Introduction
1. Vanuatu is expected in the next few weeks to announce new processes and fees to implement the Trade Marks Act 2003(TM Act). This is one of a suite of new IP laws enacted between 2000 and 2003 and made effective from 8 February 2011. The full set of laws is set out in the attached schedule.
Current Practice
2. The Registry has now moved offices and its functions are being performed by a newly appointed Registrar of Trade Marks. It is expected that new Regulations and fees will be announced late February 2012. Applications lodged from July 2011 have been returned to us while the Registry finalizes its processes. Seini Sale, our trademarks associate will visit Vanuatu in March 2012 to liaise with the Registrar on current applications.
Changes
3. The TM Act repeals the Registration of United Kingdom Trademarks Act (Cap 81) and allows for independent applications to be made to the Register. Previously, only marks registered in the UK were allowed registration in Vanuatu. The TM Act changes this by:
(a) introducing independent registrations and examination systems
(b) allowing for the registration of service marks
(c) providing that the Regulations may prescribe signs which cannot be used as a trademark or part of a trademark
(d) setting out a Opposition procedure to the registration of a trademark (28 days upon publication in the Gazette)
(e) allowing for an application to be made to remove the registration of a Trademark from the Register for non-use
(f) allowing for Collective Trademarks to be registered
(g) incorporating specific provisions governing the registration of trademarks which involve indigenous culture
(h) allowing for marks registered in “Convention” counties to be recognized in Vanuatu. These “Convention countries” are to be identified in Regulations, which we understand have not been passed.
Implications for existing TM holders
4. All trademarks registered under the previous Registration of United Kingdom Trademarks Act (Cap 81) are deemed to be registered trademarks for the purposes of the TM Act.
Conclusion
5. The adoption of these laws is part of steps taken by Vanuatu to accede to the World Trade Organization and modernize its Intellectual Property laws. We wait to see what processes will be adopted and how it will affect current registrations and future applications.
6. Please contact:
Jon Apted
Partner
Direct Dial +679 322 1812
[email protected]
if you require further information or advice.
if you require further information or advice.
Schedule
i. The Trademarks Act No. 1 of 2003
ii. The Patents Act No. 2 of 2003
iii. The Design Act No. 3 of 2003
iv. The Copyright and Related Rights Act No. 42 of 2000
v. The Circuits Layouts Act No. 51 of 2000, and
vi. The Trade Secrets Act No. 52 of 2000
Disclaimer
The information and opinions in this Legal Alert are for general information purposes only. They are not intended as specific legal or other professional advice and should not be relied upon or treated as a substitute for specific advice. Munro Leys can accept no responsibility for any loss arising from reliance on the general information contained in this Legal Alert.