The Nauruan Trademark Act 2019 (the Act) was certified on 12 July 2019 and came into force on 10 November 2020 with the publication of the Trademarks (Forms and Fees) Regulations 2020. The Act provides a framework in which trademarks can be registered and protected.
Previously, if someone were to register a trademark in Nauru, their only option consisted of the regular publishing of cautionary notices. These notices provided the only, albeit limited, protection as they could be used in a claim of passing off. The new framework opens up the market and affords trade mark owners with significantly more protection of their IP rights.
Given how recent this Act is, a lot of the technicalities and general processes remain somewhat of a mystery. In fact, the annual maintenance fee mentioned below was only set on 5 November 2021. It is likely that the legislative framework will undergo further amendments and our advice will change to reflect this.
Currently, the general framework of the Act is as follows.
- Multiclass applications are not available. If an applicant wishes to register its mark in multiple classes, separate applications must be filed in each class. Each application would incur its own application fee of AU$200.
- The application must be signed by the applicant or their agent, and must include declaration of use / intent to use the trade mark.
- Once formal requirements are met, the application is published with a 21 day opposition period.
- If opposed there is a 21 day response period (if no response is filed to the opposition the application is abandoned).
- If not opposed, the application is examined substantively.
- If no examination objection is raised the registrar will issue a notice of acceptance and certificate will follow.
- The Act states that the whole application process has a timeframe of 90 days from the date of filing. However we believe that this is likely not to be the case and the process, and least initially, will take significantly longer.
- Registration comes into effect from the date of filing, and the registration period is 10 years. As of 5 November 2021 the Nauru Office has confirmed the unique feature of an AU$100 annual fee required to maintain a trade mark. This is does not include the 10 year renewal fee. It is worth noting that in conjunction with the prohibition on multi-class applications, the cost of registering and maintaining trade mark protection across multiple classes will be considerable.
- It is possible to claim convention priority for applications filed within the preceding six months of the Nauruan application.
- Nothing in the Act prevents a person from bringing a claim of passing off for an unregistered trademark. This should be noted as if a client has been publishing cautionary notices in the past, it is likely that these can be used as evidence if the need arose.
- English is the default language for trademarks in Nauru. If a word in a non-English language is used as a trade mark, a translation is required unless that word has no meaning or cannot be translated. If a non-numeral character is used, both a translation and transliteration are required unless it has no meaning or is untranslatable.
- Goods and services can be added to a trademark after registration for a fee. The application is then published with a 14 day opposition period.
This is a basic overview of the Act. They key takeaways are the inability to register a trademark in multiple classes and the annual maintenance fee. We will endeavor to keep everyone informed when new developments arise.
We are able to continue to assist all of our clients with trade mark matters in Nauru. Should you require any assistance please do not hesitate to contact us.