors of well-known marks to oppose the registration or seek the cancellation of conflicting marks. One of the problems we identified was that the anti-dilution aspect of ground (d) extends only to situations where the underlying goods or services are “not identical or similar.” In 135

See, e. g., Singapore Trade Marks Act 1998, section 2(1) and Indian Trade Marks Act 1999, section 2(zb). 136 Trade Marks Directive of 2015, Art. 3(b).

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other words, the wording of the provision creates some doubt as to whether a registered well-known mark owner can oppose the registration or seek the cancellation of a mark that causes dilution in respect of goods or services that are identical or similar to those for which the well-known mark is registered. Based on the approach in other jurisdictions, we have argued that the anti-dilution aspect should extend in relation to situations where the underlying goods/services are identical or similar. Only then will well-known marks be sufficiently protected against dilution. As regards the nature of rights conferred on registered trade mark proprietors, we recommend the removal of all positive rights guaranteed by section 121(1) of the IP Act. The negative right of exclusion is capable of achieving the necessary degree of exclusivity for trade marks to function without distortion. As such, the rights conferred under section 121(2) are more than sufficient. In any case, TRIPS only requires WTO members to guarantee the negative right of exclusion (as stipulated in Article 16) and does not compel the grant of positive rights, including the right to use marks. We believe that an amendment on these lines will allow the Sri Lankan Government to better address domestic interests, especially where the use of trade marks has to be regulated or prohibited. We also make the following recommendations concerning the scope of trade mark protection. First, regarding claims for infringement, section 121(2)(a) warrants an amendment so that only unauthorised third-party use “in the course of trade” is outlawed. The use requirement is very much enshrined in TRIPS as a balancing mechanism, and its absence in the IP Act is problematic. Second, on the protection of well-known marks, section 121(2)(b) of the IP Act fails to give effect to the protection mandated by Article 6bis of the Paris Convention as extended by Article 16.2 of TRIPS. The IP Act permits a well-known mark owner to oppose or seek the cancellation of identical or confusingly similar trade mark registrations even without the well-known mark being registered in the country. However, the IP Act does not permit a well-known mark owner to prevent the unauthorised third-party use of a conflicting mark unless the well-known mark is registered. Although this shortcoming is avoided to some extent in view of the unfair competition provision of the IP Act, we recommend that section 121(2)(b) be amended to expressly protect well-known marks against third-party uses that are likely to cause confusion even when they are not registered in the country. This amendment is necessary to comply with Article 6bis of the Paris Convention as extended by Article 16.2 of TRIPS. Third, the anti-dilution aspect of section 121(2)(b) currently extends to registered trade marks, whether well-known or otherwise. This goes beyond the minimum standards of TRIPS. We recommend that the broader anti-dilution protection afforded under section 121(2)(b) of the IP Act should only be extended to registered wellknown marks and not to ordinary marks. An amendment to that effect should be made to section 121(2)(b). Lastly, although the limitations set out in section 122 of the IP Act are compliant with international standards, we recommend that section 122(b), which deals with the exhaustion of rights, should be amended so that it is explicitly clear that a policy of international exhaustion is applicable in Sri Lanka. This would enable enterprises

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to engage in the lawful parallel trade of genuine goods. Of course, trade mark proprietors will likely favour a policy of national exhaustion, as this would allow them and their licensees to exercise exclusive control over imports of their products into Sri Lanka.137 Thus, in the Sri Lankan context, a policy of international exhaustion may raise concerns for foreign trade mark proprietors and their local licensees. Nevertheless, as a matter of domestic interest, such a policy will benefit Sri Lankan consumers and local businesses by providing them with access to a more extensive choice of products for both consumption and value addition. Moreover, a policy of international exhaustion reflects the spirit of the WTO,138 which favours free trade across nations. For these reasons, we recommend that section 122(b) of the IP Act be suitably amended to explicitly set out a policy of international exhaustion of rights while providing for suitable safeguards.

References 1. Andrade RM (1993) The parallel importation of unauthorized genuine goods: analysis and observations of the gray market. Univ Pennsylvania J Int Bus Law 14:409 2. Bently L et al (2018) Intellectual property law, 5th edn. Oxford University Press 3. Bereskin DR, Sawchuk A (2003) Crocker revisited: the protection of trademarks of foreign nationals in the United States. Trademark Reporter 93:1199 4. Brand O (2009) Article 2–intellectual property conventions. In: Stoll P-T, Busche J, Arend K (eds) WTO–trade-related aspects of intellectual property rights. Koninklijke Brill NV 5. Bodenhausen GCC (1968) Guide to the application of the Paris Convention for the protection of industrial property. BIRPI 6. Bouchoux D (2009) Intellectual property: the law of trademarks, copyrights, patents and trade secrets, 3rd edn. Cengage Learning 7. Correa CM (2020) Trade related aspects of intellectual property rights: a commentary on the TRIPS agreement, 2nd edn. Oxford University Press 8. Cottier T (2008) The exhaustion of intellectual property rights–a fresh look. Int Rev Intellect Prop Compet Law 39:755 9. Geiregat S (2022) Trade mark protection for smells, tastes and feels critical analysis of three non-visual signs in the EU. Int Rev Intellect Prop Compet Law 53:219 10. Gill HA (1954) Object of the AIPPI and its influence on the drafting and amendment of the international convention. Trademark Reporter 44:244 11. Jaconiah J (2009) The requirements for registration and protection of non-traditional marks in the European Union and in Tanzania. Int Rev Intellect Prop Compet Law 40:756 12. Karunaratna DM (2006) Issues related to the enforcement of IP rights: national efforts to improve awareness of decision makers and education of consumers. WIPO/ACE/3/5 13. Karunaratna DM (2007) A guide to the law of trademarks and service marks in Sri Lanka, 2nd edn. Sarvodaya Vishva Leka 14. Karunaratna DM (2010) Elements of the law of intellectual property in Sri Lanka. Sarasavi Publishers 137

See WIPO, Interface between Exhaustion of Intellectual Property and Competition Law, CDIP/4/4 REV./STUDY/INF/2 (11 June 2011), para 64. 138 See UNCTAD-ICTSD (n 132) 117. See also T Cottier, “The Exhaustion of Intellectual Property Rights–A Fresh Look” (2008) 39 International Review of Intellectual Property and Competition Law 755.

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15. Llewelyn D (2010) Invisible gold in Asia: creating wealth through intellectual property. Marshall Cavendish 16. Ng-Loy WL (2018) Absolute bans on the registration of product shape marks: A breach of international law? In: Calboli I, Senftleben M (eds) The protection of non-traditional trademarks: Critical Perspectives. Oxford University Press 17. Marsoof A (2012) TRIPS compatibility of Sri Lankan trademark law. J World Intellect Prop 15:51 18. Marsoof A (2016) Challenges in achieving public health objectives through product labelling regulation: reflections on Sri Lankan trademark and constitutional law. In: Alemanno A, Bonadio E (eds) The new intellectual property of health: beyond plain packaging. Edward Elgar 19. Mostert F (2020) The protection of well-known marks under international intellectual property law. In: Calboli I, Ginsburg J (eds) The Cambridge handbook of international and comparative trademark law. Cambridge University Press 20. Rierson SL (2012) The myth and reality of dilution. Duke Law Technol Rev 11:212 21. Schmidt-Pfitzner JH (2009) Article 15–protectable subject matter. In: Stoll P-T, Busche J, Arend K (eds) WTO—trade-related aspects of intellectual property rights. Koninklijke Brill NV 22. Smith HE (2007) Intellectual property as property: delineating entitlements in information. Yale Law J 116:1742 23. Strasser M (2000) The rational basis of trademark protection revisited: putting the dilution doctrine into context. Fordham Intellect Prop Media Entertainment Law J 10:375 24. Taubman A, Wager H, Watal J (eds) (2020) A handbook on the WTO TRIPS agreement, 2nd edn. Cambridge University Press 25. UNCTAD-ICTSD (2005) Resource book on TRIPS and development. Cambridge University Press 26. WIPO (1967) Model law for developing countries on marks, trade names, and acts of unfair competition. BIRPI 27. WIPO (2011) Interface between exhaustion of intellectual property and competition law. CDIP/4/4 REV./STUDY/INF/2 28. Zhan Q (2017) The international registration of non-traditional trademarks: compliance with the TRIPS agreement and the Paris Convention. World Trade Rev 16:111

Chapter 6

Geographical Indications

The focus of this chapter is on geographical indications (“GIs”). In ordinary language, GIs are indications that designate the geographical origin of a product. But a GI, in the strict legal sense, attracts a very specific meaning and is capable of indicating more than just origin. The Agreement on the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”),1 which mandates members of the World Trade Organization (“WTO”) to protect GIs, defines them as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.”2 Thanks to its unique geographic and climatic conditions, natural diversity, and colonial history, Sri Lanka is home to many GIs that are world-renowned for their quality. The two oft-cited examples are Ceylon Tea and Ceylon Cinnamon, which have been traded for over a century. This chapter aims to evaluate the current legal framework for the protection of GIs in Sri Lanka to determine whether more needs to be done in safeguarding the interests of GI-based industries and their stakeholders. First, this chapter provides a brief outline of Sri Lanka’s GIs and sets out the international framework for the protection of GIs. Second, it considers the adequacy of the current legal framework for the protection of GIs in Sri Lanka and evaluates the extent to which the GI-related provisions of the Intellectual Property Act 2003 (“IP Act”)3 meet international standards. Third, the chapter considers a recent initiative of the Sri Lankan Government to introduce a system to register GIs. The academic community and the industry have voiced their concerns over the disadvantages that Sri Lankan GIs have faced in view of the delay in implementing a domestic registration system for GIs. As such, some space is devoted in this chapter to consider the merits 1

Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). 2 Ibid, Art. 22.1. 3 Intellectual Property Act No 36 of 2003 (“IP Act”). © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_6

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of these claims. This chapter offers some reflections on the utility of introducing a domestic GI register but cautions that this must be done as part of a broader and coherent overall strategy to promote and protect Sri Lankan GIs in the country and elsewhere. As part of this discussion, the chapter also considers the shortcomings of a 2018 amendment to the IP Act that supposedly aimed at introducing a GI registration system. At the time of writing, the Sri Lankan Government had introduced a Bill titled the Intellectual Property (Amendment) Bill 20224 in Parliament, which, if enacted, will implement a GI registration system in Sri Lanka, overriding the 2018 amendment. As such, this chapter also considers the provisions of this Bill, which, for ease of reference, will be referred to as the “GI Bill.” The chapter ends by making specific recommendations to help Sri Lankan GIs realise their fullest potential.

6.1 Sri Lankan Geographical Indications To anyone thinking of Sri Lanka, one of the first things that come to mind is its famous Ceylon Tea. Tea sold under the “Ceylon Tea” flagship is grown in the country’s central hills. Tea was introduced to Sri Lanka in 1824 by Dr. Robert Bruce when he planted the first seed at the Royal Botanical Gardens of Peradeniya. Since James Taylor, a Scottish planter, established the first commercial tea plantation in 1867,5 the tea industry has grown rapidly. Just over a decade ago, the inflow of foreign exchange owing to tea exports was recorded at US$700 million.6 By 2018, the figure had risen to US$1.4 billion.7 Despite tea not being indigenous to Sri Lanka, Ceylon Tea has attracted a significant share of the global market because of its unique flavour and characteristic aroma. As recorded by Henry W Cave, “[t]he extraordinary rapidity with which this latest product of the resplendent Lanka has gained universal favour is, of course, due to its superiority over the pekoes and souchongs of other countries.”8 For this reason, it is not surprising that Ceylon Tea qualifies as a GI.

4

Intellectual Property (Amendment) Bill 2022, as published in the Government Gazette dated 10.2.2022 (“GI Bill”). 5 MTK Gunasekare, “Tea Plant (Camellia sinensis) Breeding in Sri Lanka” in L Chen, Z Apostolides and Z-M Chen (eds), Global Tea Breeding: Achievements, Challenges and Perspectives (Zhejiang University Press/Springer 2012), 127. 6 S Jain, “Effects of the Extension of Geographical Indications: A South Asian Perspective” (2009) 16 Asia–Pacific Development Journal 65, 81. 7 M Srinivasan, “A Bitter Brew: For Sri Lanka’s Tea Estate Workers, Fair Wage is Still Elusive” The Hindu (5 October 2019) https://www.thehindu.com/news/international/in-sri-lanka-a-bitter-brew/ article29598287.ece. 8 HW Cave, Gloden Tips: A description of Ceylon and its Great Tea Industry (Sampson Low, Marston & Co Ltd 1900), 1.

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Fig. 6.1 Ceylon Tea logo

Fig. 6.2 Regional tea logos

In 2010, the Sri Lanka Tea Board successfully secured rights over the Ceylon Tea GI as a certification mark (Fig. 6.1) in terms of the IP Act.9 The IP Act does not provide for the registration of GIs as such, although at the time of writing, the Sri Lankan Government had presented a Bill in Parliament that, if enacted, will provide for a GI registration system. Therefore, in Sri Lanka, GIs have been protected using other means, such as the system for certification marks. In addition to the Ceylon Tea certification mark, the Tea Board has also secured seven other certification marks (Fig. 6.2) to represent tea grown in the Dimbulla, Ruhuna, Sabaragamuwa, Uva, Nuwara Eliya, Kandy, and Uda Pussellawa agroclimatic zones that exist within the central hills. These are useful in recognising the distinct characteristics of tea produced in each of the agro-climatic zones, which could boost the value of regional tea products.

9

N Kamardeen, “The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka” in I Calboli and WL Ng-Loy (eds), Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia–Pacific (Cambridge University Press 2017), 422.

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Internationally, Ceylon Tea is well known and has been registered either as a trade mark or a certification mark in over 100 countries. Sri Lanka is also well known for its cinnamon. The spice was known from ancient times. For instance, there are references to it in the Bible and Roman, Egyptian, and Chinese literature.10 The variety of cinnamon that grows in Sri Lanka is known as Cinnamomum verum. It is indigenous to Sri Lanka, and interestingly, the plant’s old botanical name, Cinnamomum zeylanicum, is a reference to Ceylon. However, this variety of cinnamon is also grown in other parts of the world, such as Seychelles, Madagascar, and India,11 and some places in South America and the Caribbean.12 In addition, there are other varieties of cinnamon too—e.g., Cassia from China (Cinnamomum cassia), Vietnamese cinnamon (Cinnamomum loureiroi), Indonesian cinnamon (Cinnamomum burmanni) and Malabar cinnamon (Cinnamomum citriodorum). But importantly, Ceylon Cinnamon is regarded most superior among all the cinnamon products available in the global market given its higher quality acquired due to the unique geographic and climatic conditions prevailing in Sri Lanka. According to one writer: Ceylon never held a monopoly over the production of cinnamon; neither did it have a monopoly over the supply to the European factors. The Spice Islands and the coastal belt of Southern India were known to produce cinnamon, but it was cinnamomum zeylanicum which so surpassed the produce of the other regions in quality that it acquired, in the words of a nineteenth century English writer, a “natural monopoly” in the markets of Europe.13

It is, therefore, patently clear that Ceylon Cinnamon qualifies as a GI, and as with Ceylon Tea, it has been registered as a certification mark in Sri Lanka by the Export Development Board (Fig. 6.3).14 Internationally, the Ceylon Cinnamon mark has been registered as certification marks or trade marks in significant markets such as the United States, the European Union, Colombia, Peru, Mexico, Australia and the Netherlands. Notably, in the European Union, an application was filed by the Sri Lankan authorities to register Ceylon Cinnamon as a protected geographical indication (“PGI”) under the EU Regulation on Quality Schemes for Agricultural Products and Foodstuffs (“Regulation on Quality Schemes”).15 Thus, Ceylon Cinnamon became the first GI from Sri Lanka to be published in the Official Journal of the European Union in terms of Article 50 of 10 See R Dasanayake, “Cinnamon: A Spice of an Indigenous Origin–Historical Study” (2016) 1 Narrations 46; V Moonesinghe, “Cinnamon, The Mysterious Island Spice” Roar Media (15 March 2017) https://roar.media/english/life/food/cinnamon-the-mysterious-island-spice. 11 L Suriyagoda et al., “Ceylon Cinnamon: Much More than Just a Spice” (2021) 3 Plants, People, Planet 319, 321. 12 PD Abeysinghe, PCG Bandaranayake, and R Pathirana, “Botany of Endemic Cinnamomum Species of Sri Lanka” in R Senaratne and R Pathirana (eds), Cinnamon: Botany, Agronomy, Chemistry and Industrial Applications (Springer 2020), 91. 13 V Samaraweera, “The Cinnamon Trade of Ceylon” (1971) 8 Indian Economic & Social History Review 415, 415–416. 14 Kamardeen (n 9) 424. 15 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, [2012] OJ L 343/1.

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Fig. 6.3 Ceylon Cinnamon logo

the Regulation on Quality Schemes. However, strangely, Germany, which imports a variety of cinnamon products, filed an opposition. The opposition was filed in terms of Article 51 of the Regulation on Quality Schemes. It was on the basis that “Ceylon Cinnamon,” which translates into German as “Ceylon-Zimt,” is likely to conflict with the botanical name used to identify the plant, namely, “Cinnamomum zeylanicum.” In its opposition, Germany argued that the registration of Ceylon Cinnamon as a PGI would conflict with the use of the plant’s botanical name in Germany. Germany’s position was that Ceylon Cinnamon had become a generic descriptor of the plant itself. Fortunately, Sri Lanka was able to defeat this opposition—Ceylon Cinnamon becoming Sri Lanka’s first GI to be registered as a PGI in the European Union.16 Had Sri Lanka failed to do so, it could have significantly jeopardised not only the cinnamon industry but also Sri Lanka’s tea industry, which relies on “Ceylon” to designate tea originating from Sri Lanka. Apart from Ceylon Tea and Ceylon Cinnamon, there are other Sri Lankan products that potentially qualify as GIs. Examples include Ceylon Saphire, Ruhunu Curd, Dumbara Mats, Ambalangoda Masks, Moratuwa Furniture, and Beeralu Lace. But unfortunately, these products have not yet been legally recognised as GIs in Sri Lanka, as neither the relevant government agency nor the producers/traders have applied for certification marks in respect of them. It has been posited that “[t]he reason for this lies in both gaps in the legal protection for these products and the unawareness among many producers of the potential returns that might be yielded from the further sales that could be promoted by a higher degree of legal protection and marketing of the products.”17 As such, there is a need to consider the adequacy of Sri Lanka’s legal framework for the protection of GIs and, importantly, the strategies that can be adopted to reap the maximum benefits of Sri Lankan GIs.

16 European Commission, Commission Implementing Regulation (EU) 2022/144 of 2 February 2022 entering a name in the register of protected designations of origin and protected geographical indications (Ceylon Cinnamon (PGI)), [2022] OJ L-24/3. 17 Kamardeen (n 9) 410.

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6.2 The International Framework for the Protection of Geographical Indications There are several international instruments that specifically deal with the protection of GIs. Before moving on to dealing with Sri Lanka’s legal framework and the concerns that have been raised regarding its adequacy, it is necessary to set out the international framework facilitating the protection of GIs. As you will see, an understanding of the international framework is needed to respond to the concerns raised by Sri Lankan academics and the industry. Among the various treaties administered by the World Intellectual Property Organization (“WIPO”), the Paris Convention for the Protection of Industrial Property (“Paris Convention”)18 was the first to contain a provision dealing with the false indications of origin. Thus, Article 10(1) of the Paris Convention, read with Article 9, provides that where the national laws of a convention state provide for the seizure of goods unlawfully bearing a trade mark or trade name upon importation, then those measures must also apply to cases of false indications of source. Although the term “source” goes beyond purely geographical connotations, Article 10 applies “mainly to false indications of geographical source, including appellations of origin.”19 In addition, Article 10ter of the Paris Convention provides that contracting states must ensure “legal remedies effectively to repress” the acts referred to in Article 10. Sri Lanka became a party to the Paris Convention in 1952. Sri Lanka is also party to the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods,20 which deals explicitly with false/deceptive indications of source in greater detail. For instance, the Agreement provides for the manner in which goods bearing false/deceptive indications may be seized by the customs authorities.21 It also prohibits the use, in connection with the sale, display, or offering for sale of any goods, of all indications in the nature of publicity capable of deceiving the public as to the source of the goods.22 Importantly, TRIPS, which is a WTO-administered treaty, protects GIs by mandating in Article 22 that all WTO members must provide the legal means for interested parties to prevent the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good,23 or any use which constitutes an act of 18

Paris Convention for the Protection of Industrial Property, 20 March 1883, 21 U.S.T. 1583; 828 U.N.T.S. 305, as amended on 28 September 1979. 19 GHC Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI 1968), 139. 20 Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, 14 April 1891, 828 U.N.T.S. 389, as revised on 31 October 1958, with the Additional Act of Stockholm of 14 July 1967. 21 Ibid, Art. 2. 22 Ibid, Art. 3bis. 23 TRIPS, Art. 22.1(a).

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unfair competition within the meaning of Article 10bis of the Paris Convention.24 In addition, WTO members must, ex officio if their laws permit, or at the request of an interested party, refuse, or invalidate the registration of a trade mark that contains or consists of a GI with respect to goods not originating in the territory indicated, if the use of the indication in the trade mark for such goods is of such a nature as to mislead the public as to the true place of origin.25 TRIPS also requires WTO members to provide additional protection in respect of wines and spirits. Accordingly, Article 23 of TRIPS requires WTO members to afford the protection set out in Article 22 to wines and spirits and extend that protection “even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as ‘kind,’ ‘type,’ ‘style,’ ‘imitation,’ or the like.”26 Given the extent of the WTO membership (which includes Sri Lanka) and the harmonising effect of TRIPS through its minimum standards, the GI provisions in TRIPS are arguably the most influential. The international instruments mentioned above contain substantive provisions of law that obligate countries party to those instruments to protect GIs under their national laws to the extent required. Notably, neither the WIPO treaties (i.e., the Paris Convention and Madrid Agreement on False or Deceptive Indications) nor TRIPS require national laws to provide for the registration of GIs as such. What is critical is for national laws to ensure that GIs are protected, and countries have done so in numerous ways. There are other WIPO-administered treaties that deal with procedural matters. The Lisbon Agreement for the Protection of Appellations of Origin (“Lisbon Agreement”)27 and the Geneva Act of the Lisbon Agreement (“Geneva Act”)28 provide for the international protection of appellations of origin and GIs through a single “international registration” procedure with WIPO. Together, the Lisbon Agreement and the Geneva Act of that Agreement are referred to as the “Lisbon system.” Sri Lanka has not joined the Lisbon system. Also relevant to GIs is the Madrid Agreement Concerning the International Registration of Marks (“Madrid Agreement”)29 and its Protocol.30 Although the Madrid system caters to the international registration of marks under a WIPO-administered process, the system generally applies to “marks,” including certification and collective marks. Therefore, countries such as Sri Lanka, where GIs are registered as 24

Ibid, Art. 22.1(b). Ibid, Art. 22.2. 26 Ibid, Art. 23.1. 27 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 31 October 1958, 923 U.N.T.S. 205, as amended on 28 September 1979 (“Lisbon Agreement”). 28 Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, 20 May 2015, WIPO Doc L1/DC/19 (“Geneva Act”). 29 Madrid Agreement Concerning the International Registration of Marks, 14 April 1891, 23 U.S.T. 1353, 828 U.N.T.S. 389, as amended on 28 September 1979 (“Madrid Agreement”). 30 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 27 June 1989, S Treaty Doc No 106–41. 25

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certification marks, can benefit from this system. However, at the time of writing, Sri Lanka had not joined the Madrid system, although there is an indication that it intends to join the Madrid Union.31 The next part of this chapter examines the adequacy of Sri Lanka’s legal framework on GIs against two specific considerations. The first concerns Sri Lanka’s obligations under the various international treaties to which it is a party. The second relates to particular concerns raised by the academic community and the industry, which allude to inadequacies in the current legal approach.

6.3 The Adequacy of Sri Lanka’s Legal Framework for the Protection of Geographical Indications Several provisions in the IP Act collectively protect GIs. It is necessary to consider these provisions together to fully determine their adequacy in meeting the requirements under international law. Broadly speaking, these provisions protect GIs under three regimes—i.e., a sui generis regime that specifically caters to the protection of GIs, protection through the regime for certification or collective marks, and the regime for unfair competition.32

6.3.1 The Sui Generis Regime Part IX of the IP Act specifically deals with the protection of GIs. This part of the IP Act contains only a single provision—i.e., section 161—that guarantees a sui generis form of protection to GIs.33 A sui generis regime is one that provides for a specialised mechanism for the protection of the relevant subject matter, in this case, GIs, listing out the specific requirements for and the rights granted as part of that protection.34 For the purposes of the sui generis GI provision, the term “geographical indication” is defined by referring to the definition that has been set out in section 101 of the IP Act.35 Accordingly, a “geographical indication” means:

31

M Thavapalakumar, “International Trademarks Straight from Sri Lanka by Mid-2020” The Sunday Morning (23 February 2020) https://www.themorning.lk/international-trademarks-straightfrom-sri-lanka-by-mid-2020/. 32 Kamardeen (n 9) 420–415. 33 This is likely to change when the GI Bill is passed into law. 34 Kamardeen (n 9) 414. 35 IP Act, section 161(5). Note that the GI Bill shifts this definition from the part of the IP Act dealing with trade marks to the part that deals with GIs. The implications of this are considered later on when discussing the provisions of the GI Bill.

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an indication which identifies any goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.36

In terms of the protection conferred, the GI provision entitles any “interested party” to prevent three types of conduct that conflict with GIs. First, section 161(1)(i) of the IP Act prohibits the use of any means in the designation or presentation of goods that indicates or suggests that the underlying goods, “including an agricultural product, food, wine, or spirit,” in question originate in a geographical area other than the true place of origin in a manner that misleads the public as to the geographical origin of those goods. The protection offered by this provision is identical in substance to what is expected under Article 22.2(a) of TRIPS. A notable feature of the Sri Lankan provision is that it explicitly refers to agricultural products, foods, wines, and spirits. Presumably, the reference to agricultural products is in view of the country’s need to protect GIs relating to agricultural products such as tea and cinnamon. However, it is unclear why wines and spirits (mainly produced overseas) have been given a special mention. In any case, the specific mention of these classes of goods does not add anything in substance. After all, TRIPS Article 22.2(a) obligates WTO members to guarantee the protection of GIs irrespective of the nature of the underlying goods. Second, section 161(1)(ii) of the IP Act prohibits any use of a GI that constitutes an act of unfair competition within the meaning of section 160.37 Section 160 of the IP Act is a general provision that offers broad protection to address situations of unfair competition. In Article 22.2(b), TRIPS requires WTO members to permit interested parties to prevent “any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention.” Thus, it is clear that section 161(1)(ii) is included so that Sri Lanka ensures that its unfair competition law extends to GIs, as required by TRIPS, read with the Paris Convention. Third, section 161(1)(iii) of the IP Act prohibits the use of a GI identifying goods, including agricultural products, foods, wines, or spirits, not originating in the place indicated by the GI in question or identifying goods not originating in the place indicated by the GI in question, even where the true origin of the goods is indicated, or the GI is used in translation or accompanied by an expression such as “kind,” “type,” “style,” or “imitation” or the like. This provision adds to the protection afforded to GIs under section 161(1)(i) in meaningful ways. It permits interested parties to prevent the use of GIs for goods not truly originating from the place indicated by the GI, even in situations where the packaging or labels indicate the actual place of origin. For instance, section 161(1)(iii) will permit an interested party to prevent a third party from using Ceylon Tea on tea originating from India, even where the packaging discloses the product’s true place of origin. This provision extends the baseline protection to include situations where GIs are translated or used with words such as “kind,” “type,” or “like.” For instance, this provision will allow interested parties to 36

Ibid, section 101. The role of section 160 of the IP Act (which deals with unfair competition) in protecting GIs is considered at a later point in this chapter.

37

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prevent the use of a phrase such as “tastes like Ceylon Tea” on the packaging of a tea product originating from anywhere else. Under TRIPS, WTO members are obligated to afford this form of extended protection only to wines and spirits. However, in Sri Lanka, the absolute form of protection is extended to all goods, including agricultural products, foods, wines, and spirits, indicating that more extensive (or TRIPS-plus) protection in respect of GIs is afforded under Sri Lankan law. In addition, section 161(2) provides that the protection afforded to GIs under sections 103, 160, and 161 of the IP Act will be applicable against a GI which, although literally true as to the territory, region, or locality in which the goods originate, falsely represents to the public that the goods originate in another territory. This provision is modelled to give effect to Article 22.4 of TRIPS and deals with possible conflicts that could arise from the use of homonymous GIs.38 A homonymous GI is one that, in part or whole, has the exact spelling as, or sounds the same as, a GI for any goods having a different geographical origin. Homonymous GIs often occur when regions in different countries share the same name and produce goods with specific qualities or characteristics essentially attributable to the respective regions. Generally, homonymous GIs can coexist. But conflicts could arise where products on which homonymous GIs are used are sold into the same market. The problem is amplified when homonymous GIs are used on identical products. In such situations, there is a possibility that concurrent use of homonymous GIs in the same territory will confuse or mislead consumers, especially where the products represented by one GI do not share the same unique qualities or characteristics of goods designated by the other. Accordingly, where such homonymous uses of GIs misleads, section 161(2) of the IP Act provides a remedy, bringing Sri Lankan law into conformity with Article 22.4 of TRIPS. Section 161(3) of the IP Act deals specifically with the protection of homonymous GIs. According to this provision, in the case of homonymous GIs for goods, including agricultural products, foods, wines, or spirits, protection shall be given to each indication, subject to limitations in section 161(2). In other words, a homonymous GI receives the same protection as any other GI but so long as they are not used to falsely represent to the public that the underlying goods originate in another territory, such as a place associated with another GI. The provision further provides that the relevant Minister in charge of the subject, “in case of permitted concurrent use of such indications, shall determine by prescribed practical conditions under which the homonymous indications in question will be differentiated from each other, taking into consideration the need to ensure equitable treatment of the producers concerned and the protection of consumers from false or deceptive indications.”39 This provision aims to give effect to Article 23.3 of TRIPS, which mandates the protection of homonymous GIs relating to wines. The explanation for including such a provision in TRIPS specifically for wines is that “in a few instances, wine regions worldwide 38

S Strauch and K Arend, “Article 22.4–Protection of Geographical Indications” in P–T Stoll, J Busche, and K Arend (eds), WTO—Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 405. 39 IP Act, section 161(3).

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have homonymous names because immigrants from the ‘old’ world often named their new places after their motherlands.”40 In comparison, the Sri Lankan provision provides broader protection as it applies to all kinds of goods, including agricultural products, foods, wines, or spirits. As such, section 161(3) of the IP Act affords a TRIPS-plus standard of protection to homonymous GIs. Lastly, Articles 22.3 and 23.2 of TRIPS deal with the registration of marks that conflict with GIs. Article 22.3 mandates WTO members to refuse the registration of a mark (at the request of an interested party or ex officio) that contains or consists of a GI with respect to goods not originating in the territory indicated if the use of the mark is of such a nature that it will “mislead the public as to the true place of origin” of the underlying goods. Article 23.2 provides the same protection specifically for wines and spirits without incorporating the misleading use criterion.41 In order to determine the extent to which GIs are protected against the registration of conflicting trade marks, it is necessary to refer to section 103 of the IP Act, which deals with the various grounds upon which trade marks can be denied registration.42 In particular, section 103(1)(f) provides that a mark shall not be registered if it is likely to mislead trade circles or the public as to the geographical indication of the underlying goods concerned. In essence, when a trade mark intended to be registered consists of a geographical indication and its use is likely to mislead the public or trade circles, such a mark must be denied registration. According to Karunaratna, who provides a helpful commentary on Sri Lankan intellectual property (“IP”) law, section 103(1)(f) affords a negative form of protection to GIs.43 In terms of its effect, this provision transposes Article 22.3 of TRIPS into Sri Lankan law. However, for wines and spirits, Article 23.2 of TRIPS requires marks conflicting with GIs to be denied registration even without any confusion or deception. Thus, the protection is in more absolute terms for wines and spirits. But section 103(1)(f) of the IP Act does not cater to the additional protection that GIs for wines and spirits attract under TRIPS. In this regard, there is another provision that has to be considered. That is, section 103(1)(h) of the IP Act, in terms of which marks that are in their ordinary signification geographical names, have to be denied registration. The important point about this ground for the inadmissibility of marks is that it does not require establishing deception or confusion. According to Karunaratna, “a mark consisting of the word “Nuwara Eliya” for tea is inadmissible for registration.”44 Arguably, this can be extended to wines and spirits too. However, here, the reference is to geographical names and not to geographical indications. There is a difference between the two. 40

I Calboli, “Expanding the Protection of Geographical Indications of Origin under TRIPS: ‘Old’ Debate or ‘New’ Opportunity?” (2006) 10 Marquette Intellectual Property Law Review 181, 192. 41 S Strauch and K Arend, “Article 23–Additional Protection for Geographical Indications for Wines and Spirits” in P–T Stoll, J Busche, and K Arend (eds), WTO—Trade-Related Aspects of Intellectual Property Rights (Koninklijke Brill NV 2009), 412. 42 These grounds are dealt with in greater detail in Chap. 5 that deals with trade marks. At this point, only the provisions relevant to GIs are considered. 43 DM Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Sarasavi Publishers 2010), 301. 44 Ibid.

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The latter includes indicia that are not in their ordinary sense a geographic name but nevertheless denote goods originating from a specified territory. An example of this is “Basmati,” which designates long-grain rice originating from the Himalayan foothills, although no such name exists on our maps. As such, in view of this difference between geographic names and geographical indications (the latter being broader), section 103(1)(h) of the IP Act is limited in its scope. Thus, as Karunaratna has pointed out, section 103(1)(h) is capable of preventing the registration of marks that conflict with GIs (for all goods, including wines and spirits) only to the extent that they qualify as geographical names. This means that there is a problem in how section 103(1)(h) of the IP Act gives effect to Article 23.2 of TRIPS. In any case, as noted in the preceding chapter on trade marks, section 103(1)(h) is problematic for other reasons, and we have recommended that it should be removed altogether from the statute.45 Accordingly, it may be best to expressly include a new ground for the inadmissibility of marks that reflects the protection afforded by Article 23.2 of TRIPS. Singapore provides a helpful example in this regard when its trade mark statute provides that a trade mark shall not be registered “if it contains or consists of a geographical indication in respect of a wine or spirit and the trade mark is used or intended to be used in relation to a wine or spirit not originating from the place indicated in the geographical indication.”46 A similar provision could be added to section 103(1) of the IP Act, which protects GIs not only for wines and spirits but also for other goods, including agricultural and food products, which are of importance to Sri Lanka. Before moving on to the next topic, one last point must be addressed about Sri Lanka’s sui generis GI regime. Unlike in countries such as India, the sui generis GI provision in the IP Act does not provide for the registration of GIs as such. In 2018,47 section 161 of the IP Act was amended to include a new subsection. According to that, the Minister in charge of the subject may “prescribe any geographical indication in respect of any goods or products for the purpose of this Act.”48 However, the true effect of this new provision is unclear, although it appears to have been introduced with the intent of providing for the registration of Sri Lankan GIs.49 As far as we know, no Sri Lankan GI has been prescribed by the Minister pursuant to this 45

See discussion under subheading 5.2.2.4 in Chap. 5. Trade Marks Act 1998, section 7(4)(b). 47 See Intellectual Property (Amendment) Act 2018, section 2. 48 IP Act, section 161(4A). 49 Office of the Cabinet of Ministers, Press Briefing of Cabinet Decision Taken on 18 October 2016 http://www.cabinetoffice.gov.lk/cab/index.php?option=com_content&view=article&id=16& Itemid=49&lang=en&dID=7135 (“…since a legal framework relating to the registration of GIs in Sri Lanka is not in operation, the producers and exporters are faced with problems. Therefore, as per the recommendation of the Officials’ Committee which had examined this matter, the proposal made by Hon. Rishad Bathiudeen, the Minister of Industry and Commerce, to publish the Bill prepared to amend the Intellectual Property Act, No.36 of 2003, vesting the authority with the Minister in charge of the subject to issue orders to safeguard, register and certify any product that originated in Sri Lanka, in the Government Gazette and thereafter to present the same in the Parliament, was approved by the Cabinet”). 46

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amendment. Interestingly, in 2020, the Cabinet of Ministers had yet again decided to amend the IP Act “to establish a comprehensive and specific legal framework to register geographical indications in Sri Lanka.”50 At the time of writing, the Sri Lanka Government had introduced its GI Bill in Parliament, which, if enacted, will achieve that end.51 Be that as it may, under the current legal framework, foreign GIs are protected in Sri Lanka, without the need for any form of registration, so long as they are protected in their countries of origin. Interested parties can utilise the remedies available under sections 103, 160, and 161 of the IP Act. As far as Sri Lankan GIs are concerned, they may be protected and recognised locally as certification marks, as in the case of Ceylon Tea and Ceylon Cinnamon. This approach is consistent with TRIPS and the Paris Convention, as WTO members and members of the Paris Union have the freedom to determine how GIs are to be protected, so long as the minimum levels of protection is guaranteed.

6.3.2 Certification and Collective Marks Nothing in the IP Act nor any other law provides for a GI registration system in Sri Lanka. This will be the case until the GI Bill is passed into law. So far, Sri Lankan GIs have been protected under the system for marks. Many common law countries have preferred to use the system for the protection of certification marks or collective marks as a means to protect GIs.52 In contrast, civil law countries, mainly comprising countries in continental Europe and their colonies, have traditionally adopted a registration system for GIs.53 Regardless of the means of protection (whether by way of registration as a GI as such or as a mark), it is vital for Sri Lankan GIs to be protected locally. After all, unless GIs are protected in their countries of origin, they may not receive protection in other jurisdictions.54 50

Office of the Cabinet of Ministers, Press Briefing of Cabinet Decision Taken on 12 October 2020 http://www.cabinetoffice.gov.lk/cab/index.php?option=com_content&view=article&id=16& Itemid=49&lang=en&dID=10665. 51 The provisions of the GI Bill are considered later on in this chapter. 52 D Gervais, “A Look at the Geneva Act of the Lisbon Agreement: A Missed Opportunity?” in I Calboli and WL Ng-Loy (eds), Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia–Pacific (Cambridge University Press 2017), 125. 53 BR Hopper, “Whither (Wither?) Geographical Indications? The Case Against Geographical Indications and For Appellations of Origin in an Era of Glocalization” (2016) 16 Chicago-Kent Journal of Intellectual Property 210, 226. 54 For instance, Article 24.9 of TRIPS provides that “[t]here shall be no obligation under this Agreement to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country.” The protection afforded under the Lisbon Agreement extends to appellations of origin only to the extent that they are protected as such in their countries of origin. Similarly, the Geneva Act to the Lisbon Agreement protects appellations of origin and GIs that are protected in their countries of origin.

