General Information:

REGISTRATION OF COMPANIES & INTELLECTUAL PROPERTY DIVISION (RCIP)
Resitalaina o Kamupani ma mea totino tau i le mafaufau

Trade Marks

WHAT IS A TRADE MARK?

A trade mark is a distinctive sign or symbol which is used by an individual, business, or organisation to identify its products and/or services to consumers, as well as differentiate its products from others in the market. A trade mark is a form of intellectual property, and can be an invaluable tool in terms of advertising, marketing and branding activities.

A trade mark can be in the form of, but not limited to:

  • logo, symbol, design, colours, name, word, phrase, image, sound or jingle
    (Or a combination of the above)
A trade mark must be solely unique, and characterise the goods and services it is used for. A trade mark should not misinform the public or be deceptive concerning the nature of the business.


WHY REGISTER A TRADE MARK?

Registering a trade mark must be considered, as it provides the owner with legal protection. In cases of infringement, the owner of a registered trade mark can commence legal proceedings so as to prevent unauthorised use of the trade mark.

Common law in most countries may offer some automatic protection against infringement, but registering the trade mark will provide added protection.


NEW PROVISIONS: INTELLECTUAL PROPERTY ACT 2011

The Intellectual Property Act 2011 which became effective on 1st October 2012, repealed the Trade Marks Act 1972 and introduced new changes which include the following:

  • Protection extended to include the registration of trade marks for services and other new forms of trade marks (e.g. sounds, smells, colors)
  • Introduce new collective marks and certification marks. These can be owned by a group or association (“collective marks”) or can certify that goods/services meet a certain standard (“certification mark”). These would be useful for industry and community groups e.g. Lotonuu Samoa, organic certification.
  • Allowed multi-class applications, to enable simpler and cheaper filing of multiple trademark applications.
  • Duration of trade mark protection reduced from 14 years to 10 years.

HOW DO YOU REGISTER A TRADE MARK?

Applications to register a trade mark in Samoa are to be lodged with the Registry of Companies & Intellectual Property Division (RCIP) of MCIL, by completing the Application for Registration of Trade Mark Form and sending it with the appropriate fee to the Registry of Trade Marks. If you wish to appoint an Agent to act on your behalf, an Authorisation of Agent Form must be completed. Six representation of the mark (if it is a logo) should provide with the application. All the above documents should be submitted to the Registry of Trade Marks. Both forms are available for download (PDF) below.

Prior to applying for a trade mark, it is advisable to ensure that you:

  • Perform a search to see if a similar or existing trade mark already exists
  • Ensure your trade mark and/or all details of the trade mark are absolutely correct
  • Prepare a comprehensive list of all the goods and services you want your trade mark to cover
The RCIP Division will then process the application. If it is approved, a Notice of Acceptance will be forwarded, it will then be published in the government newspaper as a public notice (if there are no objections to do so), and then a Certificate of Registration is formally prepared and issued.


BUSINESS PROCESS

Below is the usual procedure for processing Trade mark Applications. Please note that the entire Registration process from Filing a Trademark Application to when the Certificate of Registration is issued, takes at least 6 months.Below is the usual procedure of processing Trade Mark Applications:

  1. MCIL receives the completed Trademark Application form, Authorisation of Agent (where the applicant nominates an Agent) and the prescribed fee.
  2. The application is stamped with the date it was received.
  3. The application and supporting documents are then allocated to an IP Officer for processing.
  4. The filing fees/payment is checked then submitted to the Cashier with RCIP’s payment form, for issuance by the Cashier of MCIL’s Official receipt (a Schedule of Fees form can be found below).
  5. The application is assigned a unique Trade Mark application number and a complete file is prepared for the Trade mark application.
  6. Filing details and letter acknowledging receipt of application and payment received are prepared for the Proprietor/Agent.
  7. Filing details and acknowledgement letter dispatched to the Agent or Proprietor advising them of the Trade Mark number.
  8. A Search and Examination is performed on the applicant’s Trade mark.
  9. Rejection: In the event that an application for a Trade mark is rejected:

    • The Agent/Applicant is formally advised of the results of the Examination Report
    • The Agent/Applicant is provided time to reply concerning the rejection
    • If an objection is issued by the Agent or Proprietor:
      • The objection must state the grounds of opposition
      • A Notice of Opposition is then sent to the Applicant
      • The Applicant can then submit a Counter Statement
      • The Registrar will then consider the case and make a decision.
  10. Approval:
    • Once approved, a Notice of Acceptance is prepared and dispatched to the Agent or Proprietor.
    • If there are no objections, an advertisement is prepared and published in the Savali Newspaper (the Government newspaper) as a Public Notice. (NB: In future, we intend to publish the trademarks advertisements in RCIP’s webpages in addition to the Savali advertisements).
    • After the statutory 3 months period from the date of the Advertisement in the Savali has passed and provided that the Registrar has not received any further objections to the registration of the Trademark, a Certificate of Registration is formally prepared.
    • The Certificate of Registration is then dispatched to the Agent or Proprietor.
    • All documentation pertaining to the Trade Mark are filed in the Trade Mark’s file.
RENEWAL PROCESS

Below is the usual procedure for processing Trade Mark Renewal applications:

In accordance with section 57(3) of the Intellectual Property Act 2011, all registered trademarks are to be renewed within 12 months before the expiry date. To renew a trademark, the Applicant / Agent must provide the following:

  • Application for Renewal
  • Authorisation of Agent
  • Renewal fees: The fee for a single trade mark is $225 but $113 tala for an overseas trade mark. If the renewal application is filed late, then a late fee for renewal of $45 tala should be added to the renewal fee of $225.
  • Copy of the overseas registration to confirm the next renewal date for overseas trade marks only.
REGISTRATION FEE

The base fee to register a Trade mark is SAT$225.00. Please refer to the Schedule of Fees (PDF) below for full details of all fees payable. Please note that the fees outlined in the attached Schedule of Fees are still the current applicable fees until the new fees for the Intellectual Property Act 2011 are determined.

 

FORMS

To view or print our forms, you will require PDF viewing software, such as  Adobe Acrobat Reader.
For more information on installing Acrobat Reader, please see the  Site Information section of this website.
 

Schedule2-InternationalClassification of Goods&Services-Nice Agreement 9th Edition

File details:
Name: Schedule2-InternationalClassification of Goods&Services-Nice Agreement 9th Edition.pdf
Size: 153KB

 Trade Mark Application Form

File details:
Name: TM_application_form.pdf
Size: 53KB

 Authorisation of Agent Form

File details:
Name: TM_agent_authorisation_form.pdf
Size: 63KB

 Schedule of Fees

File details:
Name: trade_mark_fees.pdf
Size: 50KB

 

FURTHER INFORMATION

Should you require further information concerning Trade Marks, please contact:

Ministry of Commerce, Industry & Labour
Registration of Companies & Intellectual Property Division
3rd Floor
ACC House
Apia SAMOA

Ministry of Commerce, Industry & Labour
Registration of Companies & Intellectual Property Division
P.O. Box 862
Apia SAMOA

Telephone: (+685) 20441
Facsimile: (+685) 20443
Email:
 mpal@mcil.gov.ws

Or please feel free to see our  Contact Us page.

 

Updated: 16 June 2008