Table of Contents
What is the relevant Solomon Islands trade mark authority?
The Registrar-General is responsible for administering the registration of trade marks.
The High Court has jurisdiction in determining disputes over the registration of trade marks.
What is the relevant Solomon Islands trade mark legislation?
The Registration of United Kingdom Trade Marks Act [Cap.180] (“RUKTMA”).
The RUKTMA only facilitates the re-registration of a United Kingdom trade mark. There is no other independent system of registration of trade marks in Solomon Islands.
What can be registered as a trade mark?
A mark that has been registered as a trade mark in the United Kingdom can be registered as a trade mark in Solomon Islands.
What cannot be registered as a trade mark?
A mark that has not been registered as a trade mark in the United Kingdom cannot be registered as a trade mark in Solomon Islands.
What information is needed to register a trade mark in Solomon Islands?
The following information is required:
- An application for registration. There is no prescribed application form. A letter by or on behalf of the applicant (i.e. the proprietor of the United Kingdom trade mark) requesting the registration and containing the relevant details of the United Kingdom trade mark would be sufficient.
- A certified representation of the mark. This is typically a graphical representation of the trade mark.
- A certificate of the United Kingdom trade mark. A letter from the Comptroller-General of United Kingdom Patent Office (as the Registrar of Trade Marks) stating the legal effect of certificate and setting out the relevant particulars of the trade mark is also usually required.
- The name and address of the applicant (including the applicant’s representative in Solomon Islands, if applicable). This is required for correspondence with the Registrar-General regarding the application.
What is the general procedure for trade mark registration?
After an application has been filed in person at the office of the Registrar-General, the Registrar-General will examine the application to be satisfied that the trade mark is capable of registration in Solomon Islands under the RUKTMA. During the examination stage, if the application is incomplete, the Registrar-General may request the applicant to provide further information. There is no requirement for the application to be published for objection purposes during the examination stage.
Once the examination is complete, if the Registrar-General is satisfied that the mark is capable of registration under the RUKTMA, the trade mark will be registered in the Register of Trade Marks.
After registration, the Registrar-General will issue a certificate of registration of the trade mark. This certificate of registration is usually retained at the office of the Registrar-General to be personally collected by the application (or the representative of the applicant).
How is a trade mark adequately represented?
The RUKTMA only requires a certified representation of the trade mark. Therefore, a mark that is capable of being registered under the laws of United Kingdom will generally be capable of registration in Solomon Islands. For practical purposes, the mark should be capable of graphical representation.
How are goods and services described?
This will depend on the system of classification applicable to United Kingdom trade marks (which is presently the Nice classification system).
What other jurisdictions are or can be covered by a Solomon Islands trade mark?
A trade mark registered under the RUKTMA only covers the Solomon Islands.
Who can own a trade mark in Solomon Islands?
The registered proprietor of a United Kingdom trade mark can own a trade mark in Solomon Islands.
How long on average does registration take?
The registration process is manual and paper-based and is dependent on the resources available to the office of the Registrar-General. While the registration process should be a straight-forward administrative process involving the re-registration of a United Kingdom trade mark, it is not uncommon for the registration process to take several months (between 2 to 6 months) to be completed.
What is the cost of obtaining a trade mark in Solomon Islands?
The prescribed fees for various services by the Registrar-General under the RUKTMA are set out in the table below. This excludes professional fees and other costs which may be charged by a person acting for the applicant. For information purposes only, the estimated fees charged by IP Solomons (inclusive of professional fees, and other related disbursements such as printing and courier costs) are also set out in the table below.
| Service | Filing Fee (SBD) | Filing Fee (est. USD) | Service Fee (est. USD) |
|---|---|---|---|
| File application to register a trade mark | 1500 | 180 | 100 |
| File application to register an assignment of a trade mark | 800 | 95 | 100 |
| File application to be a registered user of a trade mark | 800 | 95 | 100 |
| File application to register renewal of a trade mark | 1000 | 120 | 100 |
| File application to register alteration of a trade mark | 300 | 36 | 100 |
| Search document filed or entry in the Register | 50 | 6 | 50 |
| Obtain certified copy of extract from the Register | 100 | 12 | 50 |
| Obtain certified copy of document from the Registrar | 100 | 12 | 50 |
Is there more than one route to obtaining registration in Solomon Islands?
No. Only trade marks registered in the United Kingdom can be registered as a trade mark in Solomon Islands under the RUKTMA. The Madrid System or Madrid Protocol is not recognised under the RUKTMA.
Is a power of attorney needed?
No, a power of attorney is not strictly required. However, a letter authorising the applicant’s representative to act on behalf of the applicant in Solomon Islands should be provided as this may be requested by the Registrar-General.
What are the grounds for refusal of registration?