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Part V of the IP Act dealing with “Marks and Trade Names” contains several provisions that deal with certification and collective marks. A certification mark is a “mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics.”55 A collective mark is “any visible sign designated as such and serving to distinguish the origin or any other common characteristic of goods or services of different enterprises which use the mark under the control of the registered owner.”56 Both certification and collective marks can be used as a mechanism to protect GIs because they can certify or designate the origin of the underlying goods/services, including geographic origin. In addition, both types of marks can be used to certify/designate the characteristics of the underlying goods/services. But an important difference between the two is that the owner of a certification mark cannot carry out any business involving the supply of goods or services of the kind certified.57 This restriction is included to avoid conflicts of interest between the certifying entity and producers or traders.58 Between the two categories of marks, it has been suggested that certification marks are the “most suitable to protect GIs because they can underpin the requisite product origin and quality and/or characteristics that are embodied in the GI product.”59 The definition of a certification mark expressly refers to both “origin,” “mode of manufacture,” and “quality” of products, which are all factors that are important for GIs. Notably, an application for a certification mark can only be filed if it “is accompanied by a copy of the conditions governing the use of the mark duly certified by the applicant.”60 The conditions must indicate the name of the person authorised to use the mark, the characteristics to be certified by the mark, how the owner is to test those characteristics and supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.61 From the perspective of GIs, the conditions relating to the characteristics of the goods certified and how such characteristics are to be tested and maintained will be particularly relevant. Indeed, GIs such as Ceylon Tea and Ceylon Cinnamon have been registered as certification marks in Sri Lanka. Section 142 of the IP Act extends the provisions relating to trade marks to certification marks.62 Thus, “signs” for the purposes of certification marks are signs capable of distinguishing goods or services that are certified from those that are not certified.63 Section 142(3) of the IP Act is significant for GIs. It provides:

55

IP Act, section 101. Ibid. 57 Ibid, section 142(6)(a). 58 Kamardeen (n 9) 414. 59 Ibid, 413. 60 IP Act, section 142(4). 61 Ibid, section 142(5). 62 Ibid, section 142(1). For collective marks, refer to section 138(1). 63 Ibid, section 142(2), read with section 101. For collective marks, refer to section 138(2). 56

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Notwithstanding the provisions of section 103, a certification mark which consists of a sign or indication which may serve in trade to designate the geographical origin of the goods and services may be registered.64

This provision has enabled GIs to be registered as certification marks. A few observations are worth noting at this point regarding this provision. First, section 142(3) provides that a “sign or indication which may serve in trade to designate the geographical origin of the goods and services” may be registered as a certification mark. This means that not only signs/indications that are truly geographic names but also geographic names that are no longer in official use, such as “Ceylon,”65 as well as non-geographic terms, such as “Basmati,” which are capable of designating goods originating from a particular territory, may be registered as certification marks. Second, since section 142 operates by extending the IP Act’s trade mark provisions to certification marks, the opening clarification to section 142(3) (“[n]otwithstanding the provisions of section 103”) had to be added. This ensures that the general prohibition in section 103 against the registration of marks that designate the geographic origin of goods/services will not disqualify the registration of GIs as certification marks. Third, section 142(3) comes with a proviso. An owner of a certification mark cannot prevent its use by third parties “in accordance with honest practices in industrial or commercial matters and in particular by a person who is entitled to use a geographical name.” A similar restriction applies in respect of trade marks by virtue of section 122(a) of the IP Act. In essence, the rights associated with certification marks are not absolute, just as for trade marks. Subject to the aforesaid limitations, GIs that are registered as certification marks will benefit from the rights associated with such marks, in addition to the sui generis protection afforded to GIs under the IP Act. Accordingly, where a GI is registered as a certification mark, its owner has the right to bring infringement proceedings under section 142(7) of the IP Act against any third party that makes use of that GI in a misleading manner.66 However, this will not prevent the certification mark owner from bringing proceedings under section 161 of the IP Act, specifically protecting GIs. There might be situations where owners of GI-related certification marks may have to rely on the stronger GI-specific protection afforded to them under section 161.67 64

For collective marks, refer to section 138(3) of the IP Act. Kamardeen (n 9) 418. 66 For collective marks, refer to section 139(4) of the IP Act. 67 Take the following hypothetical example. Assume that a confectionary product made out of a blended tea drink is manufactured in the small US town of Ceylon in Minesota. Assume also that the manufacturer of this product decides to market and sell this product as Ceylon Tea-Candy (the packaging indicates this). Assume further that this product is imported into Sri Lanka and sold in the local market, but the packaging specifically says that it is a “Product Made in the USA.” For obvious reasons, the Sri Lanka Tea Board, as owner of the Ceylon Tea certification mark, will have an interest in preventing the circulation of this product. However, since the packaging clearly indicates that the product is from the United States, and as a matter of fact, the product is manufactured in Ceylon, 65

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6.3.3 Unfair Competition Part VIII-Chap. XXXII of the IP Act contains a single provision (section 160) that offers a broad range of protection to proprietors of IP. Therefore, it is not surprising that aspects of section 160 relate to the protection of GIs. Indeed, ensuring that Sri Lanka’s unfair competition provision extends to GIs is essential, as Article 22.2(b) of TRIPS mandates WTO members to guarantee that GIs are protected against any use that constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention. Section 160(1) of the IP Act defines unfair competition in very broad terms. Thus, any act or practice “carried out or engaged in, in the course of industrial or commercial activities, that is contrary to honest practices shall constitute an act of unfair competition.” The apparent breadth of this provision becomes evident when the scope of section 160 is considered. Thus, among other things, it applies to a wide variety of acts and practices that could cause confusion among consumers,68 damage the goodwill or reputation of traders,69 mislead the public,70 or falsely discredit traders.71 For the purposes of protecting GIs, section 160(4)(a), read with section 160(4)(b)(iv), provides that any act carried out in the course of commercial activity, such as advertising and promotion, that misleads as to the geographical indication of a product amounts to an act of unfair competition. Thus, “any person or enterprise or association of producers, manufacturers, or traders,” which is broad enough to include parties interested in GIs, aggrieved by an act of unfair competition, may institute proceedings in court to seek out an injunction or claim damages.72

6.4 Calls for a Domestic Register of Geographical Indications So far, we have discussed the salient features of Sri Lanka’s statutory legal framework for the protection of GIs. What is notable is that multiple regimes work together Minnesota, the manufacturer may have an entitlement to use Ceylon to indicate the true origin of the goods. As such, it is somewhat doubtful whether the Tea Board will succeed in an infringement action under the certification marks regime. This is in view of section 122(b) and the proviso to section 142(3) of the IP Act that limits the exercise of rights relating to marks. However, since Ceylon Tea is a GI, the Tea Board as an “interested party” is likely to be able to bring an action in terms of section 161(1)(iii), which entitles the owner of a GI to prevent its unauthorised use “even where the true origin of the goods is indicated.” As such, this hypothetical example demonstrates that where protection of a GI under the certification marks regime hits a hurdle, the sui generis GI regime can provide relief. 68 IP Act, section 160(2). 69 Ibid, section 160(3). 70 Ibid, section 160(4). 71 Ibid, section 160(5). 72 Ibid, section 160(7).

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to protect GIs. The discussion focussed on how the Sri Lankan regime compares to the protection of GIs under the various international IP treaties to which Sri Lanka is a party. In most areas, the Sri Lankan framework meets the standards of protection required under international law. In particular, neither TRIPS nor the Paris Convention mandates a GI registration system. However, as was noted in the introductory part of this chapter, the academic community and the industry have raised concerns about the disadvantages that Sri Lankan GIs have faced in view of the delays in implementing a domestic GI registration system. While some of these concerns are misplaced, we believe that introducing a separate register for GIs has its benefits. In this part, we consider these concerns and respond to them to provide ways of improving the efficacy of the Sri Lankan GI regime while ensuring that local GIs are assured protection in the global market.

6.4.1 The Concerns and Perceptions of Local Industries and Academics In recent times, local industries that rely on GIs to promote their goods globally have raised concerns about the delays in implementing a registration system for GIs in Sri Lanka. For instance, the Spices and Allied Products Producers’ and Traders’ Association, which represents the interests of cinnamon producers, has taken the view that “GI registration will not only help [producers] to market and promote Sri Lankan spices and allied products but also to safeguard them against the violators of the law in the international market.”73 Indeed, local industries have attributed the difficulty in obtaining protection for Sri Lankan GIs in other jurisdictions, such as the European Union, to the lack of a domestic GI registration for those GIs.74 The plea on the part of local industries for a GI registration system also finds support in academic discourse. For instance, Pathiraja, advocating for a domestic GI registration system, has claimed that despite their importance, GIs have received less attention in Sri Lanka, resulting in major issues in the development of the law relating to GIs.75 Wijesinghe has suggested that providing a proper system of domestic registration is a fundamental requirement for a successful GI regime and that protection must at least be extended with registration procedures facilitating the proper legal protection of all products which have intrinsic qualities inherited by their place of

73

See “Geographical Indication for Ceylon Cinnamon Soon” Daily Mirror (14 August 2014) https:// www.dailymirror.lk/economy/geographical-indication-for-ceylon-cinnamon-soon/126-52913. 74 See “Decision to Amend IP Law to Give ‘Cinnamon’ GI Protection Hailed” Daily Mirror (28 October 2016) https://www.dailymirror.lk/article/Decision-to-amend-IP-law-to-givecinnamon-GI-protection-hailed-118237.html. 75 PMAS Pathiraja, “The Protection of Geographical Indications in Sri Lanka: Need of a Registration System” in Proceedings of the 17th International Postgraduate Research Conference, University of Kelaniya, Sri Lanka (December 2016) http://repository.kln.ac.lk/handle/123456789/16086.

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origin.76 Similarly, De Silva has suggested that a domestic register of GIs will provide a suitable mechanism for Sri Lankan GIs to attract protection in countries where there is a good market for Sri Lankan products.77 Adding to this discourse, Kamardeen has argued that “Sri Lanka could, and perhaps should, consider improving its current GI regime by implementing a national GI registry.”78 In another instance, Wijesinghe and Ariyaratna, positing that Sri Lanka should follow the Indian approach, have stated that “[t]he most important feature of the Indian legislation is that it provides a clear and efficient registration procedure and registry for GIs.”79 Others, too, have referred to the Indian model to support their calls for a domestic GI register.80 More recently, Perera has explored the utility of a domestic GI register and concluded that its introduction would ensure an effective regime for GI protection in Sri Lanka, which is needed for Sri Lankan producers to benefit meaningfully from GIs.81 We do not necessarily disagree with the position that Sri Lanka could benefit from a domestic GI register. However, some of the reasons echoed by local industries and justifications put forward by the academic community in their calls for a local register are misconceived. It is crucial to address these misconceptions, as they could influence the country’s national policy on GIs in the wrong way. For this reason, it is necessary to clear the air so that there is clarity as to why Sri Lanka should introduce a domestic GI register and what other strategies the country should adopt to benefit from its introduction. One major misconception we hope to set aside is the incorrect belief that a domestic or national GI register is a prerequisite or a precondition to secure international registration for Sri Lankan GIs. In the industrial community, stakeholders of the cinnamon industry had hailed the Sri Lankan Government’s decision to grant GI status to Ceylon Cinnamon and include it in a domestic GI register. In their view, it is a “necessary step for international registration” of Ceylon Cinnamon.82 The academic community has expressed similar sentiments. For

76

SS Wijeshinghe, “The Protection of Geographical Indications in Developing Countries: The Case of Ceylon Tea” (2015) 1 BALANCE 7, 23. 77 LM De Silva, “Geographical Indications—Need of a Registration System for Sri Lanka” in Proceedings of 8th International Research Conference, General Sir John Kotelawala Defence University, Sri Lanka (November 2015), 43 http://www.kdu.ac.lk/proceedings/irc2015/2015/law009.pdf. 78 Kamardeen (n 9) 410. 79 WASS Wijesinghe and BARR Ariyaratna, “The Protection of Geographical Indications in Developing Countries: The Case of Ceylon Tea” in Proceedings of the Open University of Sri Lanka Annual Academic Session, Open University, Sri Lanka (January 2015), 3 http://www.ou.ac.lk/ours/ wp-content/uploads/2017/04/HS01-01-F.pdf. 80 See, e.g., De Silva (n 77) 47, Wijesinghe (n 76) 7, Pathiraja (n 75) 184; Kamardeen (n 9) 432. 81 R Perera, “Geographical Indications (GI’s) & the Sri Lankan Perspective” (2020) 25 Bar Association Law Journal 339, 348. 82 See above n 74 and accompanying text.

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instance, Wijesinghe and Ariyaratna have claimed that “[r]egistration of Geographical Indications for a particular product in the home country is a prerequisite for international registration.”83 There are two issues concerning the claim above. First of all, as things currently stand, the perception among local industries and academics that Sri Lankan GIs can obtain international registration is gravely mistaken. Both the Madrid and the Lisbon systems provide for an international register and cater to international applications being made in respect of marks and appellations of origin/GIs, respectively. However, Sri Lanka has not joined either of the two systems, although there is an indication that it will join the Madrid system.84 Article 1(2) of the Lisbon Agreement provides that parties to the Special Union: undertake to protect on their territories, in accordance with the terms of this Agreement, the appellations of origin of products of the other countries of the Special Union, recognized and protected as such in the country of origin and registered at the International Bureau of Intellectual Property.

The above provision requires an appellation of origin (which is more narrowly defined than a GI)85 to be protected and recognised as such in the country of origin if it is to become eligible for international registration. In this regard, Carlos Correa has pointed out that “it is not sufficient for the country involved to protect its appellations under a general law. Each appellation has to benefit from distinct and express protection, stemming from a specific official or administrative act.”86 Thus, some form of official or administrative mechanism, which arguably could include a sui generis registration system, by which local appellations of origin are expressly and distinctly protected and recognised as such, is required to seek protection under the Lisbon Agreement. An appellation of origin protected in the country of origin as a certification or collective mark will not be eligible for international registration under the Lisbon Agreement.87 Had Sri Lanka been a party to the Lisbon Agreement, a domestic mechanism that distinctly and expressly protects Sri Lankan appellations of origin as such through an official or administrative process, such as a registration system, would have made perfect sense. Such a mechanism could have then paved 83

Wijesinghe and Ariyaratna (n 79), 3. See above n 31 and accompanying text. 85 An appellation of origin is a special kind of GI. The fundamental difference is that the link with the place of origin must be stronger in the case of an appellation of origin. The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin. In the case of GIs, a single criterion attributable to geographical origin is sufficient—be it a quality or other characteristic of the product—or even just its reputation. In addition, an appellation of origin as defined by Article 2(1) of the Lisbon Agreement refers to any “geographical denomination of a country, region, or locality.” Whereas a GI is broader even in this regard, as indications such as Basmati that are not geographical denominations of a country, region, or locality can also be regarded as a GI. 86 CM Correa, Trade-Related Aspects of Intellectual Property Rights (2nd edn, Oxford University Press 2020), 207. 87 J Hughes, “Champagne, Feta, and Bourbon: The Spirited Debate about Geographical Indications” (2006) 58 Hastings Law Journal 299, 312–313. 84

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the way for denominations such as Ceylon Tea and Ceylon Cinnamon to secure international registrations under the Lisbon Agreement. Second, even assuming that Sri Lanka someday joins the Lisbon system, thereby enabling Sri Lankan GIs to secure international registration, the perception that a national or domestic GI register is a prerequisite or precondition to obtaining such international registration is also erroneous. This is in view of the Geneva Act to the Lisbon Agreement, which was adopted in March 2015. A perusal of Article 2(1) of the Geneva Act clarifies that it applies to both appellations of origin and GIs. Article 2(1) provides as follows: This Act applies in respect of: (i)

any denomination protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another denomination known as referring to such area, which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation; as well as

(ii)

any indication protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another indication known as referring to such area, which identifies a good as originating in that geographical area, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.

Article 2(1)(i) refers to appellations of origin and is comparable to the definition available in the Lisbon Agreement. At the same time, Article 2(1)(ii) refers to GIs in language similar to what is used in Article 22.1 of TRIPS. A noteworthy feature of the above provision is that it has dropped the “as such” language of the Lisbon Agreement.88 According to a publication of the WIPO,89 the Geneva Act accommodates the requirement of countries that use different legal systems to protect GIs, allowing countries to implement the protection provided by the Geneva Act either through a sui generis system or through the trade mark system using certification or collective marks.90 This means that through the Geneva Act, countries that protect appellations of origin and GIs as certification or collective marks can gain access to the Lisbon system.91 In view of this development, and assuming that Sri Lanka 88

Gervais (n 52) 127. WIPO, Report of the Director General to the 2020 WIPO Assemblies (WIPO 2020), 50. 90 Geneva Act, Art. 10(1) (“Each Contracting Party shall be free to choose the type of legislation under which it establishes the protection stipulated in this Act, provided that such legislation meets the substantive requirements of this Act”). 91 C Geiger et al., “Towards a Flexible International Framework for the Protection of Geographical Indications” (2010) 1 WIPO Journal 147, 151 (“Indeed, in the light of the diversity of the national systems in terms of protection of geographical indications across the world, it appears desirable, with a view to increasing the attractiveness of the Lisbon system, to abandon the requirement of protection of the appellation of origin ‘as such’ in the country of origin in order to overcome the doubt concerning the possibility of registering a name protected in the country of origin as a collective trade mark or a certification mark, provided of course that the name in question satisfies the definition of the object of protection as laid down in the Agreement”). 89

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becomes a party to the Geneva Act of the Lisbon Agreement, the perception that a domestic or national GI register is a prerequisite or precondition for Sri Lankan GIs to secure international registration is incorrect. Another common perception that we noted in the academic discourse is the idea that a national or domestic GI register will enable Sri Lanka GIs to be protected internationally. For instance, De Silva has recommended that implementing a registration system for GIs “will protect GIs at the international level.”92 In another instance, Perera, referring to the 2018 amendment to the IP Act, which he claims is the first step in “setting up a National GI registration process,”93 has argued that the amendment has initiated a process that will enable Sri Lankan GIs to seek “legal protection internationally.”94 Since Sri Lanka is not a party to the Lisbon or Madrid systems, Sri Lankan GIs have to be protected and enforced in every country where there is an interest to do so. In some countries, protection may only be secured by registering the GI in that country (e.g., India, which implements a GI register). This is also the case in the European Union. Sri Lankan GIs may be registered as certification or collective marks in other countries. Whereas no registration of any sort is required in certain countries for protection to be conferred (e.g., Malaysia and Singapore, although Singapore has recently introduced a GI register). However, in all these cases, TRIPS permits WTO members to require a particular GI for which protection is sought to be “protected” in the country of origin.95 Notably, “protected” does not mean registered under a sui generis system.96 It would suffice that a GI is registered in the country of origin as a certification or collective mark to be protected both locally and in other countries/territories where protection is sought. To clarify our stance, we are not saying that a domestic GI register will not give Sri Lankan GIs an advantage when seeking protection in other jurisdictions. However, this does not mean that Sri Lankan GIs will somehow be less protected without a domestic GI register. The introduction of a domestic GI register will not magically provide any additional protection to Sri Lankan GIs internationally. The crucial point is that interested parties must actively protect and enforce their GIs in Sri Lanka and overseas. Unless Sri Lankan GIs are actively protected and enforced, there is a potential that they may become generic and lose their legal status as GIs.97 Sri Lanka may not always have the same luck it had with its Ceylon Cinnamon PGI registration in the European Union. Finally, we wish to address the misconception that a domestic GI register will benefit Sri Lankan GIs under the Madrid system if and when Sri Lanka joins that 92

De Silva (n 77) 47. Perera (n 81) 346. 94 Ibid, 348. 95 TRIPS, Art. 24.9. 96 S Puustinen, “Geographical Indications, Trade Marks and the WTO dispute” (2003) 9 International Trade Law & Regulation 167, 168. 97 See DS Gangjee, “Genericide: the Death of a Geographical Indication?” in DS Gangjee (ed), Research Handbook on Intellectual Property and Geographical Indications (Edward Elgar 2016), 508. 93

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system. This perception originates from certain remarks that have been set out in Perera’s paper.98 In one instance, referring to Sri Lanka’s possible accession to the Madrid system, Perera has pointed out that this “will necessarily require the setting up of certain domestic procedures.”99 Immediately afterwards, Perera, having referred to the 2018 amendment to the IP Act, points out that it could be considered the beginning of a “national GI registration process.”100 In another instance, in the same paper, once again referring to the 2018 amendment to the IP Act, Perera has claimed that the “amendment to the IP Act appears to be more in line to set up a national GI registration mechanism to join legal relations based on the Madrid Agreement.”101 From all these statements, it is clear that Perera views the introduction of a domestic GI register as a suitable step in joining the Madrid system. However, that view is tainted with confusion. The Marid system deals with the international registration of marks. Not GIs. Under the Madrid system, an application for international registration can be filed in respect of a mark that is registered in a country belonging to the Special Union.102 Therefore, there is no necessity for Sri Lanka to introduce a domestic GI register to join, or benefit from, the Madrid system. Since the Madrid system applies to marks, which includes certification and collective marks, Sri Lankan GIs that have been registered as certification marks will already qualify for the international registration process of the Madrid system. For this reason, we are compelled to point out that the choice to join the Madrid system and the decision to introduce a domestic GI register have no real connection. In our view, it is essential that we address and dismiss the misconceptions set out above, as unless this is done, there is a danger that they could influence Sri Lanka’s national GI policy/strategy in the wrong way. Notably, problems arising from the failure to diligently protect and enforce Sri Lankan GIs in other jurisdictions where Sri Lankan products are traded should not be wrongly attributed to the delays in implementing a domestic GI register. Instead, the focus must shift to strategies that can effectively protect and enforce Sri Lankan GIs overseas. In the next part, we consider the strategies available to Sri Lanka and the relevant stakeholders to better protect and enforce Sri Lankan GIs in countries/territories with a good demand for Sri Lankan products. We also consider the utility of a sui generis domestic GI register and its proper place within that strategy.

98

Perera (n 81), 356–347. Ibid, 356. 100 Ibid. 101 Ibid, 357. 102 Madrid Agreement, Art. 1(2). 99

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6.4.2 Some Reflections on the Introduction of a Domestic Geographical Indications Register We do not necessarily oppose the introduction of a domestic GI register. However, we emphasise that a register of GIs should be introduced for the right reasons while other avenues to protect Sri Lankan GIs are explored. There are indeed benefits that could stem from a register that specifically caters to the registration of GIs. One benefit is that it can offer greater certainty and clarity with respect to the GIs that are protected and recognised in Sri Lanka. In this regard, Kamardeen has observed that: even though a system without registration still grants protection to the GIs, a registrationbased scheme can provide additional certainty for producers (and competitors who can be made aware of GI registrations). In turn, this greater certainty may lead to a greater willingness to invest in marketing and promoting the registered GIs on the part of GI producers and other interested parties.103

This is possibly true. A distinct GI register can clearly set out all the GIs, along with details such as their unique attributes and the geographic areas to which they relate, in a central register that can be made freely accessible to the public. A sui generis GI register can achieve a higher degree of clarity and certainty regarding the protected GIs and their scope, which is difficult (although not impossible) to achieve under the general certification/collective marks regime. The protection afforded to a foreign GI under national law generally depends on that GI being protected in the country of origin. Thus, before Sri Lankan GIs can be protected in other jurisdictions, it must first be established that they are protected in Sri Lanka. Establishing domestic protection is arguably more straightforward when it stems from a sui generis GI register. After all, a GI register recognises and protects GIs as such for what they are. Evidence of registration of a GI in a sui generis register maintained by Sri Lanka’s National Intellectual Property Office is capable of establishing the requisite protection in clear and certain terms. Whereas, for a GI registered as a certification or collective mark, there may still be a need to establish that the registration relates to a GI. Thus, theoretically, although a sui generis GI register does not afford more legal protection to GIs than what is already available under existing law, in practical terms, the added clarity and certainty could be beneficial to interested parties in asserting their rights, especially overseas. As noted earlier, it appears that the 2018 amendment to the IP Act was introduced with a registration system for GIs in mind.104 However, this amendment is problematic for a few reasons. First of all, there is a lack of clarity about its actual effect. Section 161(4A) of the IP Act provides that the “Minister may prescribe any geographical indication in respect of any goods or products for the purpose of this Act.” Does the inclusion of the words “for the purpose of this Act” have the effect of limiting protection afforded to GIs in terms of sections 103, 160, and 161 of the IP 103 104

Kamardeen (n 9) 434. See Office of the Cabinet of Ministers (n 49).

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Act to GIs prescribed by the Minister? If section 161(4A) is interpreted in this way, it is important to ensure that all Sri Lankan GIs are prescribed by the Minister to benefit from the protection available under the IP Act. Thus, this provision may be used to expressly recognise and protect Sri Lankan GIs that have not still been registered as certification marks. However, if the protection afforded to GIs is intended to be limited to GIs that are explicitly prescribed by the Minister, this may be problematic with respect to the protection of foreign GIs in Sri Lanka. Although section 161(4A) does not distinguish between local and foreign GIs, it is doubtful whether this provision was intended to permit the Minister to prescribe foreign GIs.105 Thus, if it is the case that only GIs that the Minister prescribes are to receive protection under the IP Act, foreign GIs may not receive the same protection under sections 103, 160, and 161. After all, section 161(4A) does not incorporate a mechanism for interested parties to apply to the Minister or Competent Authority to have their GIs prescribed under the law. Arguably, this could render Sri Lankan law incompatible with Articles 22 and 23 of TRIPS (dealing with GIs), as well as Article 3 (dealing with national treatment obligations). On the other hand, section 161(4A) may simply empower the Minister to distinctly and expressly recognise and protect Sri Lankan GIs through an official or administrative act without interfering with the general protection that is otherwise afforded to GIs. Such an interpretation will allow Sri Lankan GIs to be specifically recognised as GIs as such while receiving the general protection under the sui generis regime. At the same time, foreign GIs that are protected in their countries of origin will receive protection under the sui generis regime without the need for them to be prescribed by the Minister. From the preceding discussion, it is clear that there is much uncertainty about the true scope and effect of section 161(4A) of the IP Act. Second, section 161(4A) is problematic because it does not set out a mechanism for interested parties, such as associations of producers or traders, to formally apply for GIs to be prescribed by the Minister. It is also problematic because there is no mechanism under which interested parties can oppose the Minister’s decision to prescribe a GI. It has to be emphasised that the interests associated with a GI are collective in nature. Producers, traders, and other stakeholders associated with the supply/value chain of GI products have a collective interest in the use, management, and enforcement of the corresponding GIs. However, the extent to which a Minister can represent the collective interests of all stakeholders associated with a GI is unclear. It is imperative to ensure that the administrative process that leads to the Minister’s decision to prescribe a GI under section 161(4A) captures the collective interests associated with GIs. The process must be transparent and fair. It must also implement suitable dispute resolution mechanisms so that disputes arising within and between members of the industrial community can be equitably resolved. There is much that Sri Lanka can learn from the Indian GI registration process, which has been hailed as a good model to follow by the Sri Lankan academic and industrial communities. The Indian Geographical Indications of Goods (Registration 105

The decision of the Cabinet of Ministers that led to this amendment makes it clear that the focus was on giving Sri Lankan GIs and products more protection (ibid).

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and Protection) Act 1999 (“Indian GIs Act”),106 which sets out the framework for the registration of GIs in India, is far more elaborate and balanced. The collective nature of the interests associated with GIs is reflected in the Indian GIs Act when it permits any “association of persons or producers or any organisation or authority established by or under any law” representing the interests of the producers of the concerned goods to apply for the registration of a GI.107 In addition, the Indian GIs Act provides that any person may within a certain prescribed period give notice in writing to the Registrar opposing the registration of a GI.108 The Indian GIs Act also contains a list of grounds upon which an application for the registration of a GI may be refused.109 Notably, foreign GIs that are “determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country” can be refused registration.110 The Indian GIs Act also makes it explicitly clear that no person is entitled to institute infringement proceedings in respect of a GI (whether foreign or local) unless it is registered as a GI in India.111 Thus, it is clear that if section 161(4A) was intended to provide for the registration of GIs in Sri Lanka, it does so in a rather unsatisfactory manner. For this reason, it is not at all surprising that the GI Bill, which at the time of writing had been placed before Parliament, among other things, seeks to repeal section 161(4A) of the IP Act.112 Unlike the 2018 amendment, the GI Bill seeks to introduce a more comprehensive regime for the registration of GIs. If the GI Bill becomes law in its current form, it will add several new provisions into Part IX of the IP Act that deals with GIs. Accordingly, the GI Bill seeks to insert a new definition section (i.e., section 160A) into Part IX of the IP Act, which will provide definitions for “authorized user,”113

106

Geographical Indications of Goods (Registration and Protection) Act 1999 (“Indian GIs Act”). Ibid, section 11(1). 108 Ibid, section 14(1). 109 Ibid, section 9(1)(a) to (g). 110 Ibid, section 9(1)(f). 111 Ibid, section 20. 112 GI Bill, clause 7. 113 “Authorized user” means “a user of a geographical indication registered under this Part of this Act.” 107

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“control plan,”114 “geographical indication,”115 “goods,”116 “producer,”117 and “specification.”118 Notably, the GI Bill seeks to insert sections 161A to 161E to deal with the GI registration process;119 sections 161F to 161G to deal with the issuance of certificates of registration and provide details relating to the GI register; 161H to 161I to set out the rights conferred on registered GI owners; section 161J to deal with the cancellation of registered GIs; section 161K to provide for the registration of foreign GIs; and sections 161L to 161M to provide for certain miscellaneous matters.120 We consider the key features of the GI Bill below. Under the proposed regime, any association of persons or producers or any organisation or authority established under any law representing the interests of the producers of any goods may apply to the Director-General of IP (“DirectorGeneral”) to register a GI.121 According to section 161A, which the GI Bill seeks to introduce, such an application must be denied if the applied-for GI: (a) (b) (c) (d) (e) (f)

does not meet the definition of a GI; is contrary to law, morality, religion, accepted customs, or public order; has lost protection or fallen into disuse in the country of origin; is identical with the term that is customarily used as the common name of the underlying goods; misleads or deceives the public as to the characteristics, nature, quality, place of origin, or production process of the underlying goods; constitutes the name of a plant variety or an animal breed.122

Where an application is accepted, the Director-General must publish the details pertaining to the application in the Gazette. Once the details of the applied-for GI are published, any person may oppose the registration of the GI on the basis that it is inadmissible on one or more of the grounds set out above.123 After considering 114

“Control plan” means “the method as to how the verification of compliance with product specification is carried out.” 115 “Geographical indication” means “an indication which identifies any goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” 116 “Goods” means “any manufactured or naturally available agricultural products, food, wines, spirits, or any item of handicraft or industry.” 117 “Producer” in relation to goods, means “any person who—(a) if such goods are agricultural products, wine, or spirit, produces such goods or processes or packages such goods; (b) if such goods are natural goods, exploits such goods; or (c) if such goods are handicrafts or industrial goods, makes or manufactures such goods.” 118 “Specification” means “a document to be submitted with the application for registration of a geographical indication which provides technical details of the characteristics of the goods or products, the method of production, the geographical area and the link between the characteristics, quality or reputation of the goods or product, and its geographical origin.” 119 GI Bill, clause 8. 120 Ibid, clause 9. 121 Ibid, clause 8 (proposed section 161B(1)). 122 Ibid (proposed section 161C). 123 Ibid (proposed section 161D(1)).

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the opposition and any observations submitted by the GI applicant in response, the Director-General is tasked with the responsibility of determining whether the appliedfor GI should be registered.124 Where the decision is in favour of the applicant, and no appeal is filed challenging the decision or such appeal is dismissed, the DirectorGeneral must proceed to register the GI.125 Once a GI is registered in this manner, the Director-General is required to issue a certificate of registration,126 which is valid for a period of ten years and can be renewed for consecutive periods of ten years.127 Importantly, the proposed sui generis GI regime seeks to confer certain exclusive rights on registered GI owners. If the GI Bill is passed into law in its current form, registered GI owners will have the following rights. In respect of goods of the same kind as those for which the registered GI applies, GI owners will have the right to prevent any direct or indirect use, misuse, imitation or evocation of their registered GI identifying goods, including an agricultural product, food, wine or sprit or manufactured handicraft or natural goods, not originating in the place indicated by the GI in question or not complying with any other applicable requirement for using the GI.128 This right will extend even where the true origin of the competing goods is indicated, or the GI is used in translated form or accompanied by expressions such as “style,” “kind,” “type,” “make,” “imitation,” “method,” “as produced in,” “like,” “similar,” or other comparable expressions.129 Additionally, registered GI owners will be able to prevent any use of their GI in respect of goods of the same kind in a manner that is likely to constitute unfair competition130 and to prevent any practice that is likely to mislead consumers as to the true origin, provenance or nature of the goods concerned.131 For goods that are not of the same kind as those for which the registered GI applies, GI owners will be able to prevent any direct use, misuse, imitation, or evocation of their registered GI if such use indicates or suggests a connection between those goods and the users of the GI and is likely to damage their interests, or where the GI has a reputation, such use is likely to impair or dilute that reputation in an unfair manner or take unfair advantage of that reputation.132 In addition, in cases involving goods not of the same kind, registered GI owners will be able to prevent any direct use, misuse, imitation, or evocation of their GI even where the true origin of the goods is indicated, or the GI is used in translated form or accompanied by expressions such as “style,” “kind,” “type,” “make,” “imitation,” “method,” “as produced in,” “like,” “similar,” or other comparable expressions.133 Also, for goods not of the same kind, 124

Ibid (proposed section 161D(4)). Ibid (proposed section 161D(4)). 126 Ibid, clause 9 (proposed section 161F). 127 Ibid, clause 8 (proposed section 161E). 128 Ibid, clause 9 (proposed section 161H(a)(i)). 129 Ibid (proposed section 161H(a)(i)). 130 Ibid (proposed section 161H(a)(ii)). 131 Ibid (proposed section 161H(a)(iii)). 132 Ibid (proposed section 161H(b)(i)). 133 Ibid (proposed section 161H(b)(ii)). 125

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registered GI owners will be able to prevent any practice that is likely to mislead consumers as to the true origin, provenance, or nature of the goods concerned.134 A few points are worth noting here about the rights conferred on registered GI owners. First, the proposed provision draws a distinction between goods of the same kind and goods that are not of the same kind. Articles 22 and 23 of TRIPS that set out the minimum standards of protection with respect to GIs do not draw such a distinction. In respect of goods not of the same kind, the proposed provision seeks to introduce a new concept—i.e., GIs with a reputation. TRIPS makes no reference to such GIs. In this regard, it seems that the GI Bill is seeking to implement a TRIPS-plus standard with regard to the rights conferred on registered GI owners. The language used in the proposed provision seems to be introducing a dilution-like notion to the protection of GIs. However, the GI Bill does not clarify what it means by goods of the same “kind.” Nor does it set out how the reputation of a registered GI is to be determined. Interestingly, the distinction between goods of the “same kind” and goods “not of the same kind” and the dilution-styled language is found in the Geneva Act of the Lisbon Agreement,135 to which Sri Lanka is not a party. Second, it appears that the rights conferred by the proposed provision in the GI Bill do not replace any rights that GI owners are currently entitled to exercise under the IP Act. This is clear because the GI Bill does not remove section 161(1)–(3) of the IP Act. As such, “any interested party,” which no doubt would include a registered GI owner, will continue to benefit from the protection conferred under section 161. Indeed, there is nothing in the GI Bill that makes it mandatory for GIs to be registered for them to benefit from the broader protection that the IP Act provides under section 160 or any other provision. Moreover, the GI Bill will permit a GI that has been registered as a certification mark under section 142 of the IP Act to be registered as a GI in terms of the proposed registration system. Therefore, this provision will allow key Sri Lankan GIs, such as Ceylon Tea and Ceylon Cinnamon, which have been registered as certification marks, to be registered as GIs as such once the GI Bill is enacted. Also, nothing in the GI Bill will prevent a registered GI from being registered as a certification or collective mark under the IP Act. In essence, the GI registration system and the rights conferred under it will operate as an independent but additional layer of protection for GIs. Third, a striking feature of the proposed provision is that it refers explicitly to handicrafts and natural goods. The existing sui generis provision in the IP Act (i.e., section 161) refers to “goods including an agricultural product, food, wine, or spirit.” It does not make a special mention of handicrafts and natural goods. However, arguably, they are not excluded from the scope of protection. The proposed section 161H (as set out in the GI Bill), in addition to mentioning agricultural products, food, wines, and spirits, specifically refers to handicrafts and natural goods. The express inclusion of handicrafts indicates a conscious move to extend protection to Sri Lankan handicrafts, which in many ways are unique to the country. The express reference to natural goods suggests an intention to extend protection to Sri Lanka’s 134 135

Ibid (proposed section 161H(b)(iii)). Geneva Act, Art. 11(1).

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unique natural recourses, such as gemstones, including Sri Lanka’s famous Ceylon Sapphire. A useful feature of the proposed regime is that it will require registered GI owners to set out a “control plan,”136 which essentially refers to a system that the owner must put into place to verify that the associated GI products comply with the specifications set out in the application to register the GI. At any point in time after a GI has been registered, the registration can be cancelled on the basis that the registered owner has failed to comply with the conditions subject to which the GI was registered.137 Such conditions are likely to include a requirement that obligates the registered GI owner to implement a control plan. If the registered GI owner fails to effectively carry out its control plan to ensure that producers of the associated GI product meet the corresponding specifications (which give the product its unique characteristics and reputation), the GI registration can be cancelled. The present sui generis provision in the IP Act does not provide for such a system. If at all, any quality assurance of GI products is achieved when GIs are registered as certification marks, which requires applicants to declare the characteristics to be certified by the mark and how the owner is to test those characteristics and supervise the use of the mark.138 However, the current law does not provide a mechanism to ensure that the owner of a certification mark complies with the conditions attached to the use of the mark. As such, the internal control mechanism that the proposed GI regime seeks to implement is a useful addition from a quality assurance perspective.139 While the GI Bill seeks to make useful additions to the IP Act, there are a few anomalous provisions that warrant scrutiny. First, as we noted before, the GI Bill adds a new definition section to Part IX of the IP Act (which deals with GIs). Thus, once the GI Bill becomes law, the new section 160A will provide a definition for “geographical indication” for the purposes of Part IX of the IP Act.140 However, the GI Bill seeks to repeal the definition of the term “geographical indication” that appears in section 101 of the IP Act.141 Section 101 contains various definitions relevant to Part V of the IP Act dealing with trade marks. In this regard, as we noted before, section 103(1)(f) of the IP Act provides that marks that are “likely to mislead trade circles or the public as to the […] geographical indication […] of the goods or services concerned” must be denied registration. This is an important provision that seeks to address any conflicts between trade marks and GIs. In particular, section 103(1)(f) refers to the phrase “geographical indication.” As such, it makes no sense to remove the definition for “geographical indication” from section 101 of the IP Act, as that phrase is used 136

GI Bill, clause 6 (which provides a definition for “control plan”). Ibid, clause 9 (proposed section 161 J(b)). 138 IP Act, section 142(5). 139 See DS Gangjee, “Proving Provenance? Geographical Indications Certification and its Ambiguities” (2017) 98 World Development 12, 14. See also DS Gangjee, “Quibbling Siblings: Conflicts between Trademarks and Quibbling Siblings: Conflicts between Trademarks and Geographical Indications” (2007) 82 Chicago-Kent Law Review 1253, 1267. 140 GI Bill, clause 6. 141 Ibid, clause 4. 137

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in Part V of the IP Act dealing with trade marks. Instead, the GI Bill could have simply contained a provision to amend section 101 of the IP Act so that the term “geographical indication” would take the same meaning as the term that appears in the proposed section 160A. Second, the new definition section that the GI Bill seeks to introduce defines the term “authorized user.” Accordingly, an “authorized user” means “a user of a geographical indication registered under this Part of this Act.” Thus, the GI Bill draws a distinction between the registered owner of a GI and its users. However, the GI Bill does not contain any provision that seeks to set out the mechanism to be followed to authorise the use of a registered GI. In our view, this is a significant omission. Under the present regime, when a GI is registered as a certification mark, the owner of the mark has a right to conclude licence contracts authorising others to make use of that mark.142 But the GI Bill does not expressly confer such a right to registered GI owners. Accordingly, there could be confusion about the process to be adopted in authorising the use of GIs. There are two possible approaches that can be adopted to authorise the use of a registered GI. One approach is to use contractual arrangements. Thus, a registered GI owner can determine how and to whom such authorisations are to be granted. And as to how such authorisations are to be granted and maintained could be included in the “control plan” that every registered GI owner must declare and comply with. This approach may be accommodated within the framework of the GI Bill. Alternatively, as in India143 and Bangladesh,144 anyone interested in making use of a registered GI could be required to make an application to that effect to the Competent Authority responsible for the GI register. This approach would require a separate register of sorts to be maintained in respect of every registered GI, providing details of the authorised users. The GI Bill does not provide for such an approach. Despite the anomalies that we have identified above, it is evident that the GI Bill seeks to introduce a comprehensive registration system for GIs in Sri Lanka. The registration system proposed by the GI Bill is likely to add to the overall efficacy of the GI protection framework in Sri Lanka. However, if Sri Lankan GIs are to thrive, Sri Lanka must consider and implement other strategies so that they are better protected both in Sri Lanka and overseas. One crucial step Sri Lanka should seriously consider in this regard is acceding to the Geneva Act of the Lisbon Agreement. This would allow Sri Lankan GIs to benefit from the Lisbon system, which provides for the international registration of GIs. Importantly, a key feature of the Geneva Act is that it requires countries of the Special Union to extend the same kind of protection that TRIPS requires in respect of wines and spirits to all goods.145 This essentially amounts to a TRIPS-plus standard,146 which Sri Lanka already guarantees under the current law. Indeed, as noted before, the GI Bill sets out the rights of a registered GI owner using the same language that the Geneva Act adopts. This means that 142

See IP Act, section 121(1)(c), read with section 142(1). Indian GIs Act, section 16. 144 Geographical Indications of Goods (Registration and Protection) Act 2013, section 10. 145 Geneva Act, Art. 11. 146 Gervais (n 52) 128. 143

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Sri Lankan GI law is already in conformity with the standards contemplated by the Geneva Act. Thus, by acceding to the Geneva Act of the Lisbon Agreement, Sri Lankan GIs can benefit from the same higher level of protection that other countries of the Special Union must guarantee to GIs. However, many view the Lisbon system with some doubt. For instance, Perera has observed that “the Lisbon Agreement is a union of only 30 countries and the effectiveness of the protection under the convention in today’s world is doubted. Thus, it can be safely concluded that the Lisbon Agreement may not be the solution that Sri Lanka requires at present.”147 While this might be true as regards the Lisbon Agreement, it is essential to note that the Geneva Act of the Lisbon Agreement has to a significant extent overcome the shortcomings of the Lisbon Agreement. Thus, it is likely that the Geneva Act will create the necessary impetus for many more countries to join the Lisbon system. For instance, recently, the European Union, comprising 27 member states and a significant market for Sri Lankan products, acceded to the Geneva Act.148 Among Asian countries, Cambodia149 was the first to accede to the Geneva Act, while Oman150 was the most recent to join. Other Asian countries will likely accede to the Geneva Act. We hope that Sri Lanka will follow suit. From a strategic point of view, it is also vital for Sri Lanka to join the Madrid system. By joining this Special Union, owners of marks, including certification marks, registered in Sri Lanka will become eligible for protection in countries of the Special Union via the system for international registration of marks. Currently, Sri Lankan GIs have to be registered as GIs (where this is possible) or as certification marks in countries where there is an interest to do so. This could be time-consuming. Whereas, if and when Sri Lanka joins the Madrid system, Sri Lankan GIs that have been registered as certification marks can be protected in up to 124 countries via a single application and international registration process. In view of this potential, as with Ceylon Tea and Ceylon Cinnamon, other Sri Lankan GIs should also be registered as certification marks. This should be the case even after a sui generis registration system for GIs is introduced. This way, Sri Lankan GIs will benefit from both the Lisbon and Madrid systems.

