OPINION
Trademark registration in Somalia and Somaliland – what you need to know
The Somalia Trademarks Office resumed operations at the end of 2019, when the Ministry of Commerce and Industry issued Ministerial Decree 1/2019, stipulating that trademark registrations are once again permitted. The decree is based on Somali Trademark Law 3 (1955), as amended by Law 33 (1975) and Law 3 (1987).
Only single-class applications are being accepted by the office. Further, a trademark is valid for 10 years from the filing date of the application and may be renewed indefinitely every 10 years.
In order to register a trademark, the Office will carry out a search to ascertain whether the mark already exists. Once the application fees have been paid, the application is then filed. The application should contain the proposed mark, the class of goods or services, and the applicant’s name, address and signature. If the applicant is a foreign company, a power of attorney is required. The application is then examined to determine its inherent registrability and any conflict with prior existing registrations or applications. If accepted, the application will be advertised in the local gazette or on the IP website for 35 days. If there is no opposition after 45 days, the registrar, on payment of the prescribed fee, will enter the trademark in the register and issue a certificate of registration.
The requirements for registration include providing:
a representation of the mark;
a specification of the goods;
the name and address of the owner;
a copy of a signed power of attorney form;
a copy of the applicant’s business registration certificate;
a copy of the trademark registration certificate in the applicant's country of origin; and
a company profile (ie, summary of the company's business activities and countries in which it operates).
Cautionary notices in Somalia
Trademark owners can rely on the cautionary system to protect their marks. In order to ensure that a cautionary notice reaches a wide audience, it will be published in the local language (Somali) in the print newspaper Mogadishu Times – published daily – and in English in the online newspaper hadhwanaag.ca – available on the website within two working days.
Republication of the cautionary notice is recommended every two to three years.
Cautionary notices in Somaliland
Although Article 16(2) of the Somaliland Constitution states that “the law shall determine the rights to authoring, creating and inventing”, no trademark registration laws, systems or offices have been implemented yet. As such, is advisable to publish cautionary notices as a means of enforcing trademark rights. The recommended procedure for publishing is as follows:
Publish a cautionary notice in a print newspaper – this will be released in the weekly English newspaper the Horn Tribune.
Publish a cautionary notice, in English, in the online newspaper the Somalilandsun – this will be available on the Somalia Trademark Office website within two working days.
Publish a cautionary notice in Somali – this will appear in the Horn Tribune, which is published every Monday, Wednesday, Thursday and Saturday. Once published, the online version will also be published online in the Somalilandsun.
Requirements for publishing include providing:
a clear copy of the mark;
a list of the relevant goods and/or services to which the mark is applied as per the Nice Classification; and
the name and address of the trademark owner.
The cautionary notice should be republished every two to three years.
This is a co-published article, which was originally published in the World Trademark Review (WTR).
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