At the beginning of 2020 we reported that the Somali Ministry of Commerce and Industry had once again started accepting trade mark applications for the first time since the civil war in 1991. We understand that these applications are now to be cleared via a pre-filing search, examined on absolute grounds and published for opposition purposes prior to grant. It is no longer recommended, or necessary, to publish cautionary notices.

 

Somalia became a Federal Republic in 2012 and, as per Article 139 of the Constitution of that same year, laws in place prior to this enactment are still in force. The recent commencement of accepting trade mark applications is therefore based on the Somali Trade Mark Law No. 3 of 22 January 1955, and its amendment by Law No. 33/1975 and Law 3/1987. However, we understand that any trade mark registrations obtained prior to 1991 have been invalidated by Ministerial decree due to lack of records.

 

The new registration system still presents a number of procedural challenges in practice. For example, applications are being accepted in service classes notwithstanding the absence of a legal basis for the protection of service marks under the 1955 Law. However, we are now in a position to recommend that applicants use the new registration system to protect their trade marks in a country where it has not been possible for some time.

 

Key facts:

• Valid for ten years from the date of filing, renewable indefinitely;

• Single-class applications, with specifications of goods and services accepted on the basis of the International classification system;

• Not a Paris Convention signatory so priority cannot be claimed;

• Provisions for a mandatory pre-filing search (yet to be set up – in the meantime, the Registry is simply conducting internal searches for relevant prior rights during the examination stage);

• 45-day opposition period following advertisement;

• Active and functioning court system for enforcement of registered rights;

• We still recommend publishing cautionary notices in the self-declared independent state of Somaliland.

 

We are advised that a draft new trade mark act will be tabled before parliament in the coming months. The new law will seek to modernise the trade mark system in Somalia, introduce provisions for the protection of services and include transitional provisions recognising trade marks filed via the present system. It is expected that the high official fees will also be reviewed.


For more information please contact the author, Richard Stilwell, at richard@lysaght.co.uk