Trade and Service Marks

– Intellectual Property Act, 2011.

Notes: all marks registered under the repealed Trade Marks Act of December 19, 1972 remain in force and are taken to have been registered under the corresponding provisions of the new Intellectual Property Act, 2011.

Registered marks remain in force for the unexpired portion of the period of protection provided under the Trade Marks Act, 1972 and upon renewal shall be subject to the provisions of the new Act.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since October 11, 1997.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since September 13, 1999.
– WTO’s TRIPS Agreement, since May 10, 2012.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since September 21, 2013.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since March 4, 2019.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Geneva Act, since February 26, 2020.

Filing

Applicant: any person, company or collective association.

Applicants not living in the country: must be represented by a legal practitioner resident and practicing in Samoa.

Registrability: marks must have a distinctive character.

Novelty: the mark must not be identical or confusingly similar to or a common translation of a mark well-known in Samoa for the same goods or services or dissimilar goods or services if use is likely to indicate a connection with or cause damage to the owner of the well-known mark. The mark must not be identical with or similar to an earlier mark for the same or similar goods or services and its use likely to deceive or cause confusion.

Exceptions to protection: marks whose use or registration is contrary to law, public order or morality, marks likely to deceive or cause confusion as regards geographical origin or nature or characteristics, identical or similar to armorial bearings, flags, emblems, hallmarks abbreviations or names of States, names of persons or Samoan villages, religious words or symbols, or false geographical indications.

Priorities: can be claimed for applications filed within twelve months from the date of filing in a Convention country.

Classification: International Classification of Goods and Services.

Multi-class applications: possible.

Filing requirements for an application (to be sent to the resident agent):
1. An application containing the applicant’s name, address, nationality, details of any agents used, a request for registration, 2 clear reproductions of the mark, a list of goods or services listed under the International Classification;
2. A written authorization of agent;
3. Prescribed fee;
4. Details of Convention application.

Examination Procedure

Amendment of application: voluntary amendment to correct a limited range of matters is permissible to overcome the Registrar’s notice of non-compliance.

Examination: applications are examined for formalities, distinctive character and other registrability requirements.

Division: not permitted.

Opposition: may be filed within three months of publication of acceptance in the Savali (Samoan Government Gazette).

Disputes about ownership: ownership resides in the person who first applies for the trademark in Samoa.

Appeal: appeals against a decision of the Registrar may be made to the Supreme Court and must be made within twelve months of the date of the decision.

Correction of registration: the Registrar may correct an error of translation or transcription, clerical error or mistake in any application or document filed.

Granting

Duration: ten years.

Renewals: for periods of ten years as often as required, but on payment of renewal fees. Renewal dates are calculated from the date of filing the application.

Use: recommended; a trademark not used for a continuous period of three years may be removed from the Register on application by an interested person.

Marking of registered goods and services: is not compulsory but is recommended. Text of marking: “Registered” or “Regd.” preferably with the words “trade mark” and the registration number.

Assignment: must be in writing and must be registered. A change in ownership is invalid if in the opinion of the Registrar it is likely to deceive or cause confusion.

Licenses: a copy of a license contract must be in writing and must be submitted to the Registrar who must keep its contents confidential, but must record it.

Modification of Protection after Granting

Right of prior user: no provisions. A prior user of a conflicting mark is entitled to registration and to continue using his mark.

Opposition to registered marks: an interested person may make a request to the Supreme Court for the registration of a mark to be invalidated. Invalidation may be made on the same grounds as registrability.

Compulsory licenses: no provision.

Infringement: action may be taken in the Supreme Court against any person using a mark (a) identical with the registered mark in relation to any goods or services in respect of which the mark is registered; or (b) an identical mark in relation to similar goods or services if that use would be likely to deceive or confuse; or (c) a mark similar to the registered mark registered in relation to goods or services identical with or similar to any goods or services if that use would be likely to deceive or confuse; or (d) identical with or similar to the registered mark in relation to any goods or services that are not similar to those registered where the mark is well-known in Samoa and use of the mark takes unfair advantage of or is detrimental to the distinctive character or the repute of the mark.