Govt. to fast-track long-delayed IP amendments for Madrid Protocol accession

By Nishel Fernando

The government has decided to present the long-delayed amendments to Intellectual Property Act No. 36 of 2003, to access the protocol relating to the Madrid Agreement that is administered by the World Intellectual Property Organisation (WIPO).

Trade, Commerce, Food Security and Cooperative Development Minister Wasantha Samarasingha this week sought the approval of the Cabinet of Ministers to direct the Legal Draftsman to complete the drafting of the bill to amend Intellectual Property Act No. 36 of 2003, on a priority basis, in order to access the protocol relating to the Madrid Agreement that is administered by the WIPO.

The initial Cabinet approval was granted nearly five years ago, on February 12, 2020, to move forward with the actions to access the protocol relating to the Madrid Agreement. However, the Government Information Department pointed out that the consecutive governments have failed to present the draft bill prepared in connection to Parliament.

In the meantime, it was noted that an additional set of revisions related to registering trade and services marks internationally was also to be included in the proposed amendments. The Madrid Protocol provides trademark protection in multiple countries, with one registration.  At the moment, there are no legal provisions for those who submit their applications to the National Intellectual Property Office to register their trademark or service mark to obtain the international registration directly through the office in Sri Lanka and instead, they have to submit applications separately through the intellectual property agents operating in each county. Therefore, it has been long proposed and encouraged by the government to seek access to the Madrid Protocol administered by the WIPO, as it provides a reliable, convenient and cost-effective way to protect the trademarks in multiple jurisdictions.