Patent & Trade Mark
Attorneys
Trade Marks

Trade Mark Protection in the Pacific Region

COOK ISLANDS

Capital: Avarua
Legal system: incorporating English common law, certain British and New Zealand statutes and customary laws.

Registration and protection of trade marks in the Cook Islands
The Cook Islands do not have an intellectual property system. Common law rights resulting from reputation and use will support a claim again counterfeit use.  Regular publication of cautionary notices in a newspaper is useful to place others on notice of trade mark rights.

FIJI

Capital: Suva
Legal system: English common law

Registration and protection of trade marks in Fiji
Registration may be obtained by filing a national registration or by seeking registration based on an existing, corresponding United Kingdom registration.   Fiji does not use the Nice International Classification system, does not have multiclass applications, nor are services marks able to be registered in Fiji.

FRENCH POLYNESIA (Tahiti)

Capital: Papeete
Legal system: French law

Registration and protection of trade marks in French Polynesia
As of 1 February 2014, national French trade mark registrations no longer automatically extend to French Polynesia. However, protection may be obtained in French Polynesia by filing a request at the French Trade Marks Office to revalidate a French registration in French Polynesia. The deadline to revalidate was 1 September 2015.

There is no national system for registration of trade marks in French Polynesia. Therefore, there is no opportunity for protection of a trade mark in French Polynesia at the moment.

KIRIBATI

Capital: Tarawa
Legal system: English common law and customary laws

Registration and protection of trade marks in the Kiribati
It is possible to register trade marks in Kiribati, and we are able to assist with this process. Only the owner of a UK registration for the same mark and goods can apply in Kiribati. It is not possible to cover services in  Kiribati.  An authorisation of agent and certified copy of the  UK registration are needed.

MARSHALL ISLANDS

Capital: Majuro
Legal system: mixed legal system of US and English common law, customary law, and local statutes

Registration and protection of trade marks in the Marshall Islands
It is not possible to register a trade mark in the Marshall Island.  Common law rights may be relied on to challenge counterfeit use of a mark. It is recommended that cautionary notices are published in a local newspaper in addition to use.

NEW CALEDONIA

Capital: Noumea
Legal system: French law

Registration and protection of trade marks in in Fiji
A French national registration automatically extends to New Caledonia. There is no national system for trade mark registration in New Caledonia.

FEDERATED STATES OF MICRONESIA

Registration and protection of trade marks in Micronesia
It is not possible to register a trade mark in Micronesia. The only way to claim and assert rights in Micronesia is through common law and is based on use of the trade mark and public awareness of the trade mark and the goods/services it covers.

TIMOR LESTE

Capital: Dili
Legal system: Customary law

Registration and protection of trade marks in East Timor
There is no legislation to enable the registration of trade marks in Timor-Leste (East Timor).  Publication of  a cautionary notice every one to two years in Timor-Leste newspapers to place third parties on notice of any claimed rights may be useful but effectiveness has not been tested.  Common law rights can also be acquired by genuine use of a trade mark in Timor.

NAURU

Capital: Yaren District
Legal system: English common law

Registration and protection of trade marks in Nauru
Trade mark registration has not been enacted in Nauru and it is therefore not possible to register a trade mark.  The only way to claim and assert rights in a trade mark in Nauru is through common law and is based on use of the mark and public awareness of the mark and the goods/services which it covers.  Publication of a cautionary notice in the local newspaper in Nauru is the most effective way to protect trade mark rights along with making genuine use of the mark in the jurisdiction.

NIUE

Capital: Alofi
Legal system: English and New Zealand common laws; customary laws

Registration and protection of trade marks in Niue
A New Zealand trade mark registration under the 1953 Act previously extended coverage to Niue.  However, this Act was repealed and the new 2002 Act does not extend the same coverage.
It is possible to claim and assert common law rights in a trade mark in Niue.

PALAU

Capital: Melekeok
Legal system: based on United States law

Registration and protection of trade marks in Palau
It is not possible to register a trade mark in Palau.  The only way to assert rights in a trade mark is through common law and is based on the use of the mark, the public’s awareness of the mark and the goods/services which it covers.

