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Samoa Consolidated Legislation 2020 |
SAMOA
INTELLECTUAL PROPERTY ACT 2011
Arrangement of Provisions
PART 1
PRELIMINARY
PART 2
PATENTS
18A. International application
PART 3
INNOVATION PATENTS
PART 4
DESIGNS
44A. International application and registration of designs
44B. Effects of International Registration
44C. Initial Term and renewal of the international Registration and duration of protection
44D. Deferment of publication
PART 5
TRADE MARKS AND COLLECTIVE TRADE MARKS
PART 6
PLANT BREEDER’S RIGHTS
64. Application for plant breeder’s rights
rights
rights
PART 7
GEOGRAPHICAL INDICATIONS OR APPELLATION OF ORIGINS
102A. International registration of appellation of origin and geographical indications
102B. Protection of international registration to extend to Samoa on payment of an administration fee
102C. Ministry may request for cancellation of international registration
102D. Protection against becoming generic
102E. Withdrawn of refusal
102F. Transitional period
102G. Notification of Grant of Protection
102H. Invalidation of the effects of international registration
PART 8
LAYOUT-DESIGNS OF INTEGRATED CIRCUITS
PART 9
ENFORCEMENT AND ADMINISTRATION OF RIGHTS
113. Changes in registration
123. Exercise of discretionary powers
PART 10
MISCELLANEOUS
127. Civil protection for the Registrar
128. Repealed
133. Offence of making false entries in register, etc., for production or tendering false entries
135. Penalties
Schedules
__________
INTELLECTUAL PROPERTY ACT 2011
2011 No. 9
AN ACT to provide protection for intellectual property rights in Samoa which are trade marks, patents, innovation patents, plant breeder’s rights, design rights, registered designs, geographical indications or appellation of origin and lay-out designs of integrated circuits.
[Assent date: 11 October 2011]
[Commencement date: 1 October 2012]
BE IT ENACTED by the Legislative Assembly of Samoa in Parliament assembled as follows:
PART 1
PRELIMINARY
1. Short title and commencement – (1) This Act may be cited as the Intellectual Property Act 2011.
(2) This Act commences on a date to be nominated by the Minister.
2. Interpretation – In this Act, unless the context otherwise requires:
“abstract” with respect to patents, means technical information required in order to understand how an invention works;
“adequate remuneration” means remuneration of any kind that is agreed to by the parties, and where agreement is not arrived at by the parties, is to be determined by the Minister upon receipt by him or her of relevant documentation or submissions by both parties;
“applicant” includes the person’s predecessor in title;
“basic application” means an application for registration of a trade mark, filed with the Registrar under section 48 and which is used as a basis to file an international application under the Madrid Protocol;
“basic registration” means a trade mark registered by the Registrar under section 55 and which is used as the basis to file an international application under the Madrid Protocol;
“breeder” (see section 61);
“business” means any activity established primarily for the purpose of generating a profit, and includes an enterprise;
“collective association” (see section 45(1));
“collective trade mark” (see section 45(1));
“Convention country” means a country which is a member of the Paris Convention or other international agreements relating to intellectual property rights to which Samoa is a party;
“exploit” an innovation patented invention (see section 27(3));
“to exploit” a patented invention (see section 12(3));
“exploit” a registered layout-design (see section 109(3);
“Government agency” means any public body as defined under section 2 of the Public Bodies (Performance and Accountability) Act 2001 and includes any person, whether incorporated or not, duly authorised in writing by the Government to act on its behalf;
“Geneva Act of the Lisbon Agreement” means the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications and Regulations under the Geneva Act of the Lisbon Agreement;
“industry” includes the handicraft, agriculture, fishery, pharmaceuticals and services industry;
“innovation patent” (see section 19);
“International Bureau” means the International Bureau of the World Intellectual Property Organization;
“international registration” means the registration of a trade mark effected under the Madrid Protocol;
“invention” means an idea of an inventor which permits in practice the solution to a problem in the field of technology;
“inventor” means the person who actually devised the invention;
“Madrid Agreement” means the Madrid Agreement concerning the International Registration of Marks, adopted in Madrid on June 27 1989, as amended
“Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, as amended from time to time;
“trade mark” (see section 45(1));
“member of UPOV” (see section 61);
“Minister” means the Minister responsible for Commerce, Industry and Labour;
“Ministry” means the Ministry responsible for Commerce, Industry and Labour;
“Office of Origin” means the Office of the Contracting Party where, in accordance with Article 2(2) of the Madrid Protocol, the International application was filed;
“Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised from time to time;
“Patent Cooperation Treaty” means the Patent Cooperation Treaty done at Washington on June 19, 1970;
“plant” (see section 61);
“plant breeder’s rights” (see section 61);
“priority date” means the date of the earlier application that serves as the basis for the right of priority provided for in the Paris Convention;
“registers” means the registers kept pursuant to section 119;
“Registrar” means the Chief Executive Officer of the Ministry and includes any duly appointed delegate;
“Registry” means the Intellectual Property Registry established under section 118;
“repealed enactments” means the Acts repealed under section 138;
“sign” (see section 45(1));
“test batches” in relation to patents means any part or portion of a patented product which may be used in order to carry out further research to understand the patented product or for the purpose of obtaining regulatory approval for the product;
“trade name” means the name or designation identifying and distinguishing a business;
“UPOV” (see section 61);
“variety” (see section 61);
“writing” in relation to any requirement under this Act for applications to be “in writing” includes electronic mail, telex, telegrams and any other electronically produced means of communication;
“1999 Act” means the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which was adopted on July 2, 1999, and entered into force on December 23, 2003.
3. Act to bind State – This Act binds the State.
PART 2
PATENTS
3A. Definitions – In this Part:
“Administrative Instructions” means the Administrative Instructions made under the Patent Cooperation Treaty as revised from time to time;
“Contracting State(s)” means a State(s) party to the Patent Cooperation Treaty;
“international application” means an application made under the Patent Cooperation Treaty;
“receiving Office” means the national Office or the intergovernmental organization with which the international application for a patent has been filed under the Patent Cooperation Treaty;
“Regulations” means the Regulations under the Patent Cooperation Treaty as in force from July 1, 2019.
4. Definition of “patent” – (1) In this Act, “patent” means the title granted to protect an invention.
(2) An invention may be, or may relate to, a product or a process.
(3) The following, even if they are inventions, are excluded from patentability:
(a) a discovery, scientific theory or mathematical method;
(b) a scheme, rule or method for performing a mental act, playing a game or doing business;
(c) diagnostic, therapeutic and surgical methods for the treatment of humans or animals (this provision does not apply to products for use in any of those methods);
(d) inventions that are contrary to public order or morality;
(e) plants and animals, other than micro-organisms;
(f) essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes;
(g) inventions that are likely to cause serious environmental harm;
(h) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least 1new reactant.
5. Patentable inventions for the purpose of a standard patent – (1) An invention is patentable if:
(a) it is new; and
(b) involves an inventive step; and
(c) is industrially applicable.
(2) An invention is new if it is not anticipated by prior art.
(3) Prior art consists of everything known or used, anywhere in the world, by publication in tangible form or by oral disclosure, by use
or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention.
(4) For the purposes of subsection (3), disclosure to the public of the invention will not be taken into consideration if such disclosure
occurred within 12 months preceding the filing date or, where applicable, the priority date of the application, and the disclosure
was due to or in consequence of:
(a) acts committed by the applicant or the applicant’s predecessor in title; or
(b) an abuse committed by a third party with regard to the applicant or the applicant’s predecessor in title.
(5) An invention is considered as involving an inventive step if, having regard to the prior art relevant to the application claiming
the invention, it would not have been obvious to a person having ordinary skill in the art.
(6) An invention is industrially applicable if it can be made or used in any kind of industry.
6. Right to patent – (1) Subject to subsection (5), the right to a patent belongs to the inventor.
(2) When 2 or more persons have jointly made an invention, the right to the patent belongs to them jointly.
(3) When 2 or more persons have made the same invention independently of each other, the person whose application has the earliest filing
date has the right to the patent, as long as the application is not withdrawn, abandoned or rejected.
(4) The right to a patent may be assigned, or may be transferred by succession.
(5) If an invention is made in execution of a commission or an employment contract, the right to the patent belongs to the person having
commissioned the work or the employer unless a contractual provision says otherwise.
7. Application for a patent – (1) A person may file an application with the Registrar for a patent.
(2) An application must be:
(a) in writing; and
(b) accompanied by a prescribed fee.
(3) An application must contain the following:
(a) the applicant’s name, address and nationality including the details of any agents used by the applicant for this purpose;
(b) each inventor’s name;
(c) a request for the grant of the patent;
(d) a description of the invention including the title of the invention;
(e) one or more claims and any drawings referred to in the description of any claim;
(f) an abstract;
(g) a statement stating whether or not the invention for which protection is claimed is based on knowledge available within any local or indigenous community whether from Samoa or elsewhere;
(h) a statement disclosing the source and geographical origin of any biological material used for the invention;
(i) a written authorisation of the agent appointing the representative of the applicant, if any.
