Next Generation Partners

Intellectual property in Sri Lanka

LegalBase

LegalBase‘s intellectual property practice is a port of call for global brand-related matters with a predominately international component. The team typically advises on a spectrum of mandates requiring expertise in brand protection issues, such as trade mark infringements, removing infringements online, and flagging online listings selling counterfeit products, often pursuing this on IP arbitration platform such as the World Intellectual Property Organisation. Ali Tyebkhan heads the department and is noted for his ‘very commercial and practical approach’Sudath Perera has over 30 years of experience in IP matters, and both Natasha Burhan and Sashika Anandappa are further key practitioners for international mandates.

Responsables de la pratique:

Ali Tyebkhan


Autres avocats clés:

Sudath Perera; Natasha Burhan; Sashika Anandappa


Les références

‘Very responsive and very determined. Feels like you are their only client.’

‘Always ready to succeed in any challenge. Ali Tyebkhan has the ability to always find the right (business oriented / pragmatic) solution. Sashika Anandappa is a very tough, determined, but also patient lawyer. They always pay  attention to the client’s genuine needs.’

‘Ali Tyebkhan combines legal excellence and extensive experience with a very commercial and practical approach. All this makes the team he leads outstanding and first class.’

Principaux clients

Edible Arrangements


M Advocates


Al Dahbashi Gray


Symons IP


The Smarty Train Limited


Plasseraud IP


Dilmah


K10 Apprenticeships Limited


Broker Back Office Limited


Eswaran Brothers


Mithril Asset Management


George Petch International UK


Printsource


Principaux dossiers


  • Advised Plasseraud IP on trade mark infringements of its clients in the sports and food and beverage sector and the illegal sale of counterfeit products.
  • Assisted Smarty Train with a wide range of strategic advice in respect of the protection of its intellectual property rights.

Sudath Perera Associates

The IP and brand protection department at Sudath Perera Associates is praised for its ‘cutting edge solutions to complex issues’, particularly those involving copyright infringements. Reflecting its broad expertise, the team predominately advises high-profile clients in civil and criminal litigation against infringing entities involved in a number of issues, including product counterfeiting, civil injunctions, enjoining orders, and other disputes. Founding partner Sudath Perera co-heads the department alongside the ‘transparent and solution oriented’ co-head Himani Perera. In addition, Manoj Bandara is a specialist in the team’s civil litigation matters, while Deshan Hewavithana is often retained in criminal-adjacent matters such as brand protection and anti-counterfeiting. Nathaya Nanayakkara is a key practitioner in anti-counterfeiting and anti-piracy actions.

Responsables de la pratique:

Sudath Perera; Himani Perera


Autres avocats clés:

Manoj Bandara; Deshan Hewavithana; Chathurika Rupasinghe Soyza; Rajni Weeraarachchi; Kasun Chamara; Nathaya Nanayakkara


Les références

‘Highly qualified team. Always willing to help with matters that needs special attention. They are competent and possess very good knowledge on the subject they handle. Up to date with latest judgments and amendments and are confident with the subject.’

‘I cannot rule out a single member in the team. They attend to our case with dedication and ever with easy to contact attitude.’

‘We have worked with Sudath Perera Associates for many years now, mainly on TM prosecution work in Sri Lanka. I have been very satisfied with the high quality advice rendered by the team. Led by Himani Perera, the team is highly responsive and gives cutting edge solutions to complex issues. They are dedicated, committed and extremely efficient in their work.’

Principaux clients

Raffles International Limited


Global Sea Foods (Pvt) Ltd


Bridgestone Licensing Services, Inc.


Meta Platforms, Inc.


CLO Virtual Fashion Inc.


Aritzia LP


Dialog Axiata PLC


Hemas Holdings PLC


Nippon Paint Holdings Sg Pte. Ltd


The Ritz Hotel, Limited


Arjo IP Holding AB


SITREK Group


Schneider Electric Danmark A/S


Moonbug Entertainment Limited.


Knorr-Bremse AG


Pangaia Materials Science Limited


Puma SE


Hondo Motor Co. Ltd


Dedigama Group


D. Samson & Sons Ltd


Principaux dossiers


  • Represented Honda Motor Co. Ltd in enforcing its IP rights for the first time in Sri Lanka by initiating criminal raid actions against entities dealing in counterfeit motorcycle spare parts.
  • Assisted Puma SE with obtaining an enjoining order in the Commercial High Court against an entity dealing in counterfeit products bearing the PUMA trademarks.
  • Acted for Certis Lanka Group on its rebrand as SITREK Group.

D. L. & F. De Saram

D. L. & F. De Saram‘s IP offering oversees complex and high-value trade mark mandates, including trade mark registration domestically and abroad, advice on patent filing, as well as managing the trade mark portfolios of prominent multinationals. Prabash De Saram has been with the firm for over 20 years and has a broad practice across corporate, IP, finance and tax law. He co-leads the IP department with Hasanthie Manukulasooriya. Associate Manavi Seneviratne is a key member of the team, especially in trade mark and patent-related matters.

