SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
of the error and its potential impact on the rights of third parties. 4.10 Refusal of Registration Registration may be refused if a mark does not meet statutory requirements – for example, if it lacks dis - tinctiveness, is descriptive, unlawful, deceptive, or contrary to public order or morality. Registration may also be denied if the mark infringes existing rights or is likely to mislead the public. Before issuing a refusal, SIPO typically notifies the applicant of any objections and provides an opportu - nity to respond or correct defects that can be reme - died. Decisions refusing registration may be appealed through the relevant administrative or judicial chan - nels. 4.11 The Madrid System Somalia is not a member of the Madrid System for the international registration of trade marks. Consequent - ly, international trade mark registrations designating Somalia cannot be obtained. Foreign trade mark own - ers seeking protection in Somalia must therefore file national applications directly with the Somali Intellec - tual Property Office (SIPO), in accordance with the Trade Marks Ordinance and the applicable administra - tive procedures. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation From the date of publication, interested parties have 35 days to file an opposition against the application, as stated in the publication notice. The Trade Marks Ordinance does not expressly provide for extensions of the opposition period, nor does it include any for - mal cooling‑off mechanisms. In practice, however, parties frequently resolve dis - putes within the opposition period through consent- based outcomes. These may include withdrawal of the application or the opposition, limitation of goods or services, or the negotiation of coexistence arrange - ments.
Unlike oppositions, cancellation and nullity actions are not subject to a short statutory filing deadline. A registration becomes vulnerable to cancellation for non-use if the mark has not been used within three years following the date of grant, or if use has ceased for a continuous period of three years. Nullity actions may be initiated where a registration was granted in contravention of the Ordinance. 5.2 Legal Grounds for Filing an Opposition or Cancellation Oppositions are generally based on grounds relating to registrability or conflicts with earlier rights. In prac - tice, these grounds include lack of distinctiveness, descriptiveness, deceptiveness, conflicts with public order or morality, and conflicts with earlier registered marks, pending applications, or prior use that could mislead the public if the later mark were registered. Under the Ordinance, cancellation occurs primarily through lapse or nullity. The legislation does not pro - vide for a modern administrative re‑examination or invalidation procedure. Instead, challenges to valid - ity must be raised either during the opposition period (where timely) or subsequently through judicial nullity proceedings. 5.3 Ability to File an Opposition or Revocation/Cancellation An opposition to a trade mark application may be filed by any interested party within the prescribed opposi - tion period following publication. Although opponents often rely on ownership of an earlier registered or unregistered mark, a trade name, or another prior right to establish interest, they are not required to hold a registered trade mark. Oppositions may also be based on absolute grounds – such as lack of distinctiveness or deceptive character – without the need to demon - strate ownership of an earlier right. There is no legal requirement for an opponent to be represented by an attorney. However, in practice, oppositions are typically filed through local legal rep - resentatives to ensure compliance with procedural rules and evidentiary standards. Office fees for filing oppositions are generally modest. Attorneys’ fees vary depending on the complexity of
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