(4) If the applicant is not the inventor, the request must be accompanied by a statement justifying the applicant’s right to the
patent.
(5) The description in subsection (3)(d) must:
(a) disclose the invention in a manner which is clear and complete enough for the invention to be carried out by a person having ordinary skill in the art; and
(b) show the best mode known to the applicant for carrying out the invention.
(6) A claim in subsection (3)(e) must:
(a) define the matter for which protection is sought; and
(b) be clear and concise; and
(c) be fully supported by the description of the invention.
(7) Drawings submitted by an applicant under subsection (3)(e) must be provided to the Registrar if the Registrar thinks it is necessary
for the understanding of the invention.
(8) The Registrar may use the description and the drawings required under subsection (3)(d) and (e) to interpret the claim.
(9) The Registrar must not take into account the abstract required under subsection (3)(f) for the purpose of interpreting the scope
of the protection.
(10) Subject to subsection (11), if the application is based on or derived from biological material or knowledge available within any local
or indigenous community the Registrar may direct the applicant to furnish evidence as to the applicant’s title or authority
to make use of such material or knowledge.
(11) The Registrar is only to direct an applicant for evidence under subsection (10) when the applicant makes a written statement that
the invention for which protection is claimed is based on or derived from biological material or knowledge available within any local
or indigenous community.
(12) If an applicant fails to provide evidence as directed by the Registrar under subsection (10), the Registrar may, cease to deal further
with the application.
(13) The applicant may withdraw the application at any time during the period that he or she is being examined by the Registrar.
8. Unity of invention; amendment and division of application – (1) An application for a patent must relate to 1 invention only or to a group of inventions so linked as to form a single general inventive
concept.
(2) Subject to subsection (3), an applicant may amend the application at any time during the examination process.
(3) Despite subsection (2), an amendment must not go beyond the disclosure required under section 7(5)(a) in the initial application.
(4) Subject to subsection (5), an applicant may divide an application (“divisional application”), at any time during the examination
process.
(5) Despite subsection (4), the divisional application must not go beyond the disclosure required under section 7(5)(a) in the initial
application.
(6) A divisional application is entitled to the filing date and, where applicable, the priority date of the initial application.
(7) The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention under subsection
(1) is not a ground for the invalidation of the patent.
9. Information concerning corresponding foreign applications patents – (1) A person applying for a patent must, upon request, provide the Registrar with the date and number of any application for a patent
filed by the applicant abroad (“foreign application”) relating to the same or essentially the same invention as that
claimed in the application filed with the registry.
(2) The applicant must, upon request, provide the Registrar with the following documents:
(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;
(b) a copy of the patent granted on the basis of the foreign application;
(c) a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application;
(d) a copy of any final decision invalidating the patent granted on the basis of the foreign application referred to in subsection (1).
10. Filing date and examination – (1) Subject to subsection (2), the Registrar must accord as the filing date, the date and time upon which the Registrar receives the application
for a patent.
(2) Despite subsection (1), the Registrar must accord the filing date only when the application fee is paid and the requirements of section
7(2) to (4) are met.
(3) If an application does not fulfil the requirements under subsection (2), the Registrar may require the applicant to file a correction
to the application.
(4) If a correction is made under subsection (3), the Registrar is to accord the filing date as being the date upon which he or she received
the correction from the applicant.
(5) If no correction is made, the application must be treated as if it had not been filed.
(6) If the application refers to drawings which are not included in the application, the Registrar may request the applicant to provide
the missing drawings.
(7) If the applicant complies with the request under subsection (6), the Registrar must accord as the filing date the date of receipt
of the missing drawings.
(8) When an applicant fails to comply with a request under subsection (6), the Registrar must:
(a) accord as the filing date the date of receipt of the application; and
(b) treat any reference to the drawings as non-existent.
(9) After according a filing date, the Registrar must examine:
(a) whether the application complies with the requirements of section 5; and
(b) whether any information requested under section 9, has been provided.
(10) If the Registrar is of the opinion that the application complies with the requirements of subsection (9), the Registrar must take
a decision as to whether the requirements of sections 4(2) and (3), 5, and 7(5) to (9) are fulfilled and for this purpose may cause
the application to be examined.
(11) The Registrar must take into account, for the purposes of subsection (9):
(a) the results of any international search report and any international preliminary examination report established under the Paris Convention in relation to the application;
(b) any search and examination report submitted under section 9(2)(a) or a final decision submitted under section 9(2)(c) relating to the patent on a corresponding foreign application;
(c) any search and examination report which was carried out upon the Registrar’s request by an external search and examination authority.
11. Grant of patent and changes in patents – (1) If the Registrar is of the opinion that the application complies with the requirements of sections 4, 5, 7 and 10, the Registrar
must grant the patent.
(2) If the Registrar grants a patent, the Registrar must:
(a) record the patent in the Patents Register; and
(b) issue to the applicant a certificate of the grant of the patent and a copy of the patent; and
(c) make available copies of the patent to the public, on payment of the prescribed fee.
(3) Subject to subsection (4), the Registrar must, upon the request of the owner of the patent, make changes in the text or drawings of
the patent in order to limit the extent of the protection conferred by it.
(4) Despite subsection (3), no change will be made if it results in the disclosure in the patent going beyond the disclosure contained
in the initial application required under section 7(5)(a) for which the patent was granted.
(5) When an applicant does not meet the requirements of section 10(9), the Registrar must:
(a) refuse the application; and
(b) notify the applicant in writing of the Registrar’s decision.
12.Rights conferred by patent – (1) A person who is granted a patent under section 11(1) has the exclusive right to exploit the patent.
(2) Subject to sections 14, 15, 16 and 18, a person intending to exploit a patented invention in Samoa must first obtain the consent of
the owner of the patent.
(3) In this Act, “to exploit” a patented invention means any of the following:
(a) if the patent has been granted in respect of a product—
(i) making, importing, offering for sale, selling or using the product; or
(ii) stocking the product for the purposes of offering for sale, selling or using it;
(b) if the patent has been granted in respect of a process—
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.
(4) Subject to subsection (5) and sections 14, 15, 16 and 18 the owner of a patent may institute court proceedings against any person
who infringes the patent by performing, without the owner’s consent, any of the acts referred to in subsection (3) or who performs
acts which are likely to infringe the patent.
(5) The rights under the patent do not extend:
(a) to acts in respect of articles which have been put on the market anywhere in the world by the owner of the patent or with the owner’s consent; and
(b) to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Samoa; and
(c) to acts done only for experimental purposes relating to a patented invention; and
(d) to acts performed by any person who in good faith, before the filing or, if priority is claimed, the priority date of the application
on which the patent is granted, was using the invention or was making effective and serious preparations for such use in Samoa.
(6) The right of prior user referred to in subsection (5)(d) may be transferred together with the business, or with that part of the business,
in which the use or preparations for the use have been made.
13. Duration and maintenance fees – (1) Subject to subsection (2) and section 126, a patent expires 20 years after the filing date of the application for the patent.
(2) In order to maintain the patent or patent application, a prescribed maintenance fee must be paid in advance every 5 years to the
Registrar starting 5years after the filing date of the application for grant of the patent.
(3) If the 5 yearly maintenance fee is not paid in accordance with the provisions of this subsection, the patent lapses.
14. Exploitation by Government or authorised person – (1) Subject to the provisions of this section, the Minister may decide that, even without the consent of the owner of the patent, a government
agency or a third person designated by the Minister may exploit the invention.
(2) The Minister may only exercise the power under subsection (1) if:
(a) the public interest so requires; or
(b) the Minister has determined that—
(i) the manner of exploitation by the owner of the patent or a licensee is anti-competitive; and
(ii) the Minister is satisfied that the exploitation of the invention would remedy the practice.
(3) The exploitation of the invention under subsection (1) is:
(a) limited to the purpose for which it was authorised; and
(b) subject to the payment to the owner of adequate remuneration taking into account the economic value of the Minister’s decision under subsection (1); and
(c) when a decision has been taken under subsection (2)(b), the determination of adequate remuneration under subsection (3)(b) shall
include consideration of the need to correct anti-competitive practices.
(4) The Minister must make a decision under subsection (1) only after hearing the owner of the patent and any interested person who wishes
to be heard.
(5) The Minister may, upon receiving a request from any party, and after hearing any party wishing to be heard, vary the terms of the
decision authorising the exploitation of the patented invention if the Minister considers that the circumstances justify the variation.
(6) Subject to subsection (7), the Minister must terminate an authorisation upon the request of the owner of the patent, if the Minister
is satisfied:
(a) that the circumstances which led to the decision have ceased to exist and are unlikely to recur; or
(b) that the government agency or third person designated in the authorisation has failed to comply with the terms of the decision.
(7) Despite subsection (6), the Minister must not terminate the authorisation if the Minister is satisfied that there is a need for adequate
protection of the legitimate interests of the government agency or third person designated in the authorisation.
(8) The authorisation granted under subsection (1) may only be transferred with the business of that person or with the part of the business
within which the patented invention is being exploited.
