Somalia: Registry operational and trade mark filing recommended

The Somali Registry closed on the outbreak of the civil war in 1991, and for nearly thirty years it was not possible to file trade mark applications. In the absence of a viable registration system, an informal practice evolved of publishing cautionary notices in local newspapers instead. With the establishment of the Federal Government of Somalia in 2012, the country began a slow process of reconstruction, and in December 2019, it was announced that the Registry had re-opened. Here is a link to the client update that we published at that time: Somalia: a significant development for trade marks

We have been keeping a close watch on the situation in the interim, but we did not recommend filing straightaway because we had reservations about the legal basis of the revived registration system, and also the relatively high cost. Some reservations remain, but it has become apparent that the IP legislation of the former, pre-federal constitution is recognised by the authorities, and that the Somali Intellectual Property Office (‘SIPO’) is now established, with defined responsibilities and objectives. We have also been informed that new IP legislation (with transitional provisions that recognise existing rights) may be introduced this year. Taking all this into account, we have concluded that filing trade mark applications with SIPO is the most appropriate course of action, and that the practice of publishing cautionary notices can be discontinued. Please note that there is no patent or design registration procedure in Somalia. We are not aware of any developments in respect of patent or design law. 

Many procedural aspects have still to be clarified, but we are able to confirm the following:

Legal basis

The legal basis for the re-established registration system is Trade Mark Law No. 3 of 22 January 1955, amended by Law No. 33 of 18 January 1975 and Law No. 3 of 8 December 1987.

Procedure

The working language is English. Applications are examined on both relative and absolute grounds and, once accepted, are advertised for opposition purposes on SIPO’s website. The advertisements can be viewed for 35 days, after which they are removed. The opposition term is 45 days, so there is effectively an additional 10-day period after removal within which to oppose.

Filing requirements

The requirements are:

  • Simply signed power of attorney (specimen available on request)
  • Simple copy of the applicant’s business registration certificate (or equivalent)
  • Simple copy of a home or foreign trade mark registration
  • Company profile (summary of the applicant’s business activities and jurisdictions of operation)
  • Additional information about the applicant [phone number, email address and business registration number] is also required as this is not included in the Business Registration Certificate.

All documents must either be in English, or accompanied by an English translation.

Costs

At this stage, official fees have only been prescribed for new applications.

Our inclusive charge for filing each application will be:

Disbursements – GBP1,325 (including the official fee of USD1,050) Our professional fee – GBP350

Total - GBP1,675

Classification

The Nice classification is followed, and a separate application is required for each class of goods/services.

In compliance with local Islamic law, it is not possible to cover alcoholic products in Classes 32 and 33, or pork meat products in Classes 29 and 30.

Convention priority

The application form includes a section for ‘priority claim’, but as Somalia is not a member of the Paris Convention, priority cannot be claimed at present.

Renewal term

The renewal term for new applications is 10 years, calculated from the filing date.

Recordals

There are, at present, no prescribed fees (or mechanisms in place) for recording changes of ownership, name and address or licence.

Searches

Pre-filing searches are mandatory, and are carried out, at no charge, by Registry staff. At present, it is not possible to make general search requests.

Pre-1991 registrations

There is conflicting information about the status of registrations that were subsisting at the time of the old Registry’s closure in 1991. Some sources maintain that the registrations are no longer recognised, but others advise that they can be revalidated on payment of USD1,000 for each renewal term and the submission of copies of the certificates of registration (and renewal where applicable). It is also not clear whether the renewal fees would be calculated back to the original application date, or only payable for ‘missed’ renewals that fell due from 1991 onwards. Another point to bear in mind is that, until 8 December 1987, the renewal term was 20 as opposed to 10 years, and it is not known if SIPO will make that distinction. A pragmatic approach would be to apply for revalidation and see what happens.

Somaliland

The former north-western region of Somaliland broke away and declared its independence from Somalia in 1991, and in the absence of any IP legislation, we have been publishing separate cautionary notices in that territory.

The Federal Government of Somalia claims Somaliland as its territory, but in reality it has no effective sovereignty over the region. Consequently, a SIPO registration is unlikely to be enforceable in Somaliland, and it would be our recommendation to continue publishing cautionary notices there.

contact us for further information.

Date published: 17 February 2021
Author: Spoor & Fisher

Tags: Somalia Somali Intellectual Property Office (SIPO) trade marks Somaliland