SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Somalia’s trade mark system protects signs capa - ble of distinguishing the goods of one undertaking from those of others. Registrable marks include word marks, figurative marks, logos, and composite marks that combine verbal and visual elements, provided they can be represented graphically and possess distinctiveness. Although the Trade Marks Ordinance is historically framed around goods and does not expressly define service marks, the Somali Intellectual Property Office (SIPO) accepts and examines marks used in connec - tion with services. In practice, such marks are treated as source identifiers, reflecting a modernised admin - istrative approach aligned with current commercial realities. Collective marks are expressly recognised and may be registered by associations or organisations that regu - late the use of the mark to indicate the origin, nature, or quality of goods produced by their members. Certi - fication marks, however, are not separately regulated, and Somali law does not establish a distinct statutory framework for them. Geographic terms may be regis - tered as trade marks where they are neither descrip - tive nor misleading, although there is no dedicated system for the protection of geographical indications. Trade dress and product packaging can be protect - ed as trade marks when they function as distinctive indicators of commercial origin and are not dictated by technical or functional needs. Industrial designs themselves are not registrable as trade marks, unless specific design elements independently serve as source identifiers and are not driven by functional or aesthetic requirements. Surnames may also be regis - tered, provided they are distinctive, non-misleading, and subject to the good faith rights of others with the same name. The law does not expressly recognise non-traditional marks such as sound, scent, motion, or colour only marks. In practice, protection is limited to visually rep - resentable signs, and there is no established admin -
istrative or judicial practice supporting non-traditional marks. While Somali law does not codify a famous marks doctrine, evidence of prior reputation or inter - national recognition may be relied upon in opposition or invalidity proceedings, particularly where bad faith or likelihood of confusion is alleged. 2.2 Essential Elements of Trade Mark Protection To qualify for trade mark protection in Somalia, a mark must be distinctive, lawful, and capable of distinguish - ing the goods or services of one undertaking from those of others. Marks that are generic, descriptive, misleading, contrary to public order or morality, or that conflict with earlier rights are not eligible for registra - tion. Use in commerce is not required for obtaining a registration. However, a registered mark may become vulnerable to cancellation if it is not used for a continuous period of three years. Although not expressly set out in leg - islation, acquired distinctiveness can be recognised in practice when evidence demonstrates that a mark has become associated with a particular commercial source through sustained and consistent use. Relevant evidence of acquired distinctiveness may include the duration and extent of use, market pres - ence, advertising and promotional efforts, consumer recognition, and the absence of similar marks in the marketplace. Distinctiveness is assessed by SIPO during the examination process and, where contest - Registration grants the trade mark owner the exclu - sive right to use the mark in connection with the goods for which it is registered. It also allows the owner to prevent unauthorised use of identical or confusingly similar signs on identical or similar goods where such use is likely to cause consumer confusion. These stat - utory rights arise under the Trade Marks Ordinance No 3 of 1955. ed, ultimately by the courts. 2.3 Trade Mark Rights The rights include the ability to bring civil actions for infringement, seek injunctive relief, and pursue criminal remedies in cases involving counterfeiting or deceptive practices. Protection is limited to the goods
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