(9) The authorisation must not exclude:
(a) the conclusion of licence contracts by the owner of the patent; or
(b) the continued exercise, by the owner of the patent, of the rights under section 12(1); or
(c) the issue of a non-voluntary licence under section 16(1) and (2).
(10) Subject to subsection (11), a person intending to obtain the Minister’s authorisation under this section must provide proof
that:
(a) the owner of the patent has received a request for a contractual licence; and
(b) that the person has been unable to obtain a licence—
(i) on reasonable commercial terms and conditions; or
(ii) within a reasonable time.
(11) Despite subsection (10), proof will not be required in cases of national emergency, other circumstances of extreme urgency, for public
non-commercial use or to remedy practices determined by the Minister to be anti-competitive.
(12) If authorisation is granted under circumstances mentioned in subsection (10), the owner of the patent must be notified of the Minister’s
decision as soon as reasonably practicable.
(13) The exploitation of the invention by the government agency or third person designated by the Minister must be predominantly for the
supply of the market in Samoa, except where the exploitation is to remedy anti-competitive practices.
(14) The exploitation of an invention in the field of semi-conductor technology can only be authorised for:
(a) public non-commercial use; or
(b) if a judicial or administrative body has determined that the manner of exploitation of the patented invention by the owner of
the patent or the owner’s licensee is anti-competitive and the Minister is satisfied that the issuance of the compulsory licence
would remedy the practice.
(15) A decision of the Minister made under this section may be reviewed by the Supreme Court.
(16) In this section:
“any party” means:
(a) the owner of the patent; or
(b) the government agency; or
(c) a third person authorised to exploit the patented invention;
“public interest” includes matters relating to national security, nutrition, health, or the development of other vital sectors of the national economy.
15. Import of patented pharmaceutical products – (1) Subject to the provisions of this section, the Minister may decide that, even without the consent of the owner of the patent, a Government
agency or a third person designated by the Minister may import, offer for sale, sell, stock or use a patented pharmaceutical product
in Samoa.
(2) The authorisation granted under subsection (1) must not include a right to export the patented pharmaceutical product out of Samoa.
(3) The Minister may only exercise the power under subsection (1) if the Minister has notified the Council for TRIPS of his or her intention
to issue an authorisation under subsection (1).
(4) An authorisation granted under subsection (1) must include conditions addressing:
(a) the acts authorised to be done in relation to the patented pharmaceutical product under the authorisation; and
(b) the quantity of the patented pharmaceutical product covered by the authorisation; and
(c) the duration of the authorisation; and
(d) a requirement for the patented pharmaceutical product to be clearly identified as being imported under the authorisation through specific labelling or marking; and
(e) any other terms or conditions as the Minister thinks fit having regard to the public health needs in Samoa.
(5) The Minister must make a decision under subsection (1) only after hearing the owner of the patent and any interested person who wishes
to be heard.
(6) The Minister may, upon receiving a request from any party, and after hearing any party wishing to be heard, vary the terms of the
decision authorising the exploitation of the patented invention if the Minister considers that the circumstances justify the variation.
(7) Subject to subsection (8), the Minister must terminate an authorisation upon the request of the owner of the patent, if the Minister
is satisfied:
(a) that the circumstances which led to the decision have ceased to exist and are unlikely to recur; or
(b) that the Government agency or third person designated in the authorisation has failed to comply with the terms of the decision.
(8) Despite subsection (7), the Minister must not terminate the authorisation if he or she is satisfied that there is a need for adequate
protection of the legitimate interests of the Government agency or third person designated in the authorisation.
(9) An authorisation granted under subsection (1) is non-exclusive and may only be transferred with the business of that person or with
the part of the business within which the patented invention is being exploited.
(10) No remuneration shall be paid to the owner of a patent granted in relation to a patented pharmaceutical product where an authorisation
has been granted under subsection (1), if such owner has been paid remuneration in another country for the production and export
of the product the subject of the authorisation.
(11) Where no remuneration has been paid in the other country, then the authorisation is subject to the payment to the owner of adequate
remuneration.
(12) The Minister shall as soon as practicable after the grant of an authorisation under this section give notice in writing to the owner
of the patent of the grant of the authorisation and its terms and conditions.
(13) The authorisation must not exclude -
(a) the conclusion of licence contracts by the owner of the patent; or
(b) the continued exercise, by the owner of the patent, of the rights under section 12(1); or
(c) the issue of a non-voluntary licence under section 16(1) and (2).
(14) A person intending to obtain the Minister’s authorisation under this section must provide proof that:
(a) the owner of the patent has received a request for a contractual licence; and
(b) that he or she has been unable to obtain a licence—
(i) on reasonable commercial terms and conditions; or
(ii) within a reasonable time.
(15) A decision of the Minister made under this section may be reviewed by the Supreme Court.
(16) In this section:
“any party” means:
(a) the owner of the patent; or
(b) the Government agency; or
(c) a third person authorised to exploit the patented invention.
“Council for TRIPS” means the World Trade Organization’s Council for Trade-Related Aspects of Intellectual Property Rights;
“pharmaceutical product” means any patented product, or product manufactured through a patented process, of the pharmaceutical sector needed to address public health problems and shall include ingredients necessary for their manufacture and diagnostic kits required for their use.
16. Non-voluntary licences – (1) The Registrar, upon the request of the owner of a later patent, may grant a non-voluntary licence if:
(a) there is an earlier patent relating to the same or similar invention granted on the basis of an earlier filing or priority date; and
(b) an invention claimed in a later patent cannot be exploited in Samoa without infringing the earlier patent; and
(c) the invention claimed in the later patent involves an important technical advance of considerable economic importance.
(2) If a licence is issued under subsection (1), the Registrar, upon the request of the owner of the earlier patent, must issue a non-voluntary
licence in respect of the later patent.
(3) If a licence is issued under subsection (1) or (2), the Registrar must provide for:
(a) the scope and function of the licence; and
(b) the amount of the remuneration to be paid to the owner of the patent; and
(c) any conditions of payment.
(4) The issue of a non-voluntary licence is subject to payment of the prescribed fee.
(5) In this section:
“earlier patent” means a patent granted that is made in relation to the same or similar invention as a later patent; and
“later patent” means an application for a patent that is made in relation to the same or similar invention but made after an earlier patent.
17. Invalidation – (1) An interested person may apply to the Supreme Court to invalidate a patent.
(2) The Supreme Court must invalidate the patent if the applicant proves that:
(a) any of the requirements of sections 5, and 7 to 10 are not fulfilled; or
(b) the owner of the patent is not the inventor or the inventor’s successor in title.
(3) An invalidated patent, or claim or part of a claim, has no legal effect from the start.
(4) Subject to an appeal under subsection (5), the decision of the Supreme Court must be notified by the applicant to the Registrar who
must record it in the registry at the earliest opportunity.
(5) A person affected by the invalidation of a patent may appeal to the Court of Appeal for a review of the Supreme Court’s decision.
18. Test batches of patented products – (1) Despite section 12 and subject to subsection (2), test batches of a patented product may be produced without the consent of the patent
owner 6 months before the expiry of the patent.
(2) Test batches must not be put on the market before the expiry date of the patent.
18A. International application – (1) A person may file an international application for a patent with the Ministry through the Registrar.
(2) An application made under subsection (1) is made pursuant to requirements and procedures under the Act, Patent Cooperation Treaty,
Regulations, Administrative Instructions and as prescribed.
(3) A person referred to under subsection (1) includes any of the following:
(a) a citizen of Samoa;
(b) a permanent resident of Samoa;
(c) a resident of a Contracting State;
(d) a national of a Contracting State;
(e) a temporary resident of Samoa or a Contracting State.
(4) The Ministry shall be the receiving office for the purposes of an international application under the Patent Cooperation Treaty.
PART 3
INNOVATION PATENTS
19. Definition of “innovation patent” – (1) In this Act, “innovation patent” means the title granted to protect an incremental or lower level invention.
(2) An innovation patent may be, or may relate to, a product or a process.
(3) The exclusions from patentability under section 43 apply to this Part.
20. Patentable inventions for the purpose of an innovation patent – (1) An invention qualifies for an innovation patent if it is:
(a) new; and
(b) industrially applicable.
(2) An invention is new for the purposes of an innovation patent if it is not anticipated by prior art.
(3) Prior art consists of everything known or used, anywhere in the world, by publication in tangible form or by oral disclosure, by use
or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention.
(4) For the purposes of subsection (3), disclosure to the public of the invention will not be taken into consideration if such disclosure
occurred within 12 months preceding the filing date or, where applicable, the priority date of the application, and the disclosure
was due to or in consequence of:
(a) acts committed by the applicant or the applicant’s predecessor in title; or
(b) an abuse committed by a third party with regard to the applicant or the applicant’s predecessor in title.
(5) An invention is industrially applicable if it can be made or used in any kind of industry.
21. Right to an innovation patent – (1) The right to an innovation patent belongs to the inventor.
(2) When 2 or more persons have jointly made an invention, the right to the innovation patent belongs to them jointly.
(3) When 2 or more persons have made the same invention independently of each other, the person whose application has the earliest filing
date has the right to the patent, as long as the application is not withdrawn, abandoned or rejected.
