The Trademarks Act 2003 (Vanuatu) ("New Act") commenced in Vanuatu on 8 February 2011, following its publication in the Official Gazette. The New Act forms a package of legislation which came into force on that date, all contributing to the development of intellectual property law in Vanuatu and facilitating Vanuatu's membership to the World Trade Organisation ("WTO").  

Main Provisions

The New Act repealed the Registration of United Kingdom Trademarks Act [Cap 81] (as amended) ("Old Act"). All trademarks that had been registered under the Old Act however are registered trademarks under the New Act.

Under the Old Act, a person could apply to have a trademark registered in Vanuatu only by virtue of the mark being registered under the law of an EU Member State ("MS"). This had been extended in 2008 from a trademark registered in the UK to an MS generally ("2008 Amendments"). Only trademarks that were still registered in the MS could be registered (i.e. trademarks whose period of registration had expired could not be registered).

The New Act establishes a 'local' system of registration, in that the New Act allows trademarks to be registered for goods, services or both goods and services, even if they were not registered previously in a MS.

Part 3, Division 1 of the New Act contains information as to the application process for registration of a trademark. Applications are made to the Registrar of Trademarks ("Registrar"), who will publish details of the application in the Gazette within 28 days and then either accept or reject it.

Division 2 of the New Act sets out the grounds on which an application may be rejected. For example, if the trademark contains certain signs or cannot be represented graphically.

Part 4 of the New Act makes provision for the opposition of a registration. If the Registrar accepts a registration it may be opposed by a member of the public who files a notice of opposition, provided that one of the grounds for opposition are those contained under section 33 to 37 of the New Act. Opposition cannot be made on any other ground.

On registering the trademark, the Registrar must give the trademark an identifying number and certain particulars will be set out in the Register.

Registration of the trademark expires 10 years after the filing date of the application for its registration, unless it is earlier cancelled or removed from the register. If the trademark has been infringed, the registered owner may take action against the infringer.

Significant Amendments in Vanuatu Trademark Registration

The 2008 Amendments extended registration from UK registered trademarks to MS registered trademarks or to trademarks registered under any treaty to which a MS may be a party. The 2008 Amendments also allowed trademark registration in relation to services for the first time in Vanuatu.

The recent commencement of the New Act transforms the entire trademark registration system in Vanuatu.

Due to the recent commencement of the New Act in Vanuatu, it is too early to comment on the effectiveness of the new trademark enforcement process in Vanuatu.

For any assistance with trade mark registration or enforcement please contact Laura Houlihan or John Ridgway.

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