A mark may not be registered under the RUKTMA if the mark is not a registered trade mark in the United Kingdom, or the registration of the mark is prohibited by Solomon Islands law.
What is the right of appeal from a decision of refusal of registration from the Registrar-General?
The RUKTMA does not contain a specific procedure for appealing a decision of the Registrar-General who refuses registration. In the absence of any express provision, a person who is aggrieved by a decision of the Registrar-General may file a judicial review claim in the High Court of Solomon Islands. Decisions of the High Court may be appealed to the Court of Appeal of Solomon Islands.
On what grounds can a trade mark be opposed or invalidated?
A person whose interests are alleged to have been prejudicially affected by the registration of a trade mark may apply to the High Court for a declaration that the exclusive rights and privileges pertaining to the registered trade mark have not been acquired by the person registered as the proprietor of the registered trade mark.
Who can oppose a registration of a trade mark?
Any natural or legal person who has a legitimate interest in the trade mark can oppose or object to the registration of a trade mark.
What is the procedure for opposition or invalidation?
The RUKTMA does not contain a specific procedure for objections to the registration of a trade mark during the examination stage. It may be possible for a person to prevent the registration of a trade mark by applying to the High Court for an order (injunction order) restraining the Registrar-General from registering a trade mark. However, as there is no specific procedure in the RUKTMA requiring the publication of a proposed trade mark before registration is effected, it may be practically difficult to prevent the registration of a trade mark.
After a trade mark has been registered, a person whose interests are alleged to have been prejudicially affected by the registration of a trade mark may apply to the High Court for a declaration that the exclusive rights and privileges pertaining to the registered trade mark have not been acquired by the person registered as the proprietor of the registered trade mark. The RUKTMA does not contain a time limit therefore the general limitation bar of 6 years from the date of registration in Solomon Islands may apply.
What happens when a trade mark is granted registration?
Once a trade mark is registered, the registration will be entered into the Register of Trade Marks, which is a physical folio that is kept in the office of the Registrar-General. A certificate of registration will also be issued by the Registrar-General.
What rights do I have if I become registered as the proprietor of a Solomon Islands trade mark?
The registered proprietor of a trade mark in Solomon Islands shall have, in Solomon Islands, the rights and privileges in the use of the trade mark in respect of the goods entered in the Register, as would be conferred on the registered proprietor of the corresponding United Kingdom trade mark by the applicable law in the United Kingdom.
However, the use of the trade mark in Solomon Islands may be subject to and restricted by other laws of Solomon Islands. An example is the Tobacco Control Act 2010 which prohibits the use of trade marks of tobacco products in certain circumstances.
The tort of “passing off” is not affected by the RUKTMA.
From which date following the application do an applicant’s trade mark rights commence?
Once registered in Solomon Islands, the Solomon Islands trade mark takes effect from the date when the corresponding United Kingdom trade mark was registered in the United Kingdom.
What is the term of a trade mark?
The Solomon Islands trade mark will remain effective in Solomon Islands for so long as the corresponding United Kingdom trade mark is registered in the United Kingdom. When the term of the United Kingdom trade mark lapses, the corresponding Solomon Islands trade mark will also lapse.
How is the trade mark renewed?
If the United Kingdom trade mark is renewed, the registered proprietor can apply to renew the corresponding Solomon Islands trade mark. If the Solomon Islands trade mark is allowed to lapse without being renewed, it can be restored by filing an application to register the United Kingdom trade mark.
Can a person register the assignment of a trade mark?
Yes. The assignment must first be registered in the United Kingdom before the assignment can be registered in Solomon Islands.
Can a person register the licensing of a trade mark?
Yes. The licence to use the registered trade mark must first be registered in the United Kingdom before the licence to use can be registered in Solomon Islands. On such registration, the person becomes a registered user of the trade mark.
What are the grounds for revocation of a trade mark?
A Solomon Islands trade mark will subsist as long as the corresponding United Kingdom trade mark subsists.
A Solomon Islands trade mark may be revoked if it is determined by the High Court to be prejudicial to the rights of an aggrieved person.
What is the procedure for revocation of a trade mark?
A person whose interests are alleged to have been prejudicially affected by the registration of a trade mark may apply to the High Court for a declaration that the exclusive rights and privileges pertaining to the registered trade mark have not been acquired by the person registered as the proprietor of the registered trade mark. The RUKTMA does not contain a time limit therefore the general limitation bar of 6 years from the date of registration in Solomon Islands may apply. Decisions of the High Court may be appealed to the Court of Appeal.
Who can commence revocation proceedings?
Any natural or legal person who has a legitimate interest in the trade mark can oppose or object to the registration of a trade mark.
How and before what tribunals can a trade mark be enforced against an infringer?
Infringement proceedings may be brought in the High Court. Remedies may include damages and injunctions.
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