YOU CAN NOW PROTECT YOUR TRADE MARK IN SOMALIA

By David Opijah,Alex Ndegwa Monday, March 23, 2020
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Somalia is the eastern most country of East Africa and borders Kenya, Ethiopia and Djibouti. The Republic of Somalia was formed in 1960 by the federation of a former Italian colony and a British Protectorate. The country was under the rule of Mohamed Siad Barre (Maxamed Siyaad Barre) from October 1969 until January 1991, when he was overthrown in a civil war. Since then, warfare continued and the country lacked an effective centralized government, with certain regions declaring independence such as the Republic of Somaliland in the north, in 1991. However, following a successful transition process, the Federal Parliament of Somalia was inaugurated on the 20 August 2012, ushering in the Federal Government of Somalia, the first permanent central government in the country since the start of the civil war. Somalia has since then made efforts to rebuild their infrastructure and economy.

Trade Marks Registration

The Trademarks Registry in Somalia halted operations in 1991, following the overthrowing of Mohammed Siad’s government and opened its doors again in 2019. During that period it was not possible to undertake trade mark registrations, however, proprietors of marks could issue cautionary notices to the public. Somalia is yet to modernize its old trade mark law but the Ministry of Commerce and Industry is currently taking the lead to amend and renew it. Pending the enactment of the new Trade Mark Laws, the current trade mark registration process is based on the Ministerial Decree of 2019, which we understand has the force of law in Somalia.

Registration Process

We outline the current procedure for the registration of trade marks in Somalia below:

Step 1: Search

A person who intends to apply for the registration of a trade mark carries out a search to ascertain whether the trade mark exists in the Register. The search is done physically against the register as there is yet to be an online search system. The Somalia trade marks registry does not charge any official fees for the search.

Step 2: Application

A trade mark application is then filed upon payment of the application fees. The application may be filed by any proprietor of the mark either on their own or by agents on their behalf. The application should contain the proposed mark, the applicable class of goods and services, the name, address and the signature of the Applicant. If the Applicant is a foreign company, a Power of Attorney (PoA) or Form of Authorization (TM No. 1) to an agent (Advocate of the High Court – not practical currently) has to be filed with the Application. Please note that the Somalia registry does not charge any official application fees.

Step 3: Examination

The Application will then be examined by the Registrar to determine its inherent registrability and distinction with the prior registrations/applications.

Step 4: Advertisement (not existing currently)

If the application is accepted during the examination, the application will be advertised in the local Gazette for 45 days. However, we note that the advertisement process is yet to be operationalized and does not exist currently.

Step 5: Certificate of Registration

If there is no opposition after the expiration of 45 days from the advertisement date, the Registrar shall upon the payment of the prescribed fees by the Applicant, enter the Trade Mark in the register and issue a Certificate of Registration. The registration fee is currently USD 1000.

Duration of Registration Process

Currently, the process from application to registration of a mark in Somalia takes one week.

Duration of Validity of Mark

A trade mark in Somalia is valid for ten years from the filing date of the application and may be renewed indefinitely for successive years.

Oppositions/Expungement

Somalia is yet to enact procedures for the opposition and expungement of marks.

International Institutions and Treaties

Somalia is neither a contracting party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) nor the Paris Convention for Protection of Industrial Property. Somalia is however, a member of the African Regional Intellectual Property Organization (ARIPO) but is yet to be a signatory to the Banjul Protocol. It is therefore not possible to claim priority under the Paris Convention or register trade marks in Somalia via the ARIPO or Madrid System.   

Conclusion

We note that it is now possible to protect your trade marks in Somalia and our team is more than ready to assist you with the process.