PAPUA NEW GUINEA

Capital:  Port Moresby
Legal system:  Based on English Common law

Registration and protection of trade marks in Papua New Guinea
Trade marks are registrable in Papua New Guinea, services are covered but multiclass applications are not available.

WESTERN SAMOA

Capital: Apia
Legal system: Based on English Common law

Registration and protection of trade marks in Western Samoa
Samoan trade mark applications can be lodged directly with the Ministry of Commerce Industry and Labour.  An Authorisation of agent is needed. It is not possible to cover services and multiclass applications are not available.

SOLOMON ISLANDS

Capital:  Honiara
Legal system:  Based on English Common law

Registration and protection of trade marks in the Solomon Islands
Trade mark registrations in the Solomon Islands must be based on a corresponding United Kingdom registration which is re-registered directly with the Registrar General of the Solomon Islands.  Multiclass applications are registrable but services marks are not permitted.

TOKELAU

Capital:  Tokelau
Legal system: Based on English Common law

Registration and protection of trade marks in Tokelau
A New Zealand trade mark registration under the 1953 Act previously extended coverage to Tokelau.  However, this Act was repealed and the new 2002 Act does not extend this same coverage.  Tokelau is an extremely small country with a limited legal system and it is unlikely that common law trade mark rights can be enforced.

TONGA

Capital: Nuku’alofa
Legal system: Based on English Common law

Registration and protection of trade marks in Tonga
Tonga has its own independent registration system.  Multiclass applications are permitted and it is possible to register both goods and service marks.

TUVALU

Capital: Fongafale
Legal system: Based on English Common law

Registration and protection of trade marks in Tuvalu
Only the owner of a United Kingdom registration for the same mark and goods/services can apply in Tuvalu. An authorisation of agent and certified copy of the United Kingdom registration are needed.  Although trade mark legislation in Tuvalu does not provide for registration of service marks, the Registrar will register services if they are covered in the corresponding UK registration, although they are not necessarily enforceable.

VANUATU

Capital: Port Vila
Legal systems: Combined common law system, incorporating British, French and customary law

Registration and protection of trade marks in Vanuatu
Trade mark registration in Vanuatu is now independent, that is, registration is no longer based on an EU registration.  Multiclass applications are permitted and service marks are registrable.

TRADE MARK PROTECTION IN KEY PACIFIC COUNTRIES

Country Who may apply Action available for Counterfeiting Internat- ional Class Goods and Services Multi-Classes
FIJI First user or first applicant (whichever is earlier). Owner of UK registration Customs seizure. Infringement / passing off No Goods only No
KIRIBATI Owner of a UK registration Infringement Yes Goods only No
NEW ZEALAND First user or first applicant (whichever earlier) Infringement/ passing off Yes Yes Yes
PAPUA NEW GUINEA First user or first applicant (whichever earlier) Infringement/ passing off Yes Yes No
SOLOMON ISLANDS Owner of UK registration Infringements Yes Goods only No
TONGA Owner of UK registration Infringement/ passing off Yes Yes Yes
TUVALU Owner of UK registration Infringement Yes Goods only No
VANUATU Owner of UK registration Infringement/ passing off Yes Yes No
WESTERN SAMOA User in W.S. or based on overseas registration if filed within two years Infringement Yes Goods only No

 

  • In many of these countries we recommend the placement of "Cautionary Notices" in local newspapers at least once each year, to place potential infringers on notice of a registered owner's rights.
  • Use of trade marks will provide common law rights which can be enforced against infringers in most countries.
  • It should be remembered that many of the Pacific nations are small countries with limited resources and trade mark registration or enforcement processes can be difficult,  protracted, or fall into disarray at times of national conflict or environmental disaster.
Our People
Associate

Lara is a Trade Marks Associate in our Sydney office. Over the years, Lara has worked with a variety of clients across a broad range of industries including consumer electronics, IT, pharmaceutical, travel and hospitality. She has extensive experience in trade mark prosecution, oppositions, infringement, clearance searches, and advice.