The registrability of service marks in Fiji appears to be under threat. The once usual practice of the Fijian Registrar accepting these marks despite the lack of express provisions may be on its way out in the former British Colony.
The trade mark law of Fiji is based on legislation that was implemented prior to their independence in 1970. The Fiji Trade Mark Act came into effect in 1933 and the law has remained substantially the same ever since.1
Not being a member of the Nice Agreement, Fiji does not use the International Classification of Goods and Services.2 In its place, the former 1938 British Classification system operates for classifying goods for the purposes of the registration of marks.
Nearly 80 years old, this system is particularly dated, whilst having 50 different good classes and 10 subclasses, there are no service classes to be found. In addition, the categorisations are quite archaic as exemplified by the references to classes such as ‘carriages’ (Fijian class 22).
Historically and despite the lack of provision for the registration of service marks, the Fijian Registrar was inclined to accept applications for trade marks covering services. These services were classified in class 50 of the classification entitled “Miscellaneous” or more precisely in subclass 50(10) entitled “Other goods not included in the foregoing classes”. In spite of this practice, it was always doubtful whether such registrations were in fact enforceable.
It seems now that the Fijian Registrar will change this practice of accepting service marks as a result of a formal directive from the Attorney General thus rendering this approach futile.
As an interesting aside and an illustration of Fiji’s colonial history, the Fiji Trade Mark Act provides that trade mark applications can be filed either independently or on the basis of an existing United Kingdom registration. It is still unclear however whether the new directive will also affect the latter when covering services.