Somalia: a significant development for trade marks
There has recently been a significant development affecting trade mark protection in Somalia, with various sources reporting that the Trade Marks Registry has re-opened and that registration has resumed. However, information about the filing procedure has been sparse and contradictory, and many aspects remain unclear. More crucially, the re-established registration system does not appear to have any legal basis, which means that the validity of registrations obtained through such means is questionable.
It has not been possible to file trade mark applications in Somalia since the country descended into civil war following the overthrow of President Siad Barre in 1991.
There were numerous failed attempts to restore a central government, and Somalia ended up in the grip of local administrations, which were often clan-based. Over time, power shifted from warlords to business, religious and traditional leaders. By 2006, the Islamic Courts Union (ICU) had become a powerful political and military force in the southern part of the country.
From 2000 onwards, interim federal administrations were created, with the establishment of the Transitional National Government (TNG), followed by the Transitional Federal Government (TFG). In 2006, the TFG managed to gain control of the conflict zones from the ICU, which subsequently splintered into more radical groups, such as Al-Shabaab.
By mid-2012, the insurgents had lost most of the territory they had seized, and it became possible to establish more permanent democratic institutions. A new provisional constitution was passed in August 2012, which re-formed Somalia as a federation and, that same month, the Federal Government of Somalia came into being. Since then, the country has been undergoing reconstruction, but the registration and enforcement of IP rights has, understandably, been a low priority.
Trade mark rights
Prior to 1991, it was possible to register trade marks, based on legislation inherited from Italy at independence. However, following the overthrow of the government it became impossible to file new applications or maintain existing trade mark rights. In fact, news reports at the height of the troubles showed the capital, Mogadishu, to be a war-torn city, with many buildings looted, damaged and destroyed. Consequently, there was considerable doubt as to whether the Trade Marks Registry and its records had survived.
In the absence of a functioning Trade Marks Registry, the only alternative has been to publish cautionary notices in local newspapers, a procedure which we were able to initiate 18 months ago, once conditions had sufficiently improved. On balance, it is felt that such notices are worthwhile because they have deterrent value and may be recognised by the Courts should a case of infringement arise.
A new development
Recently, local sources have reported that the Trade Marks Registry has been re-established under the auspices of the Ministry of Commerce and Industry, and that filings have recommenced. Apparently, the authority for this comes from Decree No.1 of 2019.
It seems that the new Registry is operating from the same premises (at the Ministry of Justice) as the pre-civil war Registry. Surprisingly, most of the old records (some 2,000 of them) are intact, but we have been informed that those registrations are no longer valid and must be re-filed. At present, there is no mechanism in place for claiming any kind of seniority.
The Registry is classifying applications using the old Italian classification system of 49 classes, and a separate application is required for each class. The renewal term is ten years. Applications are apparently examined for prior rights, and in the absence of any objections the certificate of registration will be issued within one month of filing. There is no procedure for advertisement for opposition purposes.
We have seen examples of registration certificates purportedly issued by the Ministry of Commerce and Industry in November 2019, but we have been unable to verify if they are genuine. According to these documents, applications are being processed under the 1975 Trade Marks & Patents Law, the validity of which is highly questionable, given that the country is now operating under a new federal constitution.
We have also been provided with a copy of the Decree, but it relates to commercial permits in general; there is no mention of the re-establishment of a Trade Marks Registry, and the only reference to trade marks is the prescribed application fee.
What action should be taken?
After so many turbulent years without an effective central government, the efforts to reinstate a trade mark registration system are a welcome sign of progress. However, we have serious doubts about the enforceability of registrations obtained from the re-established Registry, given that there does not appear to be a proper legal basis for it. Furthermore, there is considerable uncertainty that filings are even possible at present, as some Registry officials have advised that they have been suspended and will not recommence until new legislation has been enacted.
There is also conflicting information on the subject of supporting documentation, with some officials advising that a copy of a business licence has to be provided at the time of filing, and others saying that it is not needed.
Another factor to take into consideration is the high cost of filing – with an official fee of USD1,000 per application, it is not a decision to be taken lightly.
We are continuing to consult with our local contacts but, until the position is clearer, we are hesitant to recommend filing. For the time being, we feel that the informal publication of cautionary notices remains the best option.
It should be noted that this development does not affect the Republic of Somaliland - the former north-western region of Somalia, which declared its independence in 1991.
In that territory, there is still no formal IP legislation, and no Registry. The publication of cautionary notices remains the only option.
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