Prohibited Signs and Deceptive Marks in Sri Lanka: IP Act 2003 Section 103(1)(e) to (j)

Some trademark refusals in Sri Lanka are not about distinctiveness at all. They arise because the sign itself is legally unacceptable, regardless of marketing investment or consumer recognition. Section 103(1)(e) through Section 103(1)(j) of the Intellectual Property Act, No. 36 of 2003, bars categories of signs that conflict with public policy, morality, truthful trade, or state and international interests. For businesses, these prohibitions matter because they are often difficult or impossible to cure. A mark that incorporates a national emblem, falsely suggests official approval, misrepresents origin or quality, or offends public order is exposed not only to refusal but also to later invalidity. Brand review should therefore screen for these issues before any filing decision is made.

The Legal Framework: Intellectual Property Act, No. 36 of 2003, Section 103(1)(e) to (j)

• Section 103(1)(e): Prohibits marks that are scandalous, contrary to public order or morality, or likely to offend religious or racial susceptibilities as reflected in the guide’s summary of the provision.
• Section 103(1)(f): Prohibits marks likely to mislead trade circles or the public as to the nature, source, geographic origin, characteristics, or suitability for purpose of the goods or services.
• Section 103(1)(g): Restricts registration of personal names or enterprise names unless presented in a special or particular manner.
• Section 103(1)(h): Prohibits marks that according to their ordinary signification are geographical names or surnames.
• Section 103(1)(i): Prohibits marks that reproduce or imitate armorial bearings, flags, and other emblems, abbreviations, or names of states or intergovernmental organizations without authorization.
• Section 103(1)(j): Prohibits marks that reproduce or imitate official signs, hallmarks, escutcheons, or emblems adopted by a state or international organization without authorization.
• Section 103(2): Allows the Director-General to consider circumstances of use for some absolute grounds, but this does not realistically cure official-symbol or public policy bars.
• Section 111(1): Requires examination against Section 103.
• Section 111(3): Gives the applicant one month to respond to a refusal notice.
• Section 134: Permits nullity of registrations that should have been refused under Section 103.

Absolute Grounds for Prohibited Signs, Official Symbols, Public Policy and Deception

The legal structure of Section 103(1)(e) to (j) is protective rather than competitive. These provisions do not primarily preserve fair access to descriptive terms, as Section 103(1)(b) and (c) do. Instead, they protect the public, religious and ethnic sensibilities, truthful commerce, and the integrity of state and intergovernmental insignia.

Under Section 103(1)(f), the test for deceptiveness is whether the mark is likely to mislead trade circles or the public as to material characteristics of the goods or services. This includes false claims as to origin, composition, quality, source, suitability, or nature. The analysis is objective and consumer-facing. The question is not whether the applicant subjectively intended to deceive, but whether the average consumer in Sri Lanka is likely to be misled.

Under Section 103(1)(e), the public policy and morality bar captures marks that are scandalous, offensive, blasphemous, hateful, indecent, or otherwise inconsistent with accepted standards of public order. In Sri Lanka, where religious and ethnic sensitivities can be significant, applicants should treat references to sacred symbols, racial slurs, inflammatory political messages, and vulgar imagery as high-risk content.

Under Section 103(1)(i) and Section 103(1)(j), the law implements protection akin to Paris Convention Article 6ter principles. The prohibition extends to reproductions and imitations of flags, coats of arms, state emblems, names or initials of states or intergovernmental organizations, and official signs or hallmarks, unless authorization is obtained from the competent authority. These are among the strictest absolute bars in practice.

Section 103(1)(g) and Section 103(1)(h) are not always grouped with prohibited-sign analysis, but they matter here because a mark that uses a name or place in a way that appears official, authoritative, or geographically descriptive can also trigger deception concerns. A plain geographical name may be barred under Section 103(1)(h), and where that name falsely implies origin, Section 103(1)(f) may also apply.

What the National Intellectual Property Office of Sri Lanka Considers Prohibited or Deceptive

NIPO treats official symbols and emblems with near-zero tolerance. Use of the Sri Lankan flag, national arms, lion crest, or other official insignia is likely to be refused unless the applicant can provide clear authorization. The same applies to symbols and abbreviations associated with international organizations. Even stylized or partial versions may fail if the overall impression is that of an official badge or state connection.

Examiners also scrutinize signs that imply certification, government endorsement, or regulated status. A seal-like device, shield, laurel wreath, or wording such as official, approved, ministry, certified, or national can create problems if the mark suggests an official relationship that does not exist. For food, health, education, and financial services in particular, these implications can be commercially significant and therefore legally risky.

On deception, the most common trigger is false geographic suggestion. If a mark states or strongly implies that the goods come from Sri Lanka, Switzerland, Japan, or another place associated with quality or reputation, the applicant should expect objection unless the claim is true and the mark is otherwise registrable. But truth does not always solve the issue: a plain geographic name may still fail under Section 103(1)(h), even if not deceptive.

