In a previous article, we noted the enactment of the Republic of Nauru Trademarks Act 2019 (the Act) and Trademarks (Forms and Fees) Regulations 2020 (Regulations).
In this article, we delve a little deeper and provide a brief outline of the registration process.
The Act allows for registration of a “mark” which includes a sign, slogan, device, brand, heading, label, ticket name, word, letter, numeral, aspect of packaging, shape, colour, sound, scent, hologram, motions, textures, or any combination of these. Collective marks are available but certification marks are not.
It is possible to register both goods and services, but multi-class applications are not available.
An application for registration must be signed by the applicant and include a declaration for use or intention to use the trade mark.
Provided the application meets formality requirements, details are published in the Gazette for opposition purposes. Interested parties then have 21 days to file opposition against the application.
If an opposition is filed, the Registrar will provide a copy of the Notice of Opposition to the applicant, who then has 21 days to file a response. Failure to do so may result in the application being abandoned. If the applicant files a response within the prescribed time, the Registrar will provide this to the opponent and require the parties to provide such other information necessary to make a decision.
If no opposition is filed, or is deemed unsuccessful, the application undergoes examination on both absolute and relative grounds. If there are any objections to acceptance, the Registrar will issue a non-compliance notice and the applicant has a short period of 30 days from the date of receipt of the notice to resolve them.
If the application passes examination without objection(s), or once any identified issues are overcome, the Registrar will issue a Notice of Decision (Acceptance) and subsequently a Certificate of Registration.
The application process is anticipated to take no longer than 90 days from the date of filing. The Registrar has the power to reject an application and deem it abandoned where the applicant fails to complete the registration process within this timeframe.
Registration is deemed to have come into effect from the date of filing and, subject the payment of a prescribed annual maintenance fee, the trade mark is registered for a period of 10 years.
It is possible to claim convention priority based on a foreign application filed within the preceding six months of the application in Nauru. It remains to be seen how this will work in practice in the context of competing rights given the prescribed three month trade mark registration process.
A unique feature of the Act is the possibility of adding goods or services to the registration, thus extending the scope of protection. The application for addition of goods or services is published in the Gazette and third parties have 14 days to oppose the request, failing which the Registrar may alter the registration.
Shelston IP can act directly before the Nauru Trade Marks Registry to obtain trade mark registrations for our clients.
If you require further information or would like assistance with the filing of a trademark application in Nauru, please let us know.
Authored by Kathy Mytton and Sean McManis