(4) The right to an innovation patent may be assigned, or may be transferred by succession.
(5) If an invention is made in execution of a commission or an employment contract, the right to the innovation patent belongs to the
person having commissioned the work or the employer unless a contractual provision says otherwise.
22. Application for an innovation patent – (1) A person may file an application with the Registrar for an innovation patent.
(2) An application must be in writing and accompanied by a prescribed fee.
(3) An application must contain:
(a) the applicant’s name, address and nationality including the details of any agents used by the applicant for this purpose; and
(b) each inventor’s name; and
(c) a request for the grant of the innovation patent; and
(d) a description of the invention including the title of the invention; and
(e) one or more claims and any drawings referred to in the description of any claim; and
(f) an abstract; and
(g) a statement stating whether or not the invention for which protection is claimed is based on knowledge available within any local or indigenous community whether from Samoa or elsewhere; and
(h) a statement disclosing the source and geographical origin of any biological material used for the invention; and
(i) a written authorisation of the agent appointing the representative of the applicant, if any.
(4) If the applicant is not the inventor, the request must be accompanied by a statement justifying the applicant’s right to the
innovation patent.
(5) The description in subsection (3)(d) must:
(a) disclose the invention in a manner which is clear and complete enough for the invention to be carried out by a person having ordinary skill in the art; and
(b) show the best mode known to the applicant for carrying out the invention.
(6) A claim in subsection (3)(e) must:
(a) define the matter for which protection is sought; and
(b) be clear and concise; and
(c) be fully supported by the description of the invention.
(7) Drawings submitted by an applicant under subsection (3)(d) must be provided to the Registrar if the Registrar thinks it is necessary
for the understanding of the invention.
(8) The Registrar may use the description and the drawings required under subsections (3)(d) and (e) to interpret the claim.
(9) The Registrar must not take into account the abstract required under subsection (3)(f) for the purpose of interpreting the scope
of the protection.
(10) Subject to subsection (11), if the application is based on or derived from biological material or knowledge available within any
local or indigenous community the Registrar may direct the applicant to furnish evidence as to the applicant’s title or authority
to make use of such material or knowledge.
(11) Despite subsection (10), the Registrar is only to direct an applicant for evidence under subsection (10), if the applicant makes a
written statement that the invention for which protection is claimed is based on or derived from biological material or knowledge
available within any local or indigenous community.
(12) When an applicant fails to provide evidence as directed by the Registrar under subsection (10), the Registrar may cease to deal further
with the application.
(13) The applicant may withdraw the application at any time during the period that it is being examined by the Registrar.
23. Unity of invention; amendment and division of application – (1) An application for an innovation patent must relate to 1 invention only or to a group of inventions so linked as to form a single
general inventive concept.
(2) Subject to subsection (3), an applicant may amend the application at any time during the examination process.
(3) Despite subsection (2), an amendment must not go beyond the disclosure required under section 22(5)(a) in the initial application.
(4) Subject to subsection (5), an applicant may divide an application (“divisional application”), at any time during the examination
process.
(5) Despite subsection (4), the divisional application must not go beyond the disclosure required under section 22(5)(a) in the initial
application.
(6) A divisional application is entitled to the filing date and, if applicable, the priority date of the initial application.
(7) The fact that an innovation patent has been granted on an application that did not comply with the requirement of unity of invention
under subsection (1) is not a ground for the invalidation of the innovation patent.
24. Information concerning corresponding foreign applications for innovation patents – (1) A person applying for an innovation patent must, upon request, provide the Registrar with the date and number of any application
for an innovation patent filed by the applicant abroad (“foreign application”) relating to the same or essentially the
same invention as that claimed in the application filed with the registry.
(2) The applicant must, upon request, provide the Registrar with the following documents:
(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;
(b) a copy of the innovation patent granted on the basis of the foreign application;
(c) a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application;
(d) a copy of any final decision invalidating the innovation patent granted on the basis of the foreign application referred to in subsection (1).
25. Filing date and formalities examination – (1) Subject to subsection (2), the Registrar must accord as the filing date, the date and time upon which the Registrar receives the
application for an innovation patent.
(2) Despite subsection (1), the Registrar must accord the filing date only when the application fee is paid and the requirements of sections
22(2) to (4) and 24 are met.
(3) If an application does not fulfil the requirements under subsection (2), the Registrar may require the applicant to file a correction
to the application.
(4) If a correction is made under subsection (3), the Registrar must accord the filing date as being the date upon which he or she received
the correction from the applicant.
(5) If no correction is made, the application must be treated as if it had not been filed.
(6) If the application refers to drawings which are not included in the application, the Registrar may request the applicant to provide
the missing drawings.
(7) If the applicant complies with the request under subsection (6), the Registrar must accord as the filing date the date of receipt
of the missing drawings.
(8) If an applicant fails to comply with a request under subsection (6), the Registrar must:
(a) accord as the filing date the date of receipt of the application; and
(b) treat any reference to the drawings as non-existent.
26.Grant of innovation patent and changes in innovation patents – (1) If the Registrar is of the opinion that the application complies with the requirements of section 20, the Registrar must grant the
innovation patent.
(2) If the Registrar grants an innovation patent, the Registrar must:
(a) record the innovation patent in the Innovation Patents Register; and
(b) issue to the applicant a certificate of the grant of the innovation patent and a copy of the innovation patent; and
(c) make available copies of the innovation patent to the public, on payment of the prescribed fee.
(3) Subject to subsection (4), the Registrar must, upon the request of the owner of the innovation patent, make changes in the text or
drawings of the innovation patent in order to limit the extent of the protection conferred by it.
(4) Despite subsection (3), no change will be made where it results in the disclosure in the innovation patent going beyond the disclosure
contained in the initial application required under section 22(3) for which the innovation patent was granted.
(5) When an applicant does not meet the requirements of section 20, the Registrar must:
(a) refuse the application; and
(b) notify the applicant in writing of the Registrar’s decision.
27. Rights conferred by innovation patent – (1) A person who is granted an innovation patent under section 26(1), has the exclusive right to exploit the innovation patent.
(2) A person intending to exploit an innovation patented invention in Samoa must first obtain the consent of the owner of the innovation
patent.
(3) In this Act, “to exploit” an innovation patented invention means any of the following:
(a) if the innovation patent has been granted in respect of a product—
(i) making, importing, offering for sale, selling or using the product; or
(ii) stocking the product for the purposes of offering for sale, selling or using it;
(b) if the innovation patent has been granted in respect of a process—
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.
(4) Subject to subsection (5), the owner of an innovation patent may institute court proceedings against any person who infringes the
innovation patent by performing, without the owner’s consent, any of the acts referred to in subsection (3) or who performs
acts which are likely to infringe the innovation patent.
(5) The rights under the innovation patent do not extend:
(a) to acts in respect of articles which have been put on the market anywhere in the world by the owner of the innovation patent or with the owner’s consent; or
(b) to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Samoa; or
(c) to acts done only for experimental purposes relating to an innovation patented invention; or
(d) to acts performed by any person who in good faith, before the filing or, if priority is claimed, the priority date of the application
on which the innovation patent is granted, was using the invention or was making effective and serious preparations for such use
in Samoa.
(6) The right of prior user referred to in subsection (5)(d) may be transferred together with the business, or with that part of the business,
in which the use or preparations for the use have been made.
28. Invalidation – (1) An interested person may apply to the Registrar to invalidate an innovation patent.
(2) The Registrar must invalidate the innovation patent if the applicant proves that:
(a) the claimed invention did not qualify for an innovation patent; or
(b) the description and the claims do not comply with the requirements of sections 20 and 22 to 25; or
(c) any drawing which is necessary for the understanding of the invention has not been furnished; or
(d) the owner of the innovation patent is not the inventor or his or her successor in title.
(3) An invalidated innovation patent, or claim or part of a claim, has no legal effect from the start.
(4) Subject to an appeal under subsection (5), the decision of the Registrar must be recorded in the registry at the earliest opportunity.
(5) A person affected by the invalidation of an innovation patent may appeal to the Court of Appeal for a review of the Supreme Court’s
decision.
29. Innovation patents to expire – Subject to section 126, an innovation patent expires, without possibility of renewal, at the end of the seventh year after the date of the filing of the application.
30. Conversion of applications of patent or innovation patent – (1) Subject to subsection (3), at any time before the grant or rejection of a patent, an applicant for a patent may, upon payment of the
prescribed fee, convert his or her application into an application for an innovation patent, which is to be accorded the filing date
of the initial application.
(2) At any time before the grantor rejection of an innovation patent, an applicant for an innovation patent may, upon payment of the
prescribed fee, convert his or her application into a patent application, which is to be accorded the filing date of the initial
application.
(3) Despite subsection (1), an application may not be converted under subsection (1) more than once.
