SOMALIA Law and Practice Contributed by: Fahad Arteh, Just Legal Services
8.2 Effect of Registration Holding a valid trade mark registration provides sig - nificant advantages in litigation. Registration serves as strong evidence of ownership and exclusive rights in relation to the goods or services covered, which simplifies establishing title and standing in infringe - ment proceedings. However, registration does not render a trade mark immune from challenge. Defences such as invalidity, non‑use, and prior rights remain available to alleged infringers, and courts retain the authority to assess these issues independently. Nevertheless, a registered trade mark typically shifts the focus of litigation away from proving entitlement and towards determining whether infringement has occurred and whether any defences apply. For trade mark infringement, the alleged infringer’s use does not need to exactly match the specification of the registered mark. Infringement may be found where the mark is used on identical or similar goods and where such use is likely to mislead or confuse the public. Use on entirely unrelated goods is less likely to amount to infringement unless a clear likelihood of deception can be established. In contrast, copyright protection does not depend on registration. There are no registration‑based eviden - tiary advantages comparable to those for trade marks. Instead, ownership and subsistence must be demon - strated through evidence of creation, authorship, and originality. 8.3 Costs of Litigating Infringement Actions There is no fixed scale of costs for trade mark or copy - right infringement litigation in Somalia. Expenses vary depending on several factors, including the complex - ity of the dispute, the amount of evidence involved, the number of hearings required, and whether interim or urgent relief is sought. Typical costs may include legal fees, court filing fees, translation and notarisation of documents, expert evidence where necessary, and other procedural expenses. Trade mark matters involving registration challenges or counterfeiting allegations usually incur
higher costs than straightforward infringement dis - putes. The overall duration of proceedings and the conduct of the parties also significantly affect total litigation costs. Courts have broad discretion in awarding costs, and full recovery of legal fees is not guaranteed. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement In Somalia, defences to trade mark infringement are based on the Trade Marks Ordinance No 3 of 22 Janu - ary 1955 and general civil law principles. The main defences include the following. Non-Infringement The defendant may argue that there is no likelihood of deception or confusion because the marks or the goods are not identical or sufficiently similar. Prior Good-Faith Use A person who used a mark in good faith before the fil - ing or registration of the claimant’s mark may continue that use within the limits of the earlier use (Article 21). Invalidity of the Registered Mark The defendant may challenge the validity of the claim - ant’s registration, including on grounds of lack of dis - tinctiveness, deceptiveness, or conflict with earlier rights. Non-Use (Lapse) A registered mark that has not been genuinely used for three consecutive years after registration, or whose use has been interrupted for three consecutive years, is vulnerable to lapse or cancellation (Article 26), which may defeat enforcement. Own-Name or Trade-Name Use Honest use of a person’s own name, address, pseu - donym, or trade name is permitted, provided it is not misleading (Article 22).
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