Trademark registration in Niue

Niue is a small island nation in the South Pacific with a population of only about 1,600. However, Niue has a number of economic advantages that could help drive future development. Niue lies on an important sea route between New Zealand and other Pacific islands. This could help Niue become a regional shipping and logistics hub. Niue is an attractive tourist destination with pristine beaches, stunning landscapes and unique culture. The tourism industry can contribute significantly to the Niue economy. Niue has a vast exclusive economic zone (EEZ) rich in fish resources. Fisheries can be developed to create jobs and increase incomes for Niueans. Niue has enormous potential to develop renewable energy, such as solar and wind power. Renewable energy can help Niue reduce its dependence on fossil fuels and promote sustainable development. To attract domestic and foreign investment, the Niue government has improved the business environment including simplifying administrative processes, reducing taxes and providing other incentives to investors. Currently, there are many businesses that want to expand their business scope in Niue but do not know how to protect their brand from other competitors. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in Niue through the article below.

Legal basis

• Trademark Law 1954 (republished as of December 31, 2019)

Niue does not have its own national trademark registration system. Instead, Niue is a party to the Berne Convention for Literary and Artistic Works. This allows the applicant to register a trademark in another member state (e.g. New Zealand) and enjoy protection that extends to Niue.

Overview of the Berne Convention

The Berne Convention on Literary and Artistic Works (hereinafter referred to as the Berne Convention) is an international treaty that establishes a system of copyright protection for literary and artistic works. The convention was first signed in 1886 in Berne, Switzerland

Purpose of the Berne Convention

• Protection of authors’ rights to their literary and artistic works.
• Ensure that authors benefit from exploiting their work.
• Promote creativity and cultural exchange.

Works protected under the Berne Convention

• Literary works: Includes novels, poems, scripts, articles, lyrics, etc.
• Artwork: Includes paintings, sculptures, photographs, sheet music, and more.
• Film and film works: Includes feature films, documentaries, TV series, etc.
• Derivative works: Includes translations, adaptations, musical arrangements, etc

Authors’ rights under the Berne Convention

• Right to reproduce: The right to copy your work.
• Distribution rights: The right to sell, rent, or lend your work.
• Right to perform: The right to perform one’s work in public.
• Right to disseminate: The right to spread one’s work through broadcasting or television.
• Right to adaptation: The right to adapt one’s work to another medium of expression.
• Moral right: The right to be credited as the author of a work and the right to object to modification or use of the work in a way harmful to their reputation.

Benefits of the Berne Convention

• International protection: The Berne Convention provides protection for literary and artistic works in all member states.
• Automatic protection: Works protected under the Berne Convention are automatically protected in all member states without registration.
• Minimum standards: The Berne Convention establishes the minimum standards that member states must follow in terms of copyright law.

Trademark protection through the Berne Convention

The Berne Convention on Literary and Artistic Works does not directly protect trademarks. However, it can provide indirect benefits for trademark protection in member states, including some of the following advantages:

Right-of-way

When an applicant registers a trademark in a state party to the Berne Convention, the applicant will enjoy  priority rights within 12 months to file an application in other member states. This right allows the applicant to hold place for his trademark and prevents others from registering a similar trademark during this period.

Automatic protection

Some member states of the Berne Convention automatically protect trademarks registered in another member state. This means that applicants do not need to file separate applications in these countries.

Minimum standards

The Berne Convention establishes the minimum standards that member states must follow in terms of trademark law. This helps ensure that the claimant receives a certain basic level of protection for his trademark worldwide.

How to use the Berne Convention for trademark protection

Trademark registration in a state party to the Berne Convention

The first step is to register the applicant’s trademark in a state party to the Berne Convention. The applicant can do this by filing an application with that country’s national trademark office.

Submit applications in other member countries (optional)

If the applicant wishes trademark protection in other Berne Convention member states, the applicant may apply for registration in those countries within 12 months after the first filing of the application.

Declaration of precedence: When applying for registration in other member states, the applicant needs to declare the right-of-way based on his/her first application. This will allow the applicant to benefit from his or her initial filing date.

Building a national trademark registration system in Niue

Building Niue’s private trademark registration system could also bring a number of potential benefits such as:

• Legal autonomy: Niue is free to adapt its laws and trademark registration process to suit the country’s specific needs and conditions.
• Attracting foreign investment: An efficient and transparent trademark registration system can attract foreign investors to Niue, promoting economic development.
• Protect the interests of local businesses: Private systems can focus on protecting the interests of local businesses, especially small and medium enterprises (SMEs).
• Generate revenue for the government: Trademark registration fees can bring revenue to the government, contributing to the national budget.

However, building a private trademark registration system also poses some challenges such as:

• Construction and operating costs: Building and operating a private trademark registration system will require significant financial and human resources.
• Technical complexity: The system needs to be designed and implemented effectively, ensuring security and transparency.
• Risk of duplication: Harmonization between the national system and the OAPI system should be ensured to avoid duplication of registrations and legal conflicts.
• Raising awareness: Businesses and people need to raise awareness about the new trademark registration system.