PART 4
DESIGNS
31. Definitions – In this part:
“Administrative Instructions” means the Administrative Instructions made under the 1999 Act as revised from time to time;
“Common Regulations” means the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, as last revised;
“Contracting Party” means any State or intergovernmental organization party to the 1999 Act;
“creator”, in relation to a design, means the person who created it;
“design” means the design of any aspect of the shape, pattern or configuration (whether internal or external) of the whole or part of an article, but does not include:
(a) a method or principle of construction; or
(b) features of shape or configuration of an article which -
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
“international application” means an application for international registration;
“international registration” means the international registration of an industrial design effected according to the 1999 Act.
32. Design right – (1) A design right is a property right which subsists in accordance with this Part in an original design.
(2) A design is not original for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(3) Design right subsists in a design only if the design qualifies for design right protection under section 35.
(4) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the
design.
(5) Design right does not subsist in a design which was so recorded, or to which an article was made, before the commencement of this
Act.
33. Ownership of design right – (1) The creator is the first owner of any design right in a design which is not created under a commission or in the course of employment.
(2) When 2 or more persons have jointly made a design, the design right belongs to them jointly.
(3) Design right may be assigned, or may be transferred by succession.
(4) If a design is made in execution of a commission or an employment contract, the design right belongs to the person having commissioned
the design or the employer unless a contractual provision says otherwise.
34. Duration of design right – Design right expires 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurred.
35. Qualification for design right protection – The provisions of this Part concerning design right apply to:
(a) designs of creators who are nationals of or have their permanent place of residence in Samoa; and
(b) designs first created in Samoa, irrespective of the nationality or residence of their creators.
36. Rights of design right owner and infringement – (1) The owner of design right in a design has the exclusive right to:
(a) reproduce the design—
(i) by making articles to that design; or
(ii) by making a design document recording the design for the purpose of enabling such articles to be made; and
(b) make, sell or import articles incorporating the design, –
where such acts are undertaken for commercial purposes.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially
to that design, and references in this Part to making articles to a design is to be understood accordingly.
(3) Design right is infringed by a person who, without the licence of the design right owner, does or authorises another to do, anything
which by virtue of this section is the exclusive right of the design right owner.
(4) Design right does not extend:
(a) to acts in respect of articles which have been put on the market anywhere in the world by the owner of the design right or with the owner’s consent; and
(b) to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Samoa.
37. Registrable design – (1) A design is registrable if it is new.
(2) For the purposes of subsection (1), a design is new if it has not been disclosed to the public:
(a) anywhere in the world by publication in tangible form; or
(b) in Samoa, by description in writing or by use or in any other way, prior to the filing date or, if applicable, prior to the priority
date of the application for registration.
(3) The following designs are not registrable:
(a) contrary to public order or morality; or
(b) based on matai titles, names of persons or Samoan villages, or religious words or symbols; or
(c) identical with, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organisation or organisation created by an international convention, unless authorised by the competent authority of that State or organisation.
38. Right to registration of design – (1) The right to a design belongs to the creator.
(2) When 2 or more persons have jointly made a design, the right to the design belongs to them jointly.
(3) When 2 or more persons have made the same design independently of each other, the person whose application has the earliest filing
date has the right to the design, as long as the application is not withdrawn, abandoned or rejected.
(4) The right to a design may be assigned, or may be transferred by succession.
(5) If a design is made in execution of a commission or an employment contract, the right to the design belongs to the person having commissioned
the work or the employer unless a contractual provision says otherwise.
39. Application for registration – (1) An application for the registration of a registered design must be filed with the Registrar and be accompanied by the prescribed
application fee.
(2) An application for registration of a registered design must contain all of the following:
(a) the applicant’s name, address and nationality including the details of any agents used by the applicant for this purpose;
(b) each creator’s name;
(c) a request for registration of the design;
(d) drawings, photographs or other adequate graphic representations of the article embodying the design;
(e) a statement of the kind of products for which the design is to be used with reference to the classifications in Schedule 1;
(f) a written authorisation of the agent appointing the representative of the applicant, if any.
(3) The application may be accompanied by a specimen of the article embodying the design, if the design is two-dimensional.
(4) If the applicant is not the creator, the application must be accompanied by a statement justifying the applicant’s right to
the registration of the design.
(5) Two or more designs may be the subject of the 1 application if they relate to the same classification in Schedule 1.
(6) An application may contain a request that the publication of the design, upon registration, be deferred for a period not exceeding
12 months from the date of filing or, if priority is claimed, from the date of priority, of the application.
(7) An applicant for the registration of a design may withdraw the application at any time during its examination.
40. Examination and registration of design – (1) If at the time of receipt, the applicant meets the requirements of section 39(1), the Registrar must accord the date of receipt of
the application as the filing date.
(2) After according a filing date, the Registrar must examine the application for compliance with the requirements of section 39.
(3) If the Registrar is satisfied that the conditions referred to in subsection (2) are met, the Registrar must:
(a) register the design in the Registered Designs Register; and
(b) issue to the applicant a certificate of registration of the registered design.
(4) If the Registrar is satisfied that the conditions are not fulfilled, the Registrar must refuse the application and advise the applicant
of the decision to refuse the application.
(5) If an application does not fulfil the requirements under section 39(2) to (4), the Registrar may require the applicant to file a correction
to the application.
(6) If a correction is made under subsection (5), the Registrar must accord the filing date as being the date upon which he or she received
the correction from the applicant.
(7) If no correction is made, the application must be treated as if it had not been filed.
41. Applicant to be notified of non-complying application – If the Registrar considers that an application does not comply with the requirements of this Act, the Registrar must:
(a) inform the applicant; and
(b) give the applicant an opportunity to respond, or to amend the application by correcting only those matters set out in section 39(2) to (4) within a time to be specified by the Registrar.
42. Rights conferred by registration – (1) A person who owns a registered design registered under section 40(3) has the exclusive right to exploit the registered design for
commercial purposes.
(2) Exploitation of a registered design means the making, selling or importation of articles incorporating the registered design.
(3) A person intending to exploit a registered design in Samoa must first obtain the consent of the owner of the design.
(4) The rights under the registered design do not extend:
(a) to acts in respect of articles which have been put on the market anywhere in the world by the owner of the registered design or with the owner’s consent; and
(b) to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace,
territory or waters of Samoa.
(5) A registered design is infringed by a person who without the licence of the registered owner of the registered design does, or authorises
another to do, anything which by virtue of this section is the exclusive right of the registered owner.
43. Duration; Renewal – (1) Subject to section 126, the registration of a registered design is for a period of 5 years from the filing date of the application
for registration.
(2) The registration of a registered design may be renewed for 2 further consecutive periods of 5 years by the payment of the prescribed
renewal fee.
44. Invalidation – (1) An interested person may request the Supreme Court to invalidate the registration of a registered design.
(2) The Supreme Court must invalidate the registration if the person requesting the invalidation proves that:
(a) any of the requirements of sections 37 and 39 are not fulfilled; or
(b) if the registered owner of the registered design is not the creator or the creator’s successor in title.
(3) An invalidated registered design, or claim or part of a claim, has no legal effect from the start.
(4) Subject to an appeal under subsection (5), the decision of the Supreme Court must be notified to the Registrar who must record it
in the Registered Designs Register at the earliest opportunity.
(5) A person affected by the invalidation of a registered design may appeal to the Court of Appeal for a review of the International Bureau’s
decision or the Supreme Court’s decision.
44A. International application and registration of designs – (1) A person may file an international application for the international registration of a design under the 1999 Act to the International
Bureau through the Ministry.
(2) An application made under subsection (1) is made pursuant to requirements and procedures under the Act, 1999 Act, Common Regulations,
Administrative Instructions.
(3) A person referred to under subsection (1) includes any of the following:
(a) a citizen of Samoa;
(b) a permanent resident of Samoa;
(c) a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party;
(d) a person that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory
of a Contracting Party.
(4) Where the applicant files his or her application through the Ministry, the Ministry may charge a prescribed transmittal fee for such
application.
(5) An international application may contain a request that the publication of the design, upon registration, be deferred for a period
not exceeding 12 months from the date of filing or, if priority is claimed, from the date of priority, of the application.
44B. Effects of International Registration – (1) The international registrations shall, from the filing date of the international application, have the same effect in Samoa as a
regularly-filed application for the grant of protection of the industrial design under this Act.
(2) If the Registrar has not communicated a refusal in accordance with Article 12 of the 1999 Act, the international registration shall
have the same effect as a grant of protection for the industrial design under this Act from the filing date of the international
application.
(3) Where the Registrar has communicated a refusal and has subsequently withdrawn, in part or in whole that refusal, the international
registration shall, to the extent that the refusal is withdrawn, have the same effect in Samoa as a grant of protection for the industrial
design under this Act from the filing date of the international application.
44C. Initial Term and renewal of the international Registration and duration of protection – The initial term and renewal of the international registration and duration of protection shall be in accordance with the 1999 Act.
44D. Deferment of publication – The maximum period for the deferment of publication of an industrial design under this Act is 12 months from the date of filing of the application or, if priority is claimed, from the date of priority.
PART 5
TRADE MARKS AND COLLECTIVE TRADE MARKS
45. Definitions – (1) For the purposes of this Act:
“collective association” means an incorporated body that has or is able to have members, and is:
(a) constituted for the joint benefit of its members for the time being; and
(b) so constituted that its membership at any time can be ascertained.