6.5 Recommendations This chapter considered the current framework operating in Sri Lanka for the protection of GIs. Under the IP Act, GIs are afforded protection under three distinct regimes. 147

Perera (n 81) 343. See Council Decision (EU) 2019/1754 of 7 October 2019 on the accession of the European Union to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, [2019] OJ L 271/12. 149 WIPO, Cambodia First to Join the Geneva Act of WIPO’s Lisbon Agreement (9 March 2018) https://www.wipo.int/lisbon/en/news/2018/news_0001.html. 150 WIPO, Oman Joins Geneva Act of WIPO’s Lisbon Agreement (30 March 2021) https://www. wipo.int/lisbon/en/news/2021/news0006.html. 148

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Thus, GIs may be protected by registering them as certification (or collective) marks. They can also be protected against unfair competition. Importantly, GIs also benefit from a sui generis form of protection. Our analysis of the provisions in the IP Act governing the protection of GIs revealed that they generally conform to international standards, especially to standards arising from TRIPS and the Paris Convention. In fact, under Sri Lankan law, GIs are afforded a TRIPS-plus standard of protection. However, our analysis revealed that certain provisions in the IP Act were problematic. The following recommendations are made to address these shortcomings. First, we make a recommendation concerning the interaction between GIs and trade marks. As noted in the chapter, Articles 22.3 and 23.2 of TRIPS mandate WTO members to refuse the registration of marks (at the request of an interested party or ex officio) when they conflict with GIs. Thus, Article 22.3 imposes an obligation on WTO members to refuse the registration of marks that are capable of misleading the public as to the true place of origin of the underlying goods. We noted that section 103(1)(f) of the IP Act protects GIs in terms that are consistent with Article 22.3 of TRIPS. However, for wines and spirits, Article 23.2 of TRIPS requires an absolute form of protection. For wines and spirits, trade marks that incorporate GIs that identify such wines or spirits must be denied registration even in the absence of any confusion. However, because section 103(1)(f) incorporates a “likely to mislead” requirement, this provision does not confer the protection that is expected of WTO members under Article 23.2 of TRIPS for wines and spirits. The only other provision relevant in this regard is section 103(1)(h), in terms of which marks that are in their ordinary signification geographical names must be denied registration. This provision does not incorporate a confusion or deception requirement. However, a significant limitation of this provision is that it refers to geographical names and not geographical indications. Since the latter is broader, the protection that section 103(1)(h) offers to GIs is limited. For these reasons, we recommend that a suitable provision be added to section 103(1) of the IP Act to ensure that the law complies with Article 23.2 of TRIPS. However, given that, as a matter of practice, Sri Lanka has usually extended the higher level of protection afforded to wines and spirits to other products as well, it may be worth considering a provision to the following effect: A mark shall not be registered—if it contains or consists of a geographical indication identifying goods including agricultural products, food, wines or spirits, handicrafts or natural goods, and the trade mark is intended for use in relation to such goods not originating from the geographical area indicated by the geographical indication.

Second, we recommend the removal of section 161(4A) of the IP Act, which was added by virtue of a 2018 amendment to the IP Act. It appears that section 161(4A) was added to provide for the registration of GIs in Sri Lanka. However, for the reasons we set out in this chapter, it falls well short of achieving that objective. Given the shortcomings attached to that provision, we are incredibly pleased that the Sri Lankan Government has introduced a Bill in Parliament (i.e., the GI Bill) to establish a comprehensive GI registration system in Sri Lanka. The GI Bill also seeks to remove the problematic section 161(4A) from the IP Act.

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Lastly, we have identified a number of misconceptions emerging from both the industry and academic community concerning the implications of a domestic GI register. We have responded to these misconceptions, as we worry that they could negatively impact Sri Lanka’s GI policy/strategy. While the introduction of a domestic GI register will add to the clarity and certainty of GI protection in the country, it is crucial for Sri Lanka to adopt other strategies that will benefit Sri Lankan GIs. One such strategy is to join the Lisbon system by acceding to the Geneva Act of the Lisbon Agreement. This will allow Sri Lankan GIs protected under the provisions of the IP Act to receive protection in countries party to the Special Union via the international registration process. We also hope that Sri Lanka will soon join the Madrid system. By doing so, GIs registered as certification marks can benefit from the international registration process available under the Madrid Agreement and its Protocol. For this reason, it is important for all Sri Lankan GIs to be registered as certification marks, even after the GI Bill is passed into law and the sui generis GI register is introduced.

References 1. Abeysinghe PD, Bandaranayake PCG, and R Pathirana (2020) Botany of endemic cinnamomum species of Sri Lanka. In: Senaratne R, Pathirana R (eds) Cinnamon: botany, agronomy, chemistry and industrial applications. Springer 2. Bodenhausen GHC (1968) Guide to the application of the Paris Convention for the protection of industrial property. BIRPI 3. Calboli I (2006) Expanding the protection of geographical indications of origin under TRIPS: “Old” debate or “New” opportunity? Marquette Intellect Property Law Rev 10:181 4. Cave HW (1900) Gloden tips: a description of Ceylon and its great tea industry. Samposon Low, Marston & Co Ltd 5. Correa CM (2020) Trade-related aspects of intellectual property rights. Oxford University Press 6. Dasanayake R (2016) Cinnamon: a spice of an indigenous origin–historical study. Narrations 1:46 7. De Silva LM (2015) Geographical indications–need of a registration system for Sri Lanka. In: Proceedings of 8th International Research Conference, General Sir John Kotelawala Defence University, Sri Lanka. http://www.kdu.ac.lk/proceedings/irc2015/2015/law-009.pdf 8. Daily Mirror (2016) Decision to amend IP law to give “Cinnamon” GI protection hailed. https://www.dailymirror.lk/article/Decision-to-amend-IP-law-to-give-cinnamonGI-protection-hailed-118237.html 9. Geiger C et al (2010) Towards a flexible international framework for the protection of geographical indications. WIPO J 1:147 10. Daily Mirror (2014) Geographical indication for Ceylon Cinnamon soon. https://www.dailym irror.lk/economy/geographical-indication-for-ceylon-cinnamon-soon/126-52913 11. Gervais D (2017) A look at the Geneva Act of the Lisbon Agreement: a missed opportunity? In: Calboli I, Ng-Loy WL (eds) Geographical indications at the crossroads of trade, development, and culture focus on Asia–Pacific. Cambridge University Press 12. Gunasekare MTK (2012) Tea plant (Camellia sinensis) breeding in Sri Lanka. In: Chen L, Apostolides Z, Chen Z-M (eds) Global tea breeding: achievements, challenges and perspectives. Zhejiang University Press/Springer 13. Hopper BR (2016) Whither (Wither?) geographical indications? The case against geographical indications and for appellations of origin in an era of glocalization. Chicago-Kent J Intellect Property 16:210

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14. Hughes J (2006) Champagne, Feta, and Bourbon: the spirited debate about geographical indications. Hastings Law J 58:299 15. Jain S (2009) Effects of the extension of geographical indications: a South Asian perspective. Asia-Pacific Dev J 16:65 16. Kamardeen N (2017) The potentials, and current challenges, of protecting geographical indications in Sri Lanka. In: Calboli I, Ng-Loy WL (eds) Geographical indications at the crossroads of trade, development, and culture focus on Asia-Pacific. Cambridge University Press 17. Karunaratna DM (2010) Elements of the law of intellectual property in Sri Lanka. Sarasavi Publishers 18. Moonesinghe V (2017) Cinnamon, the mysterious island spice. Roar Media. https://roar.media/ english/life/food/cinnamon-the-mysterious-island-spice 19. Office of the Cabinet of Ministers (2020) Press briefing of cabinet decision taken on 12 October 2020. http://www.cabinetoffice.gov.lk/cab/index.php?option=com_content&view=art icle&id=16&Itemid=49&lang=en&dID=10665 20. Office of the Cabinet of Ministers (2016) Press briefing of cabinet decision taken on 18 October 2016. http://www.cabinetoffice.gov.lk/cab/index.php?option=com_content&view=art icle&id=16&Itemid=49&lang=en&dID=7135 21. Pathiraja PMAS (2016) The protection of geographical indications in Sri Lanka: need of a registration system. In: Proceedings of the 17th International Postgraduate Research Conference, University of Kelaniya, Sri Lanka. http://repository.kln.ac.lk/handle/123456789/16086 22. Perera R (2020) Geographical indications (GI’s) and the Sri Lankan perspective. Bar Assoc Law J 25:339 23. Puustinen S (2003) Geographical indications, trademarks and the WTO dispute. Int Trade Law Regul 9:167 24. Samaraweera V (1971) The cinnamon trade of Ceylon. Indian Econ Soc Hist Rev 8:415 25. Srinivasan M (2019) A bitter brew: for Sri Lanka’s tea estate workers, fair wage is still elusive. The Hindu. https://www.thehindu.com/news/international/in-sri-lanka-a-bitter-brew/article29 598287.ece 26. Strauch S, Arend K (2009) Article 22.4–protection of geographical indications. In: Stoll P-T, Busche J, Arend K (eds) WTO—trade-related aspects of intellectual property rights. Koninklijke Brill NV 27. Strauch S, Arend K (2009) Article 23–additional protection for geographical indications for wines and spirits. In: Stoll P-T, Busche J, Arend K (eds) WTO—trade-related aspects of intellectual property rights. Koninklijke Brill NV 28. Suriyagoda L et al (2021) Ceylon Cinnamon: much more than just a spice. Plants, People, Planet 3:319 29. Thavapalakumar M (2020) International trademarks straight from Sri Lanka by mid-2020. The Sunday Morning. https://www.themorning.lk/international-trademarks-straight-from-srilanka-by-mid-2020/ 30. Wijeshinghe SS (2015) The protection of geographical indications in developing countries: the case of Ceylon Tea. Balance 1:7 31. Wijesinghe WASS, Ariyaratna BARR (2015) The protection of geographical indications in developing countries: the case of Ceylon Tea. In: Proceedings of the Open University of Sri Lanka Annual Academic Session, Open University, Sri Lanka. http://www.ou.ac.lk/ours/wpcontent/uploads/2017/04/HS01-01-F.pdf 32. WIPO (2018) Cambodia first to join the Geneva Act of WIPO’s Lisbon Agreement. https:// www.wipo.int/lisbon/en/news/2018/news_0001.html 33. WIPO (2021) Oman joins Geneva Act of WIPO’s Lisbon Agreement. https://www.wipo.int/ lisbon/en/news/2021/news_0006.html

Chapter 7

Copyright

This chapter deals with the law relating to copyright in Sri Lanka. Copyright essentially protects original intellectual human expressions. During the ancient kingdoms and through the period of colonial rule to today’s modern and contemporary era, Sri Lankan writers, poets, artists, architects, musicians, and playwrights have gripped us with their imagination, creativity, and sheer dedication. But when compared with the country’s ancient history, it was only recently that copyright law was introduced to Sri Lanka’s legal system. Indeed, copyright law was unheard of when some of Sri Lanka’s greatest and most celebrated literary works, such as the Subhashithaya, Guttila K¯avya and the Salalihini Sandeshaya, were created. Nor did copyright play any role when the ancient rock fortress of Sigiriya was built by King Kasyapa, which in itself is an architectural marvel, declared as a world heritage site by the United Nations Educational, Scientific and Cultural Organization (“UNESCO”) in view of the ancient fresco paintings on the Western surface of the Sigiriya rock. These are just examples of the many literary and artistic creations that emerged when copyright law was alien to the country. Eventually, in view of colonial influence and the pressures of globalisation, copyright law became part of Sri Lanka’s legal system. The objective of copyright law, as perceived by the more industrialised nations from where the concept of copyright protection originates, is to foster original intellectual creations by affording protection to such creations while also enabling their legitimate dissemination. To that end, copyright law performs a vital balancing act between, on the one hand, protecting the rights of creators of literary, artistic, dramatic and musical works and, on the other hand, the interests of the public to access and use such works. More specifically, copyright law grants certain exclusive rights to creators of works with the hope of incentivising the creation of more works, which will ultimately benefit the public. At the same time, copyright law provides for certain exceptions to these exclusive rights to ensure that the public can use these works for legitimate purposes. Indeed, given that copyright protects an extensive range of works, including academic works in science, technology, engineering, and mathematics, which originate primarily in industrialised nations, copyright law in Sri Lanka must © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_7

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ensure a balance between protection and access so that the country can progress in the scientific and technological fronts. First, this chapter provides a brief account of the evolution of copyright law in Sri Lanka, which helps contextualise the discussion carried out in this chapter. Second, it examines the standard of protection afforded to “works” under the Intellectual Property Act 2003 (“IP Act”),1 which protects and enforces intellectual property (“IP”) rights in Sri Lanka, including copyright. In assessing the standard of copyright protection, we refer to the minimum standards mandated under the key international IP treaties to which Sri Lanka is a party. These include the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”)2 and the Agreement on the Trade-Related Aspects of Intellectual Property (“TRIPS”).3 This analysis reveals the extent to which copyright law in Sri Lanka complies with the minimum standards of protection and thus assists in identifying the permitted scope for copyright reforms in Sri Lanka. Third, the chapter examines specific weaknesses and inadequacies in the copyright-related provisions of the IP Act to demonstrate that, at present, the exceptions to copyright are inadequate to address Sri Lanka’s domestic interests and concerns, particularly with regard to access to knowledge and education. Although both the Berne Convention and TRIPS afford many flexibilities with regard to how national copyright regimes can be framed, Sri Lanka has not made maximum use of these flexibilities in setting out the provisions relating to copyright exceptions in the IP Act. Accordingly, the chapter ends by making several recommendations that could help address the issues, weaknesses and inadequacies that we identify, particularly with regard to the scope of copyright exceptions in Sri Lanka, so that a better balance could be achieved between the necessity to protect original expressions and the interests of the public, including education and access to knowledge.

7.1 The Evolution of Copyright Law Sri Lanka has a copyright history of over 150 years. Copyright law was first introduced to the country during British rule from 1796 to 1948. While copyright law in Sri Lanka remained an implant of the model in Britain up until 1979, even after that, Sri Lanka’s copyright law adheres predominantly to the British model. Before Sri Lanka, formerly known as Ceylon, became a dominion of the British Empire, it was under the rule of both the Portuguese and the Dutch. While the Portuguese played no role in influencing Sri Lanka’s legal system, the Dutch introduced the Roman-Dutch 1

Intellectual Property Act No 36 of 2003 (“IP Act”). Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, 161 U.N.T.S. 3, as amended on 28 September 1979 (“Berne Convention”). 3 Agreement on Trade-Related Aspects of Intellectual Property Rights, 16 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (“TRIPS”). 2

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Law, which is regarded as the country’s common law. However, there is no historical evidence to suggest that the concept of copyright protection and the law relating to copyright was known in Sri Lanka prior to British rule. The British introduced their model of copyright law through various legislative enactments. The first was the Copyright Act 1842, which the British Parliament enacted. The provisions of this enactment extended “to the United Kingdom of Great Britain and Ireland, and to every Part of the British Dominions.”4 The term “British Dominions” was defined to include “all the Colonies, Settlements, and Possessions of the [British] Crown”5 acquired by 1 July 1842 or were to be acquired thereafter. Quite undoubtedly, Sri Lanka had become a colony of the British Crown by 1 July 1842. As history would irrefutably reveal, while a significant part of Sri Lanka, i.e., the former Dutch possessions in the country, became the “British Crown Colony of Ceylon” in 1802, the entirety of Sri Lanka became a British colony in 1815. This status quo remained intact until Sri Lanka gained independence in 1948. Thus, under and in terms of the Copyright Act 1842, the British copyright regime became applicable to Sri Lanka in 1842. The Copyright Act 1842 was subsequently replaced by the Copyright Ordinance 1908. This was the first copyright statute enacted in Sri Lanka. This Ordinance was enacted by the Governor of Ceylon with the advice and consent of the Legislative Council of Ceylon. According to its Preamble, the Copyright Ordinance 1908 was a statute enacted to “secure the right of property in literary and artistic works.” The Copyright Ordinance 1908 was almost a verbatim reproduction of the Copyright Act 1905 of the Commonwealth of Australia, formulated based on a Bill introduced in the British Parliament but never enacted into law. Section 5 of the Copyright Ordinance 1908 provided that after its commencement, “the Common Law of England relating to proprietary rights in unpublished literary compositions [were to] apply in Ceylon,” subject only to the provisions therein. Hence, the Copyright Ordinance 1908 was virtually a statute that assimilated British copyright law. The second major enactment concerning copyright was the Copyright Act 1911, which was enacted by the British Parliament. The British Copyright Act 1911 superseded the Copyright Ordinance 1908. As with the British Copyright Act 1842, the Copyright Act 1911 became applicable in Sri Lanka by direct extension. In particular, the enactment provided that “except such of the provisions thereof as are expressly restricted to the United Kingdom, [the Act] shall extend throughout His Majesty’s dominions.”6 The direct extension of the Copyright Act 1911 was explicitly recognised in the subsequent Copyright Ordinance 1912, which was enacted by the Governor of Ceylon with the advice and consent of the Legislative Council of Ceylon. This Ordinance also repealed the Copyright Ordinance 1908. The Copyright Act 1911 was an important milestone in the history of British copyright law, as it repealed all previous copyright legislation and established a single statute covering all

4

Copyright Act 1842, section 29. Ibid, section 2. 6 Copyright Act 1911, section 25(1). 5

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forms of copyright. In particular, it provided a fitting conceptual basis for the protection of creative expressions by implementing the Berne Convention and responding to technological developments that had taken place by that time. In short, the Copyright Act 1911 codified the concepts of modern copyright law into a single and comprehensive law. Although the Copyright Act 1911 was repealed and replaced in Britain by the Copyright Act 1956, and Sri Lanka became an independent state in 1948, the 1911 statute continued to apply in Sri Lanka until the Code of Intellectual Property Act 1979 (“Code of IP”)7 was enacted by the Sri Lankan Parliament on 8 August 1979. The Code of IP was the first IP statute enacted by a fully independent Parliament in Sri Lanka. It contained a copyright law that almost verbatim reproduced the provisions in the Tunis Model Law on Copyright for Developing Countries,8 which was formulated jointly by the World Intellectual Property Organization (“WIPO”) and the UNESCO in 1976. The main impetus for introducing a new IP regime came about as a result of the liberalised economic policies adopted and implemented by the then Sri Lankan Government to drive Sri Lanka towards rapid economic development. In particular, it was identified by the Sri Lankan Government that the existing legal framework was woefully inadequate to implement these policies successfully. The IP Act, which was enacted in 2003, became the second IP legislation enacted by independent Sri Lanka. Although a home-grown statute that was primarily enacted to comply with TRIPS, the copyright-related provisions of the IP Act incorporate provisions typically found in British and US statutes. For instance, the concept of originality incorporated in the IP Act has been interpreted by Sri Lankan courts by referring to cases decided in the United Kingdom, thus continuing to borrow from the British copyright law. On the other hand, and somewhat strangely, the provision in the IP Act that sets out the fair use doctrine is almost a verbatim reproduction of the fair use provision of the US Copyright Act 1976, 17 USC §107.9 Moreover, the US influence on the copyright provisions in the IP Act is noticeable from the usage of the term “copyrighted work” throughout the enactment. In essence, although the current copyright law of Sri Lanka is part of a home-grown statute, it is heavily influenced by the Western model of copyright.

7.2 Works Protected In line with the requirements of Article 2(1) of the Berne Convention and Articles 9 and 10.1 of TRIPS, the IP Act grants copyright protection to all “original intellectual creations” in the “literary, artistic, and scientific domain.”10 In keeping with Article 7

Code of Intellectual Property Act No 52 of 1979 (“Code of IP”). WIPO and UNESCO, Tunis Model Law on Copyright for Developing Countries, WIPO Publication No 812(E) (WIPO/UNESCO 1976). 9 DM Karunaratna, An Introduction to the Law of Copyright and Related Rights in Sri Lanka (Sarvodaya Vishva Lekha Publishers 2006), 77. 10 IP Act, section 6(1). 8

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2(3) of the Berne Convention and Article 10.2 of TRIPS, derivative works, such as translations, adaptations, arrangements, other transformations or modifications of works, collections of works, and collections of mere data, are also protected as works in terms of the IP Act.11 While the IP Act defines a “work” as any literary, artistic or scientific work which is an original intellectual creation in the literary, artistic and scientific domain,12 no definition is provided to determine the meaning of “original intellectual creation.” Nor is there any indication in the IP Act as to what “literary, artistic and scientific domain” means. However, the important task of determining works that are protected under the IP Act rests on how the terms “original intellectual creation” and “literary, artistic, and scientific domain” are defined. In this part, we consider the meaning of these terms to determine the subject matter of copyright protection in Sri Lanka.

7.2.1 Literary, Artistic and Scientific Domain The term “literary, artistic, and scientific domain” used in the IP Act to describe the types of works eligible for copyright protection is derived from the Berne Convention and pre-Berne bilateral copyright treaties. But neither the Berne Convention nor the IP Act provides a definition for what it means. As Ricketson and Ginsburg have observed, the adjectives “literary,” “artistic,” and “scientific,” used to describe the domain of works that the Berne Convention protects, “are not to be taken at their face value” due to two main reasons.13 First, the term “scientific production” used in the Berne Convention “does not refer to such things as scientific discoveries, as the basic principle that copyright does not protect ideas but only the form in which they are expressed applies as much to the Berne Convention as it does to national laws.”14 Thus, “the adjective ‘scientific’ in the context of ‘literary and artistic works’ seems unnecessary, as works concerned with scientific matters will invariably be either literary productions (a written description of an experiment, process, device, or the like) or artistic productions (diagrams, drawings, illustrations).”15 As such, whether the IP Act should continue to identify works protected under the “scientific” descriptor remains moot. Indeed, copyright statutes in the United Kingdom,16 India17 and Singapore18 do not include a category known as scientific works.

11

Ibid, section 7. Ibid, section 5. 13 S Ricketson and J Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, vol 1 (2nd edn, Oxford University Press 2006), 406. 14 Ibid. 15 Ibid. 16 Copyright, Designs and Patents Act 1988, section 3(1). 17 Copyright Act 1957, section 13. 18 Copyright Act 2021, section 9. 12

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Second, “the expression ‘literary and artistic productions’ is, on its face, a literally inaccurate description of many of the productions which the Convention expressly contemplates as falling within its scope.”19 This is because the list of works protected as “literary and artistic productions” under the Berne Convention includes certain categories of “works that are intended to be represented or performed, rather than read or viewed, as is the case with the usual kind of literary or artistic production.”20 But it is still possible to fit them into the “literary and artistic production” category, since “such works will usually be presented in some form of notation or as a visual image.”21 Therefore, “such a classification exercise hardly seems necessary, given that the enumeration in Article 2(1) of the Berne Convention makes it clear that they are to be regarded, in any event, as productions within the literary, scientific and artistic domain.”22 It is pertinent to note that the above observation is equally applicable to the IP Act, which utilises the expression “literary, artistic and scientific” to describe the works protected. As Ricketson and Ginsburg have further noted, “the terms ‘literary’ and ‘artistic’ are themselves very vague.”23 While the term “literary,” in its ordinary sense, is the “more limited concept, referring to written or printed compositions,” the term “artistic” refers to works of the visual arts as well as the “arts in general, including here music, drama, and literature, as well as the fine arts.”24 As such, the composite expression “literary”25 and “artistic”26 can be very widely drawn and captures a variety of works. Indeed, copyright statutes in some jurisdictions have preferred to adopt a more meticulous approach by expressly providing that “literary,” “artistic,” “dramatic,” and “musical” works are eligible for copyright protection.27 19

Ricketson and Ginsburg (n 13) 406. Ibid. 21 Ibid. 22 Ibid. 23 Ibid. 24 Ibid. 25 Ibid. In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 (“University of London Press v University Tutorial Press”), Peterson J observed (at 608) that “[t]he word literary seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature, and refers to written or printed matter.” The term “literary work” also covers secondary work on existing sources, provided that it in turn involves, literary “skill, labour and judgment.” Thus, translations, editorial work that involves amendment, critical annotation or explanation, compilation, additions to incomplete manuscripts, selections and abridgements may suffice to constitute “literary work.” See W Cornish, D Llewelyn and T Aplin, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (South Asian edn, Sweet & Maxwell 2016), 437. 26 Although the term “artistic” is not defined in the IP Act, section 4(1) of the UK Copyright, Designs and Patents Act 1988 defines what an “artistic work” is. Accordingly, an “artistic work” means “a graphic work, photograph, sculpture or collage, irrespective of artistic quality; a work of architecture being a building or a model for a building; or a work of artistic craftsmanship.” See DI Bainbridge, Intellectual Property (10th edn, Pearson Education Ltd 2018), 89 (While the “artistic work category is a diverse one and includes numerous types of works, […] all the things falling within the artistic work category have one thing in common in that they are all static, non-moving”). See also Nova Games Ltd v Mazooma Productions Ltd [2007] RPC 25, 16. 27 See, e.g., UK Copyright, Designs and Patents Act 1988, section 1(a); Indian Copyright Act 1957, section 13(1); Singapore Copyright Act 2021, section 9. 20

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In the Sri Lankan context, the IP Act enumerates a list of works that come within the “literary, artistic and scientific domain.” It does so in section 6(1) by providing that: The following works shall be protected as literary, artistic or scientific work (hereinafter referred to as “works”) which are original intellectual creations in the literary, artistic and scientific domain, including and in particular— (a)

books, pamphlets, articles, computer programs, and other writings;

(b)

speeches, lectures, addresses, sermons, and other oral works;

(c)

dramatic, dramatic-musical works, pantomimes, choreographic works, and other works created for stage productions;

(d)

stage production of works specified in paragraph (c) and expressions of folklore that are apt for such productions;

(e)

musical works, with or without accompanying words;

(f)

audiovisual works;

(g)

works of architecture;

(h)

works of drawing, painting, sculpture, engraving, lithography, tapestry, and other works of fine art;

(i)

photographic works;28

(j)

works of applied art;

(k)

illustrations, maps, plans, sketches, and three-dimensional works relative to geography, topography, architecture, or science.

The above list of works is derived from Article 2(1) of the Berne Convention. The following observation has been made with regard to the Berne Convention’s list: The expression “literary and artistic works” must be taken as including all works capable of being protected. In order to illustrate this, paragraph (1) of Article 2 gives an enumeration of the works. The use of the words “such as” shows that the list is purely one of examples and not limitative: it is a matter of providing a number of guides for the national lawmakers; in fact all the main categories of works are set out.29

As such, it is clear that the list of works set out in Article 2(1) of the Berne Convention is not meant to be exhaustive. The IP Act makes this clear when it uses the phrase “including and in particular” before setting out the list for the Sri Lankan context. A few observations are worth noting about the Sri Lankan list. First, of the various categories of works listed in section 6(1) of the IP Act, only some have been defined

28

Strangely, in enumerating the list of works, section 6(1) of the IP Act skips (i) and instead, immediately after (h), lists (j). 29 WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971), WIPO Publication No 615(E) (WIPO 1978), 13.

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in section 5. These include “computer program,”30 “audiovisual work,”31 and “photographic work.”32 This means that categories of works that have not been defined will have to be interpreted based on their ordinary meaning. Second, there is some confusion about the subject matter that comes under the description of “musical works.” section 6(1)(e) of the IP Act lists “musical works, with or without accompanying words” as a category of works eligible for copyright protection. Referring to this provision, recently, the Sri Lankan Supreme Court observed: As per section 6(1)(e) of the IP Act, for the purposes of the application of the provisions of the Act, a song would be a protected “work,” as it is a “musical work with accompanying words in the artistic domain.”33

In effect, it appears that the Supreme Court has introduced a new category of works–i.e., “songs”–on the basis that songs are musical works that accompany words. But this is somewhat puzzling because, in reality, a song as such does not attract any distinct form of copyright protection. Rather, a song comprises multiple components that attract copyright under distinct categories of works. The lyrics of a song amount to a “literary work.” Its musical elements or tune is a “musical work” or “musical composition.” If the song had been recorded, the recording receives protection as a “sound recording.” Thus, a song can comprise distinct categories of works capable of receiving copyright protection in their own right. It is a fallacy to say that a “song” is a work. Arguably, this outcome could have been avoided had section 6(1)(e) of the IP Act been drafted more clearly. The words “with or without words” that appears in that provision are borrowed from Article 2(1) of the Berne Convention, which lists “musical compositions with or without words” as one example of works eligible for copyright protection. But what is important to note is that the Berne Convention refers to “musical compositions with or without words” and not to “musical works, with or without words.” Had the IP Act simply used the phrase “musical compositions,” it would have been clear that what is covered under this category is purely the tune or musical components of a song and not the song as such. The commentary on the Berne Convention explains that the “words ‘with or without words’ in the Convention mean that any words accompanying the music are protected like the music itself,”34 30

“Computer program” is defined as “a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.” 31 “Audiovisual work” means “a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible, and where accompanied by sounds susceptible of being made audible.” 32 “Photographic work” means “the recording of light or other radiation on any medium on which an image is produced or from which an image may be produced, irrespective of the technique (chemical, electronic or other) by which such recording is made, a still picture extracted from an audiovisual work shall not be considered a ‘photographic work’ but a part of the audiovisual work concerned.” 33 Officer-in-Charge, Special Crimes Division v Manage Susil Dharmapala SC Appeal No 155/14, decided on 28 June 2021, 16. 34 WIPO, Guide to the Berne Convention (n 29) 15.

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but that protection comes in the form of protection afforded to literary works. In other words, when words accompany the music, the music and the words (or lyrics) receive copyright protection as independent and separate categories of works. As such, it would be prudent to amend section 6(1)(e) of the IP Act so that it is made clear that only the musical composition is covered under this category. It may be also worth considering the position under the former Code of IP, which provided that “musical works, whether or not they are in written form and whether or not they include accompanying words,” are eligible for protection under copyright law.35

7.2.2 Original Intellectual Creations Copyright protection under the IP Act is conferred to “original intellectual creations.” While neither the IP Act nor the Berne Convention defines what could constitute an original intellectual creation, it has been a precondition for copyright protection since the conception of copyright. However, determining originality is one of the most complex aspects of copyright law. In Vasantha Obeysekera v Alles,36 the Court of Appeal of Sri Lanka observed that the primary purpose of granting copyright “is to foster originality in literary, artistic and scientific productions and to afford legal protection to the author.”37 Originality “is one of the major concepts in copyright law.”38 Although the notion of originality has not been defined in international treaties or the vast majority of national laws, “it is the most important notion of copyright law because it is the sieve that determines which ‘productions of the human spirit’ are protected by copyright”39 and acquire the status of “work.” Indeed, despite originality being a general statutory requirement for many years, it is very difficult to state with any precision what copyright law means when it demands that works be “original.”40 Different jurisdictions adopt varying parameters to determine the standard of originality required for the grant of copyright. At the same time, the threshold of originality required for copyright eligibility varies between the type of subject matter that is to be protected. The Sri Lankan courts have followed English law in interpreting the concept of originality.41 In the United Kingdom, the originality threshold has been set at a very low standard.42 In view of this, copyright protection extends beyond works 35

Code of IP, section 7(1)(d). Vasantha Obeysekera v Anthony Christopher Alles CA No 730/92(F), decided on 22 March 2000 (“Vasantha Obeysekera v Alles”). 37 Ibid, 11. 38 EF Judge and D Gervais, “Of Silos and Constellations: Comparing Notions of Originality in Copyright Law” (2009) 27 Cardozo Arts & Entertainment Law 375, 376. 39 Ibid. 40 L Bently et al., Intellectual Property Law (5th edn, Oxford University Press 2018), 93. 41 Karunaratna, Introduction to the Law of Copyright (n 9) 36. 42 Bently et al. (n 40) 94. 36

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that we would typically classify as works of literature, such as Charles Dicken’s Oliver Twist or Leo Tolstoy’s War and Peace, or works of art, such as Leonardo da Vinci’s Mona Lisa or Michelangelo’s David. Thus, things that are seemingly trivial from an intellectual or creative perspective have been regarded as original enough to be protected under copyright law. For instance, railway timetables43 and television schedules,44 which would have ordinarily attracted very little intellectual input, examination papers,45 which are difficult to classify as works of literature, and even diagrams of integrated circuits,46 design drawings of a car exhaust pipe47 or parts for a boat,48 which are more functional than creative or artistic, have received copyright protection. The originality requirement in copyright law is concerned with expressions rather than the ideas that underpin the expressions.49 That is, it is “concerned with the manner in which the work is expressed.”50 As Peterson J observed in University of London Press v University Tutorial Press: The word ‘original’ does not in this connection mean that the work must be an expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of a ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of thought.51

Along similar lines, in Mahanamahewa v Austin Canter, the Court of Appeal of Sri Lanka observed that “[a]s regards the requirement of originality, it appears [...] that copyrights are not concerned with the originality of ideas, but with the expression of thought.”52 The Court of Appeal endorsed this view in the subsequent case of Vasantha Obeysekera v Alles, when it stated that “[t]he originality required relates to expression of thought.”53 Consequently, even derivative works, such as translations and abridgements, can be original even though the idea, meaning or plot contained therein is the same as that in the original work.

43

Leslie v Young (1984) 21 R (HL) 57. Independent Television Publications Ltd v Time Out Ltd [1984] FSR 64. 45 University of London Press v University Tutorial Press. 46 Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd [1995] SGHC 289. 47 British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd [1986] 1 AC 577. 48 Dorling v Honnor Marine Ltd [1964] RPC 160. 49 TRIPS, Art. 9.2. 50 Bently et al. (n 40) 94. 51 University of London Press v University Tutorial Press, 608. 52 Wijesinghe Mahanamahewa and Another v Austin Canter [1986] 2 Sri LR 154 (“Mahanamahewa v Austin Canter”), 163. 53 Vasantha Obeysekera v Alles, 12. 44

7.2 Works Protected

213

While it is very difficult to explain the traditional British approach to originality in terms of any overarching principles or rules, two characterisations have often been employed in determining originality.54 That is: (a) (b)

a work is original if it originates from the author and is not copied; and a work is original if an author has exercised the requisite labour, skill, or judgement in producing the work.

The first characterisation was neatly articulated by Peterson J in University of London Press v University Tutorial Press. According to him, the Copyright Act “does not require that the expression must be in an original or novel form, but that the work must not be copied from another work–that it should originate from the author.”55 While this highlights the fact that “originality” is linked to the idea of origination, “it unfortunately tells the reader very little about when we can say that a work originates from an author.”56 Thus, the second characterisation is more valuable–i.e., “a work is original if an author has exercised the requisite labour, skill, or judgement in producing the work.”57 The second characterisation of the originality standard has been adopted at the highest level by the UK House of Lords in Ladbroke (Football) v Williams Hill.58 In that case, the claimant ran a weekly football pool competition by sending out coupons to participants. They alleged that the defendant had copied the standard forms of their coupon into a rival version.59 The House of Lords treated these football pool coupons “as original compilations because of the labour, skill, and judgement that had gone into devising the betting system that informed the coupon.”60 The British approach to originality is firmly rooted in Sri Lankan law. This means that the originality threshold in Sri Lanka, too, is very low. This is apparent from the recent decision of the Supreme Court of Sri Lanka in MTK Nagodawithana v C Aloy W Fernando, where the Court observed as follows: The test for originality of a work was set out in University of London Press v University Tutorial Press [1916] 2 Ch 601 wherein it was held at 608: ‘The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work–that it should originate from the author’.61

54

Bently et al. (n 40) 97. University of London Press v University Tutorial Press, 608. 56 Bently et al. (n 40) 97. 57 Ibid. 58 Ladbroke (Football) v Williams Hill [1964] 1 All ER 465. 59 Cornish, Llewelyn and Aplin (n 25) 246. 60 Bently et al., (n 40) 97. 61 MTK Nagodawithana v C Aloy W Fernando SC/CHC/Appeal/30/2006, decided on 10 September 2018, 12. 55

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On previous occasions, the British standard of originality has been acknowledged and accepted by the Court of Appeal in Mahanamahewa v Austin Canter 62 and Vasantha Obeysekera v Alles,63 as well as by the Supreme Court in Fernando v Gamlath.64 Since originality “is concerned with the relationship between an author or creator and the work,”65 it “is not concerned with whether the work is inventive, novel or unique.”66 This has been made quite explicit in the IP Act, when it states that works “shall be protected by the sole fact of their creation and irrespective of their mode or form of expression, as well as of their content, quality and purpose.”67 Because originality is a precondition for copyright protection, it has the capacity to limit the subject matter which can be protected under copyright. Thus, the requirement of originality is an important tool “which delineates the borderline between protected creations and the public domain.”68 For instance, while an original writing will be protected under copyright law, a writing which lacks originality would not receive copyright protection, thus forming part of the public domain. But naturally, when the originality threshold is set at a very low standard, as is the case in Sri Lanka, copyright protection can extend to an extremely broad range of subject matter that might not receive protection had the originality threshold been higher.69 As such, whether a low threshold of originality is suitable for a developing country like Sri Lanka, which is a net user of copyright-protected works, remains a serious question. After all, a low originality threshold could prevent free access to a broad range of subject matter that may otherwise have fallen within the public domain. In circumstances where copyright exceptions are narrowly crafted, a low originality threshold could seriously undermine access to knowledge. As such, there could be utility in reconsidering the originality requirement under Sri Lankan law, although we acknowledge that attempting to recalibrate a standard that has been accepted and applied for over a century will not be a straightforward task.

62

Mahanamahewa v Austin Canter, 163–164 (“The word original does not in this connection mean that the work must be the expression of original or inventive thought. Copyrights are not concerned with the originality of ideas, but with the expression of thought… But the Act does not require that the expression must be in original or novel form, but that work must not be copied from another work, that it shall originate from the author”). 63 Vasantha Obeysekera v Alles, 12 (“Our Act does not seem to require that the expression must be in original or novel form, but that the work must not be copied from another work. That means that it shall originate from the author”). 64 Fernando v Gamlath [2011] 1 Sri LR 273, 277 (citing University of London Press v University Tutorial Press). 65 Bently et al. (n 40) 93. 66 Ibid. 67 IP Act, section 6(2). 68 PB Hugenholtz, “Limits, limitations and exceptions to copyright under the TRIPS Agreement” in CM Correa, Research Handbook on the Protection of Intellectual Property under WTO Rules (Edward Elgar 2010), 322. 69 See CS Talagala, “Copyright in Sports?” (2018) 24 The Bar Association Law Journal 282.

7.2 Works Protected

215

7.2.3 Fixation Fixation, or the requirement that an expression must be fixed in some material form before copyright protection can be granted, is not a mandatory requirement under the Berne Convention. As such, individual countries in their national copyright legislation may demand fixation as a precondition for copyright protection.70 In the Sri Lankan context, the IP Act does not necessitate the fixation of a work as a prerequisite for copyright protection. This is implicit in section 6(2) of the IP Act, which provides that works “shall be protected by the sole fact of their creation and irrespective of their mode or form of expression.” As Karunaratna has observed, “it appears that the fixation of a work in ‘a material form’ is not a requirement of copyright protection in Sri Lanka.”71 In contrast to the position in Sri Lanka, the copyright laws in both the United Kingdom and the United States require the fixation of a work as a prerequisite for copyright protection. Thus, while the UK Copyright, Designs and Patent Act 1988 provides that “[c]opyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise,”72 the US Copyright Act 1976 stipulates that, “[c]opyright protection subsists … in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”73 Similarly, under Singapore’s copyright law, literary, dramatic and musical works are deemed to have been made only when they are fixed in a material form either in writing or by storage in a computer, on any electronic medium, or any other medium from which the work can be directly reproduced.74 An interesting point to note here is that the UK and Singapore copyright statutes do not refer to artistic works when dealing with the fixation requirement. The reference is made specifically in respect of literary, dramatic and musical works. But this is not an omission or mistake because, under both statutes, artistic works are defined in such a way that fixation is an implicit requirement for a work to be regarded as an artistic work.75 Although fixation is not a mandatory requirement under the Berne Convention, there is utility in requiring fixation before a work is afforded copyright protection. We are of the view that Sri Lankan copyright law should impose a fixation requirement for a number of reasons. From a practical standpoint, fixation is a useful evidentiary tool, particularly when disputes arise. Unless a work is fixed in some form, it would be extremely difficult for a person claiming copyright in an unfixed work to establish the existence of that work. Similarly, establishing copyright infringement in relation 70

Berne Convention, Art. 2(2). Karunaratna, Introduction to the Law of Copyright (n 9) 39. 72 Copyright, Designs and Patent Act 1988, section 3(2). 73 Copyright Act 1976, 17 USC §102(a). 74 Copyright Act 2021, section 16. 75 UK Copyright, Designs and Patents Act 1988, section 4; Singapore Copyright Act 2021, section 20. 71

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to an unfixed work can be challenging, as it would be more difficult to establish that the work was accessible in the first place. From a normative standpoint, fixation can be used to address the “idea/expression” dichotomy. Copyright law protects the expression of an idea and not the idea itself. Fixation ensures that protection is granted in respect of expressions capable of being perceived by the human senses– thus ensuring that protection is limited to expressions and not ideas. Also, given the long duration of copyright protection, it makes sense to impose a fixation requirement so that works remain sufficiently permanent. From a policy standpoint, the lack of a fixation requirement as a precondition for copyright protection has the effect of extending protection to a broader range of works, even when they have no permanent form.76 However, whether such a broad scope of copyright protection is suitable for a developing country like Sri Lanka, which is a net user of copyright-protected works, remains a question. Of course, insisting on fixation may be problematic in respect of original works of a transient nature,77 such as performative art, sculptures made out of natural or living material, face paintings and henna art. However, the difficulty associated with the fixation of transient works is mitigated because the fixation of a work does not have to be perfect or identical.78 Fixation in a material form is sufficient, which can be easily achieved at a low cost using audiovisual or audio-recording technologies.79

7.3 Nature and Scope of Rights Copyright is a bundle of exclusive rights that are statutorily protected. The Berne Convention protects the rights of copyright owners that deal with both the pecuniary and moral interests of authors.80 However, TRIPS excludes the requirement to protect moral rights, although it requires WTO members to protect the economic rights of copyright owners recognised under the Berne Convention.81 Since Sri Lanka is a party to both the Berne Convention and TRIPS, it is bound to protect both the economic and moral aspects of copyright. Thus, the provisions of the IP Act grant both moral rights and economic rights in respect of protected works. While moral rights are set out in section 10 of the IP Act, economic rights are set out in section 9.82 Moral

76

See Talagala, “Copyright in Sports?” (n 69). M Carpenter and S Hetcher, “Function over Form: Bringing the Fixation Requirement into the Modern Era (2014) 82 Fordham Law Review 2221, 2225. 78 M Pavis, “ICH and safeguarding: uncovering the cultural heritage discourse of copyright” in C Waelde et al., Research Handbook on Contemporary Intangible Cultural Heritage: Law and Heritage (Edward Elgar 2018), 317. 79 Ibid. 80 Berne Convention, Arts. 6bis, 8, 9, 11, 11bis, 11ter, 12, 13, 14, 14bis and 14ter. 81 TRIPS, Art. 9.1. 82 IP Act, section 5. 77

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rights are granted to an author of a work. In contrast, economic rights are granted to the owner of a copyright-protected work.83 In terms of the Berne Convention, read together with TRIPS, copyright protection under national law has to be extended to:84 (a) (b)

published and unpublished works of authors who are nationals of a country that is a party to the Berne Convention and/or TRIPS; authors who are not nationals of a country party to the Berne Convention and/or TRIPS but who publish their works for the first time in one of those countries.

