Securing Trade Mark Rights In The Pacific Island Nations

Securing Trade Mark Rights In The Pacific Island Nations


(Written by Ho Jiahui and Foong Yun Yee Bernetta)

A. Introduction

Whenever the words “Pacific Islands” appear in a conversation, most people would naturally think of the beautiful blue ocean and white sandy beaches of the Maldives or Fiji.

To most brand owners however, the idea of securing their trade mark rights in the Pacific Island nations would be novel, and something which has never crossed their minds. This could be perhaps due to their unfamiliarity with the region or the lack of knowledge surrounding the possibilities of securing and enforcing their intellectual property rights in this unexplored part of the world.

 

B. Pacific Islands

As the name suggests, the “Pacific Islands” are islands located in the Pacific Ocean, with a majority of these islands located at the south of the Tropic of Cancer. According to Encyclopedia Britannica , these islands are scattered over an area covering more than 800,000 square kilometers and are grouped into three clusters, namely, Melanesia, Micronesia and Polynesia. This grouping criteria is primarily based on the race or culture found within each island, and its geographical location.

Due to historical reasons, the legal systems in the Pacific Island nations still bear heavy influences from their colonial past. Although most Pacific Island nations have their own trade mark registration systems in place, some of them are still lacking in this aspect.

 

C. Pacific Island nations which have trade mark registration systems

The table below provides a summary on things to take note of when filing trade mark applications in Pacific Island nations which have a trade mark registration system: –

No.

Pacific Island nation

Things to take note

Fiji

  • Two types of application may be filed: –

    • A standard trade mark application; or

    • An application based on an existing registration in the United Kingdom (“UK”).

  • Only single class applications are acceptable.

  • Registrations of trade mark for services are not possible as Fiji uses the old UK classification system.

  • Applications filed cannot rely on convention priority since Fiji is not a member of the Paris Convention.

Kiribati

  • The application must be based on an existing registration in the UK, but this registration in the UK cannot be: –

    • An international registration designating the UK; or

    • A community trade mark.

  • Only single class applications are acceptable.

  • Applications filed cannot rely on convention priority since Kiribati is not a member of the Paris Convention.

Solomon Islands

  • The application must be based on an existing registration in the UK, but this registration in the UK cannot be: –

    • An international registration designating the UK; or

    • A community trade mark.

  • Multi-class applications are acceptable.

  • Applications filed cannot rely on convention priority since Solomon Islands and Tuvalu are not members of the Paris Convention.

Tuvalu

Papua New Guinea

  • Only single class applications are acceptable.

  • Since Papua New Guinea is a member of the Paris Convention, applications filed can rely on convention priority.

Samoa

  • Multi-class applications are acceptable.

  • Since Samoa, Tonga and Vanuatu are members of the Paris Convention, applications filed can rely on convention priority.

Tonga

Vanuatu


D. Pacific Island nations without trade mark registration systems

The Pacific Island nations listed below do not have a registration system in place. However, they do confer a degree of trade mark protection to brand owners, through the periodic publishing of cautionary notices in the local print media.

  • Marshall Islands
  • Federated States of Micronesia
  • Palau
  • Timor-Leste
  • Nauru

A cautionary notice is simply a notice published in nation-wide circulated newspapers, which serves as a means of giving notice to the general public on one’s ownership over a trade mark and the consequences of using that trade mark without consent. It is typically recommended for a cautionary notice to be periodically re-published once every two years.

 

E. Conclusion

According to a statistic in 2019 provided by the World Bank Group[2], the combined population of the Pacific Island nations (excluding Papua New Guinea, Maldives and Timor-Leste) is about 2.3 million. While the Pacific Island nations may be economically less developed and typically detached from major markets due to their remote geographical locations, these factors should not serve as a deterrence to brand owners. On the contrary, given their high population growth coupled with the abundance of cultural diversity and natural resources, the Pacific Islands do present great commercial opportunities for brand expansion and publicity.

Brand owners may therefore find the information provided by this article food for thought in any consideration of whether to secure their valuable trade mark rights in the Pacific Island nations before others do so.

If you have any questions or would like more information about protecting your trade mark rights in the Pacific Island nations, please contact our Mr. Ho Jiahui (), Mr. Kevin Wong () or your usual contact. For similar updates, please visit www.ellacheong.asia.

 

Ref:
[1] Sophie Foster and Francis James West, “Pacific Islands”, Encyclopædia Britannica (20 July 2016) <https://www.britannica.com/place/Pacific-Islands> (accessed 14 February 2020)
[2] “The World Bank In Pacific Islands”, The World Bank Group  (26 September 2019) <https://www.worldbank.org/en/country/pacificislands/overview> (accessed 4 March 2020)