Responsables de la pratique:

Prabash De Saram; Hasanthie Manukulasooriya


Autres avocats clés:

Manavi Seneviratne; Thilini Poornima; Rashini Gunawardhana


Les références

‘Well recognized in the industry and has a good approach.’

‘Manavi Senevirathne is very courteous and has a good follow up with pending matters as well as updates timely progress.’

‘A professional company with proven records. Great team, good blend of expertise. They excel in higher standards of delivery, client engagement and collaborating closely. Forward thinking.’

Principaux clients

Expo Lanka Holdings PLC


P.M. Mohamedali & Company


The Swadeshi Industrial Works PLC


Virtusa Corporation


Sena Mills Refineries Exports (Pvt) Ltd


Perera and Sons Bakers (Pvt) Ltd


Elite Gold Ltd


Tea Legacy (Pvt) Ltd


Principaux dossiers


F. J. & G. De Saram

F. J. & G. De Saram has an intellectual property division that is noted for its capacity to ‘very efficiently’ resolve contentious trade mark and copyright infringement litigation, particularly in the education, NGO and entertainment sectors. The team is highly proficient in matters pertaining to trade marks, including domestic and foreign registration, renewals and contentious matters. Senior partner Shehara Varia co-heads the practice with Upekha Senaratne and Jayathri Kulatilleke. Shevanthi Perera holds significant experiencing advising clients in patent-related matters, while associates Tania Fernando and Rosy Vanlangenberg are key ports of call for trade mark applications. Drushika Amirthanayagam is a highly active member of the team, particularly in the team’s contentious matters.

Responsables de la pratique:

Shehara Varia; Upekha Senaratne; Jayathri Kulatilake


Autres avocats clés:

Shevanthi Perera; Tania Fernando; Rosy Vanlangenberg; Drushika Amirthanayagam


Les références

‘We have worked with this firm to secure trademarks in Sri Lanka over the years.’

‘We have worked with Upekha Senaratne and are very happy with the relationship. She is knowledgeable and responsive.’

‘The lawyers have knowledge about the matters the firm had handled historically for a client, so that a new team member of the client can work with the firm’s lawyers very efficiently. This enables the client to reach out to the lawyers and their team members on a regular basis to discuss dynamics on an ongoing work or a work-related legal issue that they foresee.’

Principaux clients

BASF SE


Atmosphere Hotels & Resorts


Wyndham Hotels & Resorts Inc,


Bayer Intellectual Property GmbH


Sunshine Holdings PLC


Spa Ceylon


Hayleys Adventis Limited


CBL Group


HILTON COLOMBO


Jetwing Hotels Limited


Principaux dossiers


  • Advising Walmart Apollo on the prosecution of a trade mark opposition against a conflicting trade mark application.

Neelakandan & Neelakandan (formerly Murugesu & Neelakandan)

Neelakandan & Neelakandan (formerly Murugesu & Neelakandan)‘s IP department is retained by clients in a broad spectrum of mandates, including contentious matters pertaining to copyright infringement and cease-and-desist requests, as well as non-contentious trade mark applications and portfolio management. Pranavan Neelakandan co-heads the team with Sivananthavalli ThuraRaja. Both are considered ports of call for intellectual property matters by high-profile multinational clients, including BMW and Tesco. Associate Nivedhaa Hariharan is a key member of the team, and handles both contentious and non-contentious matters.

Responsables de la pratique:

Pranavan Neelakandan; Sivananthavalli ThuraiRaja


Autres avocats clés:

Nivedhaa Hariharan


Principaux clients

Abercrombie& Fitch Europe SA


Air China


Akzo Noble Coatings International BV


Alfa Parf Group S.p.A


American Express


Armani Exchange


Asian Paints


Asos PLC


AT&T


Audi AG


Automobili Lamborghini S.p.A


Basf SE


Bayer


Belmond


BMW AG


Bremont Watches


British Medical Association


Bugatti International SA


Canon Corporation


Cargill Incorporated


Caterpillar Inc


Ceylon Biscuits


China Central Television


CIMA – Chartered Institute of Management Accountants


Daiichi Sankyo Company Limited


Datsun


DBS Bank


Debenhams


Denk Pharama GmbH & Co


Dennemeyer


Deutsche Bank AG


Deutsche Telekom


Emirates Airlines


Ferrari SPA


Finlays Colombo Limited


Fujifilm Corporation


Fulgar S.p.A


Geox SPA


Giorgio Armani S.p.A.


