(a) Injunctions –
Where a person to whom a recognized rights granted under the Act, proves to the satisfaction of the court that any person is threatening to infringe or has infringed his rights or is performing acts which makes it likely to infringe a right under the Act, the court may grant an injunction restraining any such person from commencing or continuing such infringement or performing such acts.
An injunction may take the form of interim or permanent and may be available in the infringing proceedings. Where it appears to court that the object of granting an injunction would be defeated by delay, it may until the hearing and decision of the application for an injunction, enjoin the defendant for a period not exceeding 14 days in the first instance. The court may, for good and sufficient reasons, which shall be recorded, extend such periods not exceeding 14 days at a time. Any disobedience of such injunction or enjoining order so granted may be enforced, by punishment of the offender as for contempt of court.
(b) Damages, including recovery of profits and expenses, including attorney's fees -
In the same infringing action the court has the power to order damages (170 (1). The court has the power to order the infringer to pay the right holder such actual damages as adequate to compensate him for the loss suffered by him, by reason of such infringement, in addition to the recovery of profits that may have been made (170 (3).
The right owner has, however, an option to elect at any time before judgment to recover, instead of proved actual damages, an award of statutory damages for any infringement involved in the action of a sum not less than Sri Lanka rupees 50,000/- and not more than Sri Lankan rupees 1 million as the court may consider appropriate and just (170 10). (See also section 22 (2) (b) as regards copyright and related rights.)
(c) Destruction or other disposal of infringing goods and materials/implements for their production -
The court has the power to order the infringing goods to be disposed of outside the channels of commerce or to be destroyed without the payment of any compensation (170 (3) (ii). (See also se 22 (2) (c) as regards copyright and related rights).
(d) Any other remedies -
(a) The court has the power to order other relief as the court may deem just and equitable, which may include:
(i) Keeping accounts of profits;
(ii) The Act empowers the court to make the following orders in respect of copyright infringement:
(a) to order the impounding of copies of works or sound recordings suspected of being made, sold, rented or imported without the authorization of the owner where the making, selling, renting or importation of copies is subject to authorization and their implements could be used in the creation of copies of such infringing goods (22 (2) (ii);
(b) to order destruction or other reasonable manner of disposing of copies made in infringement of any right protected under the Act, is available and their packaging outside the channels of commerce in such a manner as would avoid harm to the owner of the rights, unless he requests otherwise; (22) (2) (c);
(c) to order, where there is a danger that implements may be used to commit or continue to commit acts of infringement, destruction or other reasonable manner of disposing of such implements outside the channels of commerce so as to minimize the risks of further infringements, including the surrender to the owner of the rights (22 (2) (d).
(d) where there is a danger that acts of infringement may be continued, the court shall make such orders as may be necessary prevent such acts being committed. 22 (2) (e);
(e) Payment of expenses caused by the infringement including legal fees.
(b) Unfair competition - is defined in the Intellectual Property Act of 2003 as follows: "Any act or practice carried out or engaged in, in the course of industrial or commercial activities that are contrary to honest practices shall constitute an act of unfair competition." 160 (1).The Act recognises the following acts in particular constituting unfair competition.
1. Causing confusion with respect to another's enterprise or its activities.
2. Damaging another's goodwill or reputation.
3. Misleading the public (any act or practice which misleads or likely to mislead the public in respect of another's enterprise or its activities)
4. Discrediting another's enterprise or his activities. (any false or unjustifiable allegation in the course of industrial or commercial activity which discredits or is likely to discredit another's enterprise.)
5. Disclosure, acquisition or use by others of secret information. (any act of practice in the course of industrial or commercial activities that results in the disclosure, acquisition or use by others of undisclosed information without the consent of the person lawfully control of that of that information.) The protection against acts of unfair competition can be enforced by means of civil remedies as provided in section 160 (7) and the reliefs include injunctions and damages.
(c) Common law remedy of Passing off - The law of passing off, which is a form of tort known to the English common law means that "nobody has any right to represent his goods as the goods of somebody else" (Reddaway v Banham (1896) AC 199 at 224). The five elements of passing off as recognised in Reckitt & Coleman Products Ltd v Borden Inc., as (1) Reputation or goodwill attached to the goods or services (2) Deception (Misrepresentation of that goodwill) (3) actual damage or reasonable likelihood of damage. (1990) 1 All E.R. 873)
The case law developed under the former Trademarks Ordinance in Sri Lanka demonstrates that the tort of passing off is recognised in Sri Lanka. In the case of Kapadiya vs. Mohamed 20 NLR 314 at 317 Shaw J. stated that although the passing off action is not specifically reserved in the statutory law (Trade Marks Ordinance), such an action can be successfully maintained under our law. The provisions relating to unfair competition do not interfere with the common law tort of passing off and the passing off continues to exist in Sri Lanka along with the action of unfair competition. The tort of passing off comes under unfair competition and its elements are incorporated in the Sri Lankan Act itself. However, unfair competition is much wider than passing off and it is only one remedy of unfair competition. The tort of passing off it has now developed into a new independent cause of action and both actions can be successfully maintained in Sri Lanka.
The remedies under passing off are injunctions and/or damages or as an alternative an account of profits. Additionally, an order may be granted for the delivery or destruction of articles to which the name or mark has been applied or an order for the obliteration of such marks or names.