Significant changes to trade mark law have been made by the Fiji Trade Marks Act 2021. While the law is not yet in force there is reason for trade mark owners to be mindful of these changes and how they could affect their trade mark protection strategy in Fiji. Click here to read a summary of the changes.
In this article we take a look at the most significant changes that could affect trade mark owners in Fiji and outline the steps trade mark owners can take to make the most of these changes.
If you would like to be added to our email list so we can notify you when these changes are coming into effect in Fiji, please complete the form below:
Renewal will change from 14 years to 10 years but might be cheaper
If a trade mark owner is intending to renew their mark, it may be worth renewing under the current act to benefit from the 14 year period, rather than the 10 year period that will come in under the new law.
Conversely, the switch to the Nice classification system may mean that fewer classes will be needed for trade mark owners. The current local classification system is based on the old British system and consists of 50 goods classes and 10 subclasses. Under Nice that will be only 34. Therefore renewal costs for those goods may be less under the new Act.
Not sure what is best? Get in contact with us and we will help you.
Introduction of service marks
At present service marks are not registrable in Fiji. Service providers in Fiji have had to rely on registering their trade marks in related goods classes to obtain some level of trade mark protection.
Service providers often register their trade marks in local class 39, which covers “advertising material such as posters, flags, prospectuses, pamphlets, magazines (periodicals), printed publications, newspapers and periodicals, brochures, books, signboards, paper guides, catalogues, menus, printed tour guides”. This would cover promotional material and advertisements promoting the service provider.
When the new law comes into force, trade mark owners will be able to file for trade marks for services classes according to the Nice international classification system. It will be a bit of a land rush situation! International brand owners who want to provide services in Fiji such as hotels services should be extra vigilant and be ready to file there as soon as the Act comes into force.
Do you provide a service in Fiji and need trade mark protection there? If so, contact us and we can help you with the best strategy, such as getting the draft applications ready to file and power of attorneys signed now. Importantly, we will also endeavour to notify you as soon as we know the commencement date of the new Act.
Re-registration of UK trade marks no longer possible.
Under the current law it is possible to apply to re-register any UK registrations in Fiji.
The advantage of this process is that the applications are not subject to the same examination criteria as applications filed independently under local law in Fiji. Applications filed under this provision are not examined for relative grounds.
If you have a trade mark registered in the UK and need protection in Fiji, applying to re-register your mark in Fiji before the new law comes in could be a desirable option for you.
If you have any trade marks registered in the UK, and intend to use those trade marks in Fiji, let us know and we can assist you with this process.
If you are interested in any of the above, please reach out to Jonathan Aumonier-Ward or Anna Bargh. Alternatively you can complete this form to be added to our email list to notify you when these changes are coming into effect in Fiji.