Apart from that, both the Berne Convention and TRIPS mandate a national treatment requirement, which means that foreigners (of countries party to the said instruments) should be treated in the same way as nationals regarding the protection of their works under national copyright law.85 Echoing these requirements, the IP Act extends copyright protection to: (a) (b)

(c)

works of authors who are nationals of, or have their habitual residence in, Sri Lanka; works first published in Sri Lanka, works first published in another country and thereupon published in Sri Lanka within thirty days from such publication, irrespective of the nationality or residence of the author; and works that are protected in Sri Lanka by virtue of, and in accordance with, any international convention or any national agreement to which Sri Lanka is a party.86

Consequently, Sri Lankan law extends copyright protection to nationals of all the countries party to the Berne Convention and TRIPS, including many developed nations, such as the United Kingdom, the United States, Germany, and France. It is to be noted that these countries are the major producers of copyright-protected works used by the people in Sri Lanka, particularly in the field of science and technology. For that reason, the grant of copyright protection in Sri Lanka has an impact on the extent to which the people of Sri Lanka can freely access works, especially for educational purposes and research. Accordingly, Sri Lankan copyright law must be calibrated to ensure that public access to knowledge is not unreasonably impeded. The Berne Convention stipulates that the term of copyright protection must extend to the life of the author and fifty years after his death.87 Different terms of copyright protection are specified for cinematographic works,88 anonymous and pseudonymous works,89 photographs,90 and works of applied art.91 However, the Berne Convention 83

Ibid, section 9. Berne Convention, Art. 3(1); TRIPS, Art. 9. 85 Berne Convention, Art. 5(1); TRIPS, Art. 3. 86 IP Act, section 26. 87 Berne Convention, Art. 7(1). 88 Ibid, Art. 7(2). 89 Ibid, Art. 7(3). 90 Ibid, Art. 7(4). 91 Ibid, Art. 7(4). 84

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permits contracting states to grant a longer term of protection in excess of what is required by the Convention.92 TRIPS also grants a similar discretion.93 In exercising this discretion, the IP Act, as a general rule, affords copyright protection for a period amounting to the lifetime of the author and for a further period of seventy years from the date of his death.94 However, because Sri Lanka is a developing country that is in dire need of access to copyright-protected works produced in other countries, the grant of a longer term of protection for works beyond the mandated minimum period under the Berne Convention and TRIPS is not in the best interest of the country. However, it is also noteworthy to point out that the free trade agreement between Singapore and Sri Lanka requires Sri Lanka to guarantee a term of protection for copyright-protected works which is not less than the life of the author and seventy years after the author’s death.95 In the next part, we consider the moral and economic rights associated with copyright. More importantly, we comment on how the copyright-related provisions of the IP Act can be reframed to better promote domestic interests to the extent permitted under international copyright law.

7.3.1 Moral Rights The Berne Convention confers certain rights known as moral rights independently of the economic rights conferred to authors of works. Thus, Article 6bis of the Berne Convention provides: Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

According to WIPO’s commentary on the Berne Convention, the above provision enshrines two of the author’s prerogatives.96 The first is the author’s right to claim authorship. This essentially permits the author of a work to claim that he is its creator. This right can also be used in a negative sense–i.e., where the author publishes his work under a pseudonym or by keeping it anonymous. In addition, an author may refuse to have his name applied to a work that is not his and object to someone else’s name being used in respect of a work that he created. The second prerogative is that 92

Ibid, Art. 7(5). TRIPS, Art. 12 (“whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, such term shall be no less than 50 years from the end of the calendar year of authorised publication, or failing such authorised publication within 50 years from the making of the work, 50 years from the end of the calendar year of making”). 94 IP Act, section 13(1). 95 Sri Lanka–Singapore Free Trade Agreement, 1 May 2018, Art. 13.4. 96 WIPO, Guide to the Berne Convention (n 29) 41. 93

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of objecting to any distortion, mutilation, modification, or other derogatory action in relation to an author’s work that could be prejudicial to the author’s honour and reputation. The moral rights set out above will continue to subsist in the author even in cases where the economic rights relating to a work are transferred to a third party. The IP Act gives effect to Article 6bis(1) of the Berne Convention through section 10(1), which provides as follows: The author of a work shall independently of his economic rights and even where he is no longer the owner of those economic rights, have the following rights— (a)

to have his name indicated prominently on the copies and in connection with any public use of his work, as far as practicable;

(b)

the right to use a pseudonym and not have his name indicated on the copies and in connection with any public use of his work;

(c)

to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honour or reputation.

While section 10(1)(a) of the IP Act gives effect to the author’s right to claim authorship in respect of his work, section 10(1)(b) deals with the right of an author to publish his work under a pseudonym or anonymously. Section 10(1)(c) deals with acts in respect of a work that could prejudice the image of an author. A point to note about the Sri Lanka provision is that it seemingly does not give full effect to all aspects of moral rights as contemplated by the Berne Convention. Section 10(1)(a) focuses specifically on the right of the author to be identified with his work. But it does not deal with the right of an author to prevent false attribution–i.e., where an author’s work is wrongly attributed to someone else or where his name is used wrongly in connection with someone else’s work. In order to give better effect to moral rights, it would be prudent to amend the Sri Lankan provision so that a right to object to false attribution is included within the scope of the moral rights provision.

7.3.2 Economic Rights The Berne Convention and TRIPS mandate the grant of certain exclusive economic rights to owners of copyright in works. As a party to both the Berne Convention and TRIPS, Sri Lanka has recognised these economic rights in terms of the IP Act. Accordingly, section 9(1) of the IP Act provides: Subject to the provisions of sections 11 to 13,97 the owner of copyright of a work shall have the exclusive right to carry out or to authorise the following acts in relation to the work—

97

(a)

reproduction of the work;

(b)

translation of the work;

These provisions deal with copyright exceptions.

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(c)

adaptation, arrangement or other transformation of the work;

(d)

the public distribution of the original and each copy of the work by sale, rental, export or otherwise;

(e)

rental of the original or a copy of an audiovisual work, a work embodied in a sound recording, a computer program, a data base or a musical work in the form of notation, irrespective of the ownership of the original or copy concerned;

(f)

importation of copies of the work, (even where the imported copies were made with the authorisation of the owner of the copyright);

(g)

public display of the original or a copy of the work;

(h)

public performance of the work;

(i)

broadcasting of the work;98

(j)

other communication to the public of the work.99

The rights mentioned above apply to both the entire work and a substantial part thereof.100 Next, we consider the scope of some of the key economic rights that are likely to have the most impact from an access to knowledge point of view. In the course of that discussion, we also comment, where possible, on how the law could be reframed in order to better balance the rights of copyright owners and the interests of users of copyright-protected works.

7.3.2.1

Right of Reproduction

The right of reproduction is the “oldest right given to copyright owners.”101 Yet the Berne Convention did not explicitly recognise this right until the Stockholm Revision in 1967.102 According to the IP Act, the right of reproduction entails “the making of one or more copies of a work or sound recording in any material form, including any permanent or temporary storage of a work or sound recording in electronic form.”103 As Karunaratna has observed, the scope of reproduction under the IP Act is very broad in that it covers “the making of copies in any material form–traditional forms as well as novel forms including those that emerged with the development of new technologies.”104 At the same time, the scope of reproduction in the IP Act covers both permanent and temporary reproduction, as a result of which printing, photocopying or digitising a book, as well as any “copies produced by a computer

98

Strangely, as with section 6(1) of the IP Act, in setting out the list of rights, section 9(1) skips (i) and instead, immediately after (h), lists (j). 99 IP Act, section 9(1). 100 Ibid, section 9(2). 101 Bently et al., (n 40) 144. 102 WIPO, Guide to the Berne Convention (n 29) 54. 103 IP Act, section 5. 104 DM Karunaratna, An Introduction to the Law Relating to Literary & Artistic Creations in Sri Lanka (Sarasavi Publishers 2019), 137.

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or by transmitting or downloading of material from e-mail, notice boards or Internet websites” also fall within the meaning of “reproduction.”105 The manner in which “reproduction” is defined in the IP Act can be regarded as futuristic, particularly when we consider that the statute was passed into law in 2003. During that period, internet use in Sri Lanka for the digital consumption of goods and services was relatively less prevalent compared to other more developed parts of the world and technologies associated with on-demand or live streaming of digital content were unfamiliar to the general public. Thus, at that time, the type of copying that was most prevalent in Sri Lanka would have been the more traditional forms of copying, such as the reproduction of copyright-protected material using photocopy machines or downloading and saving such material in a permanent form on rewritable compact discs. Whereas the definition of reproduction, as it was formulated in 2003, includes the “temporary storage of a work or sound recording in electronic form,” which captures methods of reproduction that are more prevalent in today’s context, particularly in the online environment. Thus, the Sri Lankan definition captures the technical, transient and temporary reproduction of copyright-protected material that could occur when users browse the internet using a standard web browser, as well as similar forms of temporary and transient reproduction that take place when internet service providers (“ISPs”) transmit material upon the request of their users. However, whether or not the current definition of “reproduction” is suitable for Sri Lanka’s context is a matter that needs to be considered. Indeed, at the time of writing this book, we were amid the COVID-19 pandemic. In view of lockdowns that were imposed from time to time, we witnessed many higher education institutions, such as public universities and schools adopting online methods of teaching. Arguably, this led to increased use of the internet on the part of the general public. On account of this, it would seem that every act on the part of an internet user of browsing or streaming copyright-protected material from various internet sources could amount to the reproduction of works, which in effect encroaches upon the reproduction right of copyright owners. On the same logic, it would also seem that ISPs are likely to be exposed to liability for engaging in acts that are otherwise within the exclusive domain of copyright owners. Although engaging in the act of temporary and transient reproduction of a copyright-protected work is likely to be regarded as fair use, which we discuss later on in this chapter, the burden of establishing fair use falls on the alleged infringer, which is not a favourable outcome from the point of view of access to knowledge. In contrast to the Sri Lanka approach, copyright law in the United States, a technologically more advanced nation than Sri Lanka, has adopted a relatively conservative approach towards defining the scope of reproduction. The US Copyright Act 1976 defines the right of reproduction as the right “to reproduce the copyrighted work in ‘copies’ or phonorecords.”106 The term “copies” has been defined as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from 105 106

Ibid. Copyright Act 1976, 17 USC §106(1).

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which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”107 In turn, the Copyright Act 1976 provides that a “work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”108 This fixation element has sometimes been used to exclude certain acts of reproduction of a temporary, transient or incidental nature from the scope of the copyright owner’s right of reproduction. In particular, the US Court of Appeals for the Second Circuit has declared that the US Copyright Act 1976 imposes two requirements with regard to fixation.109 They are (a) the “embodiment requirement,” which demands that a work must be placed in a medium such that it can be perceived and reproduced from it; and (b) the “duration requirement,” which demands such embodiment to remain for more than a transitory duration. As a result of these two requirements, certain temporary reproductions are excluded from the scope of the right of reproduction (reproduction in copies or phonorecords)110 as contemplated under the US copyright law. Thus, it is clear that copyright law in Sri Lanka does not follow the American approach with regard to fixation. Instead, it follows the UK/EU approach in defining the scope of the right of reproduction.111 However, copyright law in the United Kingdom and European Union expressly excludes acts of temporary and incidental reproduction/copying provided certain specific conditions are satisfied.112 No such express exclusion is available in the IP Act, although the general fair use exception is likely to exempt acts of temporary or incidental copying/reproduction. 107

Ibid, §101. Ibid. 109 Cartoon Network v CSC Holdings Inc 536F. 3d 121 (2d Cir. 2008). 110 Copyright Act 1976, 17 USC §106(1). 111 UK Copyright, Designs and Patents Act 1988, section 17(6) (“Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work”); Directive 2001/29/EC of the European Parliament and the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (“Information Society Directive”), Art. 2 (“Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part”). 112 UK Copyright, Designs and Patents Act 1988, section 28A (“Copyright in a literary work, other than a computer program or a database, or in a dramatic, musical or artistic work, the typographical arrangement of a published edition, a sound recording or a film, is not infringed by the making of a temporary copy which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable—(a) a transmission of the work in a network between third parties by an intermediary; or (b) a lawful use of the work; and which has no independent economic significance”); Information Society Directive, Art. 5(1) (“Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable: (a) a transmission in a network between third parties by an intermediary, or (b) a lawful use of a work or other subjectmatter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2”). 108

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From the standpoint of access to knowledge, it would be better for the Sri Lankan IP Act to define “reproduction” in more conservative terms. After all, although international treaties require that copyright owners be guaranteed the right of reproduction, determining the scope of reproduction is a matter of national law. This is a flexibility that can be effectively used to balance competing rights and interests113 by empowering specific communities, such as educators, scientists, academics, and researchers, to engage in work that could promote better access to knowledge and innovation.

7.3.2.2

Right of Translation

Of all the economic rights recognised under the IP Act, the right to translate (translation right/right of translation) occupies a special position. At the international level, translation rights have been a cornerstone of contentions between developed and developing countries for centuries. It has been identified as “la question par excellence” in international copyright law,114 as it is the right of translation that led countries to enter into international copyright agreements such as the Berne Convention. Arguably, the translation right is the most important right for authors seeking protection for their works in foreign countries.115 This is because translation is needed to create a market for users in foreign countries.116 Given that developed countries are the key producers of knowledge products, it is not surprising for them to be more concerned about the right of translation when it comes to protecting their authors’ works in foreign countries. Following Article 8 of the Berne Convention, section 9(1)(b) of the IP Act recognises the right to translate and authorise the translation of a copyright-protected work. This right “covers the translation of a work into any language including a technical language.”117 The translation right gives the owners of copyright in works the right to exclude or prohibit others from engaging in acts of translation in respect of those works.118 This means that persons desirous of translating copyright-protected works should seek and secure permission from the respective copyright owners before engaging in translation activities.119 In addition, the translation right (together with the right of reproduction) enables owners of copyright in works to exclude or prohibit 113

Hugenholtz (n 64) 324. Ricketson and Ginsburg (n 13) 88. 115 Ibid, 35. 116 EH Wirten, Cosmopolitan Copyright: Law and Language in the Translation Zone (Uppsala University 2011), 18 (“Translation [makes] new works out of old. A prerequisite for the continued circulation of texts, it was the primary vehicle by which authors multiplied their works, but even more significantly, produced new readers”). 117 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 141. 118 CS Talagala, Copyright Law and Translation: Access to Knowledge in Developing Economies (Routledge 2021), 20. 119 Ibid. 114

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others from reproducing translations of their works.120 In particular, it has been suggested that copyright owners have the right to restrain the reproduction of their works in “original or any translated form” and consequently, “[a]nyone wishing to reproduce a particular translation should therefore obtain a licence from the owner of the copyright in … the original.”121 However, it is not very clear whether this position is theoretically correct.122 Nonetheless, in practice, copyright owners can restrain the translators and others from reproducing translations of their works by imposing conditions in the licence agreements granting permission to translate the works.123 Given the factors mentioned above, the translation right ensures that copyright owners can exercise control over the process of translation, as well as over the resulting translations.124 In particular, the owner of a copyright-protected work can exercise control over a range of factors, such as whether to translate the underlying work at all, who should translate the work, how and when should it be done, whether the translation should be reproduced, who should reproduce the translation, when should such reproduction be done, and the terms of payment.125 As such, it is pretty clear that the translation right can impact the availability of foreign copyright-protected works in local languages. First, the translation right can prevent the process of translation (and therefore translations) of copyright-protected works altogether because copyright owners can refuse to allow their works to be translated.126 Second, the translation right can impose a financial burden on those who wish to translate copyright-protected works and reproduce translations.127 In particular, copyright owners can charge a fee for granting permission to translate works and reproduce the translations. As such, the translation right can “increase the cost of translations to the public.”128 Third, the translation right can impose an administrative burden on those who wish to translate copyright-protected works and reproduce translations.129 This can be particularly so with regard to works published in foreign countries.130 Those who wish to translate foreign works and reproduce the resulting translations will have to obtain the consent of the respective copyright owners located

120

Ibid. K Garnett, G Davies and G Harbottle, Copinger and Skone James on Copyright (16th edn, Sweet & Maxwell 2011), 515. 122 Talagala, Copyright Law and Translation (n 118), 20. 123 Ibid. 124 Ibid. 125 Ibid. 126 L Bently, “Copyright and Translations in the English Speaking World” (1993) 12 Translatio–FIT Newsletter 491, 496. 127 Talagala, Copyright Law and Translation (n 118) 20–21. 128 Bently (n 126) 496. 129 Talagala, Copyright Law and Translation (n 118) 20–21. 130 Ibid. 121

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in foreign countries.131 Locating them and communicating with them can sometimes be difficult and often involve delays and expenses.132 Despite the potential impact of this right on the availability of foreign works in local languages, the right of translation has to be guaranteed under national law in view of Sri Lanka’s international obligations. Therefore, we are compelled to consider other avenues to address and mitigate the impact that the translation right could have on access to knowledge. Even today, a majority of the student population in Sri Lanka undertake their studies in schools and universities in either the Sinhala or Tamil languages, which are the two national languages commonly spoken in Sri Lanka. Whereas much of the world’s knowledge, especially in the domain of science, technology, engineering, and mathematics, is accessible in the English language. For this reason, it is imperative that key English texts are translated into the local languages so that Sri Lanka’s younger generation could have better access to knowledge.

7.3.2.3

Right of Public Distribution

The right to public distribution recognised under section 9(1)(d) of the IP Act grants the copyright owner the exclusive right to carry out or authorise the public distribution of the original and every copy of a work by sale, rental, export, or otherwise. However, the Berne Convention does not lay down any general exclusive right over controlling the distribution of works owing to a lack of consistency in the laws among countries party to the Convention.133 Nevertheless, Article 6(1) of the WIPO Copyright Treaty, to which Sri Lanka is not a party, provides that authors of works under the Berne Convention are to enjoy the exclusive right to make available to the public the original and copies of their works through sale or other transfer of ownership.134 As Karunaratna has observed, the right of public distribution under the IP Act “covers a broader marketing spectrum embracing the acts that make the original of a work or its copies available to the public by sale, rental, or otherwise.”135 While the IP Act does not define the term “public,” this term does not necessarily mean the general public or the country’s entire population. Accordingly, a section or a group of people outside the normal family circle or closest acquaintances could constitute the public for the purposes of this right. Consequently, what constitutes “distribution to the public” would largely depend on the facts and circumstances of each case.136 According to the wording of section 9(1)(d) of the IP Act, the right of public distribution extends only to disposing of a work or a copy thereof by “sale, rental or otherwise.” Thus, the free distribution of a work or a copy among the public is likely 131

Ibid. Ibid. 133 Garnett, Davies and Harbottle (n 121) 614; Ricketson and Ginsburg (n 13) 660. 134 Garnett, Davies and Harbottle (n 121) 614. 135 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 142. 136 Ibid. 132

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to fall outside the scope of this right as the term “or otherwise” in section 9(1)(d) would have to be interpreted with the aid of the ejusdem generis rule.137 Arguably, this means that when copyright-protected works are distributed for free in schools, universities or other educational institutions, it will not come within the scope of this right. This is a useful limitation to the scope of the distribution right from an access to knowledge point of view. An important point to note about the right of public distribution is that it is subject to the rule on exhaustion of rights. Once an article that embodies a copyright-protected work is first sold or placed on the market by or with the consent of the copyright owner, the owner loses the right to control the further commercialisation of that item.138 The rule on exhaustion, which is recognised as the doctrine of first sale or first sale doctrine in jurisdictions such as the United States, enables a purchaser of a lawful work or a copy thereof to use and resell the same free from any restraint by the copyright owner.139 Section 9(4) of the IP Act recognises this doctrine in the following manner: Notwithstanding the provisions of paragraph (d) of subsection (1), the owner of a work or a copy of a work lawfully made or any person authorized in that behalf by such owner, is entitled without the authority of the owner of the copyright, to sell or otherwise dispose of that copy.

Arguably, the rule on exhaustion is an important limitation to the exercise of the right of distribution. There would hardly be a flourishing second-hand market for copyright-protected material such as books without it. However, the ensuing discussion on importation will demonstrate that the doctrine of first sale/rule on exhaustion in Sri Lanka has certain limitations–in that it does not extend to works or copies imported to Sri Lanka from other countries other than for private use.140

7.3.2.4

Right to Import

In terms of section 9(1)(f) of the IP Act, the exclusive right to carry out or to authorise the importation of copies of works (even where the imported copies have been made with the authorisation of the copyright owner) is vested exclusively with the copyright owner. This right restricts the operation of the first sale doctrine. In essence, by granting copyright owners the exclusive right to import copies of their works into the country, the law implements a policy of national exhaustion of rights in respect of copyright. As such, the parallel importation of copies of works lawfully made available in a foreign market by or with the consent of the copyright owner constitutes an act of copyright infringement even though such copies had been placed on the market with the consent of the copyright owner and lawfully purchased by the 137

See P St J Langan, Maxwell on the Interpretation of Statutes (12th edn, Tripathi 1980), 297–303. Garnett, Davies and Harbottle (n 121) 613. 139 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 142–43. 140 IP Act, sections 9(1)(f) and 12(8). 138

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importer. The only exception to this is when a person imports a copy of a work for personal use.141 In contrast to the position in Sri Lanka, US copyright law allows the doctrine of first sale or exhaustion of rights to operate in respect of copies of works placed on the market, whether in the United States or abroad, by or with the authorisation of the copyright owner. The decision of the US Supreme Court in Kirtsaeng v John Wiley & Sons Inc142 makes this explicitly clear. The Court held that the first sale doctrine under US copyright law, which allows the resale of copyright-protected works, applies even in the case of copies of works produced and sold abroad. While the Supreme Court stated that the first sale doctrine is a statutory principle under US copyright law,143 it nevertheless observed that the statutory doctrine is a codification of the common law doctrine with an impeccable historical pedigree that goes as far back as the seventeenth century. It is to be noted that the Berne Convention is silent on the matter of exhaustion of rights and, therefore, does not create an obligation to recognise or denounce exhaustion of rights. On the other hand, TRIPS makes express reference to the exhaustion principle in Article 6, which provides: For the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.

Accordingly, it is clear that TRIPS allows WTO members bound by its provisions to regulate the question of exhaustion of rights according to their needs and concerns. As far as Sri Lanka is concerned, as a country that could benefit from foreign publications, it would be wise to implement a policy of international exhaustion. Doing so would allow traders to freely import lawful copies of copyright-protected works from foreign markets for sale in Sri Lanka, providing the Sri Lankan public with better and easy access to a broader range of resources. For this reason, we are of the view that the right to import should be limited so that parallel imports can be lawfully permitted. This can be achieved by removing the words in brackets from section 9(1)(f) (i.e., the part which reads as “even where the imported copies were made with the authorisation of the owner of the copyright”) and adding a specific exception to the effect that the importation of copies of copyright-protected works lawfully placed on the market by or with the consent of the copyright owner will not be construed as an infringement of the copyright owner’s exclusive right to import.

141

Ibid, section 12(8). Kirtsaeng v John Wiley & Sons Inc 568 US 519 (2013). 143 Copyright Act 1976, 17 USC §109(a). 142

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Right of Communication to the Public

The IP Act confers on copyright owners an exclusive right to carry out or to authorise the “communication” of their works to the public.144 The IP Act defines “communication to the public” as the “transmission to the public” by wire or without wire of the images or sounds, or both of a work, a performance or a sound recording.145 This includes making available to the public a work, performance or sound recording so that members of the public may access it from a place and at a time individually chosen by them.146 The right of communication to the public expands the monopoly given to copyright owners to communicate their works to the public beyond the instances encapsulated under the right of public display, right of public performance and right of broadcasting.147 The right of communication to the public under the IP Act “confers expressly broad rights on copyright owners to control the use of their works.”148 Since the right of communication to the public “is not subject to the doctrine of exhaustion of rights,” it “creates a pay per use situation,” as “even a person who legitimately gains access to a work cannot resell or lend it to another person.”149 The concept of communication to the public comprises two fundamental ingredients—namely, the act of communication and communication to the public. As provided for in section 9(1)(k) of the IP Act, the transmission of a work forms the core and essential component of the communication.150 Thus, it is the transmission to the public that constitutes the communication to the public of a work under this right. Such transmission is technologically neutral and could occur with or without wire.151 As Katunaratna has identified, the right of communication to the public is “act based” because whether or not the public actually receives or has actual access to what is transmitted is immaterial to infringe this right.152 What is required is that the transmission at the starting point should be made to the “public,” which, in the absence of a statutory definition, generally and reasonably means the transmission to persons outside the normal family circle and closest acquaintances.153 Thus, for instance, the 144

IP Act, section 9(1)(k). As Ricketson and Ginsburg have noted, the Berne Convention does not “consolidate the right of communication to the public by transmission into a single comprehensive and coherent article. Rather, the right is scattered across a variety of dispositions, leaving several gaps both as to subject matter covered by the right, and as to the exclusive rights conferred.” See Ricketson and Ginsburg (n 13) 717. 145 IP Act, section 5. 146 Ibid. 147 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 152. 148 WD Rodrigo, Copyright in the Digital Era: A Comparative Study of Sri Lanka, Australia and the United States (PhD Thesis, University of Queensland 2007), 70. 149 Ibid. 150 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 152. 151 Ibid. 152 Ibid, 153. 153 Ibid, 166.

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transmission of signals through television sets by a hotel to its customers staying in its rooms could constitute communication to the public, which may infringe this right.154 Arguably, the right of communication to the public is of great importance in the digital age. After all, much of the copyright-protected works are in digital format and can be communicated to the public utilising the internet. At the same time, from an access to knowledge standpoint, gaining access to digital content freely and efficiently could be immensely beneficial. Naturally, this means that the right of communication to the public directly impacts public access to copyright-protected works. As such, in developing countries such as Sri Lanka, there is a need to carefully calibrate this right so that it does not unduly interfere with activities that relate to education and research. Apart from setting up specific exceptions to ensure that this right does not unduly restrict activities that promote access to knowledge in terms that are fair and legitimate, one possible avenue that developing countries may pursue is to adopt a flexible and nuanced definition for “public.” After all, nothing in any of the international treaties/conventions indicates what constitutes the “public” for the purposes of this right. As such, special carve-outs may be made so that activities of communicating copyright-protected works within specific settings, such as educational institutions, can be excluded from constituting a communication to the “public.”155

7.4 Exceptions and Limitations to Copyright Protection The discussion above focused on the rights associated with copyright. In this part, the discussion turns to the limits of those rights. Although the rights conferred on the copyright owner are extensive, they are by no means absolute. As such, the state can impose limitations on the exercise of copyright in certain limited circumstances to meet various public policy objectives. This is achieved by incorporating limited exceptions to copyright protection under national law. In essence, these limited exceptions address the interests of those who require access to and need to make use of works protected by copyright in various circumstances. Both the Berne Convention and TRIPS contain provisions that permit various exceptions to the exercise of copyright. Of these, Article 9(2) of the Berne Convention and Article 13 of TRIPS are general provisions that permit limitations and exceptions to be imposed on copyright protection in certain special circumstances. Article 9(2) of the Berne Convention provides: It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author. 154 155

Ibid, 155. Hugenholtz (n 68) 324–325.

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Article 13 of TRIPS provides: Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.

A point to note is that while the wording of Article 9(2) of the Berne Convention seems to confine the exception only to the reproduction right, Article 13 of TRIPS extends the exception to all exclusive rights (i.e., the economic rights) of the copyright owner. The aforesaid provisions, which almost mirror each other, incorporate what is commonly known as the “three-step test” employed to determine the legality of copyright exceptions under national law. In US—section 110(5) Copyright Act,156 a WTO Dispute Settlement Panel offered guidance on the three-step test. On the first requirement–i.e., the requirement that an exception must be “confined to certain special cases”–the WTO Panel pointed out “that a limitation or exception in national legislation should be clearly defined and should be narrow in its scope and reach.”157 According to the WTO Panel, the second requirement, that an exception must not “conflict with a normal exploitation of a work,” must be judged “for each exclusive right individually.”158 Thus, the assessment must be a holistic one that takes into account the impact an exception is bound to have on all rights conferred on the copyright owner. On the final requirement, which mandates that an exception must not “unreasonably prejudice the legitimate interests of the right holder,” the WTO Panel noted that “interests” have a broader meaning than rights159 and that “prejudice” connotes damage, harm or injury.160 Notably, the WTO Panel noted that “prejudice to the legitimate interests of right holders reaches an unreasonable level if an exception or limitation causes or has the potential to cause an unreasonable loss of income to the copyright owner.”161 Countries party to TRIPS and the Berne Convention are permitted to impose exceptions to copyright protection under their national law so long as the exception satisfies this three-step test. Apart from the limitations and exceptions to copyright that may be imposed in compliance with Article 9(2) of the Berne Convention/Article 13 of TRIPS, the Berne Convention specifies certain specific exceptions that may be provided under national law. For instance, it is possible to quote from a work lawfully made available to the public, provided that the act of making the quotation is compatible with 156

United States–section 110(5) of the US Copyright Act WT/DS160/R (15 June 2000) (“US— section 110(5) Copyright Act”). 157 Ibid, para 6.112. 158 Ibid, para 6.173. 159 Ibid, para 6.223 (“The ordinary meaning of the term ‘interests’ may encompass a legal right or title to a property or to use or benefit of a property (including intellectual property). It may also refer to a concern about a potential detriment or advantage, and more generally to something that is of some importance to a natural or legal person. Accordingly, the notion of ‘interests’ is not necessarily limited to actual or potential economic advantage or detriment”). 160 Ibid, para 6.225. 161 Ibid, para 6.229.

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fair practice and the extent is justified by the purpose.162 The Berne Convention also provides that national law can permit the utilisation, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilisation is compatible with fair practice.163 It is also possible under national law to permit the reproduction by the press, the broadcasting or the communication to the public by wire of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or such communication thereof is not expressly reserved.164 Moreover, an Appendix to the Berne Convention (“Berne Appendix”), introduced at the Paris Revision of the Berne Convention in 1971, contains further exceptions that developing countries may impose. These specific exceptions allow developing countries to choose between, on the one hand, a compulsory licensing mechanism in respect of the reproduction and translation of works and, on the other hand, the imposition of a limit on the duration of the translation right. In the next part, we consider how the copyright-related provisions in the IP Act make use of the exceptions permitted under the Berne Convention and TRIPS. Our analysis focuses explicitly on the fair use exception and the various acts of fair use specified in the IP Act to determine the extent to which they help with providing better access to copyright-protected works and whether aspects of the existing exceptions can be improved.

7.4.1 The Fair Use Exception The IP Act has given effect to the exceptions permitted under the provisions of Articles 9(2), 10 and 10bis of the Berne Convention and Article 13 of TRIPS by incorporating the “fair use” exception. The doctrine of fair use, as articulated in sections 11 and 12 of the IP Act, permits the use of copyright-protected works without the authorisation of the copyright owner in certain limited and specific circumstances. The fair use provision in the IP Act does not define what fair use means, although it enumerates certain specific acts of fair use.165 In many ways, the Sri Lankan fair use provision resembles the fair use provision in the US Copyright Act 1976. However, the IP Act does not incorporate any of the specific exceptions permitted under the Berne Appendix. The failure to expressly recognise them in the IP Act is a major shortcoming from an access to knowledge standpoint. After all, the Berne Appendix was specifically crafted for developing countries like Sri Lanka.

162

Berne Convention, Art. 10(1). Ibid, Art. 10(2). 164 Ibid, Art. 10bis. 165 IP Act, section 11(3) and 12. 163

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Scope of Fair Use

As noted earlier, fair use in Sri Lanka lacks a statutory definition. Neither the IP Act nor the former Code of IP defines fair use. The position is the same in the United States, where the fair use doctrine is used, and in the United Kingdom, where the doctrine of fair dealing is used.166 Consequently, determining whether a particular use of a copyright-protected work is fair is a matter for the courts. However, since there is a dearth of reported case law on the doctrine of fair use in Sri Lanka, one would have to resort to the decisions of the US courts in order to evaluate the scope and extent of the doctrine of fair use. Section 11(1) of the IP Act provides: Notwithstanding the provisions of subsection (1) of section 9, the fair use of a work, including such use by reproduction in copies or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, shall not be an infringement of copyright. The following factors shall be considered in determining whether the use made of a work in any particular case is fair use– (a)

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(b)

the nature of the copyrighted work;

(c)

the amount of substantiality of the portion used in relation to the copyrighted work as a whole; and

(d)

the effect of the use upon the potential market for, or value of, the copyrighted work.

It is important to note that the wording of section 11 of the IP Act resembles the wording in the corresponding provision of the US Copyright Act 1976, 17 USC §107, which is as follows: Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

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(1)

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)

the effect of the use upon the potential market for or value of the copyrighted work.

See US Copyright Act 1976, 17 USC §107; UK Copyright, Designs and Patents Act 1988, sections 28–76.

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The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Although section 11 of the IP Act resembles the US fair use provision, there are two main differences. The first is that the factors that a court should consider when determining whether a particular use is fair under the US provision are nonexhaustive. In contrast, under the Sri Lankan IP Act, the four factors appear to be exhaustive.167 This means that the US provision grants more discretion to the courts in determining fair use in comparison to the Sri Lankan fair use provision. The second difference is that the US provision (as amended in 1992) does not make a distinction between published and unpublished works when determining fair use. In contrast, the Sri Lankan provision is silent on this aspect. Arguably, this could lead to some uncertainty regarding the scope of the doctrine in Sri Lanka.168 Section 11 of the IP Act and the corresponding US provision identify several uses of copyright-protected works that may be regarded as fair. They are criticism, comment, news reporting, teaching, scholarship, and research. These uses are also referred to in the exceptions permitted under the Berne Convention. However, as Karunaratna has observed, the purposes of fair use referred to in section 11 of the Sri Lankan IP Act are merely a set of examples and do not constitute an exhaustive list.169 Similarly, referring to the purposes explicitly mentioned under US copyright law, Budde has observed that “[f]air use is not, however, limited to the examples given. Rather, the examples provide direction in a determination of what other kinds of uses may qualify as fair.”170 This means that the use of copyright-protected works, including their reproduction and translation, for educational purposes, such as private study, and activities of libraries, may be regarded as fair use, although they have not explicitly been mentioned in section 11 of the Sri Lankan Act. Although the fair use provision of the IP Act (and the corresponding provision in US law) does not define what fair use is, except for providing a list of non-exhaustive examples,171 the law provides four factors that a court should consider in deciding whether a particular use is fair. Whether the use of copyright-protected works without the authorisation or consent of the copyright owner in a given situation is fair would ultimately depend on the application of these factors to that situation.172 We consider these factors next. 167

Karunaratna, Introduction to the Law of Copyright (n 9) 80. Ibid, 84. See also TSK Hemaratne, Intellectual Property Law and E-Commerce in Sri Lanka: Towards a Jurisprudence based on Constitution, Roman-Dutch Law and Buddhist Principle (PhD Thesis, Queen Mary, University of London 2005), 213. 169 Karunaratna, Introduction to the Law of Copyright (n 9) 84. 170 AM Budde, “Photocopying for Research: A Fair Use Exception Favouring the Progress of Science and the Useful Arts” (1996) 42 Wayne Law Review 1999, 2004. 171 W Patry, “American Geophysical Union v Texaco, Inc.: Copyright and Corporate Photocopying” (1995) 61 Brooklyn Law Review 429, 430. 172 Ibid (“Whether copying in a particular instance, including for classroom purposes, is fair use must be determined on a case-by-case basis by evaluating the four factors laid down in the statute and any others the courts find relevant”). 168

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The purpose and character of the use

Section 11 of the IP Act and the US fair use provision assume that the user’s purpose for making use of a copyright-protected work can have an impact on the probable harm caused to the copyright owner from that use.173 They also assume that commercial use of a work can seriously impair the potential market for a copyright-protected work than its use for non-commercial purposes. Thus, whether the impugned use is for a commercial or non-commercial purpose directly impacts the determination of fair use. In other words, if the impugned use of a copyright-protected work is for a commercial purpose, that use being interpreted as fair is remote than in the case where a work is used for a non-commercial purpose.174 (b)

The nature of the work

The essence of this consideration in determining fair use is whether the work is factual or fictional. In other words, the issue is whether the copyright-protected work, which has been used, is “primarily informational” or “primarily creative.” The general judicial attitude in the United States has been that works that fall into the latter category deserve more copyright protection than those under the former. In other words, the scope of fair use is broader when the work under consideration is primarily factual or informational rather than creative or fictional.175 For instance, the US Supreme Court in Campbell v Acuff-Rose Music Inc observed: This factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when [fictional or creative] works are copied.176

This factor will likely play an important role when there is a need to reproduce or translate copyright-protected works in areas such as science, technology, engineering and mathematics, which may be required to provide Sri Lankan students with better access to learning material. (c)

The amount used

This consideration involves an inquiry into the amount and substantiality of the portion of a copyright-protected work used in contravention to the owner’s rights as measured in relation to the work as a whole. For instance, if the amount of the work copied by a user is substantial both in terms of quality and quantity, the probability of such use being interpreted as fair is remote. Accordingly, the verbatim replication of an entire work, or almost an entire work or of the “heart” of the work, threatening to supplant the market for that work, will rarely qualify as fair use. However, in a 173

WW Fisher, “Reconstructing the Fair Use Doctrine” (1988) 101 Harvard Law Review 1659, 1672. 174 See Sony Corporation v Universal City Studios 464 US 417 (1984); Harper & Row Publishers v Nation Enterprises 471 US 539 (1985). 175 DV Singh and P Kumar, “Photocopying of Copyrighted Works for Educational Purposes: Does it Constitute Fair Use?” [2005] 10 Journal of Intellectual Property Rights 21, 23. 176 Campbell v Acuff-Rose Music Inc 510 US 569, 586 (1994).

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few instances, complete replication has been exempted where the content as copied served an entirely different but useful purpose than it did in the original work.177 It is also relevant to note at this point that in a somewhat controversial Indian case,178 the Division Bench of the Delhi High Court held that India’s fair dealing provision “would have no concern with the extent of the material used, both qualitative and quantitative,”179 since the interpretation of the Indian provision did not require the four principles on which fair use is determined in jurisdictions, such as the United States, to be read into that provision.180 But unlike India, which adopts a British-styled fair dealing exception, Sri Lanka has adopted a US-styled fair use exception that specifically requires the four factors enumerated in section 11(2) of the IP Act to be considered in determining whether a particular use of a copyrightprotected work is fair. The courts in Sri Lanka are bound to apply the four factors, including this particular factor that assesses the amount of a copyright-protected work used in ascertaining fair use. (d)

Effect on the potential market

The last factor pays attention to whether the use of a copyright-protected work in a particular situation has an adverse impact on the potential market for that work. In other words, the judicial consideration under this criterion is whether the particular use erodes the potential of the copyright owner to reap all the fruits of his mental labour incorporated in his work. One would logically see that this consideration becomes highly relevant for the determination of fair use since it is related to the economic incentives intended to be created by copyright law for the benefit of the copyright owners. Thus, the US Supreme Court has observed that this factor is “undoubtedly the single most important element of fair use.”181 Also, in some cases, the US courts have allowed the “fourth factor of market impact to weigh heavily” when weighing the four factors of fair use.182

7.4.1.2

Acts of Fair Use

The IP Act specifies certain acts to be included within the scope of fair use.183 These acts are set out in sections 12 and 12A of the IP Act. As Karunaratna has observed, it is self-explanatory that the various circumstances describing the acts of fair use offer merely a series of examples and are not to be treated as an exhaustive list.184 177

EJ Schwartz and D Nimmer, “USA” in PE Geller and L Bently (eds), International Copyright Law and Practice: vol 2 (LexisNexis 2013), §8[2][a][i]. 178 The Chancellor, Masters & Scholars of the University of Oxford v Rameshwari Photocopy Services RFA (OS) No 81/2016, decided on 9 December 2016. 179 Ibid, 33. 180 Ibid, 66. 181 Harper & Row Publishers v Nation Enterprises 471 US 539, 566 (1985). 182 Schwartz and Nimmer (n 177) §8[2][a][i]. 183 IP Act, section 11(3). 184 Karunaratna, Law Relating to Literary & Artistic Creations (n 104) 186.

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The specific acts of fair use are as follows—reproduction for private use; reproduction in the form of quotations; reproduction for teaching; reproduction by libraries or archives; reproduction for reporting of current affairs and information; reproduction and adaptation of a computer program; importation of a copy of a work for private use; public display of certain works; the communication of a transmission embodying a performance or display of a work;185 and the fair use of a work to facilitate persons with print disabilities. Of these acts of fair use, we consider some of the notable ones below. (a)

Private reproduction

For generations, it has been recognised that people can use copyright-protected works for their personal or private study without infringing the rights of the copyright owners. In particular, it has been acknowledged that “copying for one’s own private use, at least by hand, is sanctioned by custom.”186 In line with this, the IP Act provides in section 12(1) that: the private reproduction of a published work in a single copy shall be permitted without the authorisation of the owner of the copyright, where the reproduction is made by a physical person from a lawful copy of such work exclusively for his own personal purposes.187

However, the permission granted under section 12(1) is subject to the important qualification specified under section 12(2)(b) of the IP Act. Section 12(2)(b) provides: The permission under [section 12(1)] shall not be extended to the reproduction … in the form of reprography of whole or a substantial part of a book or of a musical work in the form of notations.

