Descriptiveness and Genericness in Sri Lanka Under IP Act 2003: Section 103(1)(b) and (c)

For many applicants in Sri Lanka, the most common absolute-grounds problem is not scandalous matter or prohibited emblems, but that the proposed mark says too much about the product and too little about source. Section 103(1)(b) and Section 103(1)(c) of the Intellectual Property Act, No. 36 of 2003, are the principal barriers to registration of descriptive and generic matter. Businesses often underestimate how broadly these provisions can apply, particularly where a mark is clear in English, or where a term that seems distinctive in one market is customary in Sri Lankan trade. The risk is especially acute for combined marks because applicants may assume that adding a simple logo cures a weak word element. In reality, NIPO looks at whether the mark still consists exclusively of descriptive or customary matter, and whether any stylization meaningfully changes the distinctiveness analysis.

The Legal Framework: Intellectual Property Act, No. 36 of 2003, Section 103

• Section 101: Defines a mark as a visible sign serving to distinguish the goods of one enterprise from those of another.
• Section 103(1)(b): Prohibits marks consisting exclusively of a sign or indication that 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.
• Section 103(1)(c): Prohibits marks consisting exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of trade in Sri Lanka.
• Section 103(1)(d): Prohibits marks incapable of distinguishing the applicant’s goods or services.
• Section 103(2): Requires the Director-General to consider all circumstances when applying Section 103(1)(b) through Section 103(1)(h), including use in Sri Lanka or abroad and recognition elsewhere, thereby allowing acquired distinctiveness to be considered.
• Section 111(1): Directs the Director-General to examine compliance with Section 103.
• Section 111(3): Allows the applicant one month to respond to a refusal notice.
• Section 111(5): Permits conditional acceptance, amendments, or limitations where appropriate.
• Section 134: Permits post-registration nullity actions where the registration should have been precluded under Section 103.

The Descriptiveness and Genericness Test Under Section 103(1)(b) and (c)

The legal test starts with the phrase consisting exclusively. Section 103(1)(b) addresses signs that may serve in trade to describe characteristics of goods or services. Section 103(1)(c) addresses signs that are customary designations in language or trade practice. Together, they target two related but distinct problems.

A descriptive mark tells consumers something about the product: what it is, what it does, what it contains, where it comes from, what quality it claims, or when it is supplied. A generic or customary mark goes further. It is not merely informative; it is the ordinary name or accepted trade term for the goods or services. Genericness is therefore the stronger objection because such a term is fundamentally incapable of performing a trademark function.

In practical examination, the National Intellectual Property Office of Sri Lanka asks whether the relevant public would see the sign primarily as product information rather than as an indicator of commercial origin. That assessment is objective. It does not depend on whether the applicant intended the term to be a trademark. Nor does it depend on whether competitors are currently using the exact same spelling. If the sign is one that traders may legitimately need to use, or one that consumers would naturally understand as descriptive or customary, refusal is likely.

The test is applied to the mark as filed and in relation to the goods or services claimed. A term can be arbitrary for one class of goods and descriptive for another. For example, an ordinary word unrelated to the product may be distinctive, while the same word becomes descriptive when used for goods whose nature or quality it names. That is why specification drafting matters. Broad claims increase the chance that at least part of the application will capture goods for which the sign is descriptive.

Section 103(1)(d) reinforces this analysis by independently barring marks incapable of distinguishing. Even if an examiner does not rely squarely on Section 103(1)(b) or (c), the same factual weakness may support a finding that the sign lacks distinguishing capacity.

Section 103(2) is the applicant’s principal statutory cure. It directs the Director-General to consider all circumstances, including use and recognition, which means a descriptive mark may still be accepted if the applicant proves acquired distinctiveness. But the better the evidence must be, the more obviously descriptive the sign is. For a generic term, acquired distinctiveness will rarely succeed in practice.

What the National Intellectual Property Office of Sri Lanka Considers Descriptive or Generic

NIPO generally applies these provisions strictly to pure word marks. Words indicating quality, composition, intended purpose, geographical origin, freshness, superiority, or the nature of the goods are obvious candidates for objection. So are terms that have become common trade vocabulary in Sri Lanka. Examiners do not confine themselves to dictionary meaning. They may also consider trade usage, consumer understanding, and current language in the Sri Lankan market.

English-language marks are often vulnerable because many Sri Lankan consumers and traders readily understand common English product descriptors. Applicants should also consider Sinhala and Tamil equivalents, transliterations, and phonetic counterparts. If the same meaning would be obvious to the market in a local language, the objection may still arise. Conversely, a foreign-language term can sometimes survive if it is not understood descriptively by the relevant public in Sri Lanka, but that position becomes weaker where the term is widely known or used in trade.

Stylization matters, but only to a point. A descriptive word in ordinary lettering remains descriptive. Minor typographic treatment, standard fonts, ordinary borders, or commonplace product images generally do not change the result. The question is whether the mark still consists exclusively of descriptive or customary matter. If the graphic elements are themselves ordinary or product-related, the mark may still fail.

Where stylization can help is in a combined mark with a genuinely distinctive device or visual composition that dominates the commercial impression. For example, if the verbal element is weakly descriptive but the logo is original and memorable, NIPO may accept the combined mark because the mark as a whole is no longer exclusively descriptive. Even then, the descriptive word will usually remain weak, and protection will center on the overall combination. This is why dominant-element analysis is critical. If the word portion remains what consumers will use to identify the brand, the device may not save the application.

