Trade and Service Marks
– Ordinance No. 3 of January 22, 1955, as amended by Presidential Decree of January 18, 1975, and Law No. 3 of December 8, 1987.
– Decree No. 1 of 2019.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since November 18, 1982.
Applicant: the first applicant is entitled to registration, but a prior user may apply for cancellation within five years.
Foreigners and nationals not living in the country: there is no distinction. Both may apply and obtain registration but must have an address for service in the country.
Trademarks of foreigners: protected in the same manner as those of nationals.
Kinds of protection: ordinary trademarks; collective marks.
Marks for services: accepted.
Not registrable: (1) words, figures, or signs contrary to the law, public order or morals; (2) generic names of products and descriptive terms; (3) figures or signs inseparably connected with utility and form; (4) marks likely to deceive or cause confusion as to the origin of the goods.
National flag: not provided for.
Names or portraits: the portrait of an individual, other than the applicant himself, cannot be registered without the consent of such an individual or, where the person is already deceased, without the consent of the spouse or offspring, etc. Names of persons which differ from that of the person applying for the registration can be registered, provided their use is such as not to damage the reputation and honor of the person carrying that name, the Registrar also having the power to require the consent of such a person.
Classification: international (Nice Agreement). Class 33, alcoholic goods in class 32, and pork meat in class 29 cannot be registered.
Multi-class applications: not possible.
Territory covered: Somalia.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, simply signed;
2. A representation of the mark.
Amendment of application: not provided for.
Examination: as to registrability and distinction with prior registrations/applications.
Opposition: possible within 45 days from publication of the application.
Letters of consent: usually not possible.
Application kept secret: not provided for.
Appeal: can be made to the court.
Delivery of document: the certificate of registration is issued approximately six months from the date of filing.
Beginning of protection: from date of filing.
Duration – renewal: originally twenty years, renewable for like periods. However, since Law No. 3 of December 8, 1987, the validity is now ten years renewable for like periods.
Latest term for renewal: a trademark can be renewed within a period of twelve months from its date of expiry.
Term of grace for renewal: a trademark can still be renewed within the six months following the expiration of the previous registration on the payment of a surcharge.
Compulsory character of registration: not provided for.
User rights and obligation to use: a trademark must be used and becomes void if not used within three years from the date of issuance of the certificate, or within any three consecutive years.
Marking of registered goods: optional but advisable.
Text of marking: “Marca Depositata”.
Modification of the mark: Article 28 states that where the registration of a renewal is applied for and the renewal constitutes a modification of the distinctive characteristics of the previous trademark, the Trademark Office may change the application for renewal into an original application for registration, which will then be effective as from the date of the lodging of the application for renewal.
Assignment: only with the goodwill of the business. Requirements for registration of an assignment: (a) deed of assignment or other instrument of title, together with a verified English or Arabic translation; (b) power of attorney (not legalized).
License: a license agreement must be recorded and a translation of the agreement in Italian must be filed with the Trademark and Patent Office.
Modification of Protection after Registration
Right of prior user: a prior user may apply for cancellation of a trademark within five years from the date of application of that trademark.
Compulsory licenses: not provided for.
Expropriation and nullification: trademarks may be cancelled on the following grounds: (1) where the trademark has become a generic name for certain goods; (2) if the trademark is the name or portrait of any person and is used in such a manner as to affect his honor, etc.