There may be instances when a bonafide adopter and user of a mark may find it excruciatingly difficult to obtain statutory rights over their well-known mark owing to the presence of an earlier similar/ identical mark being already registered as a trademark for similar/ identical goods and/ or services. The bonafide owner may move an application for rectification or cancellation of the mark already registered if â€“
- The bonafide user can prove to the competent court that there has been malafide intent on the part of the owner of the registered mark in using the mark of the applicant (bonafide adopter).
- If the bonafide adopter can evidence from the financial statements of the registered owner that the latter party is deriving substantial profits in the name of the well-known mark belonging to the bonafide adopter/ user.
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, remove any registered mark from the register, if-
- A registered owner without valid grounds has failed to use within Sri Lanka during 5 consecutive years immediately preceding the date of application for removal, the court may remove the mark from the trademark registry.
However, if non-use could be proved by the registered owner as due to circumstances beyond the control of registered owner, the court may refuse to remove the trademark from the registry.
- Lack of adequate funds will not be an admissible ground for exception to the rule of non-use.
- The use of a registered trademark may not be refused by any competent authority until it is in legitimate use and continues to be distinct in the trade circle.