Quality claims are another frequent issue. Words such as organic, pure, natural, premium, authentic, medical, certified, or halal can be deceptive where they indicate objective characteristics the goods do not possess. The same applies to service marks that imply professional regulation, accreditation, or governmental recognition.

Multilingual analysis again matters. If a misleading claim is expressed in English, Sinhala, Tamil, or by transliteration, NIPO may still object if the relevant consumers would understand the implication. Likewise, imagery can be deceptive without words. A map, a landmark, a national color scheme, or an official-looking seal may imply origin or approval. For combined marks, the dominant element is critical. If the design dominates and that design is prohibited or misleading, the entire mark is at risk even if the word element is unobjectionable.

Examples of high-risk categories include:

• Official insignia: flags, coats of arms, government seals, police or military insignia.
• International organization signs: initials, emblems, or badges associated with the United Nations or similar bodies.
• False origin claims: words or designs implying a geographic source the goods do not have.
• False quality claims: words or images suggesting organic, certified, therapeutic, or other characteristics unsupported by the product.
• Offensive content: obscene language, derogatory expressions, blasphemous imagery, or symbols likely to inflame racial or religious tensions.

Key Case Law

M.S. Habtulabhoy & Co. v. Stassen Exports [Year not specified in the guide] — The guide cites the decision for the proposition that phonetic identity and likely misleading effect are central in Sri Lankan trademark analysis. While not a pure Section 103(1)(f) registration case, it supports a practical focus on how consumers are likely to be misled.

No leading cases have been published in the guide specifically addressing Section 103(1)(e), Section 103(1)(i), or Section 103(1)(j) in ex parte registration proceedings before NIPO. In practice, these issues are governed mainly by the statutory text and well-established international principles protecting official signs.

The Procedure for Responding to a Prohibited-Sign or Deceptive-Mark Refusal

Step 1: isolate the exact objection

The applicant should determine whether the refusal is based on morality and public order, deception, official symbols, geographical names, or a combination of grounds. These objections differ materially in cure potential.

Step 2: respond within one month

Under Section 111(3), the written response should be filed within one month. Delay is risky because many of these objections require redesign or evidence gathering.

Step 3: evaluate whether the objection is curable

Some objections are effectively fatal. Official symbols under Section 103(1)(i) and Section 103(1)(j) are usually not curable without authorization from the competent authority. Scandalous or offensive matter under Section 103(1)(e) is ordinarily cured only by removing or altering the offending content. Generic official-style imagery cannot be argued away if the overall impression remains governmental.

By contrast, some deception objections under Section 103(1)(f) can be addressed. The applicant may demonstrate that the term is suggestive rather than factual, that the relevant public would not understand the sign as making a claim, or that the goods in fact possess the stated characteristic. Where the concern is product specification, narrowing the goods or services may help.

Step 4: produce authorization where applicable

If the mark includes a symbol that may be used with official permission, the applicant must provide documentary authorization. In the absence of clear authorization, Section 103(1)(i) and (j) objections are very difficult to overcome.

Step 5: redesign if needed

Where the prohibited content is design-based, a revised logo is often more efficient than prolonged argument. This is especially true for official-looking seals and deceptive origin imagery.

Step 6: request a hearing in borderline cases

Where the issue turns on likely consumer interpretation, such as whether a phrase is puffery or a factual claim, a hearing may be useful under Section 111(4).

Strategic Recommendations

• Recommendation: Screen all marks for official symbolism before filing. Even indirect resemblance to state emblems or international organization insignia can produce refusal.
• Recommendation: Avoid unverified product claims in the mark itself. Quality, certification, and origin statements are better handled in marketing substantiation than in the brand name.
• Recommendation: Test the mark across local languages and visual associations. A design or transliteration may imply something different to Sri Lankan consumers than it does elsewhere.
• Recommendation: Be especially cautious in regulated sectors such as food, healthcare, education, and finance, where claims of approval or quality have higher deception sensitivity.
• Recommendation: If a place name or national reference is strategically important, consider whether it can be used descriptively in trade while building a separate distinctive trademark for registration.

Common Mistakes

• Mistake: Using flags, coats of arms, or seal-like devices as mere branding decoration. NIPO is likely to treat them as prohibited official symbols.
• Mistake: Assuming that a truthful origin statement is registrable as a trademark. A geographical name may still fail even if accurate.
• Mistake: Treating puffery and factual claims as interchangeable. A term that consumers read as an objective quality claim can trigger Section 103(1)(f).
• Mistake: Overlooking offense risk in local context. A symbol or phrase acceptable elsewhere may be religiously, racially, or politically sensitive in Sri Lanka.
• Mistake: Trying to defend an official-style mark without formal authorization. For Section 103(1)(i) and (j) issues, authorization is usually decisive.

Key takeaway: Section 103(1)(e) to (j) creates some of the hardest absolute bars in Sri Lankan trademark law. If a mark is deceptive, offensive, or suggestive of official authority or endorsement, the safest course is usually redesign or clear documentary authorization rather than litigation over a weak filing position.