Likelihood of Confusion in Sri Lanka Under IP Act 2003: Section 104 Relative Grounds

A mark that is distinctive in the abstract may still be refused in Sri Lanka because it conflicts with earlier rights. Section 104 of the Intellectual Property Act, No. 36 of 2003, sets out the relative grounds for refusal, and in practice this is where brand clearance becomes decisive. The basic question is whether the applied-for mark resembles an earlier mark or trade name so as to be likely to mislead the public, particularly for identical or similar goods or services. For businesses, the challenge is that similarity is not judged mechanically. The National Intellectual Property Office of Sri Lanka considers the overall commercial impression of the marks, including visual, phonetic, and conceptual similarity, and then assesses the relationship between the respective goods or services. For combined marks, the dominant element often controls the analysis.

The Legal Framework: Section 104 of the Intellectual Property Act, No. 36 of 2003

• Section 104(1)(a): Prohibits registration where the mark resembles another person’s mark and is likely to mislead the public in respect of identical or similar goods or services.
• Section 104(1)(b): Extends protection to earlier used or registered marks in relation to confusing similarity.
• Section 104(1)(c): Protects prior trade names against confusingly similar trademark registration.
• Section 104(1)(d): Protects well-known marks in Sri Lanka, including against use on dissimilar goods where use would suggest a false connection and likely damage the owner.
• Section 104(1)(e): Bars registration that would infringe third-party rights or contravene unfair competition principles.
• Section 104(1)(f): Bars unauthorized filings by an agent or representative of the owner of a foreign mark.
• Section 111(1): Requires examination of compliance with Section 104.
• Section 111(10): Allows any person to oppose on Section 104 grounds within three months of publication.
• Section 134(1): Allows nullity where a registration should have been precluded under Section 104.
• Section 134(3): Requires applications for nullity based on Section 104 to be brought within five years of registration.

The Likelihood of Confusion Test Under Section 104

Section 104 uses the language of resemblance and likelihood to mislead the public. In substance, this is a likelihood-of-confusion standard. Actual confusion need not be proven. The issue is whether the average consumer of the relevant goods or services is likely to believe that the goods come from the same undertaking, economically linked undertakings, or otherwise connected sources.

The analysis is holistic. NIPO does not treat visual, phonetic, conceptual, and goods-similarity factors as separate hurdles. Rather, they interact. A high degree of similarity between the marks can offset a lower degree of similarity between the goods, and vice versa, especially where the earlier mark is strong or well known. Conversely, weak common elements such as descriptive words may receive reduced weight, leaving more focus on the distinctive portions of the signs.

Section 104(1)(d) adds a broader layer for well-known marks. Even if the goods are not similar, registration may still be blocked if the applied-for sign would suggest a false connection with a well-known mark and likely damage its owner. This makes due diligence especially important where the proposed mark resembles an internationally prominent brand.

Section 104(1)(e) and Section 104(1)(f) capture residual unfairness, including unauthorized agent filings. Although Sri Lankan law does not frame bad faith as a free-standing absolute ground in Section 103, conduct that appropriates another party’s mark through agency or unfair competition can still be blocked under Section 104.

What the National Intellectual Property Office of Sri Lanka Considers in a Section 104 Analysis

Visual similarity

For word marks, examiners compare spelling, length, structure, distinctive sequences of letters, prefixes, suffixes, and the overall visual impression. Minor differences may not avoid conflict where the marks share the same dominant element. For logos and combined marks, composition, shape, symbols, layout, and recurring visual motifs matter.

Phonetic similarity

Phonetic comparison is important in Sri Lanka, particularly because consumers may request goods orally and because transliterations between English, Sinhala, and Tamil may preserve pronunciation even where spelling changes. Marks that sound alike can conflict even if they look somewhat different.

Conceptual similarity

Conceptual comparison asks whether the marks convey the same idea, image, or meaning. Two marks may be conceptually similar if one is a translation of the other, if both refer to the same object or characteristic, or if one logo plainly communicates the same concept as another word mark. In a multilingual market, translation and transliteration can be central.

Goods and services similarity

NIPO uses the Nice Classification for administrative filing, but the class number is not dispositive. The office looks at whether the goods are identical, similar, complementary, substitutable, or sold through the same trade channels to the same consumers. Shared distribution, common retail environments, overlapping consumer groups, and related uses all increase similarity. Different class numbers do not guarantee coexistence, and same-class goods are not automatically confusing if commercially remote, though risk is higher.