As such, the permission under section 12(1) does not apply where a copy is made through reprography (for example, a photocopier) of a whole or a substantial part of a book or of a musical work in the form of notations.188 This means that the reprographic reproduction of copyright-protected books in whole will never be construed as fair use, even for private use. Also, that permission does not extend to the reproduction of a work of architecture in the form of a building or other constructions.189 Similarly, reproduction of the whole or substantial part of a database and reproduction of computer programs are excluded from this exception.190 Further, the permission under section 12(1) does not extend to the reproduction of any work if the reproduction would conflict with the normal exploitation of the protected work or would otherwise unreasonably prejudice the copyright owner’s legitimate interests.191 In any event, the permission granted under section 12(1) does not extend to other economic rights of the copyright owner, such as translation, adaptation, 185

Rodrigo (n 148) 35–37. US Senate, Copyright Law Revision Studies 14–16 (US Government Printing Office 1960), 51. 187 IP Act, section 12(1). 188 Ibid, section 12(2)(b). 189 Ibid, section 12(2)(a). 190 Ibid, section 12(2)(c) & (d). 191 Ibid, section 12(2)(e). 186

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public distribution, rental, importation, public display, public performance, broadcasting, and other forms of communication to the public. As such, from an access to knowledge standpoint, this exception is of little importance. (b)

Reproduction for teaching

Section 12(4)(a) of the IP Act permits the unauthorised reproduction of a short part of a published work for teaching purposes by way of illustration, in writing or sound or visual recordings, provided that the reproduction is compatible with fair practice and does not exceed the extent justified by the purpose for which the reproduction was made. Section 12(4)(b) of the Act permits the unauthorised reprographic reproduction of published articles, other short works or short extracts of works for face-to-face teaching in any educational institution, the activities of which do not serve direct or indirect commercial gain, to the extent justified by the purpose. However, the exception set out in section 12(4)(b) will not apply unless two conditions are satisfied. First, the act of reproduction must be an isolated one occurring, if repeated, on separate and unrelated occasions. Second, the source of the work reproduced and its author must be indicated as practicably as possible on all copies made under this exception. As with section 12(1) of the IP Act, the exceptions under sections 12(4)(a) and 12(4)(b) do not extend to other economic rights of the copyright owner. Given that online education has become the new normal in the present COVID-19 context and is likely to be adopted as a matter of practice and convenience in the future, the exceptions under section 12(4) meant for teaching would hardly be helpful. After all, there is an increasing need for copyright-protected educational and learning material to be transmitted to students via the internet or by other means for their education. Also, limiting the exception in section 12(4)(b) to cover only the reprographic reproduction of a work is problematic given the inherent limitations involved. For instance, this would prevent the making of a digital reproduction of a work for teaching, where educators are increasingly adopting new technologies to engage students. In addition, limiting this exception to face-to-face teaching is problematic, given the increased use of novel pedagogical methods, including the flipped-classroom technique. As such, there is a need to reconsider the scope of these exceptions so that copyrightprotected works can not only be reproduced to reflect modern-day standards but also translated, broadcasted, or otherwise communicated to the public for teaching purposes. (c)

Reproduction by libraries or archives

Section 12(5) of the IP Act permits any library or archives whose activities do not serve any direct or indirect commercial gain to make a single copy of a published article, other short work or short extract of a work, without the authorisation of the copyright owner, by reprographic reproduction to satisfy the request of a physical person. However, before this exception can be invoked, the following conditions must be satisfied. First, the library or archives must be satisfied that the copy will be used solely for study, scholarship or private research. Second, the act of reproduction

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must be an isolated occurrence, occurring if repeated on separate and unrelated occasions.192 Moreover, a library or archives is permitted, without the authorisation of the copyright owner, to make a single copy of a copyright-protected work by reprographic reproduction where the copy is made in order to preserve and, if necessary, replace a copy or to replace a copy which has been lost, destroyed or rendered unusable in the permanent collection of another similar library or archives.193 However, this permission is available only when it is not possible to obtain such a copy under reasonable conditions, and the act of reprographic reproduction is an isolated occurrence, occurring if repeated on separate and unrelated occasions.194 The exception under section 12(5) of the IP Act applies only to reprographic reproductions. Restricting the exception to reprographic reproductions is arguably problematic in today’s context. Given the advancements in technology, it may be prudent to consider expanding the scope of this exception to include other forms of reproduction, such as digital reproduction, so that libraries, archives and their users can benefit from the latest technologies. Such a move could also be helpful from an access point of view. (d)

Importation of a copy of a work for private use

According to section 12(8) of the IP Act, the importation of a copy of a copyrightprotected work by a physical person for his own private use is permitted even if it is done without the copyright owner’s authorisation. Thus, a person can import a copy of a protected work for his own use without violating the copyright owner’s exclusive right to import. However, restricting this exception to the importation for private use prevents the parallel importation of lawful copies of copyright-protected works from overseas markets, even in cases where such copies had been placed on the foreign market by or with the consent of the copyright owner and the importer acquires such copies from lawful sources operating in the foreign market. As we noted when discussing the right to import, the legal obstacle placed on the parallel importation of copyright-protected works is a significant blow from an access to knowledge standpoint. Accordingly, we are of the view that, aside from reconsidering the scope of the copyright owner’s right to import, the importation of copies of copyright-protected works acquired from lawful sources should be freely permitted without the authorisation of the copyright owner, irrespective of from where such copies are obtained. This will legitimise the parallel importation of copyright-protected works providing better access to knowledge products in Sri Lanka at competitive prices. (e)

Performance or display of a work for educational purposes

Section 12(10)(a) of the IP Act declares that the performance or display of a work for educational or teaching purposes by government or nonprofit educational institutions in classrooms or similar places set aside for education shall not infringe copyright. 192

Ibid, section 12(5)(a). Ibid, section 12(5)(b). 194 Ibid, section 12(5)(b) proviso. 193

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However, in the case of an audiovisual work, the performance or the display of individual images should be given by means of a lawfully made copy. Unfortunately, this provision is unnecessarily restrictive by requiring that the educational or teaching activity on the part of the government or nonprofit educational institution has to be carried out “in classrooms or similar places set aside for education.” That limitation in the operation of the exception does not reflect modern teaching formats and indeed the needs brought about by exigencies such as the COVID-19 pandemic, where teaching largely took place in other ways and not necessarily in “classrooms or similar places.” As such, it is worth reconsidering the scope of this provision so that it reflects modern times and better addresses the current socio-economic conditions of Sri Lanka. (f)

Communication of a transmission embodying a performance or display of a work

Section 12(10)(b) of the IP Act declares that the communication of a transmission embodying a performance or display of a work by the public reception of the transmission on a single receiving apparatus of a kind commonly used in private homes shall not constitute an infringement of copyright. However, this would not be so if a direct charge is made to see or hear the transmission, or the transmission so received is further transmitted to the public. This exception is useful where a performance or a work has to be shown or displayed in the course of broadcasting or transmitting an educational programme on television, which has been commonly done in Sri Lanka and became necessary during the COVID-19 pandemic. However, this format only facilitates a one-way communication stream via televisions or similar equipment. Thus, where a more interactive mode of teaching is required, this exception will not help. As such, there is a need to reconsider the scope of this exception so that activities that relate to virtual but interactive forms of teaching can make use of this exception when communicating copyright-protected works for educational purposes. (g)

Use of a work to facilitate persons with print disabilities

In January 2021, the IP Act was amended195 to provide a special fair use exception to enable blind and disabled persons to access copyright-protected works in accessible formats. This amendment was a result of Sri Lanka’s accession to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (“Marrakesh Treaty”),196 the goal of which is to increase access to books, magazines, and other printed materials for the world’s population with print disabilities.197

195

See Intellectual Property (Amendment) Act No 8 of 2021. Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, 27 June 2013, 52 I.L.M. 1312. 197 WIPO, Main Provisions and Benefits of the Marrakesh Treaty (2013) (WIPO 2016), 5. 196

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Section 12A(1)(a) of the IP Act, as amended, permits any authorised entity198 to adapt, reproduce and issue copies of any work in an accessible format for the benefit of a beneficiary person199 in order to facilitate such person to access a work, as well as to share it with any other beneficiary person, where the reproduction is made exclusively for the use of the beneficiary person, his educational purpose or research and where the original format of the work prevents the enjoyment thereof by such person. The provision further declares that such adaptation, reproduction and issue of copies of any work by the authorised entity shall not be an infringement of copyright.200 Although very narrow (as it applies only to persons with print disability), this exception is a step in the right direction from the access to knowledge point of view. However, this exception does not assist in ensuring and promoting public access to copyright-protected works in a more general way. For this reason, it is crucial to reconsider the scope of the fair use exception and the acts of fair use as set out in the IP Act (as we have already noted above) so that a better balance between copyright protection and access can be reached.

7.4.2 Special Exceptions in the Berne Appendix The Berne Convention provides for certain special exceptions to copyright protection catered specifically for the needs of the developing world. These special exceptions were introduced at the Paris Revision of the Berne Convention in 1971 by the introduction of an Appendix to the Convention, which is commonly known as the Berne Appendix. The Berne Appendix contains a special copyright regime for developing countries. The Berne Appendix allows developing countries that are members to the Berne Union to introduce a compulsory licensing scheme for reproduction and translation exclusively for educational purposes (teaching, scholarship, or research) or to amend their domestic law to ensure that translation rights lapse if the rights are not exercised by the copyright owner within a period of ten years. Several developing countries such as Colombia, India, Indonesia, Malaysia, Mexico, and the Philippines have taken advantage of the Berne Appendix and introduced compulsory licensing schemes to reproduce and translate copyright-protected

198

“Authorized entity” means “a person or organisation as prescribed by the Minister in consultation with the Director-General of Intellectual Property” (IP Act, section 12A(2)(a)). 199 “Beneficiary person” means “any person who is blind; has a visual impairment, or a perceptual or reading disability that cannot be improved to give visual function substantially equivalent to a person who has no such impairment or disability and is unable to read printed works to substantially the same degree as a person without any such impairment or disability; or is otherwise unable, through physical disability to hold or manipulate a book or to focus or move eyes to the extent that is acceptable for reading, regardless of any other disability” (IP Act, section 5). 200 IP Act, section 12A(1)(a).

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works.201 Although the Berne Appendix attempts to provide a scheme to facilitate the reproduction and translation of copyright-protected works, it has been widely and justifiably criticised for failing to meet the needs and interests of developing countries. There are many problems associated with the Berne Appendix that pertain to waiting periods,202 complicated administrative procedures that have to be followed before the grant of compulsory licences,203 the need to pay equitable remuneration to copyright owners,204 and the issue of whether or not reproduction is limited to analogous forms.205 In many ways, the experience in relation to the compulsory licensing scheme as permitted by the Berne Appendix is similar to the compulsory licensing schemes in other areas of IP law. It primarily encourages parties to enter into private negotiations or, ideally, voluntary collective agreements.206 As Ricketson has said, the Berne Appendix “can be seen as an incentive to the authors and publishers in the developed countries to cooperate in the making of voluntary licensing arrangements.”207 In this context, the compulsory licences operate in “the background both as a reminder of the needs of developing countries and as a threat to be brought into operation if there is a reluctance to cooperate.”208 However, there is little to suggest that the compulsory licensing scheme in the Berne Appendix has had any impact on encouraging the development of voluntary licensing schemes. Copyright owners in developed countries have not felt threatened by the Berne Appendix’s existence. They have not been “coerced to cooperate” with developing countries to enter into voluntary licensing arrangements for reproduction or translation.209 Thus, as Ricketson has observed, “it is hard to point to any obvious benefits that have flowed directly to developing countries from the adoption of the Appendix.”210 201

See Law on Copyright No 23 of 28 January 1982 (Colombia); Copyright Act 1957 (India); Law No 19/2002 on Copyright (Indonesia); Copyright Act 1987 (Malaysia); Federal Law on Copyright (Mexico); Republic Act No 8293 (Philippines). 202 RL Okediji, The International Copyright System: Limitations, Exceptions and Public Interest Consideration for Developing Countries (International Centre for Trade and Sustainable Development 2006), 15 http://www.unctad.org/en/docs/iteipc200610_en.pdf. 203 See, e.g., AC Silva, Beyond the Unrealistic Solution for Development Provided by the Appendix of the Berne Convention on Copyright (2012) PIJIP Research Paper 8/2012 http://digitalcommons.wcl. american.edu/research/30/; M Chon, “Intellectual Property ‘from Below’: Copyright and Capability for Education” (2007) 40 UC Davis Law Review 803. 204 Okediji (n 202) 15. 205 PK Yu, “A Tale of Two Development Agendas” (2009) 35 Ohio Northern University Law Review 465, 483. 206 C Talagala and L Wiseman, “Copyright, Open Access and Translation” (2015) 37 European Intellectual Property Review 498, 503–504. 207 Ricketson and Ginsburg (n 13) 958. 208 Ibid. 209 Ibid. 210 Ibid. See also Wirten (n 116) 66 (the framework of the Appendix has been described as “extremely dense and complicated”); Silva (n 203) 51 (the Berne Appendix’s “system of compulsory licensing has proven to be inefficient”); Chon (n 203) 835 (the provisions have “proven to be unworkable and unfair throughout the thirty-five year existence”); Okediji (n 202) 29 (the Berne Appendix “has

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Perhaps due to these problems, many developing countries have not made use of the flexibility provided in the Berne Appendix in their domestic copyright laws. While some countries have not ratified the Berne Appendix, in other cases, the ratifications have either come very late, or the relevant provisions are yet to be implemented in domestic law.211 For instance, although Sri Lanka ratified articles 1 to 21 of the 1971 Paris Act of the Berne Convention and the Berne Appendix in 2005, the initial ratification of the Paris Act excluded the provisions of the Appendix.212 To date, Sri Lanka has not implemented the provisions of the Berne Appendix into its domestic copyright law.

7.5 Weaknesses and Inadequacies–The Access Problem The copyright law of a country is an instrument for balancing the interests between copyright owners and the users of copyright-protected works. However, there is a divergence between developed and developing countries on how the interests of copyright owners and the users of copyright-protected works are to be balanced. Since most developed countries are producers of copyright-protected works and their people can generally afford the prices at which such works are made available, striking a balance between the competing interests through copyright law would require placing more emphasis on the protection of the rights of copyright owners rather than the interests of the users. In contrast, since most developing countries are net users of copyright-protected works and their people cannot generally afford to pay the prices prescribed by copyright owners, for these countries, striking a balance through copyright law would require placing a greater emphasis on copyright exceptions. Being a developing country, Sri Lanka is a net user of copyright-protected works. The country is heavily reliant on knowledge (particularly in the field of science and technology) produced in other countries (mainly the developed countries) for the purpose of mass educational programmes. While education is not a fundamental right explicitly enshrined in the 1978 Constitution of Sri Lanka, the Supreme Court has implied a human right to education in the Constitution.213 One of the essential components of the right to education is access to knowledge. This is because the right to education envisages providing students with access to knowledge to facilitate their been a dismal failure owing to unduly complex and burdensome requirements associated with its use”); LR Helfer and GW Austin, Human Rights and Intellectual Property: Mapping the Global Interface (Cambridge University Press 2011), 341. 211 Talagala and Wiseman (n 206) 503. 212 Declaration by the Democratic Socialist Republic of Sri Lanka Extending the Effects of its Ratification of the Paris Act (1971) to Articles 1 to 21 and the Appendix and Declaration Relating to Articles II and III of the said Appendix, 27 September 2005, https://www.wipo.int/treaties/en/ notifications/berne/treaty_berne_248.html. 213 As observed by the Supreme Court of Sri Lanka in Kavirathne v Commissioner General of Examinations (2012) Bar Association Law Review 139 at 150, “although there is no specific provision

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learning, which includes making available knowledge products such as books and learning material.214 Since the bulk of these knowledge products originate from foreign countries and are copyright protected, copyright law in Sri Lanka can act as a barrier restricting access to knowledge for education if the law does not pay adequate attention to those who use these knowledge products.215 However, when we look at the evolution of Sri Lanka’s copyright law, it becomes clear that, despite the difference in how developing countries perceive copyright law, Sri Lanka’s approach has been to merely adopt and follow a model congenial to the developed world. The IP Act contains a comprehensive set of provisions with regard to the protection and enforcement of copyright.216 As observed earlier, these provisions comply with the Berne Convention and TRIPS.217 A study by Kearney has revealed that Sri Lanka has the most rigorous IP regime in the region.218 Also, as some scholars have identified, the IP Act has stringent copyright protection measures that strictly enforce the rights of copyright owners.219 Such measures without adequate attention being given to copyright exceptions and users’ interests prevent people in Sri Lanka from accessing copyright-protected works required for education. As discussed before, the IP Act covers almost every subject that falls under the “literary, artistic and scientific domain” that constitutes an “original intellectual creation.”220 While “literary, artistic, and scientific domain” is a loose term that lacks a precise definition and thus covers a broad spectrum, the threshold for originality required to constitute an “original intellectual creation” is set at a very low standard under the IP Act. The fact that the IP Act does not require fixation of a work as a prerequisite for copyright protection results in the scope and coverage of copyright protection being further extended to a much broader range of subject matter. While exclusive rights relating to all the acts mentioned in section 9(1) of the IP Act enable copyright owners to prohibit others from engaging in those acts, from an access to knowledge point of view, the exclusive rights over two acts, namely reproduction dealing with the right to Education in [the Sri Lankan] Constitution as such in the Universal Declaration of Human Rights, the said right has been accepted and acknowledged by [the Sri Lankan] Courts through the provisions embodied in Article 12(1) of the Constitution.” 214 See UN Committee on Economic, Social, and Cultural Rights, General Comment No 13: The Right to Education (Art 13 of the Covenant), 21st sess. UN Doc E/C.12/1999/10 (8 December 1999); UNICEF and UNESCO, A Human Rights-Based Approach to Education for All (UNICEF and UNESCO 2007), 56. 215 See SI Strba, International Copyright Law and Access to Education in Developing Countries: Exploring Multilateral Legal and Quasi-Legal Solutions (Martinus Nijhoff 2012), 2; YJ Tian, Re-Thinking Intellectual Property: The Political Economy of Copyright Protection in the Digital Era (Routledge-Cavendish 2009), 61; WM Landes and RA Posner, The Economic Structure of Intellectual Property Law (Harvard University Press 2003), 406. 216 Karunaratna, Introduction to the Law of Copyright (n 9) 8–9. 217 Ibid, 8. 218 AT Kearney, Competitive Benchmarking: Sri Lanka Knowledge Services (2012), 22 https:// www.kearney.com/web/global-business-policy-council/article?/a/competitive-benchmarking-srilanka-knowledge-services. 219 See Rodrigo (n 148) 47. 220 IP Act, section 6(1).

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and translation, stands out the most. This is because, as Okediji has pointed out, the precise issue for developing countries in relation to access to knowledge for education is the lack of access to multiple copies of copyright-protected works at affordable prices, which “goes directly to the right of an author to control the reproduction of the work.”221 In developing countries such as Sri Lanka, where indigenous or local languages are predominantly used for education, there is also a second component to the access problem and “that is the availability of copies in local languages.”222 The exclusive right to translate means that copyright owners are able to prevent the making of translations of copyright-protected works in local languages. Thus, it is the “reproduction and translation rights [which] operate in tandem as barriers to access [to knowledge] in developing countries” like Sri Lanka.223 The exclusive right granted to copyright owners to communicate their works to the public only adds to the problem. This right prevents copyright-protected knowledge products and learning material from being communicated to the student population and people online or through other similar means. Copyright exceptions will be meaningful only if they can cater to the specific needs of Sri Lanka and are capable of ensuring and promoting access to knowledge for education. Unless such exceptions can permit the reproduction, translation, and communication to the public of copyright-protected works “in whole” and “in bulk” for educational purposes in a timely fashion and at affordable prices, access to knowledge could be severely constrained and undermined in developing countries. The fair use exception as formulated in the IP Act is woefully inadequate to cater to the specific needs of Sri Lanka, especially in ensuring and promoting access to knowledge for education. In particular, the reproduction, translation, and communication to the public of copyright-protected works in whole and in bulk for educational purposes would rarely be construed as fair use due to the mandatory third and fourth fair use factors that apply in determining fair use. This is especially so in the case of educational books and learning resources, such as textbooks, exclusively meant for the educational market. The reproduction, translation, and communication to the public of copyrightprotected works in their entirety (i.e., in whole) would have a higher probability of supplanting the copyright owner’s market. Thus, the fair use factor dealing with the substantiality of the amount copied or used of the copyright-protected work will always disfavour and forbid such uses. Moreover, the reproduction, translation, and communication to the public of copyright-protected works in bulk is likely to harm the potential market for such works. The probability of such uses being construed as fair is equally remote. This is particularly so with regard to the reproduction (e.g., photocopying) of copyright-protected works primarily meant for educational use, such as educational books and learning resources. This is because most users (mainly students and researchers) that photocopy works primarily meant for educational use are more likely to have been potential buyers of such books. As such, photocopying 221

Okediji (n 202) 15. Ibid. 223 Ibid. 222

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of such works, more often than not, is likely to have a detrimental impact on their intended or potential market. In view of this, the 1975 US Senate Report on Revision of Copyright Law has noted that “there should be less latitude for a finding of fair use where textbooks and other materials prepared primarily for the school markets are copied for classroom use than there would be when material prepared for general public distribution is copied for such use.”224 As we noted before, the exceptions to copyright as laid down in section 12 of the IP Act do not extend to acts of translation, which is a significant shortcoming of the Sri Lankan law from an access to knowledge point of view. Also, these exceptions do not cover the reproduction, broadcasting, and other communication to the public of educational books and learning resources in whole and in bulk. Thus, the specific acts of fair use in the IP Act are unlikely to ensure or promote access to knowledge for education in Sri Lanka, especially in rural areas where the capacity to purchase copyright-protected works is limited. Although the recently introduced section 12A of the IP Act permits the reproduction of copyright-protected works in full and in bulk, it is limited to making such works accessible to persons with print disabilities (defined as “beneficiary persons”). As such, section 12A does not assist much in ensuring and promoting public access to knowledge for education in a more general way. A noteworthy point that has to be made here is that it is only the compulsory licensing system in the Berne Appendix that provides a specific exception capable of permitting people in developing countries like Sri Lanka to gain complete and bulk access to copyright-protected works, especially those produced in developed countries needed for educational purposes. However, this compulsory licensing system is limited to “works published in printed or analogous forms of reproduction.”225 As such, it is questionable whether the Berne Appendix applies to works published online.226 Peter K Yu has pointed out that the Berne Appendix does not allow developing countries to take advantage of online modes of delivery.227 If that is correct, the Berne Appendix turns a blind eye to copyright-protected works in digital formats and accessible through electronic means such as the internet.228 Be that as it may, even to benefit from the bulk reproduction and translation of copyright-protected works in print formats, Sri Lanka’s IP Act has not given effect to the compulsory licensing system in the Berne Appendix.

224

US Senate, Senate Report No 94–473, 94th Congress, 2nd Session (1975), 64 (cited in SM Martin, “Photocopying and the Doctrine of Fair Use: The Duplication of Error” (1991) 39 Journal of the Copyright Society of the USA 345, 350). 225 Berne Convention, Appendix X, Art.II(1) and (2)(a). 226 Talagala, Copyright Law and Translation (n 118) 151. 227 Yu (n 205) 483. 228 Talagala and Wiseman (n 206) 503.

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7.6 Recommendations As this chapter reveals, copyright law in Sri Lanka is not truly a home-grown model. If Sri Lanka is to promote the interests and needs of its people through the copyright system, implanting norms of copyright devised in response to the needs and interests of the developed world, and merely copying legislation and model laws that comply with the international copyright instruments to which Sri Lanka is a party, is not going to take us very far. Therefore, Sri Lanka needs to design its own copyright law while taking into consideration the needs and interests of its people. However, when doing so, Sri Lanka needs to be mindful of its international copyright obligations, as it would not be viable for Sri Lanka to violate or denounce powerful international instruments such as TRIPS, owing to the economic and trade interests of the country. As identified in this chapter, copyright law in Sri Lanka gives strong protection to “works” and the rights of copyright owners without providing for adequate exceptions that could better cater to the needs of users of copyright-protected works. Such an approach can significantly impact public access to knowledge. Being a developing country, it is not prudent for Sri Lanka to protect works and the rights of copyright owners beyond what is required under the Berne Convention and TRIPS, as it would further impede public access to knowledge. As observed in this chapter, copyright law in Sri Lanka has set a very low threshold for originality. It also protects works without the requirement of fixation. The Berne Convention and TRIPS confer some flexibility with regard to determining the standard of originality and the fixation requirement under national law. Despite that flexibility, in Sri Lanka’s case, the originality threshold is very low, and the law does not require fixation before a work can receive copyright protection. The outcome of this is that a significantly large quantity of works is likely to receive copyright protection under Sri Lankan law compared to nations that require a higher standard of originality and impose a fixation requirement. We submit that Sri Lanka should set the originality threshold at a relatively higher level, perhaps comparable to that in the United States,229 and introduce the requirement of fixation as a precondition for copyright protection under the IP Act. Adopting such an approach would result in works having to meet a slightly higher standard before copyright protection is granted, which could mean that only works that are truly worthy of protection will receive copyright protection, all else going on to constitute the public domain. Arguably, this could be a better outcome from an access to knowledge perspective. In addition, as in the case of US law, Sri Lanka should make use of the fixation requirement to exclude the temporary, transient or incidental reproduction of copyright-protected works from copyright infringement, which could go a long way in offering some certainty to those who access content on the internet and to ISPs and other service providers that make such access possible. We also note that the IP Act defines the copyright owner’s right to import very broadly. The manner in which this right and the corresponding exception have been set 229

See Feist Publications Inc v Rural Telephone Service Co 499 US 340 (1991) (where the US Supreme Court held that originality requires at least some “minimal degree of creativity”).

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out suggests that Sri Lankan copyright law embraces a policy of national exhaustion of rights. In view of Sri Lanka’s socio-economic and cultural setting, we are of the view that a policy of international exhaustion should be preferred for the copyright context. This will not violate Sri Lanka’s obligations under the Berne Convention or TRIPS and will promote better access to foreign copyright-protected works through lawful parallel imports. The duration of economic rights and moral rights under the IP Act is also too extensive and goes beyond the minimum standards prescribed by the Berne Convention and TRIPS. It might be in the interest of Sri Lanka to amend the copyrightrelated provisions of the IP Act to reduce the duration of these rights, keeping in line with the term of copyright protection as required under international copyright law. However, this may be problematic in view of Sri Lanka’s obligations under the Sri Lanka–Singapore Free Trade Agreement,230 which requires copyright protection to be extended for a period equivalent to the author’s life and 70 years after death. Indeed, if Sri Lanka were to offer the current longer term of protection selectively to cover only Singaporean authors or works first published in Singapore, that may violate Article 4 of TRIPS, which incorporates the Most-Favoured-Nation or MFN rule. We also note that the IP Act has formulated the exceptions to copyright somewhat restrictively. While Sri Lanka has borrowed from the US fair use doctrine, the way in which it has been set out in the IP Act is narrower than in the US Copyright Act 1976. As observed in this chapter, the factors that a court must consider when determining whether a particular use is fair under the IP Act appear to be exhaustive. In contrast, under US copyright law, they are non-exhaustive.231 Also, while the US Copyright Act 1976 does not make a distinction between published and unpublished works when determining fair use, the IP Act is silent on this aspect.232 It is submitted that Sri Lanka should expand the scope of the fair use doctrine in the IP Act to at least come in line with the same doctrine as articulated under US law. For the most part, the specific acts of fair use enumerated in the IP Act are concerned with the copyright owner’s right of reproduction. They do not provide adequate exceptions for the right of translation, broadcasting, and communication to the public, which is crucial for a developing country like Sri Lanka in promoting access to knowledge. It is submitted that Sri Lanka should formulate specific acts of fair use in the IP Act that would specifically apply to the rights of translation, broadcasting, and communication while taking into account the obligations under Article 9(2) of the Berne Convention and Article 13 of the TRIPS. This would provide more legal certainty regarding the legitimate delivery and use of copyright-protected works through electronic and online media. Lastly, the IP Act does not recognise any specific exceptions to copyright as set out in the Berne Appendix. This is because Sri Lanka has not made use of the special faculties provided in the Berne Appendix. While there are a number of problems with 230

Sri Lanka–Singapore Free Trade Agreement, 1 May 2018, Art.13.4. Karunaratna, Introduction to the Law of Copyright (n 9) 80. 232 Hemaratne (n 168) 84. 231

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the compulsory licensing system contained in the Berne Appendix, it is submitted that it would be worthwhile for Sri Lanka to make use of this system to practically test whether it could reap any benefits from it.

References 1. Bainbridge DI (2018) Intellectual property, 10th edn. Pearson Education Ltd 2. Bently L (1993) Copyright and translations in the English speaking world. Translatio–FIT Newsletter 12:491 3. Bently L et al (2018) Intellectual property law, 5th edn. Oxford University Press 4. Budde AM (1996) Photocopying for research: a fair use exception favouring the progress of science and the useful arts. Wayne Law Rev 42:1999 5. Carpenter M, Hetcher S (2014) Function over form: bringing the fixation requirement into the modern era. Fordham Law Rev 82:2221 6. Chon M (2007) Intellectual property “from below”: copyright and capability for education. UC Davis Law Rev 40:803 7. Cornish W, Llewelyn D, Aplin T (2016) Intellectual property: patents, copyright, trade marks and allied rights. South Asian edn, Sweet and Maxwell 8. Fisher, III WW (1988) Reconstructing the fair use doctrine. Harvard Law Rev 101:1659 9. Garnett K, Davies G, Harbottle G (2011) Copinger and Skone James on copyright, 16th edn. Sweet and Maxwell 10. Hemaratne TSK (2005) Intellectual property law and e-commerce in Sri Lanka: towards a jurisprudence based on constitution, Roman-Dutch law and Buddhist principle, PhD Thesis. Queen Mary, University of London 11. Hugenholtz PB (2010) Limits, limitations and exceptions to copyright under the TRIPS agreement. In: CM Correa, research handbook on the protection of intellectual property under WTO rules. Edward Elgar 12. Judge EF, Gervais D (2009) Of silos and constellations: comparing notions of originality in copyright law. Cardozo Arts Entertainment Law 27:375 13. Karunaratna DM (2006) An introduction to the law of copyright and related rights in Sri Lanka. Sarvodaya Vishva Lekha Publishers 14. Karunaratna DM (2019) An introduction to the law relating to literary and artistic creations in Sri Lanka. Sarasavi Publishers 15. Kearney AT (2012) Competitive benchmarking: Sri Lanka knowledge services. https://www. kearney.com/web/global-business-policy-council/article?/a/competitive-benchmarking-srilanka-knowledge-services 16. Landes WM, Posner RA (2003) The economic structure of intellectual property law. Harvard University Press 17. Langan PSJ (1980) Maxwell on the interpretation of statutes, 12th edn. Tripathi 18. Martin SM (1991) Photocopying and the doctrine of fair use: the duplication of error. J Copyright Soc USA 39:345 19. Okediji RL (2006) The international copyright system: limitations, exceptions and public interest consideration for developing countries. International Centre for Trade and Sustainable Development. http://www.unctad.org/en/docs/iteipc200610_en.pdf 20. Patry W (1995) American Geophysical Union v Texaco, Inc.: copyright and corporate photocopying. Brooklyn Law Rev 61:429 21. Pavis M (2018) ICH and safeguarding: uncovering the cultural heritage discourse of copyright. In: Waelde C et al Research handbook on contemporary intangible cultural heritage: law and heritage. Edward Elgar 22. Ricketson S, Ginsburg J (2006) International copyright and neighbouring rights: the Berne Convention and beyond, vol 1, 2nd edn. Oxford University Press

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23. Rodrigo WD (2007) Copyright in the digital era: a comparative study of Sri Lanka, Australia and the United States, PhD Thesis. University of Queensland 24. Schwartz EJ, Nimmer D (2013) United States. In: Geller PE, Bently L (eds) International copyright law and practice, vol 2. LexisNexis 25. Silva AC (2012) Beyond the unrealistic solution for development provided by the Appendix of the Berne Convention on copyright. PIJIP Research Paper 8/2012. http://digitalcommons.wcl. american.edu/research/30/ 26. Singh DV, Kumar P (2005) Photocopying of copyrighted works for educational purposes: does it constitute fair use? J Intellect Property Rights 10:21 27. Strba SI (2012) International copyright law and access to education in developing countries: exploring multilateral legal and quasi-legal solutions. Martinus Nijhoff 28. Talagala CS (2018) Copyright in sports? Bar Assoc Law J 24:282 29. Talagala CS (2021) Copyright law and translation: access to knowledge in developing economies. Routledge 30. Talagala C, Wiseman L (2015) Copyright, open access and translation. Eur Intellect Property Rev 37:498 31. Tian YJ (2009) Re-thinking intellectual property: the political economy of copyright protection in the digital era. Routledge-Cavendish 32. UN Committee on Economic (1999) Social and cultural rights, general comment no 13: the right to education (Art 13 of the Covenant), 21st session. UN Doc E/C.12/1999/10 33. UNICEF and UNESCO (2007) A human rights-based approach to education for all. UNICEF and UNESCO 34. US Senate (1960) Copyright law revision studies 14–16. US Government Printing Office 35. US Senate (1975) Senate report no 94–473, 94th Congress, 2nd session 36. WIPO (1978) Guide to the Berne Convention for the Protection of Literary and Artistic Works. Paris Act, 1971. WIPO Publication No 615(E). WIPO 37 WIPO (2016) Main provisions and benefits of the Marrakesh Treaty (2013). WIPO 38. WIPO and UNESCO (1976) Tunis Model Law on Copyright for Developing Countries, WIPO Publication No 812(E), WIPO/UNESCO 39. Wirten EH (2011) Cosmopolitan copyright: law and language in the translation zone. Uppsala 40. Yu PK (2009) A tale of two development agendas. Ohio Northern Univ Law Rev 35:465

Chapter 8

Traditional Cultural Expressions

This chapter focuses on the protection of traditional cultural expressions (“TCEs”). Sri Lanka is a nation enriched by its culture and native customs. Sri Lanka is also home to one of the oldest indigenous communities in the world, the “Veddhas,” which has preserved its traditional practices and culture from being disintegrated by the influences of modern society. TCEs, in many ways, enshrine and illuminate Sri Lanka’s native culture. For these traditional cultural values to be preserved from the increasing influence of modernity, a suitable and robust legal framework must exist to provide definitive protection to TCEs. In Sri Lanka, TCEs are protected in terms of the Intellectual Property Act 2003 (“IP Act”),1 which exclusively deals with intellectual property (“IP”) protection. Given the importance of TCEs, this chapter considers the effectiveness of the existing IP framework of Sri Lanka in protecting such expressions. The approach adopted for protecting TCEs under the IP Act has been classified as a sui generis form of protection.2 But the IP Act confers such protection by utilising concepts and norms more familiar to the context of copyright protection. This chapter identifies the deficiencies and problems with that approach. First, this chapter provides an overview of TCEs and sets out the key provisions in terms of which such expressions are protected under Sri Lankan law. Second, the chapter considers why TCEs have to be protected and sets out the key attributes of such protection, including positive and defensive forms of protection. Third, the copyright-related provisions of the IP Act are analysed in detail but with a specific focus on TCEs as the subject matter of protection. This analysis highlights the challenges in seeking to protect TCEs within the scheme of the IP Act. The chapter ends by providing some recommendations that could ensure that native and local communities benefit from the protection afforded to TCEs.

1

Intellectual Property Act No 36 of 2003 (“IP Act”). DM Karunaratna, An Introduction to the Law Relating to Literary & Artistic Creations in Sri Lanka (Sarasavi Publishers 2019), 231.

2

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_8

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8.1 Defining Traditional Cultural Expressions TCEs are also called “expressions of folklore.”3 These two terms are often used interchangeably and attract the same meaning.4 For the purposes of this chapter, we have generally preferred to use the term “TCEs,” except when discussing the provisions of the IP Act or any other legal instrument or text that specifically utilises the term “expressions of folklore” to refer to the same subject matter. Indeed, “expressions of folklore” or “folklore” was once the term most commonly used in international discussions to refer to expressions that embody traditional knowledge and cultural content and is also the common phrase used in national laws to refer to such expressions.5 But in more recent times, the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore of the World Intellectual Property Organization (“WIPO”) has preferred to adopt the terminology of “traditional cultural expressions” or “TCEs” instead.6 In any case, the use of either of the terms does not suggest that there is a consensus on the validity or appropriateness of these or any other terms.7 WIPO interchangeably uses the terms TCEs and expressions of folklore to refer to tangible and intangible forms in which traditional knowledge and cultures are expressed, communicated or manifested.8 Broadly speaking, expressions of folklore/TCEs include music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, and many other artistic or cultural expressions. Although the kinds of expressions set out above are mere examples of what might constitute TCEs, such expressions lack an authoritative universal definition. However, the Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions (“Model Provisions on Folklore”),9 jointly adopted by the WIPO and UNESCO in 1982, provide a definition that is useful as a point of reference in framing national laws to regulate the use of TCEs. Accordingly, section 2 of the Model Provisions on Folklore defines “expressions of folklore” as follows: productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community of a [country] or individuals reflecting the traditional artistic expectations of such a community, in particular: (i) verbal expressions, such as folk tales, folk poetry, and riddles; 3

See WIPO, Intellectual Property and Folk, Arts and Cultural Festivals: Practical Guide (WIPO 2018), 23. 4 WIPO, Intellectual Property, Traditional Knowledge and Traditional Cultural Expressions/Folklore: A Guide for Countries in Transition–Version One (WIPO 2013), 4. 5 See IP Act, sections 5 and 6(1). The Code of Intellectual Property Act No 52 of 1979 (“Code of IP”), which was in operation prior to the IP Act, also protected expressions of folklore (section 12(2)). 6 WIPO, Countries in Transition (n 4) 4. 7 Ibid. 8 Ibid. 9 UNESCO and WIPO, Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions (UNESCO/WIPO 1982).

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(ii) musical expressions, such as folk songs and instrumental music; (iii) expressions by action, such as folk dances, plays, and artistic forms or rituals; whether or not reduced to a material form; and (iv) tangible expressions, such as: (a)

productions of folk art, in particular, drawings, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware jewellery, basket weaving, needlework, textiles, carpets, costumes;

(b)

musical instruments;

(c)

architectural forms.10

It is to be noted that the introduction of the term “expressions” into the Model Provisions on Folklore was to distinguish between the model provisions and conventional copyright law, which refers to and protects “works.”11 Nevertheless, the Model Provisions on Folklore are heavily influenced and inspired by copyright law as “they rely on a system of prior authorisations for publication, reproduction, distribution of copies, and communication to the public of expressions of folklore.”12 This is because the initial attempts to explicitly regulate expressions of folklore or TCEs were made within the framework of copyright law. The first instance where the international copyright regime recognised expressions of folklore was in the 1967 Stockholm Revision to the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”),13 which was achieved through the introduction of Article 15(4) into the text of the Convention. Subsequently, this provision was approved and retained in the Paris Revision to the Berne Convention in 1971. Article 15(4)(a) to the Berne Convention provides as follows: In the case of unpublished works where the identity of the author is unknown, but where there is every ground to presume that he is a national of a country of the Union, it shall be a matter for legislation in that country to designate the competent authority which shall represent the author and shall be entitled to protect and enforce his rights in the countries of the Union.

