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.
Intellectual property in Sri Lanka
LegalBase
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.’