SummaryThe registration, assignment and renewal of trade marks are governed by the Trade Marks Act (Cap 240). This legislation was adapted from Britain and dates back to the early twentieth century. The classification system is the old British classes. Service marks cannot be registered in Fiji but it is anticipated that the legislation will be updated to allow for this.
Basis for Application: Two Options
A trade mark application may be made independently or based on a UK registration.
Option 1- Independent Fiji Registration
(a) The first user may apply for registration.
(b) The legislation requires that the trade mark be distinctive. In practice the Administrator General requires a bone fide intention to use the mark in this country. The Administrator-General may require proof of use and evidence of distinctiveness by way of statutory declaration.
(c) Applications for registration of trade marks must be advertised in either of the two dailies - The Fiji Times and The Daily Post - as well as the Government Gazette.
(d) Notices of Opposition may be filed within three months of the first advertisement and if a notice of an opposition is filed, the registered proprietor must file a counter-statement within 21 days. If this deadline cannot be met then a three month extension of time may be obtained. The matter may then proceed to a hearing before the Administrator-General who will determine whether the trade mark should be registered. His decision may be appealed to the High Court.
(e) If no Notice of Opposition is filed the Administrator-General will issue a certificate of registration.
Option 2- Fiji Registration Based on UK Registration
(a) An application based on a UK registration is made under Part III of the Trade Marks Act.
(b) An application made under Part III should be accompanied by a certified representation of the trade mark and a certificate issued by the United Kingdom Comptroller-General.
(c) Although the Act does not make provision for the application being advertised it is however the Administrator-General's practice to require that the application be advertised. While we appreciate that he may have good reason to do so, we do not believe this is a requirement he can lawfully impose. Generally our clients, by reason of time and cost, take the "line of least resistance" and agree to the advertising process. On the basis that Section 57 of the Trade Marks Act states "that the registrar shall issue a certificate of registration" it is our view an application accompanied by the requisite United Kingdom trade mark certificate should be automatically registered and if this is not so the applicant would have a strong case to appeal to the High Court.
Please note that any Fiji trade mark registration based on a United Kingdom registration shall only be in force for the duration of the United Kingdom registration and shall be for the same goods and same mark.
Priority
Please note that priority cannot be claimed in Fiji, as Fiji is not a member of the Paris convention.
Multi Class Applications
Multi class applications can not be filed in Fiji. Separate applications need to be filed in each class.
Registration (which on average takes around 2-3 years).
Further Considerations
1. The office of the Administrator-General is under resourced and has a large backlog of applications for registration pending. A trade mark application may take anywhere from nine months to five years to be registered.
2. The duration of the mark is fourteen years from the date of the application. Currently our system is not set up to monitor and advice clients of renewal dates but we hope that this service will be available shortly.
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