“collective trade mark” means a sign capable of:
(a) being represented graphically; and
(b) distinguishing the origin or any other common characteristic, including the quality, of goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association.
“trade mark” means any sign capable of:
(a) being represented graphically; and
(b) distinguishing the goods or services of one person from another in the course of trade.
“sign” includes the following or any combination of the following, namely, any letter, word, name, signature, numeral,
device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound, scent or taste.
(2) In this Act, unless the context otherwise requires, every reference to:
(a) the use of a sign in relation to goods is a reference to the use of the sign on, or in physical or other relation to, goods; and
(b) the use of a sign in relation to services is a reference to the use of the sign in relation to the provision or availability of services; and
(c) the use of a sign in relation to goods or services includes a reference to the audible use of the sign in relation to goods or
services.
(3) References in this Act to use of a trade mark by the owner include use by a person other than the owner if that use is authorised
by, and subject to, the control of the owner.
46. Acquisition of the exclusive right to a trade mark – The exclusive right to a trade mark is acquired by registration in accordance with the provisions of the Act.
47. Registrability – (1) A trade mark must not be registered:
(a) subject to subsection (2), if it has no distinctive character; or
(b) subject to subsection (3), if the use or registration of a trade mark is contrary to law, public order or morality; or
(c) if the use or registration of a trade mark is likely to deceive or cause confusion, in particular as regards the geographical origin or nature or characteristics of the goods or services concerned; or
(d) if it is identical with, or confusingly similar to, or is an imitation of or contains as an element, an armorial bearing, flag and other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organisation or organisation created by an international convention, unless authorised by the competent authority of that State or organisation; or
(e) if it is identical with, or confusingly similar to, or constitutes a common translation of, a trade mark or trade name which is well known in Samoa for identical or similar goods or services of another person; or
(f) if it (“the first trade mark”) is identical with, or confusingly similar to, or constitutes a common translation of, a trade mark that is registered in Samoa and well-known for goods or services which are not identical or similar to those in respect of which registration is applied for, if the use of the first trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known trade mark and the interests of the owner of the well-known trade mark are likely to be damaged by such use; or
(g) if it is identical to a trade mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date—
(i) for the same goods or services; or
(ii) for similar goods or services, and its use is likely to deceive or confuse; or
(h) if it is similar to a trade mark belonging to a different proprietor and already on the register, or with an earlier filing or priority date in respect of the same or similar goods or services, and its use is likely to deceive or confuse; or
(i) if it is based on matai titles, names of persons or Samoan villages, or religious words or symbols; or
(j) if it contains or consists of a geographical indication or appellation of origin with respect to goods not originating in the territory indicated, if use of the indication in the trade mark for such goods in Samoa is of such a nature as to mislead the public as to the true place or origin; or
(k) if, in relation to a trade mark for wines or spirits, it contains or consists of a geographical indication or appellation of origin
identifying wines or spirits not having this geographical origin.
(2) Despite subsection (1)(a), a non-distinctive trade mark may still be registered if it becomes distinctive through use.
(3) Despite subsection (1)(b), the Registrar may register a trade mark even if use of the trade mark is restricted or prohibited under
the Tobacco Control Act 2008.
48. Application for registration – (1) An application for the registration of a trade mark must be filed with the Registrar and accompanied by the prescribed fee.
(2) An application for the registration of a trade mark must contain:
(a) the applicant’s name, address and nationality including the details of any agents used by the applicant for this purpose; and
(b) a request for registration of the trade mark; and
(c) a reproduction of the trade mark; and
(d) a list of the goods or services or both for which registration of the trade mark is requested, listed under the applicable class or classes of the International Classification in Schedule 2; and
(e) a written authorisation of the agent appointing the representative of the applicant, if any.
(3) If a person, who claims to be the proprietor of several trade marks for the same goods or services or for goods or services of the
same description within a single class, seeks to register those trade marks and the trade marks, although they resemble each other
in material particulars, differ in respect of:
(a) statements or representations as to the goods or services in respect of which the trade marks are used or proposed to be used; or
(b) statements or representations as to number, price, quality or names of places; or
(c) any other matter which is not distinctive and does not substantially affect the identity of the trade marks; or
(d) colour, –
or in any 2 or more of those matters, the trade marks may be registered as a series in one registration.
49. Filing date and examination – (1) Subject to subsection (2), the Registrar must accord as the filing date, the date and time upon which the Registrar receives the
application for a trade mark.
(2) Despite subsection (1), the Registrar must accord the filing date only when the application fee is paid and the requirements of section
48(2) are met.
(3) After according a filing date under this section, the Registrar must:
(a) examine whether the application complies with the requirements of section 48; and
(b) examine and determine whether the mark is a trade mark as defined in section 45 and is registrable under section 47.
50. Acceptance and publication – If the Registrar is satisfied that:
(a) the application complies with the requirements of section 48; and
(b) the mark is a trade mark as defined in section 45; and
(c) the trade mark is registrable under section 47, –
the Registrar must accept the application and cause the application, as accepted, to be published in the Savali.
51. Applicant to be notified of non-complying application – If the Registrar considers that an application does not comply with the requirements of this Act, the Registrar must:
(a) inform the applicant; and
(b) give the applicant an opportunity to respond, or to amend the application by correcting only those matters set out in section 48 within a time to be specified by the Registrar.
52. Revocation of acceptance – The Registrar may revoke the acceptance of an application if:
(a) the application was accepted because of an error or omission made by the Registrar; or
(b) another application that relates to the trade mark has convention priority.
53. Opposition – (1) A person may, within 3 months from the date of publication under section 50, give written notice to the Registrar of opposition to the registration of the trade mark on the grounds that 1 or more of the requirements of sections 45 and 47are not met as well as the following information:
(a) the name and address for service of the opposing person;
(b) if the opposing person has an agent, the agent’s name;
(c) a description or representation of the trade mark;
(d) the number of the application;
(e) each class of goods or services to which the opposition relates;
(f) each ground of opposition.
(2) The Registrar must send a copy of the notice under subsection (1) to the applicant.
(3) The applicant must within 2 months from receiving the copy of the notice under subsection (1) send to the Registrar a written counter
statement, duly executed by the applicant, showing the grounds on which the applicant relies and the following information:
(a) the applicant’s name and address for service;
(b) if the applicant has an agent, the agent’s name;
(c) a response to the opposing person’s ground of opposition, by admitting, denying or claiming lack of knowledge of, each assertion made in the grounds of opposition;
(d) a brief statement of the grounds on which the applicant relies in support of the application for registration.
(4) If the applicant does not provide a counter-statement under subsection (3), the applicant is taken to have abandoned the application.
(5) If the applicant sends a counterstatement, the Registrar must, within 7 days of receiving the counterstatement, provide a copy of
it to the person giving notice of opposition.
(6) Within 2 months of receiving a counter statement, the opposing person must:
(a) file evidence in support of the notice of opposition; or
(b) notify the Registrar that he or she does not intend to file evidence; or
(c) notify the Registrar that he or she wishes to withdraw the application.
(7) The Registrar must decide whether the trade mark should be registered after:
(a) hearing both parties (if they wish to be heard) at a venue determined by the Registrar; and
(b) considering any evidence that may have been filed by any of the parties; and
(c) considering the merits of the case.
(8) A person who is aggrieved as a result of a decision of the Registrar under subsection (7), may appeal the decision to the Supreme
Court.
54. Withdrawal of application – An applicant for the registration of a trade mark may withdraw the application at any time during its examination.
55. Registration of trade mark – (1) Subject to subsection (2), the Registrar must register a trade mark if the Registrar is satisfied that:
(a) the application complies with requirements of section 48; and
(b) the trade mark is a mark as defined in section 45; and
(c) the trade mark is registrable under section 47.
(2) Despite subsection (1), the Registrar must not register a trade mark if:
(a) the trade mark has been opposed within the period referred to in section 53; or
(b) the registration of the trade mark has been opposed and the opposition has not been withdrawn or has not been decided in the applicant’s
favour.
(3) When the Registrar registers a trade mark under subsection (1), the Registrar must:
(a) record the trade mark in the Trade Marks Register; and
(b) issue to the applicant a certificate of registration of the trade mark.
(3A) A trade mark registered under this section may be used for an application for international registration under the Madrid Protocol.
(3B) An application made pursuant to subsection (3A) whether it is from Samoa or from a contracting party or any other prescribed body
is to be made pursuant to requirements and procedures under the Act or as prescribed.
(4) If an Applicant does not satisfy the requirements under subsection (1) the Registrar must refuse the application.
56. Rights conferred by registration and infringement – (1) A person who owns a trade mark registered under section 55 has the exclusive right to use the registered trade mark in relation to
all or any of the goods or services in respect of which the trade mark is registered.
(2) The right under subsection (1) extends to the use of a sign similar to the registered trade mark and use in relation to goods and
services similar to those for which the trade mark has been registered.
