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Registering Trademarks in the Pacific

By Leonard Chite and Sandy Nyunt


Intellectual property laws have existed in the Pacific Islands region for a number of years. However, they are subject to a variety of different local regimes. On this basis, original works and trademarks have traditionally been left inadequately protected. In this article, we have provided an overview of trademark law in Fiji, Papua New Guinea (PNG), Samoa, the Solomon Islands, Vanuatu, and Tonga. We have also provided information in respect of how trademarks are registered in each of the jurisdictions to ensure that trademarks belonging to local businesses are adequately protected.


What are trademarks and how are they registered across the Pacific?


A trademark is a form of intellectual property consisting of a symbol, design, or expression that is used, or intended to be used, to distinguish goods or services from others. There are considerable distinctions in the approaches to trademark registration across the Pacific. We have provided a summary of trademark protection in the different jurisdictions below.

Jurisdiction

Regulation

Registration in another jurisdiction?

Limitations on registration

Expiry

Fiji

Applications and registrations are regulated by the Trade Marks Act 1933 and are maintained by the Register of Trademarks.

Fiji trademarks may be registered under a UK trademark registration. In order to make a registration in Fiji, a certificate issued by the UK’s Comptroller of Intellectual Property is required to be lodged with the Fijian Register of Trademarks.

A trademark cannot be registered if:


It is identical to a trademark which is already on the register or so nearly resembling such a trademark as to be calculated to deceive.

​14 years after registration.

Papua New Guinea

​Applications and registrations are regulated under the Trade Marks Act 1978 and are maintained by the Register of Trademarks.

​A trademark cannot be registered if:


It is substantially identical with or deceptively similar to a trademark which is registered, or subject of an application for registration by another person in respect of the same class or description.

​10 years after registration.

​Samoa

​Applications and registrations are regulated under the Intellectual Property Act 2011and are maintained by the Register of Trademarks.

​A trademark cannot be registered if:

  • it has no distinctive character;

  • if the use or registration of a mark is contrary to the law, public order or morality;

  • the use of the trademark is likely to deceive or cause confusion, in particular to the geographical origin or nature or characteristics of the goods or services concerned;

  • is identical with, or is an imitation of, or contains as an element bearing, flag and other emblem, a name or abbreviation or initial or the name of, or official sign or hall mark adopted by, a state, inter-governmental organisation or organisation convention, unless authorised by the competent authority of that State or organisation;

  • it is identical with, or confusingly similar to, or constitutes a common translation of, a mark or trade name which is well known in Samoa for identical or similar goods or services of another person;

  • if it is identical with, or confusingly similar to, or constitutes a common translation of, a mark that is registered in Samoa and well-known for goods or services which are not identical or similar to those in respect of which registration is applied for, if the use of the first mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and interests of the well-known mark are likely to be damaged by such use;

  • if it is identical to a mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date:

- for the same goods or services; or

- for similar goods or services, and its use is likely to deceive or confuse;

  • if it is similar to a mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date in respect of the same or similar goods or services, and its use is likely to deceive or confuse;

  • if it is based on matai files, names of persons or Samoan villages, or religious words or similar;

  • if it contains or consists of a geographical indication with respect to goods not originating in the territory indicates, if use of the indication in the mark for such goods in Samoa is of such a nature as to mislead the public as to the true place of origin; or

  • if, in relation to a mark for wines or spirits, it contains or consists of geographical indications identifying wines or spirits not having this geographical origin.

​Solomon Islands

​Applications and registrations are maintained by the Registrar General’s Office. However, an application for registration must be based on a corresponding United Kingdom registration.

​To register a trademark in the Solomon Islands, it is necessary to first have the trademark registered in the United Kingdom and then to extend it through the Solomon Islands Registrar General’s Office.

​Initially valid until the corresponding UK trademark registration expires, then 10 years after each renewal.

​Vanuatu

​Applications and registrations are regulated under the Trademarks Act 2003 and are maintained by the Register of Trademarks.

​​A trademark cannot be registered if the trademark is:

  • likely to deceive or cause confusion; or

  • is substantially identical with, or deceptively similar to:

- a trademark registered for similar goods/services; or

a trademark whose registration for similar goods/services is being sought by another person.

​10 years after registration.

​Tonga

​Applications and registrations are regulated by the Industrial Property Act 1994 and are maintained by the Registrar of Industrial Property.

​A trademark cannot be registered if:

  • it is incapable of distinguishing the goods or services of one enterprise from those of other enterprises; or

  • it is contrary to public order or morality; or

  • it is likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned of their nature or characteristics; or

  • it is identical with, or is an imitation of, or contains as an element bearing, flag and other emblem, a name or abbreviation or initial of the name of, or official sign or hall mark adopted by, a state, inter-governmental organisation or organisation convention, unless authorised by the competent authority of that State or organisation; or

  • if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in Tonga for identical or similar goods or services of another enterprise.

​10 years after registration.


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