Dominant elements in combined marks

For combined marks, the dominant element often determines the outcome. If the word portion is the element consumers will use and remember, similarity in that word can outweigh differences in design. If the device is highly distinctive and the verbal matter is weak or descriptive, the design may carry more weight. NIPO generally assesses the whole mark, but in practice the dominant distinctive element often anchors the comparison.

Examiners also discount weak or descriptive matter. A shared descriptive term usually contributes less to confusion than a shared invented term. This is commercially important because applicants sometimes overestimate the significance of common product descriptors and underestimate the impact of a smaller shared coined element.

Key Case Law

M.S. Habtulabhoy & Co. v. Stassen Exports [Year not specified in the guide] — The court held that marks identical phonetically were likely to mislead. The case is highly relevant to Section 104 because it confirms the importance of sound and consumer perception in Sri Lankan trademark analysis.

Lever Brothers v. Renganathan Pillai [Year not specified in the guide] — Referenced in the guide as reflecting common-law principles of consumer perception and distinctiveness, which inform confusion analysis.

No leading cases have been published in the guide setting out a multi-factor appellate test under Section 104 equivalent to foreign jurisprudence. Accordingly, applicants should expect NIPO to apply a practical, impression-based analysis centered on resemblance, likely public deception, and market context.

The Procedure for Responding to a Relative Grounds Refusal

Step 1: identify the cited earlier right

The applicant should determine whether the objection relies on a registered mark, prior use, a trade name, a well-known mark, unfair competition, or unauthorized agency. The response strategy differs depending on the basis.

Step 2: respond within one month under Section 111(3)

The written response should tackle both mark similarity and goods similarity. It is not enough to argue that the marks look different if they sound similar, and vice versa.

Step 3: distinguish the marks on all three axes

Explain visual differences, pronunciation differences, and conceptual differences. If the shared element is descriptive or nondistinctive, say so expressly and show that the distinctive elements differ.

Step 4: address dominant elements for combined marks

If the applied-for mark is composite, the response should explain which element dominates and why the cited earlier mark creates a different overall impression. If the examiner has focused only on the word portion, and the design significantly changes the commercial impression, that point should be developed carefully.

Step 5: differentiate the goods or services

Show differences in nature, purpose, consumers, pricing, distribution channels, and market practice. If the cited goods are technically in the same class but commercially remote, that distinction should be documented.

Step 6: consider limitation, consent, or coexistence

Where the conflict is narrow, limiting the specification may remove the overlap. The guide does not provide a detailed statutory consent regime, but commercially negotiated solutions can still be relevant to reducing dispute risk depending on NIPO practice and the circumstances.

Step 7: prepare for opposition or appeal if necessary

If the mark is accepted and then opposed, the same relative grounds issues will reappear under Section 111(10). If refused, a reasoned record is important for any appeal under Section 173.

Strategic Recommendations

• Recommendation: Conduct clearance against word marks, logos, trade names, transliterations, and translations. Section 104 risk is broader than exact-match searching.
• Recommendation: Compare marks the way consumers encounter them in Sri Lanka — visually, orally, and conceptually across English, Sinhala and Tamil contexts.
• Recommendation: Focus on dominant distinctive matter. A small shared coined term may matter more than larger shared descriptive wording.
• Recommendation: Evaluate goods similarity by market reality, not class number alone. Related retail channels and complementary use can create conflict even across classes.
• Recommendation: Be cautious around famous international marks. Section 104(1)(d) can reach dissimilar goods where a false connection is likely.
• Recommendation: If a conflict appears manageable, consider narrowing the specification before examination hardens into a formal refusal or opposition.

Common Mistakes

• Mistake: Assuming that spelling differences eliminate conflict. Phonetic similarity can be decisive in Sri Lanka.
• Mistake: Comparing only logos and ignoring the wording embedded in them. Word elements frequently dominate combined-mark analysis.
• Mistake: Relying solely on Nice class separation. Commercially related goods can still be considered similar.
• Mistake: Ignoring translations and transliterations. Conceptual identity across languages can support a Section 104 objection.
• Mistake: Discounting prior trade names and well-known marks. Section 104 protects more than registered marks on identical goods.

Key takeaway: Section 104 in Sri Lanka requires a practical, consumer-facing analysis of resemblance and likely deception, not a mechanical side-by-side comparison. Successful applicants distinguish their marks visually, phonetically and conceptually, and they address goods similarity and dominant elements with equal care.