Jan 27, 2022 (Newsletter Issue 1/22)New Trade Marks Act PublishedOn August 20, 2021, the new Fijian Trademarks Act was published, replacing the Trade-Marks Act 1933 and the Merchandise Marks Act 1933 once it comes into force.
Some of the main changes are the following:
- Adoption of the Paris Convention which will allow claims for convention priority.
- Introduction of the Nice Classification system of goods and services to avoid the current need to re-classify goods to fit the old UK based system dating from the 1930’s.
- Allowance of Multiple class coverage.
- Introduction of non-traditional trademarks (such as colours, smells, sounds and tastes).
- Removal of provisions to allow for re-registration of UK trademark registrations.
- Adoption of a 10-year renewal period, bringing Fiji into line with the international standard.
- Mandatory requirement that consent to registration be accepted from owners of relative rights.
- Provisions for recognition of Geographical Indications.
- Clearer provisions on status of expired trademark rights.
- The onus will shift to the owner of a trademark to prove use in non-use revocation actions, but the 5-year grace period remains.
- Allowance made for future accession to Madrid Protocol and designation of Fiji.
For more information, please check here. The Act can be accessed here
Source: AJ Park, New Zealand Legal basis is the Trade-Marks Act 1933. The Fiji Trade-Marks Act is based on the UK Trade Marks Act of 1905.
A new Trade Marks Act 2021 was published on August 20, 2021. It will replace the old law. However, it has not yet entered into force.
Fiji is not a member of the Madrid Agreement, the Madrid Protocol or the European Union.
Trademark protection is obtained by registration.
The Nice classification of goods and services does not apply in Fiji. Fiji uses the old pre-1938 British Trade Mark classes.
The Fiji Trade-Marks Act only provides for the registration of trademarks and not service marks.
A trademark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trademark by virtue of manufacture, selection, certification, dealing with or offering for sale.
The application is filed at the Fiji Intellectual Property Office (FIPO) which considers applications on behalf of the Solicitor-General.
A separate application has to be filed for each class.
Foreign applicants need a local agent.
An authorisation of agent signed by the applicant or authorised person is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
A trademark application may be made independently or may be based on a national UK registration certificate issued by the United Kingdom Comptroller-General (and not a Madrid registration).
Independent applications undergo examination and advertising for opposition before registration. On the other hand “UK-based” applications are to be registered as of right without examination or opposition.
Independent trademark applications accepted by the Registrar are published once in both the Fiji Government Gazette and a local newspaper for opposition purposes prior to registration.
The approximate time frame for completing the registration process of a trademark in Fiji for national registrations (if unopposed), and for UK-based registrations is from 12 to 18 months, but at times may be longer
National:
The opposition period is 3 months from the publication date of the application in the Fiji Government Gazette. The period for filing oppositions may be extended. If an opposition is filed, a counterstatement must be filed within 21 days or such extended time as may be allowed, failing which the application will be deemed to have been abandoned.
For an independent trademark registration, protection begins with the date of application. An independent trademark registration is valid for 14 years from date of application. The registration is renewable for periods of 14 years.
For a trademark registration that is based on a UK registration, the trademark registration is valid for the duration of the corresponding UK registration in respect of the goods which the trade is registered in Fiji. The registration may be renewed for periods of 10 years provided the basic UK registration is renewed.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fees for applications for independent registration and UK-based registration are FJD 24.00 for each application in one class. Advertising costs are variable but would be based on the size of the advertisement.
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Online you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Aug 29, 2023
AJ Park, Auckland, New Zealand
