Africa Update 2020 – Somalia

Registry Operational

In January 2020, notification was received to the effect that the Somalia Registry was now operational and that it was now possible to file trade mark applications in Somalia.

The Ministry of Commerce and Industry had earlier indicated that trade mark registration would only commence after the enactment of new trade mark laws. However, through a Ministerial Decree issued last year, the Ministry has now provided for the registration of trade marks before the enactment of the new laws. The Decree does not outline the procedure for examination or opposition of applications. However, it is expected that the office will conduct relative examination.

We are advised by our agents that the Somali Trade Mark Registry is set up under the Ministry of Commerce and Industry (the Ministry). In this regard, the Decree by the Ministry providing the fees for trade mark registration seems to have enabled the Ministry to resume trade mark registration.

Regarding validity, the Ministry is relying on the laws that were previously in place in Somalia before the suspension of the government i.e., Law No. 33 of 1975 Trade Marks and Patents Law (which introduced the following Italian laws into the territory of Somalia):
• Ordinance number 3 of 1955 on trade marks;
• Ordinance no 1 of 1955 on patents;
• Ordinance number 2 of 1955 on industrial designs.

The Ministry is also relying on Law No. 66 of 1977 (the Copyright Law).

The major concern is that the Ministry officials had earlier indicated that trade mark registration would only commence after the enactment of a trade mark law. This no longer appears not to be the case.

The Ministry is only accepting single class trade mark applications. Further, it appears that the current edition of the Nice classification is now applicable, although previously, the “Old Italian Classification”, which consisted of 49 classes, was adopted.

The requirements to file a trade mark are as follows:
• Representation of the trade mark;
• Specification of goods;
• Name and address of the proprietor;
• A copy of a simply signed Power of Attorney form.

Please also note that the timeline from application to registration in Somalia is approximately two to three months. We still await clarity from the Ministry on the procedure for examination and oppositions.

Lastly, note that the publication of cautionary notice is still available as a means of informing the public of a proprietor’s IPRs.

KEY OPPORTUNITIES & CONCERNS

Opportunities

• Mineral and oil deposits await production once the country is fully secure
• Arable land is capable of sustaining an agricultural export industry
• Construction and communications are growth sectors

Concerns

• Somalia-based terror group al-Shabaab continues bombings and attacks
• Armed conflict perpetuates a humanitarian crisis
• International maritime patrols required to keep coastal waters safe from piracy