Although the term “folklore” was not used in formulating Article 15(4)(a), the main purpose of introducing the provision into the text of the Berne Convention was to include folklore, which at that time was considered “very difficult to define.”14 Article 15(4)(a) extends to expressions of folklore because such expressions come within

10

Ibid, 9–10. L Martinet, “Traditional Cultural Expressions and International Intellectual Property Law” (2019) 47 International Journal of Legal Information 6, 8. 12 Ibid. 13 Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, 161 U.N.T.S. 3, as amended on 28 September 1979 (“Berne Convention”). 14 WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971), WIPO Publication No 615(E) (WIPO 1978), 95. 11

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the description of “unpublished works of unknown authorship.”15 In particular, as the WIPO has noted: By applying the same principles to unpublished works by unknown authors, and by allowing for the bringing of actions by state-appointed authorities, the Convention offers to its members, and particularly to developing countries whose folklore is part of their heritage, a means to exploit it.16

In 1976, WIPO and UNESCO jointly formulated and adopted the Tunis Model Law on Copyright for Developing Countries (“Tunis Model Law on Copyright”),17 which was fully compliant with the Berne Convention as revised by the Paris Act of 1971.18 Interestingly, the model law recognises works of national folklore, which it defines in section 18(iv) as follows: all literary, artistic and scientific works created on national territory by authors presumed to be nationals of such countries or by ethnic communities, passed from generation to generation and constituting one of the basic elements of the traditional cultural heritage.19

At the international level, two instruments utilise the term “traditional cultural expressions” instead of “expressions of folklore.” These instruments are the Convention on the Protection and Promotion of the Diversity of Cultural Expressions (“CCD”),20 adopted in 2005 by the General Conference of the UNESCO, and the United Nations Declaration on the Rights of Indigenous Peoples (“UNDRIP”),21 which was adopted in 2007. The preamble to the CCD recognises that “the diversity of cultural expressions, including traditional cultural expressions, is an important factor that allows individuals and peoples to express and to share with others their ideas and values.”22 At the same time, it takes into account “the importance of the vitality of cultures, including for persons belonging to minorities and indigenous peoples, as manifested in their freedom to create, disseminate and distribute their traditional cultural expressions and to have access thereto, so as to benefit them for their own development.”23 The UNDRIP, while linking TCEs with cultural heritage and traditional knowledge,24 provides that:

15

Martinet (n 11) 7. WIPO, Guide to the Berne Convention (n 14) 96. 17 WIPO and UNESCO, Tunis Model Law on Copyright for Developing Countries, WIPO Publication No 812(E) (WIPO/UNESCO 1976). 18 See IN Abeysekere, Sri Lankan Copyright Law and the TRIPS Agreement (Mahapola Publications 1999), 4. 19 WIPO and UNESCO, Tunis Model Law on Copyright (n 17) 19. 20 Convention on the Protection and Promotion of the Diversity of Cultural Expressions, 20 October 2005, 2440 U.N.T.S. 311 (“CCD”). 21 United Nations Declaration on the Rights of Indigenous Peoples, 2 October 2007, A/RES/61/295 (“UNDRIP”). 22 CCD, Recital 13. 23 Ibid, Recital 15. 24 Martinet (n 11) 6–8. 16

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Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestations of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.25

Both the CCD and UNDRIP associate TCEs with the exercise of cultural rights. It has been observed that the “UNDRIP not only recognises the right of indigenous peoples to maintain, control, protect, and develop their traditional cultural expressions, but also the intellectual property that relates to them.”26 Based on the discussion above, it is clear that various international instruments have utilised the terms “traditional cultural expressions” and “expressions of folklore” to essentially mean the same thing. Although there is no authoritative universal definition for TCEs/expressions of folklore, three fundamental characteristics define the subject matter referred to by those terms. These characteristics are: (a) (b) (c)

presence of cultural content; collective essence; and intergenerational transmission.27

The first characteristic of TCEs is that they comprise “cultural content.” Since TCEs originate from the creativity of individuals, groups, societies, and nations, they possess a cultural flavour.28 In fact, TCEs have been historically associated with copyright because of this cultural content. However, the UNDRIP and the CCD “have shifted this position to a junction point where human rights, intellectual property law, and culture law meet.”29 While TCEs are sometimes broadly included under the concept of traditional knowledge (“TK”), it is the cultural content that draws a line between TK and TCEs. TK and TCEs “are neighbouring concepts inextricably linked to each other.”30 TK may or may not comprise cultural content. When TK encompasses cultural content and can be used in connection with TCEs, there is an overlap between the two. For instance, “traditional knowledge relating to knitting, or dying techniques, can influence designs and patterns which are traditional cultural expressions.”31 However, in other cases where TK does not encompass any cultural content, a clear distinction could be made between TK and TCEs. For example, “the use of the Hoodia cactus originating in the Kalahari Desert as an appetite suppressant, by the San people, constitutes traditional knowledge, but it is not a traditional cultural expression.”32 25

UNDRIP, Art. 31(1). Martinet (n 11) 7. 27 Ibid, 9. 28 Ibid. 29 Ibid. 30 Ibid, 10. 31 Ibid. 32 Ibid. 26

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The second key characteristic of TCEs is that they are linked to a collective of people–a human group, a community, a minority, or indigenous people.33 TCEs collectively belong to and are shared by all members of a group, community, or kin network.34 Many TCEs are absorbed, learned, and expressed through the phenomenological experience and everyday activities of members of such groups, communities, or kin networks. TCEs are neither owned by any individual nor belong to an individual. This is primarily because TCEs “express a collective cultural identity. A community considers its traditional cultural expressions as an essential part of its cultural heritage; it identifies itself to them.”35 Some specialised types of TCEs are preserved by gatekeepers of a group, community or kin network, such as tribal leaders, ritual practitioners who have vested interests in or deep experience and long-standing connections with such expressions.36 These gatekeepers are “carefully trained to link parts of traditional narratives to specific events and locales, and cultural coherence is ensured by regular repetition.”37 In both native Sri Lankan and American communities, the gatekeepers are usually selected as children and carefully trained by the elders.38 In native Australian communities, gatekeepers are sometimes identified as “Traditional Owners” who may inherit this role within a family line.39 Among the M¯aori, specific categories of specialised, protected knowledge and practices relating to TCEs are entrusted only to selected members of a group.40 In general, while indigenous gatekeepers and traditional elders are vested with specific authority over the use of TCEs within their communities, which is customary rather than strictly legal, they have not yet gained the same degree of control, ownership and status afforded to “scientific knowledgekeepers” in the developed world.41 This collective nature of TCEs poses, as a matter of fact, a challenge with regard to their protection through the IP system, which primarily recognises individuals as right holders.42 The third key characteristic of TCEs is that “they are traditional, which means that they are transmitted from one generation to another inside a human group.”43 This usually happens as part of an oral tradition. One unique outcome of such transmission from one generation to another is that TCEs are neither new nor old. This 33

Ibid, 11. JM Finger, “Introduction and Overview” in JM Finger and P Schuler (eds), Poor People’s Knowledge: Promoting Intellectual Property in Developing Countries (World Bank/Oxford University Press 2004), 32. 35 Martinet (n 11) 11. 36 M Bruchac, “Indigenous Knowledge and Traditional Knowledge” in C Smith (ed), Encyclopaedia of Global Archaeology (Springer 2014), 3815. 37 Ibid. 38 Ibid. 39 Ibid. 40 Ibid. 41 Ibid, 3816. 42 Martinet (n 11) 11. 43 Ibid. 34

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is because the subsequent generations often add to what was transmitted to them by their previous generations. Also, TCEs evolve in daily life by way of performances, practices, and expressions in everyday activities of the members of the community or human group to which such expressions belong. Hence, it has been observed that TCEs “extend in the present an intellectual activity of the past. They are at the same time ancient and contemporary.”44 While the traditional character of TCEs, resulting from the intergenerational transmission, differentiates such expressions from other cultural expressions,45 the process of transmission creates and forms a special bond between a community or human group and its folklore.46 This bond is the “strong feeling of belonging and affection between a community and its traditional cultural expressions.”47 In fact, it is this bond that has persuaded the extension of the IP regime to protect TCEs.48

8.2 Traditional Cultural Expressions of Sri Lanka As noted in the introductory part, TCEs in Sri Lanka are protected under the provisions of the IP Act, which deals with IP protection. The IP Act uses the term “expressions of folklore” to refer to expressions that have traditional and cultural value.49 The Code of Intellectual Property Act 1979 ("Code of IP"), which was in operation prior to the enactment of the IP Act, also referred to such expressions as folklore. The Code of IP defined “folklore” as “all literary and artistic works created in Sri Lanka by various communities, passed on from generation to generation and constituting one of the basic elements of the traditional cultural heritage.”50 According to the IP Act, which is the current law governing IP rights in Sri Lanka, the term “expressions of folklore” means: a group oriented and tradition based creation of groups or individuals reflecting the expectation of the community as an adequate expression of its cultural and social identity, its standards and values as transmitted orally, by imitation or by other means, including:

44

(a)

folktales, folk poetry, and folk riddles;

(b)

folk songs and instrumental folk music;

(c)

folk dances and folk plays; and productions of folk arts in particular, drawings, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewellery, handicrafts, costumes, and indigenous textiles.51

Ibid. Ibid. 46 Ibid. 47 Ibid. 48 Ibid. 49 IP Act, section 5. 50 Code of IP, section 6. 51 IP Act, section 5. 45

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A crucial difference between the Code of IP and the IP Act in how they define folklore or expressions of folklore is that the latter contains a much more elaborate definition, which includes multiple categories of folklore. The first category of folklore includes folktales, folk poetry, and folk riddles. Folk tales are essentially stories that have been passed down from generation to generation. Famous Sri Lankan folk tales include “The Making of the Great Earth,” “The Story of Senasura,” “The Glass Princess,” “The Frog Prince,” “The Millet Trader,” and “The Turtle Dove.”52 Folk poems are commonly recited and chanted by villagers in Sri Lanka and are mainly associated with agriculture. Famous folk poems include Goyam Kavi (Paddy Poems), Nelum Kavi (Plucking Poems), Vaepurum Kavi (Sowing Poems), and Kamat Kavi (Threshing Poems).53 Folk riddles are perhaps the most intriguing because they often use metaphors. Metaphors result from the primary mental processes of association, comparison, and the perception of likeness and differences, creating a ubiquitous sense of humour and wit.54 Sri Lankan folk riddles relate to many subjects, including nature, plants, animals, man, and things.55 A point to note about folktales, folk poems, and folk riddles is that they primarily comprise expressions of literary value. The second category comprises folk songs and instrumental folk music. Sinhala folk songs embrace both literary and musical domains. They have evolved within the last few decades to include a large variety of vocal renderings such as gathi, pirit, ashtaka, poetic recitation, and even prose recitation. Examples that come under this category include reaping songs such as Nelum Ose,56 songs in praise of kings (Prasasti Gee), songs exploiting the valour of war (Hatangee), and songs that embody messages (Sandesha Kavi).57 Despite their primitive and tribal nature, songs of the Veddas (Sri Lanka’s ancient tribal community), commonly referred to as Vedi Gee and Vedi Kavi, are also included within the category of folk songs/music. The third category contemplates expressions of folklore of a dramatic nature, such as plays and dances. Popular cultural examples of folk dances include the Kandyan dance, low-country dance, and the Sabaragamu dance.58 While folk dances are performed at numerous functions and events, they are often embodied as part of 52

See H Parker, Village Folk-Tales of Ceylon (Luzac & Co 1910). A Mckinley, “Framing Songs from the Poet King: Translation and Explication of a Sinhala Janakavi Work” (2017) 41 Sri Lanka Journal of the Humanities 64, 65–66. 54 CF Potter, “Riddles” in M Leach and J Fried (eds), Standard Dictionary of Folklore, Mythology and Legend (Funk & Wagnalls 1972), 938. 55 DB Kapp, “A Collection of Jaffna Tamil Riddles from Oral Tradition” (1994) 53 Asian Folklore Studies 125, 128. 56 J Aravinda, “Characteristic Features of Sinhala Folk Song” (2000) 45 Journal of the Royal Asiatic Society of Sri Lanka 129. 57 R Chandrarathne, “Lionel Ranwala Folk Song Troupe Keeps Traditional Music Alive: Inspiring Saga” Sunday Observer (18 September 2005) http://archives.sundayobserver.lk/2005/09/18/fea15. html. 58 M Perera, “Cultural Dances for Global Interest Global Interest” Sunday Observer (25 February 2018) https://www.sundayobserver.lk/2018/02/25/arts/cultural-dances-global-interestglobal-interest. 53

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distinct traditional ceremonies. For instance, the Bali ceremony, which is resorted to primarily by the rural community to cure illness or to counteract continuing misfortunes, incorporates a variety of traditional elements, including folk dances carried out by persons with considerable accomplishments and skills belonging to the Näketi caste.59 Folk plays such as N a¯ dagam, R¯ukäda Nat¯ıma, and Kolam have been prevalent since the ancient kingdoms and are performed even today.60 The fourth and last category of folklore relates to artistic expressions, including drawings, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewellery, handicrafts, costumes, and indigenous textiles. Examples of this category include mural paintings,61 pottery from Walangama,62 Sinhalese jewellery,63 traditional Dumbara Rata weaving, including designs on traditional mats,64 and traditional costumes such as the Mul Anduma.65 From the above, it is clear that “folklore,” as defined in the IP Act, can attract a broad range of traditional cultural expressions that can take a literary, artistic, dramatic, or musical form. However, unlike under the Code of IP, where “folklore” was defined as “all literary and artistic works created in Sri Lanka by various communities,” the IP Act does not generally recognise expressions of folklore as “works,” except in the case of expressions of folklore that are apt for stage production.66 As will be seen later, this creates an insurmountable obstacle in providing adequate and effective protection for expressions of folklore or TCEs through the provisions of the IP Act.

59

MB Ariyapala, “Some Aspects of the Cultural Traditions in Sri Lanka of the Late Mediaeval Period” (1996) 41 Journal of the Royal Asiatic Society of Sri Lank 205, 214. 60 E Peiris, “The Origin and Development of Simhala N¯ adagam” (1974) 18 Journal of the Sri Lanka Branch of the Royal Asiatic Society 27, 28–29. 61 See M Somathilake, “The Origins of Murals in the Buddhist World” (2013) 4 Modern Sri Lanka Studies 56. 62 See D Winslow, “Pottery, Progress, and Structural Adjustments in a Sri Lankan Village” (1996) 44 Economic Development and Cultural Change 701. 63 See DSH Pathirana, The Concepts, Principles and Methodologies used in Sinhalese Jewellery (PhD Thesis, University of Moratuwa 2009). 64 See AC Douglas, Caste in the Same Mold Again: Artisans and the Indignities of Inheritance in Sri Lanka (PhD Thesis, Cornell University 2017). 65 V Auwardt, “Mul Anduma Changes over Time” Sunday Observer (20 January 2019) http://www. sundayobserver.lk/2019/01/20/culture/mul-anduma-changes-over-time. 66 IP Act, section 6(1)(d).

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8.3 Protection of Traditional Cultural Expressions 8.3.1 Why Should Traditional Cultural Expressions Be Protected? TCEs form a vital part of the cultural heritage of nations, particularly of those in the developing world, which form the basis of their social and cultural identity.67 Most developing nations regard TCEs as a living, functional tradition rather than a mere souvenir of the past.68 As such, the protection of TCEs has become a significant concern for nations in the developing world because unless such traditional expressions are given sufficient legal protection, their evolution and preservation could come under threat from the increasing influences of modernity and unauthorised commercial exploitation. Giving TCEs legal protection entails numerous challenges. As TCEs originate from native or indigenous communities, threats to the cultural survival of these communities, such as external social and environmental pressures, migration, encroachment of modern lifestyles, and disruption of traditional ways of life, could affect as well as abate the traditional means of preserving or passing TCEs onto future generations.69 There is also the risk of losing the very language that gives the primary voice to TCEs and the spiritual worldview that sustains this tradition.70 The lack of recognition, respect, and appreciation for TCEs too could hinder their survival and progress. More than any of these factors, the unauthorised commercial exploitation of TCEs by outsiders, i.e., persons or entities external to the communities from which such traditional expressions originate, poses the greatest threat to the preservation of TCEs in the communities that hold them as gatekeepers or guardians. Indeed, the legal protection of TCEs under international law and the national laws of countries has been a response to the commodification and commercial appropriation of folklore.71 When TCEs originating from a community are misused by external persons or entities, “it can shake a community to its core.”72 Since TCEs have a cultural component and they essentially form part of the cultural heritage of a particular community or even a nation, the misuse of TCEs can significantly impact the culture of an entire community, if not an entire nation.

67

D Wüger, “Prevention of Misappropriation of Intangible Cultural Heritage through Intellectual Property Laws” in JM Finger and P Schuler (eds), Poor People’s Knowledge: Promoting Intellectual Property in Developing Countries (World Bank/Oxford University Press 2004), 184–185. 68 UNESCO and WIPO, Model Provisions on Folklore (n 9) 3. 69 WIPO, Intellectual Property and Traditional Knowledge, WIPO Publication No 920(E) (WIPO 2005), 7. 70 Ibid. 71 Martinet (n 11) 11. 72 Ibid.

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The misuse of TCEs can occur in numerous ways. Distortion or mutilation of TCEs is one form of misuse. The following observation reveals how TCEs can be the subject of misuse: In some cases, the traditional cultural expression is distorted or mutilated. The user modifies the traditional cultural expression without taking into account its meaning or the cultural values it expresses. The damage caused to the community is increased when the traditional cultural expression mutilated is sacred. In 2013, American company “Nike” commercialized women’s sportswear inspired by traditional Polynesian tattoos. This product deeply offended the Samoan community as the patterns and the placement of the tattoos copied by Nike are reserved for men. The disregard for the customary rules regulating which gender was authorized to bear these tattoos caused an uproar forcing Nike to pull the sportswear.73

Most often, those who make use of TCEs in a manner that distorts or mutilates the expressions come from outside the traditional communities concerned. As a result, the rules and guidelines relevant to the use of TCEs, which are applicable to and bind members of the traditional communities by reason of custom or convention, are not applicable to external users of the TCEs. Simply put, since internal rules and customary practices devised by the traditional communities to protect TCEs do not govern outsiders, there is little that these communities can do to control the use of TCEs by outsiders, especially when such use leads to instances of misuse. The misuse of TCEs can also occur when outsiders use TCEs for their own financial or other benefits without sharing the benefits with the community or communities to which the TCEs belong. While such misuse is a form of misappropriation, which is widespread in the modern context,74 the common perception that TCEs are part of the public domain has propelled their use without the consent or approval of the communities that hold the TCEs.75 The benefits arising from such use of TCEs are not usually shared with the community responsible for the TCEs, even though the community members have invested resources in preserving the TCEs.76 It has been posited that “[m]ost of the time the name of the community that has created and transmitted the traditional cultural expressions is not even mentioned by users.”77 The use of TCEs by outsiders for their own benefit without sharing any benefit with the community that was responsible for creating and safeguarding the TCEs is both unethical and unfair, no less unethical or unfair when products of IP are slavishly copied or duplicated, prejudicing the rights and interests of the proprietors of such IP rights.78

73

Ibid. Ibid. 75 Ibid. 76 Ibid. 77 Ibid. 78 See L Bently et al., Intellectual Property Law (5th edn, Oxford University Press 2018), 5; DI Bainbridge, Intellectual Property (10th edn, Pearson 2018), 20–29; W Cornish, D Llewelyn and T Aplin, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (South Asian edn, Sweet & Maxwell 2016), 38–39. 74

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TCEs are also misused when individuals or entities obtain IP rights over subject matter incorporating TCEs.79 For example, copyright protection is granted to original intellectual creations in the literary, scientific, and artistic domains. While the threshold of originality may vary from jurisdiction to jurisdiction, originality in general means that the creation should originate from the author consequent to his efforts rather than slavishly copying from a creation of another person–i.e., the author should have expended some sort of labour, effort, and skill in making that creation.80 As such, it is possible for a person to incorporate TCEs into a creation (provided that it is not slavishly copied) and expend labour, effort, and skill to develop or modify those TCEs to satisfy the test of originality to receive copyright protection for that creation. At the same time, copyright law affords protection to derivative works, namely translations, adaptations, arrangements of music and other alterations of a literary or artistic work, without prejudice to the copyright in the original work.81 Owing to the perception that TCEs form a part of the public domain, it is quite possible for a person or entity to produce a derivate work that is derived from a TCE and still receive copyright protection for such derivative work, even in the absence of consent and authorisation for the creation of that derivative work from any person. This would be unfair to the indigenous or native communities that have invested their resources and efforts in creating, nurturing, and sustaining TCEs for generations. Against this backdrop, the protection of TCEs from misuse has become a major concern and necessity.

8.3.2 Attributes of Protection To be effective, any mechanism for the protection of TCEs must take into consideration the idiosyncratic characteristics of TCEs. It has to be noted that TCEs are incompatible with the concept of private property. This is because TCEs are broadly held by the community in which they originate, flourish, and continue to evolve. This raises the question of how the concept of “community” should be defined. Communities are generally people living in a particular place,whether an entire country or a specific locality within a country. But sometimes, communities transcend boundaries and borders. Some examples include the Tamils of Northern Sri Lanka, to whom the traditional Thesawalamai law applies, although the Northern inhabitants have moved to all parts of the country over time. In the modern context, members of different communities interact and intersect with each other, and this can have an impact on the identification of the exact holders of TCEs linked to respective communities. For instance, the Kandyan dance, which encompasses various dance forms popular and native to the geographic area known as Kandy, situated in the Central Province of Sri Lanka, has been performed by 79

Martinet (n 11) 11. Karunaratna (n 2) 88. 81 See, e.g., Berne Convention, Art. 2(3); IP Act, section 7. 80

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members of other communities (e.g., the low-country Sinhalese) for a considerable time. As a result, it is difficult to identify the Kandyan community as the exclusive holder or owner of the Kandyan dance. The dance has become a part of Sri Lanka’s national heritage. While it is acknowledged that protection granted in relation to TCEs should principally benefit the guardians or holders of those TCEs, such as the indigenous and traditional communities that developed, maintained, and are culturally identified with TCEs and who seek to pass it on to future generations, identifying the guardians or holders of a particular TCE is not always straightforward. As TCEs are a living and evolving phenomenon, their growth and progression could be hindered if the protection conferred to such expressions is overbroad. For instance, granting monopolistic rights (similar to copyright) over TCEs to a group of individuals or an entity could exclude others from using and performing such expressions. However, to foster and develop TCEs, they must be regularly used, performed and practised. Being a part of cultural heritage, at least the people who share the same culture and values should have sufficient access to TCEs and be free to use them. At the same time, ensuring that holders of the TCEs are not deprived of the fruits of their cultural heritage should form an essential part of the protection afforded to TCEs. In that connection, benefit-sharing mechanisms take a prominent place. While recognising these attributes, two approaches to protecting TCEs have emerged at international and national levels. These approaches are, namely positive protection and defensive protection. In the next part, we consider how TCEs are given positive and defensive forms of protection and the challenges associated with these approaches.

8.3.3 Positive Protection The objective of granting a positive form of protection to TCEs is to confer rights that could empower the communities that develop, maintain, and identify culturally with TCEs to promote their TCEs. More importantly, such rights enable communities associated with TCEs to control their use and benefit from their commercial exploitation.82 It is believed at both international and national levels that some uses of TCEs can be protected through the existing IP system, particularly through the copyright regime. The introduction of Article 15(4) to the Berne Convention at the Stockholm Revision in 1967 is an outcome of this belief. Various countries, including Sri Lanka, have also enacted specific legislation integrated into their IP regimes to protect TCEs.

82

WIPO, IP and Traditional Knowledge (n 69) 11–12; CJ Visser, “Making Intellectual Property Laws Work for Traditional Knowledge” in JM Finger and P Schuler (eds), Poor People’s Knowledge: Promoting Intellectual Property in Developing Countries (World Bank/Oxford University Press 2004), 212–213.

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There has been much policy debate about the suitability of the IP system to protect TCEs.83 These debates have underlined the limitations of existing IP laws in providing adequate protection to TCEs and meeting the needs and expectations of their holders. Nevertheless, existing IP laws have been used to protect against some forms of misuse and misappropriation of TCEs.84 The IP legal framework consists of various branches, such as the law relating to copyright, industrial designs, patents, trade marks, geographical indications (“GIs”), unfair competition, and confidential information. It is worth considering whether TCEs can be protected under one or more of the various branches of IP law. Some branches of IP law, such as the law relating to copyright, related or neighbouring rights, industrial designs, patents, and trade marks, insist on specific owners (or right holders) over the protected subject matter. In comparison, the law relating to unfair competition and confidential information does not require such specific right holders or owners. At the same time, while certain branches of IP law protect subject matter for a definite predefined period of time (e.g., 20 years for patents), there are other branches under which the protection is eternal or perpetual, provided certain conditions are satisfied (e.g., registered trade marks are given protection for successive periods of ten years). Since TCEs are held collectively by communities or groups rather than owned by an identifiable individual or joint owners, the remedies in IP law which mandatorily require specific right holders may not be appropriate for the protection of TCEs. However, in certain appropriate circumstances, it might be possible for associations, community corporations, or similar legal bodies to be formed so that they can act on behalf of such traditional or indigenous communities that hold TCEs, to benefit from the remedies provided under IP laws that insist on specific right holders or ownership.85 Also, TCEs span generations, requiring a much longer, if not an indefinite, period of protection compared to what is usually provided under relevant branches of IP law, such as copyright law, which limits protection to a specific period of time. This means that the IP framework might not provide adequate protection for TCEs. However, certain branches of IP law, such as the law relating to trade marks and GIs, can afford protection to TCEs for an indefinite period in appropriate circumstances. As such, seeking to protect TCEs through the IP system poses challenges, but there are also opportunities. Copyright law protects the interests of those who create original works in relation to various subject matter in the literary, artistic and scientific domains by conferring on them economic and moral rights in respect of that subject matter. The law generally 83 See WIPO, The Protection of Traditional Cultural Expressions: Updated Draft Gap Analysis, Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Thirty-Eighth Session, 10 to 14 December 2018 https://www.wipo.int/edocs/ mdocs/tk/en/wipogrtkfic38/wipogrtkfic386.pdf; WIPO, Countries in Transition (n 4) 4; WIPO, IP and Traditional Knowledge (n 69) 17–22. See also LR Helfer and GW Austin, Human Rights and Intellectual Property: Mapping the Global Interface (Cambridge University Press 2011); Karunaratna (n 2) 220–236; DM Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Sarasavi Publishers 2010), 104–106. 84 Visser (n 82) 207–240; Karunaratna (n 2) 220–236. 85 WIPO, IP and Traditional Knowledge (n 69) 18.

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envisages an author or creator on whom copyright first vests. Indeed, copyright protection is usually limited to a period equivalent to at least 50 years on top of the lifetime of the author or creator of a particular work (i.e., lifetime + 50 years).86 Some countries have extended the duration of protection to a period of 70 years87 or more88 over and above the author’s lifetime. For certain subject matter, a shorter minimum duration of protection applies–e.g., for cinematographic works, the duration is at least 50 years from the date the work was first made available to the public with the consent of the author or creator,89 and for photographs, copyright lasts for at least 25 years from the moment a photograph is made.90 While there may be an inclination to use copyright law to protect TCEs, this approach presents certain challenges that are difficult to address. As observed earlier, TCEs are “a result of continuous and impersonal process of creativity of a group of individuals,” and thus, the underlying subject matter belongs to a group of persons, community or nation in common.91 For this reason, TCEs do not have a specific author or owner as contemplated by copyright law. As Karunaratna has observed, although it might be argued that Article 15(4) of the Berne Convention may open an avenue for the protection of traditional cultural expressions in the international arena, the efficacy of that provision is yet to be tested, and any positive outcome is remote.92 At the same time, the protection of TCEs for a limited period contemplated by copyright law hardly makes any sense since TCEs transcend generations. Moreover, the copyright system concerns the protection of “works.”93 However, in a strict sense, TCEs do not fall within the ambit of “works” under copyright law.94 Still, in the area of copyright law, it is necessary to consider the use of related rights or neighbouring rights to protect TCEs. Related or neighbouring rights confer protection to performing artists, producers of sound recordings, and broadcasting organisations. It might be possible for performers of TCEs, and sound recordings and broadcasters of performances of TCEs to receive protection under the law of related/neighbouring rights. However, the fundamental limitation here is that such protection is limited only to the performances, sound recordings or broadcasts of

86

Berne Convention, Art. 7(1); TRIPS, Art. 12. In Sri Lanka, copyright protection generally lasts for the lifetime of the author and thereafter for a period of 70 years–see IP Act, section 13(1). 88 For instance, in Mexico, copyright protection lasts for a period of 100 years after the death of the author. 89 Berne Convention, Art. 7(2). 90 Ibid, Art. 7(4). 91 Karunaratna (n 2) 225. 92 Ibid. 93 Ibid. 94 Ibid. 87

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TCEs and does not extend to the TCEs as such.95 Also, just as in the case of conventional copyright, related rights are limited to a specific period of time.96 Moreover, not all forms of TCEs can be performed. Thus, for example, TCEs that take a purely tangible form, such as drawings and paintings, fall outside the scope of the related or neighbouring rights.97 IP law also protects industrial designs. Industrial designs are a composition of lines or colours or any three-dimensional form, whether associated or not with lines or colours, that gives a special appearance to a product of industry or handicraft which can serve as a pattern for such product or handicraft, provided that it is new and not antisocial.98 While some forms of TCEs possess the characteristics of subject matter that may be classified as an industrial design, the fact that TCEs in general lack novelty and do not have a specific owner gives rise to challenges in protecting such TCEs as industrial designs. For instance, under Sri Lankan law, an industrial design is regarded as new or novel when it has not been made available to the public anywhere in the world at any time whatsoever through description, use or in any other manner before the date on which an application is filed to register that industrial design or before the priority date validly claimed in respect of such an application.99 This presents challenges with respect to novelty, as TCEs have been known for generations and cannot be regarded as new. In addition, since the protection of industrial designs is conferred under a formal registration process, this presents further challenges. For instance, the law states that the right to obtain protection in respect of an industrial design belongs to its owner.100 However, it may not be possible to identify a specific owner or even a group of owners in respect of TCEs, as they are collective creations of an entire community that have been passed down from generation to generation. As such, the protection afforded to industrial designs is incapable of providing adequate protection to TCEs. Patent law protects patentable inventions that are new, involve an inventive step, and are industrially applicable.101 An invention is new if it is not anticipated by prior art.102 Prior art consists of everything disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the filing or, where appropriate, priority date of the patent application claiming the invention.103 Given that TCEs have been in existence for generations, it is not possible to claim that they are new to fulfil the novelty criteria. Also, in terms of the law, it is the 95

Ibid, 226. Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, 26 October 1961, 496 U.N.T.S 43, Art. 14; TRIPS, Art. 14.5; IP Act, sections 17(4), 18(2) and 20(2). 97 Karunaratna (n 2) 226. 98 TRIPS, Art. 26.1 ; IP Act, sections 29 and 30. 99 IP Act, section 31(1). 100 Ibid, section 32(1). 101 TRIPS, Art.27.1; IP Act, section 63. 102 IP Act, section 64(1). 103 Ibid, section 64(2). 96

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inventor who has the right to file a patent application in respect of an invention.104 Since it is not possible to identify a specific creator or inventor in respect of TCEs, even those forms of TCEs that might be typically classified as inventions will not qualify for protection under patent law.105 The law relating to trade marks can provide protection to certain types of TCEs when they are used in connection with the sale or supply of goods or services. Since TCEs belong to a community or group of people rather than to an individual or a single entity, “certification marks” and “collective marks” are likely to be the more appropriate means of protecting TCEs. Certification marks are indications or signs that are capable of guaranteeing that the goods or services in connection with which such marks are used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics.106 Collective marks are indications or signs that serve to distinguish the origin or any other common characteristic of goods or services of different enterprises which use the mark under the control of the registered owner.107 As Karunaratna has observed, a certification mark can be used by the genuine holders of a TCE to certify that the goods or services sold under that certification mark satisfy specific standards relating to the origin, material, mode of manufacture, quality, accuracy, or other characteristics of such goods or services.108 This means that certification marks can be used by traditional communities in relation to the sale of TCEs that can be embodied in the form of goods or incorporated into services to indicate to consumers the traditional significance and authenticity of such goods or services. In a similar vein, holders of TCEs can make use of a collective mark, which could be used to indicate that the users of the mark belong to a particular group or association of traders so that the origin or other common characteristics of goods or services offered by those traders could be distinguished from those of other traders.109 This means that collective marks can be used by traditional communities with respect to the sale of TCEs that can be embodied in the form of goods or incorporated into services to indicate to consumers that the goods or services originate from a particular association or group of traders, which in this case comprise the holders of the relevant TCE. Importantly, unlike in the case of copyright, related or neighbouring rights, industrial designs, and patents, both certification and collective marks confer rights for a specific period that can be indefinitely renewed so long as the mark is in use. This aspect of certification/collective marks is also better suited for protecting TCEs that span generations. However, it is pertinent to note that not all TCEs are capable of being sold as goods or services in the market, as it is often the case that TCEs serve a different purpose to commodities and services traded in the commercial context.

104

Ibid, section 67(1). Karunaratna (n 2) 230. 106 IP Act, section 101. 107 Ibid. 108 Karunaratna (n 2) 229. 109 Ibid. 105

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The law relating to GIs protects indications that identify goods as originating in the territory of a country or a region or locality in that territory, where a given quality, reputation, or other characteristic of the goods is essentially attributable to their geographical origin.110 This law is capable of providing some sort of protection to certain forms of TCEs such as jewellery, handicrafts, and costumes, which are associated with an indication that identifies them as originating in a territory of a country, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the goods is essentially attributable to their geographical origin. However, since not all forms of TCEs derive their quality, reputation, or characteristics from their geographical origin, the law relating to GIs does not provide adequate protection for TCEs in a more general sense.111 The law of unfair competition prohibits acts or practices carried out in the course of industrial or commercial activities that are contrary to honest practices.112 Any person or enterprise or association of producers, manufacturers or traders aggrieved by such an act or practice can institute legal proceedings to prohibit its continuance and obtain damages for losses suffered.113 As such, in situations where TCEs are misused or misappropriated in the course of industrial or commercial activities in a manner contrary to honest practices, the law of unfair competition can provide some relief to the holders of TCEs. However, since such protection is confined to the industrial and commercial context, the law of unfair competition does not provide comprehensive protection for TCEs. The law relating to confidential information affords protection to information that is confidential, is kept confidential, and has actual or potential commercial value because it is a secret.114 While there might be instances where the law relating to confidential information can protect certain forms of TCEs, such as caste or family secrets relating to making traditional pottery, textiles or handicrafts, it is unable to play an active role in the protection of TCEs in general because much of the TCEs are known to the public.115 As Karunaratna has observed, the legal framework that protects confidential information “is based on private ownership and commercial interests which are not in harmony with the concept of traditional cultural expressions.”116 The above discussion reveals that certain branches of IP law may be suited to protect TCEs. However, there are still many challenges that have to be addressed. In addition to all these factors, there are also concerns that the cost of using the IP system is a particular obstacle for holders of TCEs as IP registration and litigation can be costly and involve delays.117

110

TRIPS, Art. 22.1; IP Act, section 101. Karunaratna (n 2) 228. 112 IP Act, section 160. 113 Ibid, section 160(7). 114 Karunaratna (n 2) 228. 115 Ibid. 116 Ibid. 117 WIPO, IP and Traditional Knowledge (n 69) 18. 111

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8.3.4 Defensive Protection The objective of defensive protection is to prevent people from outside the traditional communities or groups of people that develop, maintain, and identify culturally with TCEs from acquiring property rights over such TCEs. In order to give adequate protection to TCEs through a defensive mechanism, it is first necessary to collect and comprehensively document TCEs. This will enable the creation of a central database of all TCEs that are in use in the country. While the creation and maintenance of such a TCE database can facilitate the identification of TCEs and their actual holders or guardians, it also can be helpful to relevant authorities, including courts, to detect instances where such TCEs are used without authorisation and, more importantly, to ensure that unauthorised parties from outside the traditional communities or groups of people that hold the TCEs do not acquire property rights in respect of such TCEs. For example, in the related context of TK, India has compiled the Traditional Knowledge Digital Library, a database containing 34 million pages of formatted information on some 2,260,000 medicinal formulations in multiple languages.118 This move came after the US Patent and Trademark Office granted a patent, which was later revoked, for the use of turmeric to treat wounds, a property well known to traditional communities in India and documented in ancient Sanskrit texts.119 A TCE database could also be used to protect sacred cultural manifestations, such as sacred symbols or words, from being used or registered as trade marks by unauthorised parties. Apart from that, a central TCE database can better facilitate benefit-sharing arrangements in respect of the legitimate use of TCEs by outsiders because the actual holders or guardians of TCEs can be easily identified through the database. For defensive protection of TCEs to work, IP law must defeat unauthorised attempts to acquire IP rights over TCEs. For instance, copyright protection is granted in respect of original intellectual creations. It is well accepted that slavish copies of material in the public domain do not satisfy originality, despite the skill, labour, and effort involved in the copying process. As such, copyright law prevents copyright from being conferred with respect to slavish reproductions of TCEs. Similarly, the law relating to industrial designs and patents requires novelty as a precondition for protection. By incorporating the novelty requirement, the law precludes the grant of rights in respect of inventions and industrial designs that incorporate elements of TCEs. On the other hand, trade mark law protects distinctive signs capable of distinguishing the goods or services of one trader from those of others. In theory, any sign, even those that incorporate TCEs in whole or in part, could satisfy the test of distinctiveness with respect to a particular class of goods or services. However, it is usually the case that signs can be excluded from registration and protection on the

118

WIPO, “Protecting India’s Traditional Knowledge” WIPO Magazine (June 2011) https://www. wipo.int/wipo_magazine/en/2011/03/article0002.html. 119 M Fredriksson, “Balancing Community Rights and National Interests in International Protection of Traditional Knowledge: A Study of India’s Traditional Knowledge Digital Library” (2022) 43 Third World Quarterly 352.

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ground of public policy or morality. That carveout may be used to prohibit signs that incorporate elements of TCEs from being registered and protected as trade marks. In effect, the general conditions or requirements that apply under national law with respect to the protection of certain classes of IP can be used to protect TCEs by ensuring that IP rights are not acquired in respect of subject matter that incorporates TCEs.

8.4 Protection of “Expressions of Folklore” Under Sri Lanka’s Intellectual Property Act 2003 As observed earlier, the IP Act uses the term “expressions of folklore” to refer to subject matter typically classified as TCEs. It has been observed that the IP Act “offers a sui generis form of protection to Sri Lankan expressions of folklore.”120 However, the protection of expressions of folklore in the IP Act has been achieved through the regime for copyright protection. This approach has created several anomalies and mismatches with regard to the protection of expressions of folklore in Sri Lanka. These anomalies and mismatches are considered next.

8.4.1 Protection In terms of section 24(1) of the IP Act, expressions of folklore are protected in Sri Lanka against the following unauthorised acts: (a) (b) (c)

reproduction; communication to the public by performance, broadcasting, distribution by cable or other means; and adaptation, translation, and other transformation, when such expressions are made either for commercial purposes or outside their traditional or customary context.

When the wording of section 24(2) of the IP Act is considered, it is also clear that the acts referred to in section 24(1), i.e., the acts set out in paragraphs (a), (b), and (c) above, are treated as “rights conferred.” However, neither section 24(2) nor any other provision of the IP Act indicates on whom these rights are conferred. Interestingly, the “right to authorise” the acts referred to in section 24(1) is vested in a Competent Authority to be determined by the Minister in charge of the subject.121 Currently, the Director-General of IP has been designated as the Competent Authority for the

120 121

Karunaratna (n 2) 231. IP Act, section 24(4).

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purposes of the IP Act.122 The authorisation the Competent Authority is empowered to make is subject to the payment of a prescribed fee by the party seeking such authorisation.123 The funds accumulated from the collection of this fee must be used for cultural development.124 In the following part, we consider each of the acts associated with the rights flowing from expressions of folklore. (a)

Reproduction

The IP Act protects expressions of folklore under Part II of the statute, which also provides for copyright protection. For the purposes of Part II of the IP Act (where section 24 can be found), “reproduction” means the making of one or more copies of a “work” or “sound recording” in any material form, including any permanent or temporary storage of a work or sound recording in electronic form.125 Therefore, the term “reproduction” made use of in section 24(1)(a) should mean the making of one or more copies of a “work” or “sound recording” in any material form. However, the IP Act defines a “work” as “any literary, artistic or scientific work referred to in section 6.”126 The works referred to in section 6 do not include expressions of folklore in any general sense. It only refers to expressions of folklore that are “apt for stage production,” which essentially is a reference to expressions that are capable of being performed. It is also unclear as to what is meant by “apt for” stage production. As a result, many forms and types of expressions of folklore are likely to be excluded from being regarded as a work, as not all TCEs or folklore are capable of stage production. Consequently, making one or more copies of an expression of folklore that is not a “work” or a “sound recording” in any material form will not constitute a “reproduction” for the purposes of section 24(1). There is also another, perhaps more fundamental, point that needs to be considered. According to section 6, only “original intellectual creations” can be protected as works. Whereas, even if some expressions of folklore apt for stage production qualify as works, in a general sense, expressions of folklore are not original intellectual creations. This is primarily because one of the main characteristics of originality, namely “the relationship between an author or creator and the work,”127 is absent in relation to expressions of folklore. In other words, when determining whether a work is original, copyright law focuses on the contribution that a particular author has made in respect of the resulting work.128 In this regard, the Sri Lankan courts have observed that although copyright law does not require that the expression must be in a novel form, it is essential that such expression “must not be copied from another

122

Intellectual Property Regulations 2005, Published in Gazette Extraordinary No 1415/18 dated 19 October 2005, Reg. 4(1). 123 IP Act, section 24(4). 124 Ibid, section 24(5). 125 Ibid, section 5. 126 Ibid. 127 Bently et al. (n 78) 93. 128 Ibid.

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work–that it should originate from the author.”129 Therefore, the test of originality presupposes the existence of a specific author irrespective of whether the author’s identity remains known. Yet, in a majority of the circumstances, a specific author cannot be identified in respect of expressions of folklore or TCEs. This is because it is not possible to ascertain with any certainty or in any exact terms the input that any one or more authors within a traditional community have made in respect of an expression of folklore. Apart from that, expressions of folklore are pre-existing subject matter–i.e., they have existed for generations. It is doubtful whether a “work” can be created by slavishly copying such pre-existing subject matter.130 For these reasons, it is not surprising that Karunaratna has concluded that “expressions of folklore do not fall within the ambit of ‘works’ under the copyright law.”131 In view of this, there is an anomaly in how the IP Act protects expressions of folklore. That is, although it appears that the right of reproduction is an exclusive right that is granted in respect of an expression of folklore, a third party’s unauthorised act of reproducing such an expression will not amount to a “reproduction” as defined by the IP Act. Thus, although section 24(6) of the IP Act prohibits anyone from committing any of the acts specified in section 24(1), including the act of making a reproduction, with respect to expressions of folklore without the consent of the Competent Authority, the act of reproducing an expression of folklore will never amount to a reproduction as defined for the purposes of Part II of the IP Act. In essence, the logical conclusion of all this is that any unauthorised reproduction of an expression of folklore will not amount to an infringement or violation of section 24(6) of the IP Act since the act of reproduction applies only in respect of works, which do not include expressions of folklore except in the very limited sense (i.e., folklore “apt for stage productions”). In defining the term “reproduction,” the IP Act contemplates two categories of subject matter. Reproductions can take place in respect of “works,” which, as noted above, is likely to exclude most kinds of expressions of folklore. The other category is “sound recordings.” The IP Act defines a sound recording as “any aural fixation of sounds of a performance or of other sounds, regardless of the method by which the sounds are fixed or the medium in which the sounds are embodied.”132 However, the IP Act expressly excludes from this definition a fixation of sounds and images, such as the sounds incorporated in an audiovisual work.133 Therefore, an expression of folklore that does not constitute a work is still capable of being reproduced within the meaning of that term in Part II of the IP Act when it is converted into an aural fixation of sounds arising from an expression of folklore. But not all expressions of folklore 129

MTK Nagodawithana and Others v C Aloy W Fernando and Others SC/CHC/Appeal/30/2006, decided on 10 September 2018, 12. See also Wijesinghe Mahanamahewa and Another v. Austin Canter [1986] 2 Sri LR 154. 130 See, e.g., Bulun Bulun and Another v R & T Textiles Pty Ltd; Minister for Aboriginal and Torres Strait Islander Affairs (1988) IPR 513 (3 September 1998, Federal Court of Australia). 131 Karunaratna (n 2) 225. 132 IP Act, section 5. 133 Ibid.

