SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade mark and copyright infringement claims may be pursued through civil proceedings and, in certain circumstances, through criminal enforcement under the relevant statutes. For trade marks, statutory infringement actions may be brought only by the registered proprietor. Unreg - istered marks are not protected through infringement proceedings, although prior use and other commercial interests may be relevant in opposition or cancellation actions. Copyright protection arises automatically upon the creation of a qualifying work, and no registration is required to bring an infringement claim. The legislation does not distinguish between direct, contributory, or vicarious infringement. Instead, liabil - ity is assessed based on the defendant’s participation in the unauthorised act. Trade mark infringement occurs when a registered mark – or a confusingly similar sign – is used without authorisation in the course of trade in a way likely to mislead or deceive the public. A successful claim generally requires demonstrating: • ownership of a valid trade mark registration; • unauthorised use of the mark or a similar sign; and • a likelihood of deception or confusion. Copyright infringement involves the unauthorised reproduction, distribution, performance, communi - cation, or other exploitation of a protected work. The claimant must show ownership of copyright, the sub - sistence of protectable rights, and use that interferes with one or more of those exclusive rights. The Trade Marks Ordinance does not establish sepa - rate causes of action for dilution, cybersquatting, or tarnishment. Protection is centred on preventing deception and unauthorised commercial use. Similarly, the Copyright Law contains no specific pro - visions relating to copyright management information or technological protection measures. As a result,
claims are limited to unauthorised use of protected works and infringement of authors’ economic and moral rights. 7.3 Factors in Determining Infringement In determining trade mark infringement, courts con - sider several key factors: the similarity between the marks, the similarity between the goods or services, the likelihood of public confusion, and the manner in which the mark is used in commerce. These consid - erations stem from Articles 9 and 10 of the Ordinance, which prohibit the use of marks that are deceptive or misleading. For copyright infringement, the central issues are originality, ownership of the work, and whether the defendant has reproduced or exploited a substan - tial part of the protected work without authorisation. These principles are set out in the relevant legislation and are applied by the courts based on the specific facts of each case. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no statutory prerequisites – such as man - datory demand letters, mediation, or warning notic - es – required before filing a trade mark or copyright infringement lawsuit. Trade mark infringement claims do require a valid registration, but copyright claims do not. Principles of good faith, abuse of rights, and com - petition law may limit overly aggressive or improper enforcement behaviour. Courts also retain discre - tion to determine whether enforcement actions are brought legitimately or in bad faith. 7.5 Lawsuit Procedure Trade mark and copyright infringement proceedings in Somalia are initiated before the competent civil courts in accordance with Article 52 of the Trade Marks Ordi - nance and the general civil procedure rules. Somalia does not currently operate specialised intellectual property courts. Pre‑filing costs typically include legal consultation, evidence collection, translation, notarisation of docu - ments, and the preparation of pleadings. While legal
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