SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
the case and the evidence involved, as there are no fixed statutory tariffs for legal costs. Revocation or cancellation of a registered trade mark must be initiated before the competent courts, as these proceedings are not handled administratively by the trade mark authority. Any party with a legiti - mate legal or commercial interest – such as the owner of an earlier mark or another affected party – may request revocation or cancellation. Standing is usu - ally established by demonstrating that the continued registration of the mark adversely affects the claim - ant’s legal or commercial interests. The trade mark authority does not initiate revocation or cancellation proceedings on its own motion. 5.4 Opposition or Revocation/Cancellation Procedure Opposition proceedings are handled administratively by SIPO following publication of the application. An opponent must file a notice of opposition within the prescribed period, setting out the grounds relied upon. The applicant is then notified and given an opportunity to respond. SIPO will determine the matter based on the parties’ submissions and any supporting materi - als. A lapse is recorded on the register once the relevant statutory conditions have been met. Nullity proceed - ings, by contrast, must be brought before the compe - tent civil court, and any resulting judgment is entered against the registration. Partial cancellation or partial nullity is also available where only part of the registration is affected. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions issued by the Trade Mark Office – including refusals and other determinations made during the registration process – may be appealed in accord - ance with the Ordinance. Such appeals are heard by the designated appeals body responsible for industrial property matters, following the procedures set out in the applicable legal framework. Depending on the nature of the decision and the gov - erning procedural rules, further judicial review by the
courts may also be available. The specific time limits and procedural requirements for filing an appeal vary based on the type of decision and the relevant imple - menting provisions. 5.6 Amendment in Revocation/Cancellation Proceedings Amendments are more commonly encountered dur - ing opposition proceedings than in post‑registration court actions. In practice, applicants may choose to narrow or clarify the specification of goods, or correct non‑substantive errors, in order to address objections or resolve an opposition. In nullity or cancellation proceedings before the courts, amendments typically take the form of partial nullity or partial cancellation, whereby the court limits the scope of the registration to exclude the affected goods or elements. 5.7 Combining Revocation/Cancellation and Infringement Infringement actions and validity challenges fall under the jurisdiction of the civil courts. In prac - tice, an accused infringer may raise invalidity or lapse of the right as a defence. The court may then address infringement and validity either together or in sequence, depending on the circumstances of the case. When validity is central to the dispute, the court will typically determine the validity of the registration before ruling on any final remedies for infringement. 5.8 Measures to Address Fraud The Ordinance does not provide a standalone admin - istrative procedure for cancelling trade marks specifi - cally on the grounds of fraudulent filing. Instead, alle - gations of bad faith or fraud in obtaining a registration must be raised either during the opposition period (if still open) or through judicial nullity proceedings. If the fraudulent conduct goes beyond the filing itself – such as involving counterfeiting or other deceptive use of a trade mark – the Ordinance offers civil and criminal remedies. These include measures such as seizure of goods and the imposition of penal sanc - tions. These remedies, however, address fraudulent
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