SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
behaviour in the marketplace rather than misconduct in the administrative filing process.
agreements; accordingly, licensing arrangements are primarily governed by contract law. In practice, licence agreements often include quali - ty‑control provisions to regulate how the mark is used, even though the Ordinance does not expressly require such measures. While licences are valid between the parties without the need for recordal, recording the licence may be advisable in certain situations. 6.3 Registration or Recording of an Assignment or Licence The Ordinance expressly provides for the recordal of assignments in the trade mark register under Arti - cle 25. An assignment must be recorded in order to be effective against third parties. To record an assign - ment, an application must be submitted to SIPO together with the relevant assignment instrument and payment of the prescribed fee. The Ordinance does not address the recordal of licences. However, in practice, SIPO will record licenc - es upon request as part of its administrative proce - dures, even though such recordal is not mandated by statute. Licence recordal is therefore an administrative practice rather than a statutory requirement. There is no statutory time limit for recording assign - ments or licences. Nevertheless, delaying the recordal of an assignment may prejudice the assignee’s abil - ity to enforce its rights against third parties. For this reason, prompt recordal is recommended as a matter of best practice. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits In practice, infringement claims are handled under general civil law principles. Although there is no codi - fied doctrine equivalent to the common law concept of laches, courts may still take undue delay into account when evaluating equitable remedies – particularly when determining whether injunctive relief is appro - priate.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
Registered trade marks in Somalia may be assigned by the proprietor to another party pursuant to Article 23 of the Trade Marks Ordinance. An assignment may be made with or without the goodwill of the business, provided that it does not mislead the public or create deception regarding the origin of the goods. Assign - ments may also cover all or only some of the goods for which the mark is registered. For an assignment to be effective against third par - ties, it must be recorded in the trade mark register in accordance with Article 25 of the Ordinance. In prac - tice, recordal is treated as essential for establishing title and ensuring enforceability, particularly where competing claims or enforcement actions arise. Although the Ordinance does not expressly address the assignment of pending trade mark applications, the Somali Intellectual Property Office (SIPO) accepts such assignments in practice. This is subject to sub - mission of the relevant instrument and subsequent recordal once the application proceeds, reflecting administrative practice rather than explicit statutory regulation. 6.2 Licensing Requirements or Restrictions The Trade Marks Ordinance allows the registered proprietor of a trade mark to authorise third parties to use that mark, in line with the general principles governing the use of registered trade marks. Although the Ordinance does not establish a detailed statutory licensing regime, it recognises licensed use provided that such use does not mislead the public or diminish the distinctive character of the mark. Licences may be granted on an exclusive or non‑exclu - sive basis, depending on the contractual terms agreed between the parties. The Ordinance does not impose any mandatory formalities for trade mark licence
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