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are capable of being aurally fixed or fixed into sound recordings. Even in the event of such fixation of an expression of folklore into a sound recording, the protection under section 24(1)(a) of the IP Act would only extend against the reproduction of the sound recording rather than the reproduction of the expression of folklore as such. Given these anomalies, uncertainties, and limitations, the protection afforded to expressions of folklore under the IP Act against unauthorised reproductions remains fragile and weak. (b)

Communication to the public by performance, broadcasting, distribution by cable or other means

Copyright confers on right holders a bundle of rights. Apart from the right to reproduce their works, right holders also possess the exclusive right to “communicate” their works to the public. For the purposes of Part II of the IP Act, which contains section 24 dealing with the protection of expressions of folklore, the term “communication to the public” means the “transmission to the public by wire or without wire of the images or sounds, or both, of a ‘work,’ a ‘performance,’ or a ‘sound recording’ including the making available to the public of a ‘work,’ ‘performance,’ or ‘sound recording’ in such a way that members of the public may access them from a place and at a time individually chosen by them.”134 While the IP Act does not provide a definition for “performance,” it defines “public performance” to mean: (a)

(b) (c)

in the case of a “work” other than an “audiovisual work,” the recitation, playing, dancing, acting, or otherwise performing the “work” in public either directly or by means of any device or process; in the case of an “audiovisual work,” the showing of images in sequence or the making of accompanying sound audible in public; and in the case of a “sound recording,” making the recording sounds audible at a place or at places where persons outside the normal circle of the family and its closest acquaintances are or can be present, irrespective of whether they are or can be present at the same place and time, or at different places or times, and where the performance can be perceived without the need for communication to the public within the meaning of the definition of the expression “communication to the public.”135

“Broadcasting” means the communication of a work, a performance, or a sound recording to the public by wireless transmission, including transmission by satellite.136 It follows from the above that for an expression of folklore to be protected against its unauthorised communication to the public by performance, broadcasting, distribution by cable or other means, as envisaged by section 24(1)(b) of the IP Act, such expression of folklore should constitute a “work” or, it should be “performed” or fixed into a “sound recording.” As observed before, whether all expressions of 134

Ibid. Ibid. 136 Ibid. 135

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folklore could constitute works is a contentious issue. Also, not all expressions of folklore are capable of being performed or fixed into a sound recording. Even in the event of such fixation, protection under section 24(1)(b) would only extend to the sound recording or broadcast (as the case may be) and not the expressions of folklore as such. (c)

Adaptation, translation, and other transformation

The right to make adaptations, translations, and other kinds of transformations comes with the bundle of rights typically associated with copyright. Adaptations, translations, and transformations of works in which copyright subsist result in derivative works, which are also protected by copyright.137 The IP Act affords copyright owners the exclusive right to make such derivative works in respect of their original intellectual creations.138 Therefore, when section 24(1)(c) of the IP Act provides that expressions of folklore shall be protected against any “adaptation, translation, and other transformation,” it is essentially protecting such expressions against unauthorised derivative creations. But Part II of the IP Act does not define the terms “adaptation, translation, and other transformation.” This means that unlike the IP Act’s definitions for “reproduction” and “communication to the public,” which are constrained by their reference to “work” and “sound recording,” the meaning of “adaptation, translation, and other transformation” as referred to in section 24(1)(c) is not similarly constrained. Hence, it can be applied broadly in respect of expressions of folklore. In determining the nature of acts that come within the scope of section 24(1)(c) of the IP Act, we must apply the general meaning that attaches to “adaptation,” “translation,” and “transformation.” Accordingly, in general terms, section 24(1)(c) protects against the unauthorised conversion of expressions of folklore into other forms, such as the translation of such expressions into other languages, conversion of written expressions into musical or dramatic form, and other modifications, when such expressions are made either for commercial purposes or outside their traditional or customary context.139 Thus, arguably, this third category of acts dealing with the “adaptation, translation, and other transformation” of expressions of folklore is the only category that remains unaffected by the anomalies of linking the protection of such expressions to the system of copyright protection.

137

Ibid, section 7(1) (“translations, adaptations, arrangements and other transformations or modifications of works” are treated as derivative works and attract copyright protection). 138 Ibid, section 9(1)(c). 139 Karunaratna (n 2) 127.

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8.4.2 Limitations Section 24(2) of the IP Act provides that the “rights conferred” under section 24(1) do not extend to situations where such acts are done in relation to: (a) (b) (c) (d)

the use of expressions of folklore by a physical person exclusively for his own personal purposes; the use of short excerpts of expressions of folklore for reporting current events to the extent justified by the purpose of providing current information; the use of expressions of folklore solely for the purpose of face-to-face teaching or for scientific research; and instances referred to under section 11 (fair use) and section 12 (specific acts of fair use) where a work can be used without the authorisation of the owner of copyright.

Section 24(3) of the IP Act requires that in all printed publications and communications to the public containing any identifiable expression of folklore, its source be indicated in an appropriate manner and in conformity with fair practices by mentioning the community or place from where the expression utilised was derived. The above limitations placed on the protection of expressions of folklore attempt to cater to the legitimate interests of those who wish to make genuine use of such expressions. At the same time, identification of the source in relation to specific uses of expressions of folklore has been made mandatory to give credit to and respect the indigenous or native communities and groups from which such expressions originate.

8.4.3 Enforcement By and large, the enforcement of rights associated with expressions of folklore under the IP Act is linked with the mechanism for copyright enforcement. While the IP Act contains a comprehensive set of provisions with regard to the protection and enforcement of copyright,140 the use of that mechanism to enforce rights associated with expressions of folklore has created certain anomalies and problems. First, any discussion on enforcement must begin by referring to section 170 of the IP Act, which deals with “infringement and remedies.” Section 170(1) provides: Where a person to whom any recognised rights granted under this Act, proves to the satisfaction of the Court that any person is threatening to infringe or has infringed his rights or is performing acts which makes it likely to infringe a right under this Act, […] the Court may grant an injunction restraining any such person from commencing or continuing such infringement or performing such acts and may order damages and such other relief as the Court may deem just and equitable.

140

CS Talagala, “Copyright and its Enforcement in Sri Lanka: A Square Peg in a Round Hole?” (2017) 23 The Bar Association Law Journal 254, 254–255.

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Thus, the provision dealing with civil enforcement requires the right holder or owner of the relevant IP to initiate legal proceedings and establish any acts of infringement to the court’s satisfaction. It is this provision that provides the basis for an action for infringement. This formulation is unproblematic with respect to mainstream IP rights, as the IP Act clearly sets out the right holders or owners of such rights. However, for expressions of folklore, this is not the case. Although section 24(1) of the IP Act sets out certain acts, which appear to be acts associated with rights conferred in respect of expressions of folklore,141 neither section 24 nor any other provision in the IP Act identifies the actual holders or owners of these rights. This creates a problem with respect to section 170(1), as it is unclear who could bring an infringement suit when an expression of folklore becomes the subject of an infringement. In this regard, it is worth noting that section 24(4) provides that the “right to authorise” the acts referred to in section 24(1) is vested in a Competent Authority, namely, the Director-General of IP.142 The right to authorise usually implies ownership of the right in question. On that basis, one possible approach is to assume that the IP Act implicitly empowers the Competent Authority to enforce the rights associated with expressions of folklore and to seek the various remedies made available under the law in respect of actions for infringement. However, it may have been prudent for the drafters of the statute to make it explicitly clear that the Competent Authority is entitled to initiate legal proceedings. Second, even assuming that the Competent Authority is permitted to bring infringement proceedings, there are further issues that warrant scrutiny. Section 24(6) of the IP Act provides that any person who, without the permission of the Competent Authority, uses an expression of folklore in a manner not permitted by section 24(4) is liable to pay damages and is subject to an injunction and any other remedy as the court may deem fit to award in the circumstances. This provision appears to be the only sui generis enforcement mechanism provided in the IP Act exclusively for the enforcement of rights associated with expressions of folklore. Indeed, since rights associated with expressions of folklore are regarded as rights protected under Part II of the IP Act,143 the remedies set out in section 22 will also become applicable to cases where rights arising from expressions of folklore are infringed. In particular, section 22(1) provides that any person who infringes or is about to infringe any of the rights protected under Part II of the IP Act may be restrained from committing or attempting to commit any act of infringement by way of an injunction and, in addition, may be required to pay damages. Section 22(1) of the IP Act also provides that the owner of any rights protected under Part II is entitled to seek “such other remedy as the court may deem fit.” The above formulation suggests that, among other things, damages are a remedy that can be awarded by the court when rights associated with expressions of folklore 141

This impression is created from the wording of section 24(2) of the IP Act. IP Act, section 24(4). 143 Since section 24(2) of the IP Act recognises the acts referred to in section 24(1), which relate to expressions of folklore, as “rights conferred,” these acts constitute “rights protected under Part II” of the IP Act. 142

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are infringed. In fact, damages and injunctions are the most commonly awarded relief in IP infringement litigation. However, awarding damages in infringement cases involving expressions of folklore can be problematic. Damages are typically awarded to compensate the aggrieved right holder or owner of the IP that was infringed. Indeed, in assessing damages, section 22(2)(b) of the IP Act requires the court to, among other things, consider the “moral prejudice suffered by the owner of the right.” Yet, in cases involving expressions of folklore, the IP Act is not clear as to who owns the rights associated with such expressions, although section 24(4) vests the Competent Authority with a right to authorise the acts referred to in section 24(1). As we noted before, expressions of folklore are commonly held by indigenous or native communities or groups of people. As such, the absence of any indication in the IP Act as to who owns the rights associated with expressions of folklore can theoretically give rise to problems in assessing the quantum of damages. In addition, when the Competent Authority files infringement actions that concern expressions of folklore, the IP Act must provide a transparent mechanism for the use and allocation of damages awarded to the Competent Authority. Neither section 24 nor any other provision of the IP Act provides for this. Presently, section 24(5) provides that any money collected by the Competent Authority as fees paid by parties seeking authorisation to make use of expressions of folklore must be utilised for “cultural development.” But “cultural development” has not been defined anywhere in the IP Act, and section 24(5) does not make it clear whether such fees collected can be used for the benefit of the indigenous/native communities or groups of people that are responsible for the creation and preservation of expressions of folklore. As such, there is a need to provide a clear and transparent mechanism for the use and allocation of any funds collected by the Competent Authority as authorisation fees or damages paid in infringement suits. Importantly, such a mechanism must benefit the indigenous or native holders of expressions of folklore. There is also another concern about how the enforcement provisions are formulated. For the purposes of enforcement of rights, “infringement” has been defined as any act that violates any right protected under the IP Act.144 In the case of expressions of folklore, section 24(6) of the IP Act provides that “any person” who makes use of such expressions without the authority of the Competent Authority “shall be in contravention of the provisions of this section and shall be liable to damages, and be subject to an injunctions and any other remedy as the court may deem fit to award in the circumstances.” In other words, when any person does one or more of the acts set out in section 24(1) in respect of expressions of folklore without the authority of the Competent Authority, that person commits an infringement. Arguably, “any person” here includes the communities or groups of persons that hold or are regarded as the creators of expressions of folklore, as section 24(6) does not seek to draw any distinction or make an exclusion in this regard. The literal interpretation of section 24(6) is that even the indigenous/native communities must first obtain the consent of the Competent Authority before engaging in acts that amount to a reproduction, communication to the public or adaptation, translation, and other 144

IP Act, section 5.

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transformation of an expression of folklore. Failure to do so could render these acts on the part of the indigenous/native communities or groups of persons a violation of section 24(6), read with sections 24(4) and 24(1), of the IP Act. This is clearly an anomalous and absurd outcome. The seriousness of this anomaly and absurdity is heightened in view of the fact that section 22(2)(g) of the IP Act criminalises infringements of rights protected under Part II of the IP Act. Since the rights conferred under section 24(1) of the IP Act constitute “rights protected under Part II” of the statute and “infringement” is defined to mean any act that violates any right protected under Part II,145 any person who carries out any of the acts referred to in section 24(1) without the requisite authorisation under section 24(4) will be guilty of an offence as set out in section 22(2)(g). Arguably, for the purposes of the criminal offence, “any person” could include members of indigenous/native communities or groups of people that are custodians of expressions of folklore–as the IP Act does not draw any distinctions or create any exclusions in this regard. In essence, the flaw with the provisions of the IP Act is that they seemingly require even the custodians of expressions of folklore to obtain the authorisation of the Competent Authority before engaging in any of the acts set out in section 24(1). Obviously, it could never have been the intent of Parliament to impose civil or criminal liability on the indigenous/native communities or groups of people that have nurtured expressions of folklore for generations. After all, the traditional custodians of expressions of folklore should have complete freedom to utilise and exploit such expressions for their benefit. For this reason, the manner in which section 24 of the IP Act deals with rights associated with expressions of folklore has to be reconsidered and reframed. In particular, the IP Act must expressly recognise the indigenous/native custodians of expressions of folklore as the “true” right holders and that the Competent Authority is merely their statutory agent empowered to authorise the use of such expressions by third parties and initiate legal proceedings against infringers. Third, problems arise in applying the provisions in the IP Act that deal with impounding and the destruction of infringing material. For instance, in cases where expressions of folklore are reproduced without the Competent Authority’s authorisation, there may be a need to impound the unauthorised copies. Section 22(2)(a)(ii) empowers the court to order the impounding of copies of works or sound recordings suspected of being made, sold, rented or imported without the authorisation of the owner of any right protected under Part II of the IP Act. But the power and jurisdiction of the court to impound copies (material) that infringe any right associated with expressions of folklore remains questionable because such impounding can be made only in respect of copies of “works” or “sound recordings.” As noted before, expressions of folklore are difficult to classify as works as defined in the IP Act, and there is also very little utility in impounding sound recordings of such expressions. Moreover, section 22(2)(a)(ii) refers to copies made without the authorisation of the owner of a right protected under Part II of the IP Act. Whereas, as noted before, although section 24(1) confers rights with respect to expressions of folklore, it does 145

Ibid.

8.4 Protection of “Expressions of Folklore” Under Sri Lanka’s …

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not expressly identify the right holders. The Competent Authority’s power to authorise the use of expressions of folklore by third parties does not necessarily mean that the Competent Authority is the true right holder or owner of any right associated with such expressions. Lastly, Part II of the IP Act provides for a dispute resolution mechanism in respect of rights protected under that part with the objective of making available a costeffective and time-saving enforcement mechanism.146 In particular, section 22(3)(a) of the IP Act provides: The Director-General may on an application being made […] by a person aggrieved by any of his rights under [Part II of the Act] being infringed or in any other manner affected, and after such inquiry as he thinks fit determine any question that may be necessary or expedient to determine in connection with such application…

A decision made pursuant to an application as specified in section 22(3)(a) is binding on the parties subject to the provisions of section 22(3)(b).147 However, it is doubtful whether this dispute resolution mechanism could provide an effective and neutral forum to resolve disputes pertaining to expressions of folklore, as the Director-General of IP is also the Competent Authority that exercises power to authorise the use of expressions of folklore by third parties. As Karunaratna has pointed out, “the ‘rule against bias’–nemo judex in sua causa–under ‘natural justice’ denies the intervention in this connection of the Director-General of Intellectual Property who holds, being the appointed Competent Authority, the statutory power and duty to take action against the acts of misuse of expressions of folklore.”148

8.4.4 Benefit-Sharing Arrangements A fundamental objective of the IP system is to enable creators to reap the benefits of their creations and prevent others from unjustly benefiting from those creations. This is relevant to the context of TCEs/expressions of folklore, too, as one of the attributes of such protection is to enable the indigenous/native communities or human groups that have invested their resources and efforts in creating, nurturing, and sustaining TCEs for generations to reap the benefits of such expressions. In response to this, the IP Act provides that the grant of authorisation to carry out or perform the acts referred to in section 24(1) should be subjected to a prescribed fee, and the money so collected as fees should be used for cultural development.149 146

Karunaratna (n 2) 323. IP Act, section 22(3)(b) (“Any person aggrieved by the decision of the Director-General may make an appeal to the court and unless the court issues an interim order staying the operation of the decision of the Director-General, such decision shall continue to be in force until the matter is decided by the court”). 148 Karunaratna (n 2) 236. 149 IP Act, sections 24(4) and 24(5). 147

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Cultural development embraces a broad spectrum of things. In a culturally diverse country like Sri Lanka, there are many indigenous, if not local, communities that hold a wealth of TCEs as guardians or gatekeepers. Against this backdrop, pooling the fees collected from the authorisation of certain uses of TCEs belonging to a particular community and utilising the ensuing funds for “cultural development” in general does not provide a direct benefit for the community that has invested resources and efforts in creating, nurturing, and sustaining its TCE. In addition, as noted before, assuming that the Competent Authority is empowered to file infringement actions in circumstances where TCEs are used without proper authority and attribution, no provision in the IP Act provides for the use and allocation of damages that may be awarded by the court in favour of the Competent Authority. Just as with fees collected in the course of authorising the use of TCEs, any damages collected consequent to infringement suits should also be utilised to benefit the aggrieved indigenous/native community or group of persons whose TCEs were infringed.

8.5 Recommendations As observed in the preceding discussion, the provisions in the IP Act suffer from a number of deficiencies and infirmities when it comes to the protection of expressions of folklore or TCEs. First, the IP Act does not recognise expressions of folklore as protected “works.” This poses problems and uncertainties with regard to the protection of expressions of folklore against unlawful reproduction and communication to the public by performance, broadcasting, and distribution by cable or other means. It also creates problems in respect of the enforcement of rights associated with expressions of folklore. In contrast to the IP Act, the provisions in the Code of IP recognised “folklore” as “literary and artistic works.”150 This was in line with the Tunis Model Law on Copyright, which protects folklore as “works.”151 The Tunis Model Law on Copyright also protects works derived from national folklore as original works.152 We submit that the IP Act should recognise expressions of folklore as protected “works” so that such expressions can be effectively protected against unlawful reproduction, and communication to the public by performance, broadcasting, distribution by cable or other means. Second, the IP Act does not expressly prohibit the importation into Sri Lanka of expressions of folklore or products that embody such expressions made overseas without the authorisation of the Competent Authority. However, it might be argued that “the Sri Lanka Customs is competent to prevent importation and exportation of goods in violation of the provisions relating to the protection of the expression of

150

Code of IP, section 6. WIPO and UNESCO, Tunis Model Law on Copyright (n 17) 19 (see section 18 “Definitions”). 152 Ibid, 6 (see section 2 “Derivative works”). 151

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folklore.”153 In any event, it is to be noted that the Tunis Model Law on Copyright contains clear and express provisions to prohibit the importation and distribution of expressions of folklore made abroad without the authorisation of the Competent Authority.154 It would be prudent for Sri Lanka to have such clear and express provisions in its IP Act as this could strengthen the protection afforded to expressions of folklore. Third, while the IP Act recognises acts specified in section 24(1) as “rights conferred” and vests the “right to authorise” those acts in a Competent Authority, it does not spell out to whom those rights are conferred. In the absence of an express reference to a “holder of rights” with regard to the rights specified in section 24(1) of the Act, the enforcement (particularly civil enforcement) of the rights associated with expressions of folklore could become problematic and challenging. We recommend that the IP Act clearly recognise and stipulate to whom the rights specified in section 24(1) of the IP Act belong. Indeed, the IP Act’s failure to recognise the indigenous or native communities as the holders of expressions of folklore leads to a number of other problems. For instance, it appears that the Competent Authority’s authorisation is required even in instances where the very holders of expressions of folklore/TCEs make use of such expressions by engaging in any one or more of the acts set out in section 24(1) of the IP Act. To make things worse, the offence set out in section 22(2)(g) of the IP Act seems to have the potential of holding the members of indigenous/native communities or groups of people that are custodians of expressions of folklore criminally liable for engaging in any of the acts set out in section 24(1) when authorisation thereto has not been obtained from the Competent Authority. As these outcomes seem irrational and unintended, we believe that it is crucial for the IP Act to clearly specify the custodians or owners of rights associated with expressions of folklore so that such expressions can be freely used by the respective indigenous/native communities or groups of people. Fourth, the dispute settlement mechanism set up under section 22(3)(a) of the IP Act is rendered useless in respect of disputes arising in relation to expressions of folklore as the Director-General of IP, who is empowered to resolve disputes, has also been designated as the Competent Authority empowered to authorise the use of expressions of folklore by third parties. Given that litigation in conventional courts is costly and involves delays, it is likely that indigenous/native communities that are aggrieved by the misuse of their expressions of folklore would be more inclined to make use of the comparatively cost-effective and time-saving dispute settlement mechanism set up under the IP Act. Therefore, we submit that an authority other than the Director-General of IP should be designated as the Competent Authority to regulate the use of expressions of folklore, as this will avoid any breach of the principles of natural justice in resolving disputes concerning expressions of folklore. Lastly, the benefit-sharing mechanism contemplated by the IP Act in respect of the use of expressions of folklore appears to be inequitable and inadequate. In particular, 153

Karunaratna (n 2) 236. WIPO and UNESCO, Tunis Model Law on Copyright (n 17) 10 (see section 6 “Works of national forklore”).

154

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it does not ensure that those who have invested their resources and efforts in creating, nurturing, and sustaining expressions of folklore are able to reap a direct benefit from the use of such expressions by third parties. Therefore, it would be prudent to create a mechanism so that the fees charged for the use of expressions of folklore by third parties and compensation or fines awarded by courts in infringement suits involving such expressions can be used for the direct benefit of the indigenous/native communities or groups of people who have invested their resources and effort in creating, nurturing, and sustaining TCEs for generations.

References 1. Abeysekere IN (1999) Sri Lankan copyright law and the TRIPS agreement. Mahapola Publications 2. Aravinda J (2000) Characteristic features of Sinhala folk song. J Royal Asiatic Soc Sri Lanka 45:129 3. Ariyapala MB (1996) Some aspects of the cultural traditions in Sri Lanka of the late mediaeval period. J Royal Asiatic Soc Sri Lank 41:205 4. Auwardt V (2019) Mul Anduma changes over time. Sunday Observer. http://www.sundayobs erver.lk/2019/01/20/culture/mul-anduma-changes-over-time 5. Bainbridge DI (2018) Intellectual property, 10th edn. Pearson 6. Bently L et al (2018) Intellectual property law, 5th edn. Oxford University Press 7. Bruchac M (2014) Indigenous knowledge and traditional knowledge. In: Smith C (ed) Encyclopaedia of global archaeology. Springer 8. Chandrarathne R (18 Sept 2005) Lionel Ranwala folk song troupe keeps traditional music alive: inspiring saga. Sunday Observer. http://archives.sundayobserver.lk/2005/09/18/fea15.html 9. Cornish W, Llewelyn D, Aplin T (2016) Intellectual property: patents, copyright, trade marks and allied rights. South Asian edn, Sweet and Maxwell 10. Douglas AC (2017) Caste in the same mold again: artisans and the indignities of inheritance in Sri Lanka. PhD Thesis. Cornell University 11. Finger JM (2004) Introduction and overview. In: Finger JM, Schuler P (eds) Poor people’s knowledge: promoting intellectual property in developing countries. World Bank/Oxford University Press 12. Fredriksson M (2022) Balancing community rights and national interests in international protection of traditional knowledge: a study of India’s traditional knowledge digital library. Third World Q 43:352 13. Helfer LR, Austin GW (2011) Human rights and intellectual property: mapping the global interface. Cambridge University Press 14. Kapp DB (1994) A collection of Jaffna Tamil riddles from oral tradition. Asian Folklore Stud 53:125 15. Karunaratna DM (2010) Elements of the law of intellectual property in Sri Lanka. Sarasavi Publishers 16. Karunaratna DM (2019) An introduction to the law relating to literary and artistic creations in Sri Lanka. Sarasavi Publishers 17. Martinet L (2019) Traditional cultural expressions and international intellectual property law. Int J Legal Inf 47:6 18. Mckinley A (2017) Framing songs from the poet king: translation and explication of a Sinhala Janakavi work. Sri Lanka J Humanit 41:64 19. Parker H (1910) Village folk-tales of Ceylon. Luzac & Co 20. Pathirana DSH (2009) The concepts, principles and methodologies used in Sinhalese jewellery. PhD Thesis, University of Moratuwa

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21. Peiris E (1974) The origin and development of Sinhala N¯adagam. J Sri Lanka Branch Royal Asiatic Soc 18:27 22. Perera M (2018) Cultural dances for global interest global interest. Sunday Observer. https:// www.sundayobserver.lk/2018/02/25/arts/cultural-dances-global-interest-global-interest 23. Potter CF (1972) Riddles. In: Leach M, Fried J (eds) Standard dictionary of folklore, mythology and legend. Funk and Wagnalls 24. Somathilake M (2013) The origins of murals in the Buddhist world. Modern Sri Lanka Stud 4:56 25. Talagala CS (2017) Copyright and its enforcement in Sri Lanka: a square peg in a round hole? Bar Assoc Law J 23:254 26. UNESCO and WIPO (1982) Model provisions for national laws on the protection of expressions of folklore against illicit exploitation and other prejudicial actions. UNESCO/WIPO 27. Visser CJ (2004) Making intellectual property laws work for traditional knowledge. In: Finger JM, Schuler P (eds) Poor people’s knowledge: promoting intellectual property in developing countries. World Bank/Oxford University Press 28. Winslow D (1996) Pottery, progress, and structural adjustments in a Sri Lankan village. Econ Dev Cult Change 44:701 29. WIPO and UNESCO (1976) Tunis Model Law on Copyright for Developing Countries, WIPO Publication No 812(E). WIPO/UNESCO 30. WIPO (1978) Guide to the Berne Convention for the Protection of Literary and Artistic Works. Paris Act, 1971, WIPO Publication No 615(E). WIPO 31. WIPO (2005) Intellectual property and traditional knowledge, WIPO Publication No 920(E). WIPO 32. WIPO (2011) Protecting India’s traditional knowledge. WIPO magazine. https://www.wipo. int/wipo_magazine/en/2011/03/article0002.html 33. WIPO (2013) Intellectual property, traditional knowledge and traditional cultural expressions/folklore: a guide for countries in transition–version one. WIPO 34. WIPO (2018) The protection of traditional cultural expressions: updated draft gap analysis. Intergovernmental committee on intellectual property and genetic resources, traditional knowledge and folklore, thirty-eighth session. https://www.wipo.int/edocs/mdocs/tk/en/wipogrtkf ic38/wipogrtkfic386.pdf 35. WIPO (2018) Intellectual property and folk, arts and cultural festivals: practical guide. WIPO 36. Wüger D (2004) Prevention of misappropriation of intangible cultural heritage through intellectual property laws. In: Finger JM, Schuler P (eds) Poor people’s knowledge: promoting intellectual property in developing countries. World Bank/Oxford University Press

Chapter 9

Way Forward

Our objective in writing this book was to identify areas and aspects of Sri Lankan Intellectual Property (“IP”) law that needs reform. In particular, we have considered how Sri Lanka’s IP law can be repositioned to better meet domestic concerns and needs while adhering to international norms and expectations. We conducted our analysis taking into account Sri Lanka’s obligations that flow from the numerous international IP agreements and treaties to which the country is a party. That approach enabled us to set out areas where Sri Lankan IP law fell short of international standards. But more importantly, it allowed us to consider flexibilities under international law that permit some wriggle room in reframing Sri Lanka’s IP law so that domestic and national interests are better addressed while ensuring compliance with the international framework. We also adopted a comparative approach to the extent that the experiences of other countries in Asia and beyond were useful in informing the reforms that we propose to Sri Lankan IP law. More often than not, developing countries, such as Sri Lanka, face similar issues and concerns and there is much to learn from how other developing counties have responded through suitable legislative intervention. But we must admit that this book should not be treated as providing an exhaustive account covering all conceivable areas of Sri Lankan IP law that require reformulation and reform. The focus of this book was on the statutory regime for the protection and enforcement of IP in Sri Lanka, which is set out in the provisions of the Intellectual Property Act 2003 (“IP Act”).1 We have focused on certain key areas of IP that in our view are fundamental to Sri Lanka’s socio-economic and cultural development. Our aim was to address shortcomings in the substantive provisions of the IP Act, as opposed to provisions dealing with procedure or the common law. But achieving a balanced and progressive substantive law for the protection of IP is only one among the many steps required in transforming Sri Lanka’s IP system into an efficient, robust, and user-friendly one. And so, in this final and concluding chapter we pen down our thoughts on the way forward in making that transformation possible. 1

Intellectual Property Act No 36 of 2003 (“IP Act”).

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_9

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9.1 Digitisation It is time for Sri Lanka to fully embrace the digital revolution. A digitised IP office is critical for the development of the IP system of a country for many reasons. Digitisation can make the management and processing of IP-related applications, such as applications for the registration of trade marks, patents and industrial designs more efficient and streamlined. By enabling online filings and payments, Sri Lanka’s National Intellectual Property Office (“NIPO”) will become more accessible to the public. More importantly, digitising the IP registries will enable prospective applicants to perform searches in the database to make a preliminary assessment about their applications and ensure that filings do not conflict with existing rights. Digitisation can also help with the adoption of new technologies such as blockchain technology and artificial intelligence (“AI”) to facilitate even greater benefits. For instance, the European Intellectual Property Office has integrated blockchain technology to provide fast, secure and reliable information pertaining to existing IP registrations.2 The Australian Intellectual Property Office (or IP Australia) too has joined the blockchain revolution by offering “Smart Trademarks,” which uses blockchain technology to digitally represent trade marks.3 Incorporating and representing IP registrations on the blockchain is advantageous as it can provide easily verifiable proof of IP ownership, which can be useful when disputes occur or in providing consumers a means of verifying the authenticity of products.4 In addition, since blockchain technology can facilitate smart contracts, IP-related transactions can also be easily managed and tracked.5 Digitisation can also facilitate the incorporation and use of AI for the purposes managing IP-related applications. For instance, the UK Intellectual Property Office conducted a feasibility study of the potential use of AI in the process of evaluating patent applications and found that “an AI tool has the potential to assist patent examiners in the future as part of the prior art searching process.”6 The Intellectual 2

C Archambeau, “Next Level Collaboration: An Exclusive Inside Look at the European Union Intellectual Property Network” World Trademark Review (5 January 2022) https://www.worldtrad emarkreview.com/ip-offices/next-level-collaboration-exclusive-inside-look-the-european-unionintellectual-property-network. 3 T Lince, “Next-generation Trademarks: IP Australia on Using Blockchain to Create Smart IP Rights” World Trademark Review (7 June 2019) https://www.worldtrademarkreview.com/anti-cou nterfeiting/next-generation-trademarks-ip-australia-using-blockchain-create-smart-intellectualproperty-rights. 4 See J Quinn and B Connolly, “Distributed Ledger Technology and Property Registers: Displacement or Status Quo” (2021) Law, Innovation and Technology 377. 5 See SV Odintsov and M Mansour, “Trademarks’ License Agreement Based on a Smart Contract” in Proceedings of the 2nd International Scientific and Practical Conference on Modern Management Trends and the Digital Economy: From Regional Development to Global Economic Growth (May 2020), 220 https://doi.org/10.2991/aebmr.k.200502.036; B Bodó et al., “Blockchain and Smart Contracts: The Missing Link in Copyright Licensing?” (2018) 26 International Journal of Law and Information Technology 311. 6 UKIPO, AI-assisted Patent Prior Art Searching–Feasibility Study (22 April 2020), 2 https://www. gov.uk/government/publications/ai-assisted-patent-prior-art-searching-feasibility-study.

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Property Office of Singapore (“IPOS”) is already utilising AI in relation to its new tool “IPOS Go,” which integrates AI in allowing trade mark applicants to search for existing trade marks on the register pre-empting possible objections arising from identical and confusingly similar trade marks.7 Singapore’s IP office also uses AI and natural language processing or NLP techniques to automatically recommend relevant classes for trade mark applications, helping applicants choose correct classes to represent the underlying goods or services.8 Together these tools help reduce the rejection rates and processing time of trade mark applications. From the above, it is clear that digitisation can benefit the operations of IP administration. Although there is a plan (or so we hear) on the part of the Sri Lankan Government to digitise Sri Lanka’s NIPO, at present, most operations of the IP office are paper-based. Parties intending on filing IP applications must physically visit the NIPO to conduct searches that have to be carried out before lodging such applications. For instance, in the case of trade marks, from our conversations with Sri Lankan legal practitioners, it appears that there are only two computer terminals at the IP office made available to the public to perform trade mark searches upon payment of the prescribed fees. We have gathered that the trade mark database is lacking in function and capacity to enable prospective applicants or their agents to accurately search for existing trade marks, especially in popular classes, such as Class 30 for foodstuff. The lack of a digital IP office has also had a significant impact during the COVID-19 crisis and when restrictions were put into place in Sri Lanka. All in-person services were suspended from time to time during the pandemic, causing delays and inconvenience to the public.9 Had the NIPO been digitally enabled, much of the problems could have been avoided, highlighting the urgent need to digitise Sri Lanka’s IP office. The digitisation of the IP office will allow resources to be used more prudently, improve capacity for better service delivery, and facilitate IP rights to be administered efficiently and professionally. From the point of boosting innovation among local industries, it is crucial for Sri Lanka’s NIPO to maintain an accessible digital patent database, which applicants can search to determine whether similar patents have already been filed or granted in Sri Lanka. Similarly, in other areas of IP, such as in relation to trade marks and industrial designs, where registration is a prerequisite for the acquisition of statutory rights, a digital database of prior registrations can help both applicants and the NIPO to easily determine any conflicts with existing rights. There is also an urgent need to establish a digital repository of Sri Lanka’s traditional knowledge (“TK”) and traditional cultural expressions (“TCEs”). An initiative 7

T Lince, “Innovation at the Singapore IP Office: Spotlight on Non-core Tools and Services” World Trademark Review (5 August 2020) https://www.worldtrademarkreview.com/governmentpo licy/innovation-the-singapore-ip-office-spotlight-non-core-tools-and-services. 8 WIPO, Meeting of Intellectual Property Offices (IPOS) on ICT Strategies and Artificial Intelligence (AI) for IP Administration, WIPO/IP/ITAI/GE/18/1 (8 February 2018), 5. 9 T Lince, “Live Updates: IP Offices Implement Measures in Wake of Coronavirus Crisis” World Trademark Review (24 February 2022) https://www.worldtrademarkreview.com/coronavirus/ip-off ices-implement-measures-in-wake-of-coronavirus-crisis.

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of this nature should ideally be spearheaded by the IP office in consultation with relevant government ministries and departments. A digital repository can protect TK and TCEs from unauthorised misappropriation and pre-empt the grant of IP rights that may come into conflict with such TK and TCEs. In the case of TK, a digital repository can, among other things, contain details about medicinal plants, formulations, and practices that have been used in Sri Lanka for generations by local and indigenous communities. In particular, having a record of TK can prevent pharmaceutical companies from accessing the country’s biological resources and patenting them without the prior informed consent of relevant stakeholders in Sri Lanka. Access to a digital repository can assist patent examiners to assess whether patent applications meet the requisite novelty standard. It can also act as a prior art database, which could pre-empt the granting of patents relating to Sri Lankan TK in foreign jurisdictions. A good example of a digital repository is the TK database that India has implemented since 2001 to protect its TK. To date, approximately 230 patent applications have either been rejected, withdrawn or amended in India based on the prior art information from the digital database.10 In the case of TCEs, a digital repository can facilitate the Competent Authority to better manage the use of such expressions by third parties through appropriate licensing arrangements. In cases where a TCE is used without the requisite authorisation, the digital repository can be used as a source of evidence in determining the nature and scope of the TCE for the purposes of infringement proceedings. In essence, for Sri Lanka, digitising the IP office can bring about vast benefits in terms of the grant, protection and enforcement of IP rights. It can increase the accessibility of the IP system and reduce the processing times of applications to register IP such as trade marks, patents, and industrial designs. It can also ensure that IP administration in Sri Lanka takes advantage of the advances made in technologies such as blockchain and AI. In our view, digitisation, coupled with the other measures that we address below, will be a crucial first step for Sri Lanka in becoming South Asia’s IP hub.

9.2 A Proactive Intellectual Property Office The success of a country’s IP system depends substantially on the role played by the national IP office. In Sri Lanka, the NIPO is in charge of administering and managing the IP system along with the courts and other government agencies such as the Police and Customs that assist in the enforcement of IP rights. As an entity central to the IP system, the NIPO has the potential and capacity to positively contribute to the efficacy of Sri Lanka’s IP system. Here, we consider a few areas where the IP office’s

10

DT Kalbande and P Suradkar, “Traditional Knowledge Digital Library: A Magic Bullet in the War Against Biopiracy” (2021) Library Philosophy and Practice https://digitalcommons.unl.edu/ libphilprac/6108/.

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involvement can play a crucial role in boosting Sri Lanka’s IP system and status in the field of IP. An area that requires urgent and close attention is the process that the NIPO has put into place with regard to the registration of IP, such as trade marks, patents, and industrial designs. Currently, the processing times are excessively long. For instance, it has been reported that delays in the grant of patents have resulted in significant setbacks for Sri Lankan inventors–their products having to enter the market much later, significantly diluting any competitive advantage they were likely to benefit from.11 The inability to secure patent rights in time has negatively impacted the commercialisation of Sri Lankan inventions, which has discouraged innovation in the county. Similarly, the registration of trade marks is subject to major delays. The approximate processing time for an application to register a trade mark in Sri Lanka is three to five years.12 Once a trade mark application is filed in the prescribed form, it is subject to a preliminary examination before it can be accepted for publication for the purpose of oppositions. This preliminary examination, which is to determine whether an applied-for trade mark should be denied registration based on one or more of the objective/absolute grounds, can take anything between 12 and 18 months.13 Anecdotal evidence from legal practitioners in Sri Lanka indicates that there are further delays with respect to opposition proceedings. In some cases, it can take over ten years for a trade mark to get onto the register officially. By that time, it is already time for the registration to be renewed, as under Sri Lankan law, a trade mark registration lasts for ten years, upon which it needs to be renewed. From what we have gathered from legal practitioners, the IP office grants a one-year grace period for the renewal process in such cases. These delays are simply astonishing and inexcusable. Indeed, at the time of writing, the government had introduced a Bill14 in Parliament that seeks to implement a registration system for geographical indications. Once the Bill is passed into law, the IP office will have to manage a new register, which is only likely to exacerbate the problem of delays unless it is immediately addressed. Digitisation of the IP office can partly address these delays, as digital registries are easily accessible and searchable. Thus, digitisation can help expedite decisions with regard to applications for the registration of IP. However, more can be done to streamline processes at the NIPO. In the area of patents and industrial designs, there is a need to employ and train more examiners with expertise in key scientific fields to facilitate the examination of applications. Unless this is done, there will be delays in the grant of patents and industrial designs. Indeed, mistakes and errors may also arise in the assessment of threshold requirements such as novelty, inventive 11

K Warakapitiya, “Inventors Losing Patience Over Patents” Sunday Times (4 October 2015) https:// www.sundaytimes.lk/151004/news/inventors-losing-patience-over-patents-166776.html. 12 SA Ahlam, “Trademark Registration Bottlenecks Block Local Brands Going Global: Think Tank” Daily Mirror (1 February 2017) https://www.dailymirror.lk/article/Trademark-registration-bottle necks-block-local-brands-going-global-think-tank-123086.html. 13 SS Rana & Co, Trademarks in Sri Lanka https://ssrana.in/global-ip/international-trademark-fil ing-registration/trademark-sri-lanka/. 14 Intellectual Property (Amendment) Bill 2022.

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step, and industrial applicability. A similar need exists in the case of trade marks as well. From what we have gathered, a vast majority of opposition hearings are conducted exclusively by the Director-General of IP without that task being delegated to other officers. Therefore, we are not surprised to learn that there is a large backlog of applications at the NIPO waiting to be processed. We believe that the DirectorGeneral and other senior officers of the IP office should not be involved in examining applications or hearing oppositions and other similar matters. Instead, the senior officers must focus on developing IP policy, outreach and awareness activities, and providing leadership in the field of IP. Whereas junior and mid-level officers of the NIPO have to be entrusted with the task of examining applications, conducting hearings, and managing appeals as prescribed under the IP Act. For the NIPO to do this, it must have adequate staff. But at present, the NIPO is severely short-handed. Thus, hiring an adequate number of competent staff should be the NIPO’s top priority. Only then will it have the capacity to clear its backlog and process IP registration applications in a timely and efficient fashion. It is imperative that government funding is allocated for this purpose. Once the IP office is digitised and adequately staffed, the NIPO can adopt innovative policies to promote local innovation, entrepreneurship, and creativity. For instance, in certain specific industrial sectors that are key to Sri Lanka’s economy, such as agriculture, apparel and textile, construction, and information technology, the IP office can consider implementing fast-track pathways for the grant of patents and acquisition of other IP rights. There is much that Sri Lanka can learn from Singapore in this regard. In 2018, IPOS launched its “FinTech Fast Track Initiative” to provide an accelerated file-to-grant service for financial technology or FinTech patent applications.15 Under that scheme, IPOS aimed to grant patents within six months, where a patent application related to FinTech (which covers a broad area including electronic payment systems, investment platforms, insurance technology, blockchain and banking, and security and authentication) and the application contained 20 or fewer claims. This scheme was subsequently extended to patent applications in the field of AI inventions.16 Thus, in 2019, IPOS launched a similar scheme to grant patents within six months in relation to patent applications in the field of AI, which, among other things, covered innovations in the area of image recognition, speech and voice recognition, natural language processing, and autonomous systems. These schemes were later expanded to all scientific and technological fields–under the “SG Patent Fast Track Programme.”17 To become eligible for the fast-track scheme, patent applications must contain 20 or fewer claims and be first filed in Singapore. Subsequently, this scheme was extended and expanded to include trade mark and design

15

IPOS, Launch of FinTech Fast Track Initiative: An Accelerated File-to-Grant Service for Financial Technology Patent Applications, Circular No 3/2018 (26 April 2018). 16 IPOS, Launch of AI 2 : Accelerated Initiative for Artificial Intelligence—An Accelerated Application-to-Grant Service for Patent Applications in Artificial Intelligence, Circular No 2/2019 (26 April 2019). 17 IPOS, Launch of the SG Patent Fast Track Programme, Circular No 2/2020 (27 April 2020).