(3) A person infringes a registered trade mark if the person does not have the right to use the registered trade mark and uses as a trade
mark in the course of trade, a sign:
(a) identical with the registered trade mark in relation to any goods or services in respect of which the trade mark is registered;
(b) identical with the registered trade mark in relation to any goods or services that are similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse;
(c) similar to the registered trade mark in relation to any goods or services that are identical with or similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or
(d) identical with or similar to the registered trade mark in relation to any goods or services that are not similar to the goods
or services in respect of which the trade mark is registered where the trade mark is well known in Samoa and the use of the sign
takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(4) The rights conferred by registration of a trade mark do not extend to acts in respect of articles which have been put on the market
anywhere in the world by the registered owner or with the owner’s consent.
(5) No registration under this Act is to interfere with any good faith use by a person of:
(a) his or her own name; or
(b) the name of his or her place of business; or
(c) the name of the place of business of any of his or her predecessors in business; or
(d) a sign which is a description of the character, quality, geographical origin or other characteristic of his or her goods or services;
or
(e) a sign to indicate the intended purpose of goods (in particular as accessories or spare parts) or services; or
(f) a sign for the purposes of comparative advertising.
(6) Nothing in this section affects any right of action in relation to geographical indications or appellation of origins and against
any person for passing off goods as those of another person or the remedies relating to those actions.
57. Duration and renewal – (1) Subject to section 126, the registration of a trade mark is for a period of 10 years from the filing date of the application for registration.
(2) The registration of a trade mark may, upon request, be renewed for consecutive periods of 10 years upon the payment of the prescribed
renewal fee.
(3) A renewal of registration may be made within 12 months before the expiry date of the registration.
(4) A prescribed late renewal fee will apply after the expiry date of the registration.
58. Invalidation – (1) An interested person may make a request to the Supreme Court for the registration of a trade mark to be invalidated.
(2) The Supreme Court must invalidate the registration of a trade mark if the person requesting the invalidation proves that any of the
requirements of sections 45 and 47 are not fulfilled.
(3) An invalidated trade mark has no legal effect from the start.
(4) Subject to an appeal under subsection (5), the decision of the Supreme Court must be notified to the Registrar who must record it
in the Trade Marks Register at the earliest opportunity.
(5) A person affected by the invalidation under this section may appeal to the Court of Appeal for a review of the Supreme Court’s
decision.
(6) After a review under subsection (5), if the Court of Appeal decides in favour of the person affected by the invalidation, the Registrar
must restore the person’s right to the trade mark in the Trade Marks Register.
59. Removal on ground of non-use – (1) Subject to subsections (2) and (3), any interested person may request the Registrar to remove a trade mark from the Trade Marks Register
on the ground of non-use.
(2) The Registrar may remove a trade mark if satisfied that up to 1 month prior to filing the request the trade mark had, after its registration,
not been the subject of genuine use by the registered owner or a licensee during a continuous period of not less than 3 years.
(3) A trade mark must not be removed if it is shown that:
(a) special circumstances prevented the use of the trade mark; and
(b) there was a good faith intention to use the trade mark.
(4) The use in subsection (3) includes use by licensees or authorised persons.
60. Collective trade marks – (1) Subject to subsections (2) and (3), sections 45 to 59 apply to collective trade marks.
(2) If an application is made for registration of a collective trade mark:
(a) the registered owner must designate the trade mark as a collective trade mark and must provide a copy of the rules governing the use of the collective trade mark; and
(b) the registered owner of a collective trade mark must notify the Registrar of any changes made in respect of the rules referred
to in paragraph (a) within 1 month of the change being made.
(3) In addition to the grounds specified in section 58, the Supreme Court must invalidate the registration of a collective trade mark
if the person requesting the invalidation proves –
(a) that only the registered owner uses the trade mark; or
(b) that the owner uses or permits its use in contravention of the rules referred to in subsection (2)(a); or
(c) that the owner uses or permits its use in a manner liable to mislead or deceive the public as to the origin or any other common characteristics of the goods or services concerned.
PART 6
PLANT BREEDER’S RIGHTS
61. Definitions and application – (1) In this Act:
“breeder” means:
(a) the person who bred, or discovered and developed, a variety; or
(b) the person who is the employer of a person under (a), or who has commissioned the person’s work; or
(c) the successor in title of the persons under (a) or (b), as the case may be.
“member of UPOV” means a State party to the UPOV Convention of 1961/Act of 1972 or the Act of 1978 or a Contracting Party to the 1991 Act;
“plant” means any variety of plant and includes a fungus;
“plant breeder’s rights” means the rights granted under section 69;
“UPOV” means the International Union for the Protection of New Varieties of Plants founded by the International Convention for the Protection of New Varieties of Plants of 1961 and further mentioned in the Act of 1972, the Act of 1978 and in the 1991 Act;
“variety” means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be:
(a) defined by the expression of the characteristics resulting from a given genotype or combination of genotypes; and
(b) distinguished from any other plant grouping by the expression of at least one of the said characteristics; and
(c) considered as a unit with regard to its suitability for being propagated unchanged.
(2) The following, even if they are new plant varieties, are excluded from protection under this Part:
(a) plant varieties that are contrary to public order or morality; or
(b) plant varieties that are likely to cause serious environmental harm.
(3) This Act applies on the date of its commencement to all plant genera and species.
62. National treatment – (1) Without prejudice to the rights specified in this Act, citizens of a member of UPOV having their registered offices within the territory
of a member of UPOV shall, insofar as the grant and protection of plant breeder’s rights are concerned, enjoy within Samoa,
the same treatment as is accorded by this Act to the citizens of Samoa.
(2) All citizens of a member of UPOV shall comply with the conditions and formalities imposed on the citizens of Samoa.
(3) In this section “citizen” means, where the member of UPOV is a State, a national of that State and, where the member of
UPOV is an intergovernmental organisation, a national of the States which are members of that organisation and includes a natural
person or legal entity.
63. Persons entitled to make application for plant breeders rights – (1) Subject to subsection (2), an application for the grant of plant breeder’s rights in respect of a new variety may be made by or on behalf of any of the following persons and may be made by that person alone or jointly with anyone else who is a breeder of the new variety or his or her assignee:
(a) a breeder or his or her assignee;
(b) the Minister responsible for Agriculture, if the State is the breeder of the new variety or the breeder’s assignee;
(c) the competent authority according to the laws of the country concerned, if the government of a reciprocating country is the breeder
of the new variety or the breeder’s assignee.
(2) An application for the grant of plant breeder’s rights must be made only by the following persons if the State or that government,
individual, company or body corporate is a breeder of the new variety concerned:
(a) the State or the government of a reciprocating country;
(b) an individual who is a citizen or resident of Samoa or a reciprocating country;
(c) a company or body corporate which carries on business or has its principal office in Samoa or a reciprocating country.
64. Application for plant breeder’s rights – (1) A person may file an application to the Registrar for a right to breed a plant.
(2) An application must be in writing and accompanied by a prescribed fee.
(3) An application must contain:
(a) the applicant’s name, address and nationality including the details of any agents used by the applicant for this purpose; and
(b) information concerning the origins of the plant concerned and give the full name of the breeder; and
(c) a request for the grant of the plant breeder’s rights; and
(d) a description of the new variety of plant including the name of the new variety of plant; and
(e) a sample of the new plant variety referred to in the description of any claim; and
(f) a statement stating whether or not the new plant variety for which protection is claimed is based on a knowledge available within any local or indigenous community whether from Samoa or elsewhere; and
(g) a written authorisation of the agent appointing the representative of the applicant, if any.
(4) If the applicant is not the breeder, the request must be accompanied by a statement justifying the applicant’s right to the
plant breeder’s rights.
(5) The description in subsection (3)(e) must disclose the new plant variety in a manner which is clear and complete enough for the new
plant variety to be recognised.
(6) A sample submitted by an applicant under subsection (3)(f) must be provided to the Registrar if he or she thinks it is necessary for
the understanding of the new plant variety and must include samples of reproductive material necessary for the reproduction of the
plant concerned in such quantities as the Registrar may require.
(7) The Registrar may use the description and the sample required under subsections (3)(e) and (f) to interpret the claim.
(8) Subject to subsection (10), if the application is based on or derived from knowledge available within any local or indigenous community
the Registrar may direct the applicant to furnish evidence as to the applicant’s title or authority to make use of such knowledge.
(9) The Registrar must only direct an applicant for evidence under subsection (8) if the applicant makes a written statement that the
new plant variety for which protection is claimed is based on or derived from knowledge available within any local or indigenous
community.
(10) If an applicant fails to provide evidence as directed by the Registrar under subsection (9), the Registrar may, cease to deal further
with the application.
(11) The applicant may withdraw the application at any time during the period that it is being examined by the Registrar.
65. Applicant to be notified of non-complying application – If the Registrar considers that an application does not comply with the requirements of this Act, the Registrar must:
(a) inform the applicant; and
(b) give the applicant an opportunity to respond, or to amend the application by correcting only those matters set out in section 64 within a time to be specified by the Registrar.
