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Trade Mark Protection in the South Pacific Region: Fiji, Papua New Guinea, Samoa and other Pacific Island Nations

  • Mar 29, 2021
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In addition to Australia and New Zealand, Shelston IP has extensive experience in managing trade mark portfolios in other countries in the South Pacific region.

IP registration systems vary significantly around the South Pacific region with some countries operating under independent trade mark legislation, others allowing for re-registration of United Kingdom marks, while some of the smaller Pacific Island nations are yet to adopt a formal registration system and must rely on common law use and publication of a cautionary notice.

While outwardly, the procedures for securing trade mark protection in the South Pacific appear relatively straightforward, extended delays are often experienced when dealing with the smaller Pacific Island nations which have limited resources and which, from time to time, are affected by political instability and natural disasters.

Following is a brief overview of the IP protection systems available in key Pacific Island nations.

Fiji

Shelston IP use a local agent in Fiji to file trade mark applications.

Trade mark protection in Fiji can be sought by way of an independent national application under the Fiji Trade Marks Act or by an application based on an existing registration in the United Kingdom.

Fiji adopts the old British classification of goods (50 classes). Upon filing an application for registration of a trade mark designating goods under the International Nice Classification, they need to be reclassified according to the relevant Fiji class.

Service marks are not registrable and multi-class applications are not permitted.

Filing for re-registration of a United Kingdom registration is often a simpler and quicker process than filing a national application in Fiji.

Papua New Guinea

Shelston IP acts directly before the Intellectual Property Office of Papua New Guinea to file trade mark applications under the Papua New Guinea Trade Marks Act.

Service mark registration is possible but multi-class applications are not available.

Samoa

Shelston IP use the service of a local agent for trade mark filings in Samoa.

Trade mark protection can be obtained in Samoa by way of an independent national application under the Samoa Trade Marks Act. Since 4 March 2019, it is also possible to designate Samoa as part of an International Application under the Madrid Protocol registration system.

Service mark registration is possible and multi-class applications are accepted.

Tonga

Shelston IP use the service of a local agent for trade mark filings in Tonga.

Tonga has its own independent registration system for trade marks. Service mark registration is possible and multi-class applications are accepted.

Vanuatu

Shelston IP act directly before the Vanuatu Registry although we maintain a local address for service for transmission of correspondence from the Registrar.

Trade mark protection can be sought in Vanuatu by way of an independent national application under the Vanuatu Trade Marks Act. It is no longer possible to apply for trade mark registration based on a United Kingdom registration.

Service mark registration is possible and multi-class applications are accepted.

Kiribati, Solomon Islands and Tuvalu

Shelston IP act directly before the Registries in Kiribati, Solomon Islands and Tuvalu in trade mark matters.

These countries have no independent trade mark legislation and registration may only be obtained by re-registration of a United Kingdom trade mark registration. The resulting registration is entirely dependent on the corresponding UK registration and should that be cancelled for any reason, the corresponding right in the South Pacific country will also lapse.

There is no provision for service mark registration in these countries and multi-class registrations are not permitted.

Cook Islands, Marshall Islands, Micronesia, Niue, Palau and Tokelau

A registration obtained under the New Zealand Trade Marks Act 2002 automatically extends protection to Niue. While the 2002 Act does not apply to the Cook Islands or Tokelau at this time, a registration obtained under the former Trade Marks Act 1953 will cover these island countries.

There is no trade mark legislation in the Marshall Islands, Palau or Micronesia. Trade mark rights in these countries are based on the common law and may be asserted through use of the mark in the relevant jurisdiction and the periodic publication of cautionary notices in a local newspaper or government journal.

New trade mark legislation in Nauru

Until recently, trade mark registration was not possible in Nauru and the only means of protecting trade mark rights was under the common law. After many years in development, on 10 November 2020, the Republic of Nauru Trademarks Act 2019 and implementing regulations were brought into force and the Registry is now accepting applications for registration of trade marks.

Service mark registration is possible but it appears that multi-class applications may not be available.

Shelston IP can act directly before the Nauru Trade Marks Registry to obtain registration of trade marks for our clients.


While trade mark registration in the Pacific Island countries can often present challenges, Shelston IP is well placed to navigate around any difficulties to secure protection for your trade marks throughout this region.

If you require further information or assistance, please let us know.

Authored by Kathy Mytton and Sean McManis