Exporters are paying a high price for lengthy delays at the National Intellectual Property Office (NIPO) in registering trademarks, a requirement to protect brands in overseas markets, according to exporters and researchers.
A study by Verité Research has found that Sri Lanka’s ability to benefit from the Madrid Protocol, a centralised global system that simplifies the process Sri Lankan businesses go through when registering trademarks abroad, is hobbled by the delays in local trademark registration.
“Despite the significant growth in resident trademark applications during the last decade, the number of trademarks registered per year have stagnated,” it said.
Past chairman of the Spice Council, Sarada de Silva said exporters have been lobbying for quite some time to get NIPO practices updated and more efficient “But successive governments never strengthened the NIPO office,” he told a news conference. “Now we are paying the price for it.” Sri Lanka needs to join the Madrid protocol to protect local brands against copying and forgeries in overseas markets, he said.
“Tea brands such as Dilmah and Mlesna paid millions to register their brands individually in different countries,” de Silva said. “By the time we go to overseas markets, if someone else has registered a similar trademark, we will lose after having spent so much on branding.” He said local ceramic companies did not want to even display samples at a recent exhibition in Shenzhen, China because they were not protected under IP laws.
“We will not get Madrid protocol accession unless the WIPO office is in order,” de Silva said.
A key issue was that NIPO lacked senior staff to handle trademark registration. “The issue is staffing and lack of senior staff. At the highest level you need top lawyers to handle this at an international level. There is also a reluctance on the part of NIPO to obtain the services of the World National Intellectual Property Office. And there’s no regular information from NIPO.” Verité Research found that the NIPO takes around 3-5 years to process trademark applications. Sri Lanka fairs poorly compared to other middle income countries like Philippines, Bulgaria and Vietnam. The number of local trademarks registered as a percentage of applications a year was over 50% in these countries prior to their accession to the Madrid Protocol, whereas in Sri Lanka it is as low as 14%.
Nishan de Mel, Executive Director of Verité Research, said registering trademarks through the Madrid protocol can save exporters significant costs and time.