TRADE MARKS | CAUTIONARY NOTICES NOW POSSIBLE IN SOMALIA

Somalia (Federal Republic of Somalia) is a country located in the Horn of Africa. It shares borders with Kenya, Ethiopia and Djibouti.

Civil rule ended in Somalia in 1969, nine short years after the country gained independence.  Since then, Somalia has been engulfed with violence and a civil war.

Prior to 1991 the Trade Marks Registry in Somalia was in operation and it was possible to file trade mark applications. The Somali Government was overthrown by insurgent groups in 1991 and, since that time, it has not been possible to file trade mark applications in Somalia or enforce or maintain existing registrations. Indeed, the Registry in Mogadishu remains closed.

Various attempts at peace and reconciliation have been made since 1991, but all have been unsuccessful.  Islamic based local administrations have been created in the country which have a sense of autonomy and peaceful living. The most successful of these administrations is Somaliland, a self-proclaimed independent state, which has remained relatively stable over the years. While the acquisition and enforcement of trade mark rights in Somalia is not possible, trade mark owners have been able to publish cautionary notices within the Somaliland administration. We previously reported on this here. Trade mark owners have resorted to publishing cautionary notices to inform infringers and the public at large of their proprietary rights in trade marks and warn against potential infringements. The notices are effectively operating as a deterrent against the unauthorised use of trade marks.

Until recently, the publication of cautionary notices was only possible in Somaliland. It now appears that the publication of cautionary notices is also possible in Somalia as a whole.

The requirements for the publication of these notices are as follows:

  1. a clear copy of the representation of the trade mark (including in colour, where necessary);
  2. a list of the relevant goods and/or services to which the trade mark is applied as per the Nice or international classification of goods and services; and
  3. the name and address of the proprietor of the trade mark.

Usually, the publication of cautionary notices take place in the indigenous language (Somali) in a newspaper, which is published daily. There is no bar on the publication of notices in English via electronic media as well. This is, in fact, recommended as it will ensure a greater reach and should be more effective in deterring infringements.

It is also advisable for cautionary notices to be re-published from time to time to reinforce trade mark rights in the country.

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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