Grunenthal GmbH


Hafele GmbH


Hard Rock Cafe


HEAD Technology GmbH


Hermes International


Hilton Worldwide


Himalaya Herbals


Honda Motor Company


Hyundai Motor Company


JCB Corporation


Kawasaki Corporation


Kia Motor Corporation


Kingfisher


Klipsch Group Inc


Konecranes Global Corporation


Kraft Food


Kubota Corporation


Levi Strauss


LG Electronics


Macmillan Publishers


Makita Corporation


Marriott Worldwide Corporation


Mini


Mitsubishi Electric Corporation


Monami Co. Ltd


Movenpick Holdings AG


Nando’s Limited


Next Holdings Limited


NGB Corporation


Nikon Corporation


Nissan Corporation


NSK Limited


OTR Wheel Engineering Inc


Panasonic Corporation


Philip Morris Products SA


Pigeon Corporation


Puma


Qantas Airways


Research in Motion


Ritz Carlton Hotel Company


Rolls-Royce Motor Cars Limited


Rolls-Royce PLC


Samsung Electronics


Schneider Electric


Seagate Technology LLC


Seiko


Sheraton International IP LLC


Shinsegae International


Singer (Sri Lanka) PLC


Speedo


St. Gobain Abrasives Limited


Staedtler GmbH


Standard Chartered Bank


Steigenberger Hotels AG


Sun Pharmaceutical


Sunkist Growers Inc


Suzuki Corporation


Tesco Store Limited


ThyssenKrupp


TNT Express


Toyota Financial Services Corporation


Tramontina SA


TUI AG


TVS


TWG Tea


United Biscuits (UK) Limited


United Breweries


University of Cambridge


USV Pharmaceutical


VFS Global Services


Virgin Enterprises Limited


Visa International


Volkswagen AG


Wacoal Corp


Yamaha Corporation


YKK Group


Yupo Coporation


Principaux dossiers


  • Advised CIMA on a legal dispute concerning its trade mark rights in Sri Lanka for ‘ACMA’.
  • Acted for Akzo Nobel Coatings in issuing cease and desist letters to an infringer.

Nithya Partners

Nithya Partners‘ intellectual property offering handles a range of trade mark-related matters, including infringements, registration, and policy. The team is equally adept at pursuing contentious matters as they are in mediating across parties to achieve favourable outcomes in matters involving misuse of trade marks and patents. Chamindi Ekanayake advises both local and international clients in trade mark and IP strategies. He heads up the practice alongside Chanaka de Silva, PC.

Responsables de la pratique:

Chamindi Ekanayake; Chanaka De Silva PC


Les références

‘Nithya Partners have a strong and expert staff and follow up on the work.’

‘We work with Chamindi Ekanayake. She is an informed, persistent, committed, friendly and customer-oriented person.’

Principaux dossiers


John Wilson Partners

Noted as ‘well versed in Sri Lankan procedure’, the intellectual property offering at John Wilson Partners is proficient in several areas of trade mark and copyright matters, in particular advising clients on the registration of trade mark ownership, as well as litigation regarding the sale of counterfeit products and transfer of sensitive IP information. The ‘very knowledgeable’ John Wilson co-heads the team with Sameendra Perera, who oversees the department’s operations along with advisory matters.

Responsables de la pratique:

John Wilson; Sameendra Perera


Les références

‘John Wilson and his associates are well versed in Sri Lankan procedure and the substantive law of intellectual property issues.’

‘John Wilson is very knowledgeable and provides sounds advice in difficult matters.’

Principaux clients

JSSC Ltd.


Legal Action Worldwide


Stephenson Harwood LLP


Discovery Communications India


Citibank Hong Kong


Ancestry.com UK Ltd.


Clifford Chance


New Horizons Adoption Agency Inc.


Capespan South Africa (Pty) Ltd


Principaux dossiers


  • Assisted Schoppe, Zimmermann, Stöckeler, Zinkler, Schenk & Partner mbB with filing an application to record the assignment of ownership of the trade marks in the name of Ingram Macrotron GmbH to Ingram Micro Inc.

Tiruchelvam Associates

Tiruchelvam Associates‘ IP practice is retained by domestic and international clients for IP-related matters, and is especially active in the management and transfer of IP portfolios, IP due diligence and IP-related advise in ongoing transactions, including those with foreign IP regulations. Partner Ramani Muttettuwegama co-heads the team with associates Michael Paiva, who is especially active in advisory roles, Adheeba Ilyas and Ashvini Prabakaran, who joined the team in October 2023.

Responsables de la pratique:

Ramani Muttettuwegama; Michael Paiva; Ashvini Prabakaran; Adheeba Ilyas


Les références

‘They are prompt and responsive to queries.’

‘Very cooperative and understanding of client’s budget and requirements.’

‘The experienced IP division of Tiruchelvam Associates together with their quick response time determined our decision to obtain their services to register our trademarks in Sri Lanka.

Principaux dossiers