The Intellectual Property Act 2011 will come into force in Samoa from 1 October 2012 and supersedes some sections of the previous Trade Marks Act 1972.
The important provisions relating to trade marks are highlighted below.
No re-registration provisions
The Act has removed the ability to re-register a granted foreign trade mark in Samoa. Previously, registration could be obtained by providing a certified copy of a United Kingdom Trade Mark Registration, a European Union (CTM) Registration, or other foreign, in relation to goods only.
The new legislation requires applications to be filed directly with the Registrar under the local system.
Service marks available
The new trade mark registration system now provides for local registration for goods and/or services.
New priority provisions
Although Samoa is not a member of the Paris Convention, the new Act allows applicants to claim priority from applications filed in a member state, such as New Zealand, if a corresponding application is filed in Samoa within 12 months.
The Act has adopted the 9th Schedule of the Nice Classification.
Non-traditional marks available
The Act expressly notes that shapes, colours, sounds, scents and taste are eligible for trade mark registration in Samoa subject to compliance with other provisions in the Act.
Collective trade marks
Under the Act, a collective association can apply for a collective trade mark. The purpose of a collective mark is to indicate the origin or common characteristic of goods of services of members of a collective association from those of persons who are not members of the collective association.
Curiously the Act has not made provisions for the registration of certification marks.
Duration and renewals
Under the Act, a trade mark registration will have an initial term of 10 years from the filing date of the application. Following this, the mark is renewable for periods of 10 years.
Provisions have also been made for a grace period to make renewal payments after the expiry date of the registration however this will be subject to a late renewal fee.
The Regulations which accompany this Act have also been promulgated but its contents are yet to be published.