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applications under the “SG IP Fast” programme.18 Thus, applicants who have filed a fast-track patent application become eligible to use accelerated schemes in respect of their trade marks and designs. To ensure that IPOS’s fast-track scheme is manageable and practical, the IP office has implemented monthly caps on the number of applications that may be filed under the accelerated scheme. Although Sri Lanka’s IP office may not be able to introduce fast-track schemes at present, as there is a large backlog that first needs to be cleared, it is worth exploring the benefits of introducing such schemes. As far as local innovators and entrepreneurs are concerned, such fast-track schemes can hugely benefit their IP commercialisation efforts and give them an advantage in acquiring IP rights in other jurisdictions where they have an interest. In addition, such fast-track schemes can attract high-quality foreign patents in sectors that are important to Sri Lanka’s economy. Although Sri Lanka may not necessarily be a major market, an efficient and user-friendly IP office will potentially attract high-quality foreign patent applications. After all, it is a game of forum shopping. If the NIPO can provide an efficient and user-friendly service, Sri Lanka could become an attractive place for foreign filings. Coupled with benefits, such as tax reliefs and other incentives, this may incentivise major foreign investors to set up operations in Sri Lanka, facilitating the transfer of technology and generating local jobs. A proactive IP office should also play a key role in global outreach activities. For instance, the NIPO should actively engage with the IP offices in key jurisdictions. Bilateral understanding and arrangements can, for instance, facilitate the sharing of know-how, expertise, and personnel between IP offices. More importantly, bilateral IP arrangements between the NIPO and other IP offices can lead to local inventions, trade marks, and industrial designs being expeditiously protected in key markets that are strategic to Sri Lanka. Once again, Sri Lanka can learn a great deal from Singapore’s IP office, which has built a strong network with IP offices around the world. For instance, IPOS’s Patent Prosecution Highway (or PPH scheme) and the Global Patent PPH scheme enable the examination process of a patent application in one IP office to be accelerated by referencing the examination results from another IP Office. We hope that the NIPO could, at some stage, initiate its own PPH scheme and join the Global Patent PPH scheme, which could benefit local enterprises and inventors to secure IP rights in other countries and regions quickly. Lastly, a proactive IP office is one that actively engages with local industries, research institutions, and universities. The IP office’s involvement is crucial in fostering and promoting local innovation, entrepreneurship, and creativity. For instance, recently, Sri Lanka successfully registered its first protected geographical indication or PGI in the European Union. While this was a collective and collaborative effort of multiple stakeholders, the role played by the NIPO was crucial in providing guidance on the IP front. However, the IP office can do more in order to foster and promote a culture of innovation, entrepreneurship, and creativity. In this regard, an area that warrants attention is the creation of IP awareness and expertise. We strongly believe that the creation of a specialised unit within the NIPO that focuses 18

IPOS, Expansion of SG Patent Fast Track Programme, Circular No 6/2020 (25 August 2020).

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on IP education and awareness could facilitate more engagement with local industries and universities. This unit could run specialised and practical training programmes for professionals from critical industrial sectors. Sri Lanka could draw from the experience of Singapore’s IPOS, which in 2003 founded an IP Academy to establish itself as a provider of education and training in intangible assets and IP in Singapore and the region. Sri Lanka’s IP office should have a similar ambition. Creating an IP Academy within the NIPO can address longstanding issues, such as the lack of local expertise in the commercialisation of IP. During our informal conversations with members of the Sri Lankan legal profession, we were astonished to note that prospective patent applicants are compelled to turn to foreign firms and professionals to draft their patent specifications, which have to be submitted as part of their patent applications. The lack of local expertise is a serious problem that has discouraged local entrepreneurs from commercialising their inventions and products. In addition to offering training programmes, the NIPO should also work with local universities to create incubators that could provide advice and support regarding the commercialisation of research and development within Sri Lankan universities. Such measures could significantly foster a “start-up” culture and promote the commercialisation of local innovation.

9.3 A Robust, Efficient, and User-Friendly Intellectual Property Dispute Resolution Landscape A well-crafted substantive IP law and a proactive IP office are two essential elements that can contribute to the efficacy of a country’s IP system. However, there is a third element that is equally, if not more, important–i.e., a robust, efficient, and user-friendly system for the resolution of IP disputes. Disputes in respect of IP can arise in a number of ways. There may be instances where an application to acquire registered IP rights, such as in the case of trade marks, industrial designs and patents, conflicts with existing or prior IP rights. In such circumstances, the IP Act entitles the aggrieved IP proprietor to oppose the grant of a conflicting trade mark, industrial design or patent, as the case may be. The NIPO determines such oppositions as part of the registration process itself. In the discussion above, highlighting the need for a proactive IP office, we have already addressed the importance of an efficient mechanism to determine disputes that arise during the process of IP registration. Disputes can also arise between IP proprietors and third parties that make use of their IP without authorisation. Such disputes typically involve cases of IP infringement or disputes between IP proprietors and their licensees. In Sri Lanka, disputes that fall within this category are resolved mainly through the court system with the support and assistance of public institutions such as the Police and Customs. The IP Act affords IP proprietors or right holders a right to initiate civil proceedings against parties that infringe their rights. The High Court of the Western Province, located in the country’s commercial capital, Colombo, is vested with the exclusive jurisdiction

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to hear and determine certain classes of commercial disputes, including disputes relating to the infringement of IP.19 This High Court is informally known as the “Commercial High Court.” In civil infringement proceedings, the IP Act empowers the Commercial High Court to award a range of remedies, including damages and injunctions,20 account of profits,21 forfeiture or destruction of infringing goods,22 and the disclosure of information about persons involved in the production and distribution of infringing goods.23 The IP Act also creates offences and penalties in relation to wilful acts of IP infringements.24 Criminal proceedings in relation to such infringements are typically initiated in the Magistrate’s Court. A robust system for the resolution of IP disputes is crucial for a number of reasons. Unlike physical property, IP is intangible and can easily be duplicated and copied. This presents a considerable challenge from the perspective of protecting and enforcing IP rights. Unless IP proprietors are able to effectively eliminate, if not at least minimise, infringements of their rights, the outcome could severely impact the value of their intangible assets. Such an outcome will undermine the efforts and investment that have gone into the creation of IP in the research and development stage. Thus, unless a country’s IP system can efficiently deal with IP disputes and infringements, it is likely to disincentive innovation, entrepreneurship, and creativity. More importantly, an effective IP dispute resolution system is of importance for Sri Lanka to attract foreign investment that promotes the creation of IP in the country. Without implementing a fast, cost-effective, and user-friendly dispute resolution system that provides for the efficient enforcement of IP rights, Sri Lanka cannot expect foreign entrepreneurs and enterprises to set up their production facilities and innovation hubs in Sri Lanka. Since there is no doubt that Sri Lanka will benefit from a robust IP dispute resolution system, we devote some space to consider a few points with the hope of recommending improvements to current dispute resolution practices and approaches prevailing in the country. We first wish to focus on the problem of delays. It has to be admitted that judicial proceedings in Sri Lanka are subject to excessively long delays. According to a recent report, at the end of 2019, 766,784 cases were pending in Sri Lankan courts, with only 350 judges to hear and determine them.25 The report further pointed out that 6,813 of these cases were cases pending before the Commercial High Court.26 Currently, cases pending before the Commercial High Court are

19

High Court of the Provinces (Special Provisions) Act No 10 of 1996. IP Act, section 170(1). 21 Ibid, section 170(3)(a)(i). 22 Ibid, section 170(3)(a)(ii). 23 Ibid, section 170(5). 24 Ibid, sections 177–203. 25 T Hoole and S Sallay, “Urgent Need for Justice Reforms: Digitalisation Can Lead the Way” The Morning (4 December 2021) https://www.themorning.lk/urgent-need-for-justice-reforms-digitalis ation-can-lead-the-way/. 26 Ibid. 20

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shared between just three judges. Therefore, it is not surprising that there are significant delays in resolving IP and other commercial disputes. In our view, the time is ripe for the Sri Lankan Government to take steps to address the delays in legal proceedings, particularly in the Commercial High Court. After all, the expeditious resolution of high-value commercial and IP disputes directly impacts the country’s economy and its reputation as a commercial hub. One obvious approach to address delays in legal proceedings is to increase the number of judges who sit in the Commercial High Court. A smaller “cases/judges” ratio can help reduce the bottleneck and expedite hearings. Moreover, in making new appointments, special consideration must be given to the quality and competence of judges. Commercial disputes, including disputes in the field of IP, often raise highly complex factual and legal issues. Thus, judges who have received specialised training in commercial and IP law must be appointed in expanding the Commercial High Court. Indeed, in future, when the number of IP disputes rises substantially, it will be worth exploring the necessity for a specialist IP division or bench within the Commercial High Court to hear and determine IP disputes exclusively. That way, a special bench of judges can be appointed to deal with IP disputes, further expediting the dispute resolution process. Digitisation is another critical step that can help improve the court system’s efficiency. In 2020, during the peak of the pandemic, the Commercial High Court pioneered its “Virtual Courthouse Programme” in partnership with Sri Lanka Telecom and the Colombo Law Library.27 Virtual hearings were then formally recognised by a special COVID-19 law enacted to address the impact of the pandemic.28 However, it must be noted that the special COVID-19 law is a temporary measure. While these measures are certainly a step in the right direction, there is more to be done in digitising the court system. Apart from putting into place the technological infrastructure and the law to facilitate “virtual hearings,” digitisation must take place in a more holistic manner. For instance, smart technologies, such as AI-powered voice recognition tools, must be introduced during court hearings to efficiently record legal submissions and witness testimony. Court registries, including the registry of the Commercial High Court, must be digitised so that there is greater efficiency in managing the affairs of the court system. Systems must be put into place for attorneys-at-law to file pleadings and documents online and electronically. Provision must be made for documents and summons to be served on parties electronically. Steps such as these can go a long way in expediting proceedings and creating a userfriendly court system. Unless delays in the adjudication of disputes can be addressed and efficiency is restored to the dispute resolution landscape, Sri Lanka is likely to repel much-needed foreign investment in areas that are important to the country’s economy. In exploring solutions to deal with the large backlog of pending cases, one cannot ignore the potential of alternative dispute resolution (“ADR”). In the IP context, one possible approach to reduce the stress on the Commercial High Court is for the 27 28

Ibid. Coronavirus Disease 2019 (Temporary Provisions) Act No 17 of 2021, section 4.

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law to encourage mediation between parties to an IP dispute so that disputes can be resolved at an early stage without having to eat into the time and resources of the court system. In some jurisdictions, mediation is encouraged during pre-trial hearings. For instance, in Singapore, the Supreme Court Practice Directions, which apply in respect of proceedings before the High Court and Court of Appeal, provide that “ADR should be considered at the earliest possible stage in order to facilitate the just, expeditious and economical disposal of civil cases.”29 The Practice Directions further provide that “the Court in exercising its discretion as to costs shall, to such extent, if any, as may be appropriate in the circumstances, take into account the parties’ conduct in relation to any attempt at resolving the cause or matter by mediation or any other means of dispute resolution.”30 This clearly demonstrates that mediation is encouraged and taken seriously in Singapore. Moreover, where litigating parties are willing to submit their dispute to be resolved by mediation, a number of independent mediation service providers exist that can offer professional mediation services. In Sri Lanka, a recent amendment to the Civil Procedure Code31 has introduced the “pre-trial” hearing, during which the judge is empowered “to question the parties or call upon them to state their respective cases with a view to,” among other things, assist the parties “to arrive at an adjustment, settlement, compromise, or other agreement, with regard to the matter in issue in such action and may, for that purpose, suggest terms of settlement which in his view is reasonable, having regard to all the circumstances of the case.”32 While this is a step in the right direction, in that it has the potential for promoting the early resolution of disputes, it appears that the task of facilitating settlements falls on the judge, which would, in turn, require court time and resources to be used for this purpose. In our view, such an approach would not help reduce the current burden on the court system in any significant terms. Instead, what is required is for mediation to be facilitated by trained and professional mediators outside the court environment. Indeed, it is likely that engaging mediators (as opposed to judges) in a more informal setting could lead to better prospects of settling disputes. Currently, under the Mediation Boards Act 1988,33 no proceeding can be instituted in a court of law in respect of any civil dispute valued at Rs. 500,000 or less unless the dispute is excluded from the scope of the statute or where the disputing parties had failed to reach a settlement after an attempt to mediate their dispute. IP disputes have not been excluded from the scope of the mediation law. However, given that even the simplest IP dispute is likely to exceed Rs. 500,000 in value, in practical terms, the mandatory mediation requirement will not apply to most, if not all, IP disputes. This means that unless IP litigants are willing to submit their disputes for settlement by mediation, such disputes will have to go through the entire cycle of adjudication, which can be both costly and time-consuming. Therefore, more needs to be done to 29

Supreme Court Practice Directions (Singapore), section 35B(4). Ibid, section 35B(5). 31 Civil Procedure Code, Ordinance No 2 of 1889 (“Civil Procedure Code”). 32 Ibid, section 142D. 33 Mediation Boards Act No 72 of 1988. 30

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incentivise mediation in the IP context. In this regard, it is time for the Sri Lankan Government to invest further in developing and strengthening specialised and institutionalised mediation in the field of IP. The legal framework already exists for this. Apart from the Mediation Boards Act 1988, a law that was enacted in 2000 provided the legal basis for the establishment of a Commercial Mediation Centre in Sri Lanka to “promote the wider acceptance of mediation and conciliation for the resolution and settlement of commercial disputes” and “to encourage parties to resolve commercial disputes by mediation and conciliation.”34 However, despite the enactment of this law, as far as we are aware, no steps have been taken to establish a Commercial Mediation Centre nor to appoint members to its Board of Management. Now, the time has come to give life to the Commercial Mediation Centre, which can provide the institutional framework for the resolution of commercial disputes, including IP disputes, through mediation. Indeed, the NIPO, as the central authority responsible for the administration of IP in Sri Lanka, can collaborate with the Commercial Mediation Centre to appoint mediators who are competent and trained in IP and the various scientific and business disciplines. Doing so could motivate IP litigants to consider mediation as a viable first step in resolving their disputes. When thinking about ADR, one cannot ignore the importance of arbitration. Arbitration is an attractive mode of resolving disputes because it offers a relatively quick, cost-effective, and private dispute resolution mechanism. Moreover, arbitral awards can easily be recognised and enforced in countries party to the New York Convention.35 Although arbitration is commonly used to resolve commercial disputes, it is less common in the field of IP. There are a few reasons for this. First, disputes are submitted for resolution by arbitration on the basis of an agreement to arbitrate. This envisages an existing contractual relationship between the disputing parties. However, in the IP context, disputes are often between IP proprietors and third parties with whom the proprietors have no contractual relationship. For instance, when a dispute arises between an IP proprietor and a third-party infringer, it is unlikely that a contractual relationship would have existed between them. But on the other hand, when disputes relate to the transactional aspects of IP, such disputes are likely to have a contractual flavour. For instance, an arbitration clause can be readily incorporated into contracts between IP owners and their licensees. Thus, arbitration can be an effective mechanism to resolve disputes arising in relation to IP transactions. Even in the context of infringements, there is nothing to prevent parties to a dispute from voluntarily agreeing to submit their disputes for resolution by arbitration–thereby avoiding tedious court proceedings. Therefore, arbitration remains a viable alternative for resolving IP disputes and should be encouraged.

34

Commercial Mediation Centre of Sri Lanka Act No 44 of 2000. United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards, 10 June 1958, 21 U.S.T. 2517 (“New York Convention”).

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Second, there is some doubt about the arbitrability36 of IP disputes, although increasingly, many jurisdictions have recognised that IP disputes are arbitrable. For instance, in the United States, patent validity and infringement disputes are arbitrable.37 But any arbitral award remains binding only between the parties to the arbitration and not on others.38 Trade mark and copyright disputes are also arbitrable on the same basis.39 Hong Kong has adopted a similar approach.40 Recently, Singapore enacted a law41 to provide a clarification about the arbitrability of IP disputes. Thus, under Singapore law, “[t]he subject-matter of an IPR dispute is capable of settlement by arbitration as between the parties to the IPR dispute.”42 The law affords a broad definition for “IPR dispute,”43 which captures disputes relating to enforceability, infringement, subsistence, validity, ownership, scope, duration, or other aspects of IP rights. The term also covers disputes regarding IP-related transactions and disputes concerning any compensation payable in respect of an IP right. However, in some jurisdictions, national law recognises the arbitrability of IP disputes, but with limitations. For instance, in Spain, a dispute concerning the registration of a trade mark is arbitrable only if the dispute involves a relative (and not objective)44 ground for prohibiting the registration of the trade mark. In India, arbitrability depends on whether a dispute concerns a right in rem (proprietary right) or a right in personam (personal right), and only the latter is arbitrable. Thus, although a dispute arising out of a patent licence is arbitrable, a dispute involving the validity of a patent is not.45 Insofar as Sri Lanka is concerned, section 4 of the Arbitration Act 199546 provides that: Any dispute which the parties have agreed to submit to arbitration under an arbitration agreement may be determined by arbitration unless the matter in respect of which the arbitration agreement is entered into is contrary to public policy or, is not capable of determination by arbitration.

The provision set out above is a general provision that deals with the arbitrability of disputes. However, it does not indicate Sri Lanka’s stance on the arbitrability 36

Arbitrability is of two kinds. The first is objective arbitrability. This refers to whether the subject matter of a dispute is capable being resolved by arbitration. The second is subjective arbitrability. This refers to the quality (status) of the parties to the agreement to arbitrate. 37 35 USC § 294(a). 38 35 USC § 294(c). 39 W Grantham, “The Arbitrability of International Intellectual Property Disputes” (1996) 14 Berkeley Journal of International Law 173, 215–216. 40 Arbitration Ordinance 2011, section 103D. 41 Intellectual Property (Dispute Resolution) Act 2019, which inter alia amended provisions of the Arbitration Act 2011 and International Arbitration Act 1994. 42 Arbitration Act 2011, section 52B(1); International Arbitration Act 1994, section 26B(1). 43 Arbitration Act 2011, section 52A(1); International Arbitration Act 1994, section 26A(1). 44 Objective grounds for prohibiting trade mark registration include public policy considerations (e.g., morality) and are best determined by administrative bodies or the courts. 45 KA Loya and G Gokhale, “Arbitrability of Intellectual Property Disputes: A Perspective from India” (2019) 14 Journal of Intellectual Property Law and Practice 632. 46 Arbitration Act No 11 of 1995.

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of IP disputes. Nor are there any decided cases that shed light on the arbitrability of IP disputes. As such, if Sri Lanka wishes to (and it certainly should) promote the resolution of IP disputes through arbitration, it may be necessary to amend the domain-specific statute, namely the IP Act, so that the law can provide clarification as to the types of IP disputes that can be resolved through arbitration. Indeed, it may be advisable for Sri Lanka to permit all categories of IP disputes to be resolved through arbitration with the limitation that the outcome of such proceedings will bind only the parties to such disputes. Sri Lanka has already developed an institutional framework for commercial arbitration. The Sri Lanka National Arbitration Centre (“SLNAC”) and the Arbitration Centre of the Institute for the Development of Commercial Law and Practice (“ICLP Arbitration Centre”) are two institutions that provide institutional support for arbitration in Sri Lanka. These existing institutions can cater to the resolution of IP disputes through arbitration. In order to better support IP arbitration, the SLNAC and the ICLP Arbitration Centre can enter into a collaborative arrangement with the NIPO to recruit and train specialist arbitrators competent to determine complex IP disputes. For Sri Lanka to claim that its system for IP dispute resolution is robust and efficient, litigants must have access to versatile remedies capable of adapting to new developments, particularly due to advancements in technology. For this reason, the second point we wish to consider concerns the injunctive remedy. Although IP proprietors commonly seek damages as a remedy in IP infringement suits, it is often coupled with injunctive relief. Arguably, in the IP context, injunctions are more versatile, as they can immediately bring an infringement to an end and prevent future infringements. Over the years, the injunctive remedy has continually evolved, and IP proprietors have used the remedy in innovative ways. For instance, in Singapore, on the application of a copyright owner, the High Court is empowered to make an order compelling a “network carriage provider” or “NCP,” which essentially has the same meaning as internet service provider (“ISP”), to block access to a flagrantly infringing online location that is used to commit copyright infringements. Similarly, in Australia, the Federal Court is vested with the jurisdiction to award injunctions compelling “carriage service providers,” which is defined to include ISPs, to disable access to websites that infringe copyright.47 Copyright owners have effectively used these provisions to seek out injunctions to mitigate the impact of infringements committed on the internet.48 In the European Union, the Information Society Directive49 (applicable specifically to the context of copyright) and the Enforcement 47

Copyright Act 1968, section 115A(1), read with section 115A(2). See, e.g., Disney Enterprises Inc v M1 Ltd [2018] SGHC 206 (where the Singapore High Court awarded a blocking injunction against ISPs compelling them to disable access to certain online locations hosting audiovisual material that infringed the copyright in several films); Roadshow Films v Telstra [2016] FCA 1503 (where the Federal Court of Australia ordered several ISPs to block access to websites operated by “Solar Movie” that contained audiovisual material that infringed the copyright in several films). 49 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L 167/10 (“Information Society Directive”), Art. 8(3). 48

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Directive50 (applicable more generally to IP enforcement) provide the legal basis for injunctions against “intermediaries” whose services are utilised by third parties to commit IP infringements. The provisions of the two directives have been transposed into the national laws of EU member states. From time to time, IP proprietors have used the corresponding national provisions to seek out injunctions against intermediaries, such as ISPs, to compel them to, among other things, furnish information about infringing users51 and to block access to websites that commit IP infringements.52 In effect, injunctions have been used not only against infringers of IP rights but also against parties that innocently facilitate the commission of such infringements. This way, IP proprietors have been able to use injunctions strategically to deal with widespread infringements, especially in the online space. However, in Sri Lanka, the IP Act does not provide the legal basis for injunctions against non-infringing parties. For instance, this is clear from the language of section 170(1) of the IP Act, which provides: Where a person to whom any recognised rights granted under this Act, proves to the satisfaction of the Court that any person is threatening to infringe or has infringed his rights or is performing acts which makes it likely to infringe a right under this Act […] the Court may grant an injunction restraining any such person from commencing or continuing such infringement or performing such acts…

Similarly, section 170(5) of the IP Act provides that the court may order “the infringer to inform the right holder of the identity of the persons involved in the production and distribution of the infringing goods or services and of channels of distribution used by them.” Thus, it is clear that injunctions, as contemplated by the IP Act, are only available against an infringer of an IP right. The IP Act does not provide the legal basis for injunctions against non-infringing parties that may have facilitated an infringement on the part of another without themselves committing the infringement. A consideration of the more general provisions of the Judicature

50

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights [2004] OJ L 157/16 (“Enforcement Directive”), Art. 11. 51 See, e.g., C-597/19, Mircom International Content Management & Consulting (M.I.C.M.) Ltd v Telenet BVBA ECLI:EU:C:2021:492 (17 June 2021) (in this case, the Court of Justice of the European Union ruled that the disclosure by an ISP to right holders of information pertaining to infringers of IP rights is consistent with the EU Enforcement Directive, provided that such requests are not abusive, unjustified or disproportionate. The Court further ruled that such disclosures are not inconsistent with EU privacy and data protection law, provided that such disclosures have a legal basis under the national laws of EU member states). 52 See, e.g., Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] EWHC 268 (Ch); EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch); Football Association Premier League Ltd v British Sky Broadcasting Ltd [2013] EWHC 2058 (Ch); Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd [2013] EWHC 3479 (Ch); Cartier International AG v British Sky Broadcasting Ltd [2015] ETMR 1.

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Act 197853 and the Civil Procedure Code does not yield a different outcome.54 Thus, section 54 of the Judicature Act 1978 and section 662 of the Civil Procedure Code that deal with interim injunctions do not provide a legal basis for injunctions against non-infringing parties (i.e., parties who are not wrongdoers). Nor do the provisions in the Civil Procedure Code setting out the types of decrees that a court may award at the end of a trial contemplate a remedy against non-infringers (or parties that are not wrongdoers). As such, unless the Commercial High Court exercises its inherent powers and is willing to engage in judicial innovation, as the law currently stands, IP proprietors may not be able to make use of the injunctive remedy in the innovative ways it has been used in jurisdictions such as Singapore, Australia, and the European Union. As such, to transform the injunctive remedy into a more versatile one for the Sri Lankan context, we propose that a special provision be inserted into the IP Act so that a legal basis is expressly provided for injunctions against persons or entities acting as an intermediary and whose services or facilities are utilised by third parties to commit infringements. Such a provision can mirror the provisions in the EU Information Society Directive or Enforcement Directive. Moreover, to explicitly cater to the online environment, we recommend the introduction of a more specific provision so that injunctions may be awarded against intermediaries operating on the internet, such as ISPs and other online platforms that facilitate infringements or provide access to infringing material. As a final point, we wish to emphasise that the success of a country’s IP dispute resolution system does not depend solely on the efficacy of the court system and the national IP office. In Sri Lanka’s case, more work is needed to ensure greater cooperation and alignment between the NIPO (as the central authority responsible for the grant and administration of IP rights), the Commercial High Court (as the court that has exclusive jurisdiction to hear and determine IP disputes) and entities such as the Police and Customs (as public institutions responsible for the enforcement of IP rights). In this regard, Police and Customs officers must be given special training in investigating IP infringements, executing search warrants and seizures, and identifying infringing goods both within the country and at its borders. The Police and Customs play a central role in the enforcement of IP rights. As such, a holistic approach is required to transform Sri Lanka’s IP dispute resolution landscape into a robust, efficient, and user-friendly one.

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Judicature Act No 2 of 1978. See A Marsoof, “Is There a Legal Basis For Blocking Injunctions under Sri Lankan Law?” (2018) 26 International Journal of Law and Information Technology 34 (for a comprehensive analysis of whether a legal basis exists under the laws of Sri Lanka for injunctions against “intermediaries”).

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9.4 Closing Remarks We end this book on an optimistic note. We are confident that our work will spark much-needed discussion, dialogue and debate among and between policymakers, legislators, legal academics, scholars, jurists, legal practitioners, and judges in Sri Lanka and beyond. In writing this book, our intent was to advocate a more nuanced, cautious, and reflective approach to reframing the substantive IP law of Sri Lanka, which we hope will offer lessons to other developing countries that share the same concerns, problems and needs, and wish to engage in a similar exercise of substantive IP law reform. In proposing changes to Sri Lankan IP law, we have also been conscious of the approaches to IP lawmaking adopted by other developing nations in the region and by countries that are economically more developed. In this final chapter, we have emphasised that reforms to substantive law alone will not suffice to transform Sri Lanka’s (or any other developing country’s) IP landscape into a robust, efficient, and user-friendly one. Changes to procedural laws are equally important. Suitable tweaks in the approaches to the governance of IP and the system for the resolution of IP disputes are also necessary. Only then will there be a real impact and change. As academics and authors of this book, we can only go so far as to set out our recommendations for reform and propose ways in which Sri Lanka’s IP system can be transformed. Without the requisite political will and motivation, any transformation will remain a mere figment of our imagination. But one thing is certain. Unless the transformation takes place now, Sri Lanka will retain its “developing” status for generations to come.

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Correction to: Plant Varieties, Farmers’ Rights, and Access to Genetic Resources

Correction to: Chapter 4 in: A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_4 The original version of the book was published with incorrect abstract in Chapter 4, which has now been corrected. The book has been updated with the change.

The updated original versions of this chapter can be found at https://doi.org/10.1007/978-981-19-4582-3_4 © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3_10

C1

Index

A Alternative dispute resolution, 294–296 Australia, 9, 21, 41, 45, 71, 73, 129, 133, 144, 154, 155, 172, 205, 228, 271, 286, 298, 300

B Bangladesh, 60, 198 Berne Convention Art. 2, 17 Art. 3, 217 Art. 5, 217 Art. 6bis, 216, 218 Art. 7, 217 Art. 8, 216, 223 Art. 9, 216 Art. 10, 231 Art. 10bis, 231 Art. 11, 216 Art. 11bis, 216 Art. 11ter, 216 Art. 12, 216 Art. 13, 216 Berne Appendix, 19, 231, 241, 242, 245

C China, 2, 31, 41, 43, 44, 46, 47, 55, 56, 58, 70, 71, 73, 172 Code of Intellectual Property 1979, 5, 29, 89, 125, 206, 252 Compulsory licensing, 56–59, 61, 63, 65, 67, 76, 101, 102, 118, 231, 240, 241, 245, 248

Convention on Biological Diversity, 39, 83, 84, 86–88, 103, 107–109, 112, 114, 117, 119 Copyright Acts of fair use, 231, 236, 240, 245, 247, 274 Berne Appendix, see under Berne Convention Compulsory licensing, 240, 241, 245, 248 Derivative works, 207, 212, 261, 262, 273 Exceptions, 18, 203, 204, 214, 219, 230, 242–244 Exhaustion of rights, 19, 226–228, 247 Fair use, 206, 221, 222, 231–236, 239, 240, 244, 245, 247, 274 Fixation, 215, 216, 222, 243, 246 Marrakesh Treaty, 239 Moral rights, 216, 217, 247, 264 Originality, 17, 206, 211–214, 243, 246, 261, 269, 271 Parallel imports, see Exhaustion of rights Private use, 226, 236, 238 Right of communication to the public, 228, 229 Right of reproduction, 220–223, 247, 271 Right of translation, 223, 225, 247 Rights conferred, 18, 229, 230, 274, 280 Right to import, see Exhaustion of rights Subject matter, 18, 207, 211, 214, 243, 251, 261, 264, 265, 269 Transient and incidental copies, 222, 246

© The Editor(s) (if applicable) and The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2022 A. Marsoof et al., Reframing Intellectual Property Law in Sri Lanka, International Law and the Global South, https://doi.org/10.1007/978-981-19-4582-3

303

304 Tunis Model Law on Copyright, see under Model laws

D Delays, 169, 185, 190, 225, 268, 281, 287, 289, 293, 294 Digitisation, 286–289, 294 Dispute resolution, 21, 192, 278, 292–298, 300 Doha Declaration on TRIPS and Public Health, 31, 59, 62, 69

E Enforcement, 3, 6–8, 13, 14, 16, 30, 42, 73, 125, 157, 192, 243, 275–278, 280, 285, 288, 293, 296, 299, 300 European Union CJEU, 129, 150, 299 Enforcement Directive, 299, 300 Information Society Directive, 298, 300 Regulation on Quality Schemes for Agricultural Products and Foodstuffs, 172 Trade Marks Directive of 1988, 133, 140, 150 Trade Marks Directive of 2008, 133 Trade Marks Directive of 2015, 133, 140, 150

F Farmers’ rights Benefit sharing, 98, 108–110, 113, 118 Farmers’ Gene Fund, 99 Farmers’ privilege, 94–96 Farm-saved seeds, 93, 95, 96, 103

G Genetic resources Access agreements, 111, 112, 114, 116, 119 Access to genetic resources, 10, 83, 84, 86, 88, 107, 110–119 African Model Law, see under Model laws Andean Community Decision on a Common System on Access to Genetic Resources, 115 Benefit sharing, 98, 108–110, 117, 118 Biopiracy, 107 Bioprospecting and bioprospectors, 116

Index CBD, see Convention of Biological Diversity Inter-Agency Committee, 110–112, 114–117, 119 Mutually agreed terms, 87, 110, 112, 113 Prior informed consent, 39, 87, 110, 112–117, 119 Geneva Act of the Lisbon Agreement Art. 2, 188 Art. 10, 188 Art. 11, 198 Geographical indications Geneva Act of the Lisbon Agreement, see under Lisbon Agreement GI register, 170, 186, 188–191, 194, 198, 201 GIs registered as certification and collective marks, 175, 181, 182, 190 Homonymous GIs, 178, 179 Indian GIs Act, 193, 198 Intellectual Property (Amendment) Bill / GI Bill, 8, 22, 50, 170, 176, 181, 193–198, 200, 201 Lisbon Agreement, see Lisbon Agreement Madrid Agreement, see Madrid Agreement Concerning the International Registration of Marks Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, 13, 174 Sri Lankan GIs, 169, 170, 180, 181, 185–192, 196, 198, 199, 201 Sui generis protection, 183 Unfair competition, 184, 263

I India, 5, 9, 31, 38, 39, 41, 47, 51, 54–56, 58–61, 63–65, 67, 68, 70, 71, 76, 83, 87, 95, 98, 99, 102, 118, 127, 128, 133, 140, 144, 160, 172, 177, 180, 189, 193, 198, 207, 235, 240, 241, 268, 269, 288, 297 Intellectual Property Act 2003 s 5, 210, 216, 220, 228, 240, 252, 257, 272, 273, 277 s 6, 206, 209–211, 214, 220, 243, 252, 259 s 7, 262 s 9, 220, 223, 225, 226, 228, 243 s 10, 216

Index s 11, 231–234 s 12, 231, 245 s 12A, 245 s 13, 264 s 17, 222 s 24, 278 s 26, 217 s 29, 265 s 30, 265 s 31, 266 s 32, 266 s 62, 37, 38, 74, 89 s 63, 34, 44, 75, 266 s 64, 74 s 66, 47, 75 s 67, 266 s 83, 66 s 84, 49 s 86, 50 s 101, 125, 126, 129, 140, 163, 176, 182, 197, 198, 266, 267 s 102, 125 s 103, 127, 139, 179, 181 s 104, 127, 139, 147 s 107, 138 s 111, 145 s 118, 125 s 119, 125 s 121, 153, 158 s 122, 159, 165 s 134, 145 s 138, 182, 183 s 139, 183 s 142, 125, 182, 196, 198 s 160, 177, 181, 267 s 161, 178, 180, 181, 183, 192, 196 s 170, 275 s 177–203, 293 s 212, 138

L Lawmaking Comparative lawmaking, 23, 24 Consultative lawmaking, 20 Evidence-based legislation, 22 Flexibilities, 9, 14, 19 International obligations, 9, 72, 225 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration Art. 1, 187 Art. 2, 187

305 Geneva Act, see Geneva Act of the Lisbon Agreement International registration, 175, 198 Lisbon system, 175

M Madrid Agreement Concerning the International Registration of Marks Madrid system, 14, 175 Protocol, 14, 175 Model laws African Model Law for the Protection of the Rights of Local Communities, 115 Mode Law on Patents, 34 Model Law on Trade Marks, 128, 130, 154 Model Provisions on Folklore, 252 Tunis Model Law on Copyright, 206, 254, 280

N National Intellectual Property Office Collaborations, 291, 296, 298 Delays, 287, 289 International strategies, 291 IP education, 22, 286 Role of IP offices, 90 New Zealand, 38–41

P Paris Convention Art. 5A(2), 66–68 Art. 5A(4), 18, 66, 67, 68, 101 Art. 6, 127 Art. 6bis, 147, 148, 157–159, 165 Art. 6quinquies, 18, 137–143, 147, 151, 152, 164 Art. 6ter, 136 Art. 7, 130, 131, 137, 164 Art. 10(1), 174 Art. 10bis, 132, 150, 151, 175, 177, 184 Art. 10ter, 174 Art. 29, 138 Patents Bolar exception, 53, 54 Compulsory licensing, 1, 57, 61, 63, 67, 68 Exhaustion of rights, 69 Industrial applicability, 18, 37, 48

306 Inventions, 10, 27, 28, 33–35, 46, 49, 51–53, 55, 56, 58, 59, 64, 65, 68, 75, 102, 131 Inventive step, 18, 34, 44, 47, 266 Local working requirement, 56, 65, 66, 76 Model Law on Patents, see under Model laws Novelty, 18, 36, 37, 40, 72, 74, 269 Ordre public, 38, 39 Parallel importation, see exhaustion of rights Patentability criteria, 34, 48, 71, 74 Patentable subject matter, 28, 54, 74 Prior art, 38, 44, 266, 286, 288 Regulatory review exception, see Bolar exception Rights conferred, 49, 66 Scientific research and experimental use exception, 51 Statistics, 53, 72 Subject matter, 35, 37, 50, 52, 53, 62, 264 Utility models, 44, 71–73 Plant breeders’ rights Benefit-sharing, see under Farmer’ rights Criteria for protection, 90–91 Farmers’ Gene Fund, see under Farmer’ rights Farmers’ privilege, see under Farmer’ rights Farm-saved seed, see under Farmer’ rights International Undertaking on Plant Generated Resources (IU), 86 PPV Bill, see Protection of New Plant Varieties (Breeder’s Rights) Bill 2001 Sui generis system, 88 UPOV Convention, 86–107 Protection of New Plant Varieties (Breeder’s Rights) Bill 2001, 88–107

S Singapore, 9, 17, 20, 21, 51, 55, 56, 70, 127, 128, 133, 140, 144, 155, 158, 160, 164, 180, 189, 207, 208, 212, 215, 218, 247, 287, 290–292, 295, 297, 298, 300

Index T The Philippines, 115, 119, 240 Trade marks Absolute grounds, 128, 145, 289 Descriptive use, 142, 159 Distinctiveness, 128, 131, 133, 134, 136, 137, 139, 140, 142, 146, 269 Exhaustion of rights, 165 Geographical names and indications, 135, 136, 139, 141, 164, 200 Graphical representation requirement, 140, 144, 164 Model Law on Trade Marks, see under Model laws Morality and public order, 130 Names, 6, 125, 126, 128, 132, 139, 164, 179, 182 Nature of goods, 124, 128, 130, 131, 137, 139 Objective grounds, 127, 136, 297 ordre public, 131 Own name defence, 135 Parallel importation, see Exhaustion of rights Registrable signs, 125 Relative grounds, 145, 146, 158 Rights conferred, 153, 154, 156, 159, 160, 163, 165, 194 Subject matter, 124–126 Telle quelle marks, 138, 139, 141–143, 146, 151, 152, 164. See also Paris Convention, Art. 6quinquies Well-known marks, 147–150, 157–159, 164, 165. See also Paris Convention, Art. 6bis and TRIPS Art. 16.2, Art. 16.3 Traditional cultural expressions Attributes, 251, 262, 263, 279 Authorised use, 193, 198 Benefit sharing, 279 Competent Authority, 279, 288 Convention on the Protection and Promotion of the Diversity of Cultural Expressions, 254 Defensive protection, 263, 268, 269 Definitions and terminology, 252 Enforcement, 280 Folklore, see Definitions and terminology Model Provisions on Folklore, see under Model laws Positive protection, 263

Index Rationales for protection, 8, 52, 71, 131, 146 Rights conferred, 270, 274, 276, 277 Subject matter, 251, 252, 255, 264, 265, 269, 271, 272 Types of TCEs see subject matter, 256 United Nations Declaration on the Rights of Indigenous Peoples, 254 Traditional knowledge, 4, 38, 39, 87, 94, 103, 109, 112–115, 117, 119, 252, 254–256, 260, 263, 264, 268, 287, 288 TRIPS Art. 1.1, 154 Art. 2, 101, 137, 164 Art. 3, 69, 217 Art. 5.5, 145 Art. 6, 19, 69, 160 Art. 9.1, 15, 17, 216 Art. 9.2, 18, 212 Art. 10.1, 206 Art. 10.2, 207 Art. 12, 218, 264 Art. 13, 229–231, 247 Art. 14.5, 265 Art. 15.1, 127, 130, 133–136, 140, 141, 143 Art. 15.2, 127, 134, 137, 139, 144, 146, 151, 152 Art. 15.4, 130, 131, 137, 164 Art. 16.1, 153, 154, 156 Art. 16.2, 147, 148, 157–159, 165 Art. 16.3, 147–149, 158, 159 Art. 17, 159

307 Art. 22.1, 169, 188, 267 Art. 22.2, 177, 184 Art. 22.3, 179, 200 Art. 22.4, 178 Art. 23.1, 175 Art. 23.2, 179, 180, 200 Art. 23.3, 178 Art. 24.9, 181, 189 Art. 26.1, 265 Art. 27.1, 17, 34, 35, 39, 45, 47, 54, 56, 66–68, 266 Art. 27.2, 35, 38, 131 Art. 27.3, 35, 38, 88, 89, 118 Art. 28, 49, 66, 67 Art. 30, 49, 52, 55, 75 Art. 31, 50, 59, 62, 63, 67, 68, 76 Art. 31bis, 60, 61, 76 Art. 64, 15 Art. 66, 31

U Unfair competition, 6, 30, 125, 128, 132, 139, 142, 150, 158, 165, 175–177, 184, 195, 200, 264, 267, 268 United Kingdom, 5, 9, 21, 51, 128, 158, 205–207, 215 United States, 4, 79, 126, 127, 140, 172, 183, 215, 221, 226, 227, 232, 234, 235, 246 Copyright Act 1976, 206, 215, 221, 222, 227, 231, 247 Lanham (Trademark) Act, 126, 140