Trademark registration in Samoa

Samoa is an island nation located in the South Pacific Ocean, possessing many potential advantages to promote economic development. Samoa is located on an important sea and air route connecting Pacific island nations with New Zealand, Australia and Asian markets. This location offers opportunities for trade, tourism and logistics development. Samoa possesses rich nature with majestic landscapes, poetic coastlines and diverse natural resources. This place attracts visitors to explore, relax and participate in outdoor sports activities. Samoa preserves its long-standing traditional culture and distinct identity, expressed through the festivals, cuisine, arts and lifestyles of the local people. This unique culture contributes to attracting tourists and creating a highlight for Samoa tourism. Agriculture also plays an important role in Samoa’s economy. It has favorable climatic conditions for growing a variety of food crops, fruit trees and industrial crops. Samoa has abundant renewable energy resources such as solar and wind power. The development of these energy sources contributes to ensuring energy security and environmental protection. To attract foreign investment, the Samoan government has issued many preferential policies to attract foreign investment in sectors such as tourism, agriculture, manufacturing and renewable energy. As a result, more and more businesses are expanding their reach in Samoa. To be able to distinguish your brand from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers preliminarily through the procedures for trademark registration in Samoa through the article below.

Legal basis

• Law on Intellectual Property 2011 (Law No. 9 of 2011)

General overview of trademark registration in Samoa

Definition of trademark in Samoa

A trademark is a special mark or symbol used by an individual, company or organization to distinguish and differentiate its products and/or services from other products and services in the market. A trademark is a form of intellectual property and can be an invaluable tool in advertising, marketing, and branding activities. Trademarks can be in the form of letters, numbers, words, symbols, phrases, trademarks, colors, shapes, aspects of packaging, sounds, scents or a combination of the above.

Important of trademark registration

Trademark registration is important for several reasons:

• Provide legal protection to owners: Prevent unauthorized use of trademarks.
• Exclusive right to use, transfer, or license the use of a registered trademark: Control the use of a business’s trademark.
• Prevent unfair competition: Prevent other businesses from selling the same or similar products/services under the same or a confusing trademark.
• Help differentiate products/services: Help customers distinguish between your product/service and other products/services in the market.
• Increase value for businesses: Strong brands build reputation and trust of customers, thereby increasing value for businesses.
• Encourage product quality: Enterprises are motivated to maintain product quality so as not to discredit the brand.
• Right to sue for infringement: In the event of trademark infringement, the registered trademark owner may sue to prevent unauthorized use of the trademark.

Signs that are not registered as trademarks

A trademark may not be registered for a variety of reasons, including:

• Confusing consumers and merchants: A trademark can mislead consumers and merchants about the origin of a product/service.
• Similar to someone else’s registered trademark: A trademark that has been previously registered by another business.
• Violation of fine customs: A trademark is considered offensive or violates generally accepted moral standards.
• Based on matai titles, people’s names, Samoan village names, or religious words and symbols: These elements are not used as trademarks.
• Breed or confuse with, imitate or contain elements such as flags, coats of arms, official inspection marks, symbols, names, abbreviations or abbreviations of the name of any country, intergovernmental organization or organization established by an international convention. Unless licensed by a competent authority of the State or related organization.

Trademark registration documents in Samoa

To register a trademark in Samoa, the applicant needs to file an application with the Samoan Intellectual Property Office (RCIP) and enclose the prescribed fee. The application must be made on an approved “Trademark Application” form. In addition, the application must include the following:

• Two miniature copies, clear images of the trademark to be registered: Accurately represent the logo, symbol or trademark design of the applicant.
• Authorization of Agent (AOA):
  • According to Article 117(1) of the 2011 Intellectual Property Law, all applicants with “permanent residence or principal place of business outside Samoa” must be represented by a lawyer who resides and practices in Samoa.
  • This essentially requires the overseas applicant to complete a Power of Attorney of Representation (AOA), appointing a local attorney (i.e. lawyer or notary public who resides and practices in Samoa) to submit a new application on behalf of the applicant.
• For local applicants: For applicants who reside and operate a business in Samoa, a Power of Attorney for Representation (AOA) is not required if the local applicant chooses not to appoint a representative.

How to file a trademark application in Samoa

To file for trademark protection in Samoa, you can file using the following filing methods:

• Direct Submission: You can go directly to the Office of Company Registration and Intellectual Property (RCIP), Ministry of Trade, Industry and Labor (MCIL), ACC House Levels, 3 & 4 Apia, P.O., Box 862 Apia to submit the application and related documents.
• By Post: You can send your application form and all required documents via postal service or courier service to the Intellectual Property and Company Registration Office (RCIP), Ministry of Trade, Industry and Labor (MCIL), address: ACC House, Levels, 3 & 4, Apia, P.O., Box 862 Apia.

Trademark registration in Samoa through the Madrid System

The Madrid system is a convenient and cost-effective Samoan league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Samoa accessed the Madrid Protocol on 4 March 2019.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with the Samoan designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Samoan;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

If you want to file a trademark application, please contact Viet An Law for the most effective support!