04-17-2012 (Newsletter Issue 6/12)New Local TM Registration System The Trademarks Act 2003 (Vanuatu) came into force in Vanuatu on February 8, 2011 after its publication in the Official Gazette in Vanuatu. No supporting regulations were passed to support that legislation, and until December 2011, the trade marks laws in Vanuatu was unclear.
On December 1, 2011, a new Registrar was appointed and the new law became effective. Since then, the Vanuatu Intellectual Property Office has been established within the Ministry of Trade, Tourism, and Industry, and more supporting regulations have been passed. New filings and recordals are now being accepted at the new Ministry.
The new legislation transforms the trade mark registration system from a re-registration system (based on registrations achieved in any member state of the European Union) to a local registration system.
Some highlights of the new registration system are:
- Trade mark applications can also claim convention priority from convention countries declared by regulation. A list of countries that fall within the definition of “convention country” is yet to be declared at this stage.
- Trade mark applications can cover multiple classes
- Applicants must have a local address for service
- There is a transitional period during which applications, notices or requests that were made in accordance with the old Act and were pending immediately before the commencement of the new Act are considered to have been filed in accordance with the new Act.
- The Act introduces examination (absolute and relative) provisions, acceptance, opposition, and registration provisions
- The Act allows applicants to file for a trademark registration on the basis of intention to use and for goods, services or both.
- The grace period for renewals is three months.
The Act also confirms that all registrations achieved under the Registration of EU Trade Marks [Cap. 81] will still be considered valid registrations under the new Act.
Source: A J Park, New Zealand
02-07-2012 (Newsletter Issue 2/12)Accession to WIPO ConventionThe Government of Vanuatu has deposited its instrument of accession to the Convention establishing the World Intellectual Property Organization (WIPO Convention), signed at Stockholm on July 14, 1967, and as amended on September 28, 1979. The WIPO Convention becomes effective on March 2, 2012.
For more information on the notification, please click here
Legal basis is the Vanuatu Trademarks Act 2003 (“New Act”) which entered into force on 8 February 2011 following its publication in the Official Gazette. The Act repealed the Registration of the United Kingdom Trademarks Act (Cap 81) as amended (“Old Act”). The Act provides for a new trademark registration system, and all trademarks that had been registered under the old Act are now registered under the New Act.
Vanuatu is not a member of the Madrid Agreement or Protocol.
Trademark protection is obtained by registration. The Act also states that it does not affect the law relating to passing-off, except for that provided in Section 109.
The new Trademarks Act established a local system of registration.
Unfortunately, the New Act fails to include the Regulations, or a Schedule with prescribed forms, both referred to in the New Act.
A new Registrar was appointed from 1 December 2011, regulations have been passed, and the Ministry of Trade, Tourism, and Industry is accepting applications.
A trade mark is defined in section 9 as “A trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services dealt with or provided in the course of trade by another person.”
A sign is defined in the interpretation to include a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of these”.
A trademark may be registered for goods, services, or both goods and services.
Several aspects of the proceeding are unclear, because no regulations or fee schedule has been released so far.
The application is filed with the Registrar of Trademarks, located at the IP Office, Ministry of Trade, Tourism, and Industry.
Multiple-class applications are possible.
Foreign applicants need a local address for service.
The application process includes a formal examination by the Registrar, as well as an examination on absolute and relative grounds.
The Registrar will consider whether the trademark may be registered in accordance with the terms of the Act. The sign will also be examined for distinctiveness of the trademark. Furthermore, the Registrar will reject applications if the trademark consists of scandalous matter, its use is contrary to law, the trademark is likely to deceive or cause confusion,or the trademark is substantially identical with a trademark already registered or whose registration is being sought.
Trademark applications accepted by the Registrar are published in the official gazette prior to registration.
The timeframe for registration is unknown until new trade mark applications are accepted.
The opposition period is 28 days from details being published in the Gazette.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of Madrid Agreement or Protocol.
The trademark registration is valid for 10 years after the filing date of the application for its registration. The registration is renewable for periods of 10 years.
If the trademark has been registered for a continuous period of 3 years and has not been used in Vanuatu, a non-use application may be filed at any time after a period of 5 years from the filing date has passed.
A non-use application can be made at anytime after the filing date if on the day of application the applicant for registration had no intention in good faith to use the trademark in Vanuatu, or to authorise its use in Vanuatu.
The fee is USD 250.- per application (no additional class fee prescribed).
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
04-17-2012A J Park
, Auckland, New Zealand
Baldwins Intellectual Property, Wellington, New Zealand
Baldwins Intellectual Property, Wellington, New Zealand
PLN Lawyers, Sydney, Australia