Examples of practical categories include:

• Direct descriptions of goods: terms naming the product itself or an immediate characteristic.
• Quality claims: words such as pure, fresh, premium, organic, or natural where they function as product claims rather than source indicators.
• Use or purpose indications: terms explaining what the goods do or whom they are for.
• Trade-customary words: common labels that traders in Sri Lanka use for the product category.
• Product imagery in logos: literal depictions of the goods, especially where paired with descriptive wording.

For logos alone, genericness in the strict verbal sense is less common, but nondistinctiveness remains relevant. A simple drawing of the product, a common geometric shape, or a conventional decorative symbol may be treated as incapable of distinguishing, particularly under Section 103(1)(d).

Key Case Law

Lever Brothers v. Renganathan Pillai [Year not specified in the guide] — The guide indicates reliance on common-law principles concerning how average consumers perceive marks. While not a published Section 103(1)(b) or (c) registrability decision in the guide, it is relevant to the broader distinctiveness inquiry.

M.S. Habtulabhoy & Co. v. Stassen Exports [Year not specified in the guide] — The guide notes the court’s emphasis on phonetic identity and consumer perception. The case is more directly cited in confusion analysis, but it also supports the proposition that Sri Lankan authorities focus on real marketplace understanding rather than formalistic differences.

No leading cases have been published in the guide specifically interpreting Section 103(1)(b) and Section 103(1)(c) in ex parte registration proceedings. Applicants should therefore expect NIPO practice to be driven primarily by statutory text and general trademark principles.

The Procedure for Responding to a Descriptiveness or Genericness Refusal

Step 1: identify the exact statutory basis

The first step is to determine whether the refusal is under Section 103(1)(b), Section 103(1)(c), Section 103(1)(d), or a combination of them. A customary-use objection under Section 103(1)(c) is often more serious than a borderline descriptiveness objection under Section 103(1)(b).

Step 2: respond within one month

Under Section 111(3), the applicant generally has one month to respond in writing. This is a short deadline. Businesses should therefore prepare argument and evidence quickly, especially where the mark is commercially important.

Step 3: argue that the mark is not exclusively descriptive or customary

The applicant may contend that the sign is suggestive rather than descriptive, that it has multiple meanings, that the relevant public would not immediately understand it descriptively, or that the mark includes distinctive visual matter that prevents it from consisting exclusively of descriptive or customary indications.

Step 4: address dominant-element analysis for combined marks

If the application is for a logo or combined mark, the response should explain why the device element dominates or materially changes the overall commercial impression. Mere assertion is not enough. The response should describe the visual features that consumers are likely to remember and rely upon.

Step 5: submit acquired distinctiveness evidence where available

Under Section 103(2), the applicant may rely on use in Sri Lanka or abroad and recognition elsewhere. Useful evidence can include duration of use, turnover, market share, advertising expenditure, distribution records, retailer declarations, media references, customer testimonials, and survey evidence if available. The evidence should connect the mark to a single commercial source rather than merely showing product promotion.

Step 6: consider narrowing goods or refiling

If descriptiveness only affects part of the specification, narrowing the goods or services may reduce the problem. In some cases, a redesigned combined mark with a stronger device is more realistic than fighting for a weak word mark.

Step 7: request a hearing if needed

Borderline cases often benefit from a hearing under Section 111(4), especially where pronunciation, local meaning, or the dominance of design elements is disputed.

Strategic Recommendations

• Recommendation: Assess the mark from the consumer’s perspective in Sri Lanka, not from the brand team’s perspective abroad. A term that feels creative internally may still be a straightforward descriptor in trade.
• Recommendation: Clear translations and transliterations. A descriptive English term may be equally objectionable if rendered in Sinhala or Tamil, and vice versa.
• Recommendation: Use a genuinely distinctive logo if the verbal element is weak. Small decorative changes will not usually move a mark outside Section 103(1)(b) or (c).
• Recommendation: Preserve use evidence from the outset. Section 103(2) can be powerful, but only if the applicant can prove source recognition with objective records.
• Recommendation: Narrow the specification where appropriate. A sign may be descriptive for some goods but distinctive for others.
• Recommendation: Avoid relying on acquired distinctiveness for generic terms. If the term is truly customary, rebranding is often the safer approach.

Common Mistakes

• Mistake: Assuming that a combined mark automatically solves a descriptive word problem. If the word remains dominant, the refusal may stand.
• Mistake: Confusing suggestive wording with descriptive wording. A mark that immediately tells the consumer a product feature is likely too weak.
• Mistake: Providing evidence of sales without evidence of trademark significance. Commercial success alone does not prove that consumers see the sign as a badge of origin.
• Mistake: Ignoring local language meaning. Current language and bona fide trade practices in Sri Lanka are expressly relevant under Section 103(1)(c).
• Mistake: Trying to defend a generic term as if it were merely descriptive. Genericness is usually fatal in practice.

Key takeaway: Under Section 103(1)(b) and Section 103(1)(c), Sri Lanka will not register marks that consumers are likely to read as product information or common trade terminology rather than as source identifiers. Stylization can help only where it meaningfully changes the overall impression, and acquired distinctiveness under Section 103(2) must be supported by strong evidence.