What is a Trade Mark?
A trade mark is a distinctive sign or symbol that is used by an individual, company, or organisation to distinguish and differentiate its products and/or services 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 a letter, number, word, device, phrase, brand, colour, shape,aspect of packaging, sound, scent or a combination of the aforementioned.
Why Register a Trade Mark
A trademark can only be registered in accordance with the provisions of the Intellectual Property Act 2011.
Registering a trade mark is very important for various reasons that include the following:
- Provides the owner with legal protection.
- To gain the exclusive right to use, assign or licence the registered mark.
- To deter or prevent others from marketing identical or similar products under the same mark or a confusingly similar mark.
- Enables companies to differentiate between their products/services and consumers to distinguish between products/services.
- Adds value to your business in the form of goodwill.
- Encourages companies to invest in maintaining product quality in order not to deceive consumers.
- In cases of infringement, the owner of a registered trade mark can commence legal proceedings to prevent unauthorised use of the trade mark.
Trade Marks that Cannot be Registered
A trade mark can not be registered for various reasons which include the following. The trade mark is:
- Likely to deceive or cause confusion amongst consumers and traders.
- Identical to an already registered mark belonging to another proprietor.
- Considered to be contrary to public order or morality i.e. considered offensive or violates commonly accepted norms.
- Based on matai titles, names of persons or Samoan villages, or religious words or symbols.
Identical with, or confusingly similar to, or is an imitation of or contains as an element a flag, armorial bearing, official hallmark, emblem, a name, abbreviation or initials of the name of any State, intergovernmental organization or organization created by an international convention. Unless authorization is granted by the competent authority of the State or relevant organization.
Important Information to Note
When completing the application form, please bear in mind the following:
- It is important to carefully consider the goods and services that you want to be covered by your trade mark. The list of goods and/or services that an applicant specifies in the application form must be clear so that anyone searching the Intellectual Property Registry records will be able to understand the exact nature of the goods/services that the trade mark registration covers.
- It is important that the goods/services that the applicant specifies in their application are correctly classified (in accordance with the 9th Edition of the Nice International Classification system) and clearly defined, because if the mark becomes a registered trade mark, the specification will be the legal description of what the trade mark protects.
- Multiple class applications are accepted for filing in Samoa. The current registration fee of $400 (consisting of $300 application fee and $100 advertisement fee) is for only one class. If the application is for more than one class, then the fee required is $300 multiplied by the number of classes in the application.
- (Please note the advertisement fee of $100 tala is paid later on during the process once the trademark application has been granted an acceptance notice).
How do you Register a Trade Mark?
Applications to register a trade mark in Samoa must be filed to the RCIP and accompanied by the prescribed fee. Applications for registration must be made on the approved Application for Registration of Trade Mark form. The application must also include the following:
- Two miniature, clear representations/images of the trade mark to be registered
- A written Authorisation of Agent
In accordance with section 117(1) of the Intellectual Property Act 2011, all applicants whose “ordinary residence or principal place of business is outside Samoa must be represented by a legal practitioner resident and practising in Samoa”. This essentially requires an Authorisation of Agent (‘AOA’) to be completed by an overseas applicant, appointing a local legal practitioner (i.e. lawyer or solicitor resident and practising in Samoa) to act on the applicant’s behalf for the filing of the new application.
For local applicants who live and conduct business in Samoa, an AOA is not required to be filed if the local applicant chooses not to appoint an agent.
WIPO Industrial Property Automation System (‘IPAS’)
The Trade Marks Electronic Registry Project, a collaborative effort between the WIPO and the MCIL, was aimed at converting the manual Register for Trade Marks into an electronic platform. The project finally achieved its main outcome with the deployment, implementation and training of relevant RCIP staff on the Industrial Property Automation System (‘IPAS’) in July/August 2014.
On 4th August 2014, the IPAS went into live production which resulted in necessary changes to our usual Trade Marks work processes to ensure the smooth operation of the IPAS. As a direct result of the outputs generated by the IPAS, our customers may have noticed the changes in format and contents of some of the correspondence, Notices, Certificates and Reports issued by the IP Registry.
Benefits arising from our utilisation of the WIPO’s IPAS include:
- Faster Trade mark Searches,
- Timely Renewal of Trade marks nearing their expiration dates,
- Streamlining of our processes for Trade marks registration and maintenance,
- Improvement in the efficiency of our Trade marks work, reduction of error rate and better maintenance of Trade marks data integrity,
- Formal documentation for use and reference by current and future staff of the RCIP.
The implementation of the IPAS does not affect our customers’ statutory obligations and/or IP rights in terms of Trademarks application filing, renewals, legal protection and so forth as contained in the Intellectual Property Act 2011.
The following is the procedure for processing Trade mark Applications. Please note that the entire Process from Filing a Trade mark Application to when the Certificate of Registration is issued, can take at least 6 months or longer.
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Once a trade mark is registered, it is protected for a period of 10 years. All registered trademarks are to be renewed within 12 months before the expiry date.
A trade mark registration can be renewed every 10 years. To renew a trademark, the Agent/Applicant must provide the following:
- Application for Renewal which should include a statement of the date when the registration expires;
- Renewal fees – the current base fee for a single trade mark renewal is WST$300. If the renewal application is filed late, then a fee of $50 is added to the base fee of $300 if it is late by no more than 6 months. If the renewal request is late by 12months than a fee of $100 is added to the base fee of $300.
- Authorisation of Agent
- Any other document or information that the Registrar may require the applicant to provide.
Please note the Public and all our relevant Stakeholders are hereby advised that the new fees will be effective from 1st January 2017 Click link for more information Find out more
(NB: Other new forms will be uploaded as soon as they’re finalised)