66. Publication of application – If it appears to the Registrar that the plant concerned in an application is a new variety of a prescribed kind and the applicant is entitled to apply for plant breeder’s rights in respect of it, the Registrar must publish a notice in the Savali with the following particulars:
(a) the name of the applicant;
(b) the date of the application;
(c) the proposed name of the plant concerned;
(d) such particulars relating to the application and the plant concerned as may be prescribed or as the Registrar thinks appropriate.
67.Filing date and examination – (1) Subject to subsection (2), the Registrar must accord as the filing date, the date and time upon which the Registrar receives the
application for a plant breeder’s right.
(2) Despite subsection (1), the Registrar must accord the filing date only when the application fee is paid and the requirements of section
64(3) are met.
(3) The Registrar must examine any application under this Part for compliance with the provisions of sections 62 to 64.
(4) During examination, the Registrar may:
(a) grow the variety; or
(b) carry out other necessary tests; or
(c) cause the growing of the variety; or
(d) take into account the results of growing tests or other trials which have already been carried out.
(5) During examination, the Registrar may require the breeder to provide all necessary information, documents or material as the Registrar
considers necessary in the circumstances.
68. Provisional protection – (1) Provisional protection is provided to safeguard the interests of the breeder during the period between the filing date of the application
for the grant of a plant breeder’s right and the grant of that right.
(2) The holder of a plant breeder’s right shall at least be entitled to equitable remuneration from any person who, during the period
provided in subsection (1), has carried out acts which, once the right is granted, require the breeder’s authorisation as provided
in section 74.
(3) Provisional protection shall only take effect on persons whom the breeder has notified of the filing of the application.
69. Grant of plant breeder’s rights and changes in rights – (1) If the Registrar is of the opinion that the application complies with the requirements of sections 62 to 64 and the plant variety is:
(a) new; and
(b) distinct; and
(c) uniform; and
(d) stable, –
the Registrar must grant the plant breeder’s rights.
(2) If the Registrar grants a plant breeder’s right, the Registrar must:
(a) record the right in the Plant Breeder’s Rights Register; and
(b) issue to the applicant a certificate of the grant of the plant breeder’s right; and
(c) make available copies of the plant breeder’s rights to the public, on payment of the prescribed fee.
(3) Subject to subsection (4), the Registrar must, upon the request of the owner of the plant breeder’s right, make changes in
the description or samples of the new plant variety in order to limit the extent of the protection conferred by it.
(4) If an applicant does not meet the requirements of subsection (1), the Registrar must:
(a) refuse the application; and
(b) notify the applicant in writing of the Registrar’s decision.
70. Novelty – The variety is taken to be new if, at the date of filing of the application for a plant breeder’s right, propagating or harvested material of the variety has not been sold or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety:
(a) in Samoa, earlier than 1 year before the date of filing of the application; and
(b) in a territory other than Samoa, earlier than 4 years or, for trees or vines, earlier than 6 years before that date.
71. Distinctness – (1) A variety is taken to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge
at the time of the filing of the application.
(2) Subject to subsection (3), the filing of an application for the granting of a plant breeder’s right or for the entering of another
variety in an official register of varieties, in any country, shall be taken to render that other variety a matter of common knowledge
from the date of the application.
(3) Despite subsection (2), common knowledge is to be assumed only where the application leads to the granting of a plant breeder’s
right or to the entering of the other variety in the official register of varieties.
72. Uniformity – A variety is taken to be uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.
73. Stability – A variety is taken to be stable if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each cycle.
74. Scope of plant breeder’s rights – (1) Subject to sections 75 and 76, the following acts in respect of the propagating material of the protected variety requires the consent of the breeder:
(a) production or reproduction (multiplication);
(b) conditioning for the purpose of propagation;
(c) offering for sale;
(d) selling or other marketing;
(e) exporting;
(f) importing;
(g) stocking for any of the purposes mentioned in (a) to (d), above.
(2) A consent may be subject to conditions and limitations as may be specified in writing by the breeder.
(3) Subject to sections 75 and 76, the acts referred to in subsection (1) for harvested material, including entire plants and parts of
plants, obtained through the unauthorised use of propagating material of the protected variety require the consent of the breeder,
unless the breeder has had reasonable opportunity to exercise his or her right to the propagating material.
(4) Subsections (1) to (3) also apply to:
(a) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety; and
(b) varieties which are not clearly distinguishable in accordance with section 71 from the protected variety; and
(c) varieties whose production requires the repeated use of the protected variety.
(5) A variety is taken to be essentially derived from another variety (“the initial variety”) when:
(a) it is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety; and
(b) it is clearly distinguishable from the initial variety; and
(c) except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the
essential characteristics that result from the genotype or combination of genotypes of the initial variety.
(6) Essentially derived varieties may be obtained by the selection of a natural or induced mutant, or of a somaclonal variant, the selection
of a variant individual from plants of the initial variety, backcrossing, or transformation by genetic engineering.
75. Exceptions to breeder’s rights – The plant breeder’s right shall not extend to:
(a) acts done privately and for non-commercial purposes; or
(b) acts done for experimental purposes; or
(c) acts done for the purpose of breeding other varieties, and, except where the provisions of section 74(4) apply, acts referred to in section 74(1) to (3) in respect of such other varieties.
76. Exhaustion of the breeder’s rights – (1) The plant breeder’s right shall not extend to acts concerning any material of the protected variety, or of a variety covered by the provisions of section 74(4) which has been sold or otherwise marketed by the breeder or with his or her consent anywhere in the world, or any material derived from that material, unless such acts:
(a) involve further propagation of the variety in question; or
(b) involve an export of material of the variety, which enables the propagation of the variety, into a country which does not protect
varieties of the plant genus or species to which the variety belongs, except where the exported material is for final consumption
purposes.
(2) In this section, “material” means, in relation to a variety:
(a) propagating material of any kind; or
(b) harvested material, including entire plants and parts of plants; or
(c) any product made directly from the harvested material.
77. Duration of plant breeder’s rights – (1) Subject to section 126, the term of the plant breeder’s rights is 20 years from the date on which they were granted.
(2) The owner may apply to the Registrar to extend the period of protection beyond 20 years.
(3) Upon the receipt of an application under subsection (2), the Registrar may grant a further period of protection if the Registrar is
satisfied that for reasons beyond the applicant’s control the applicant has not been adequately remunerated by the grant of
such rights.
(4) An extended period of protection may not exceed 5 years and is subject to the payment of a prescribed fee.
(5) An extension may be made subject to such conditions, if any, as the Registrar considers appropriate.
(6) A decision of the Registrar made under this section may be reviewed by the Supreme Court.
78. Exploitation by Government – (1) Subject to the provisions of this section, the Minister may decide that, even without the consent of the owner of a plant breeder’s
right, a government agency or a third person designated by the Minister may exploit the new plant variety.
(2) The Minister may only exercise the power under subsection (1) if the public interest so requires.
(3) The exploitation of the plant breeder’s right is subject to the payment to the breeder of adequate remuneration.
(4) The Minister must make a decision under subsection (1) only after hearing the breeder’s submissions, if any, on the matter
and any interested person who wishes to be heard.
(5) The Minister may, upon receiving a request from any party, and after hearing any party wishing to be heard, vary the terms of the
decision authorising the exploitation of the plant breeder’s right if the Minister considers that the circumstances justify
the variation.
(6) Subject to subsection (7), the Minister must terminate an authorisation upon the request of the breeder, if the Minister is satisfied
that the circumstances which led to the decision have ceased to exist and are unlikely to recur.
(7) Despite subsection (6), the Minister must not terminate the authorisation if he or she is satisfied that there is a need for adequate
protection of the legitimate interests of the government agency or third person designated the authorisation.
(8) A decision of the Minister made under this section may be reviewed by the Supreme Court.
(9) In this section “any party” means:
(a) the breeder; or
(b) the government agency; or
(c) a third person authorised to exploit the plant breeder’s right.
79. Measures regulating commerce – The plant breeder’s right is independent of any measure to regulate the production, certification and marketing of material of varieties or the importing or exporting of such material.
80. Variety denomination – (1) A variety shall be designated by a denomination which will be its generic designation, and subject to subsection (4), no rights in
the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the
variety, even after the expiration of the plant breeder’s right.
(2) The denomination must:
(a) enable the variety to be identified; and
(b) not consist solely of figures except where this is an established practice for designating varieties; and
(c) not be liable to mislead or to cause confusion concerning the characteristics, value or identity of the variety or the identity of the breeder; and
(d) be different from every denomination which designates, in the territory of any member of UPOV, an existing variety of the same
plant species or of a closely related species.
(3) The denomination of the variety is to be submitted by the breeder to the Registrar, and where it is found that the denomination does
not satisfy the requirements of subsection (2), the Registrar must refuse to register it and shall require the breeder to propose
another denomination within 12 months.
(4) Despite subsection (1), prior rights of third persons are not to be affected and, if by reason of a prior right, the use of the denomination
of a variety is forbidden to a person who, under subsection (7) is obliged to use it, the Registrar shall require the breeder to
submit another denomination for the variety.
(5) A variety must be submitted to all members of UPOV under the same denomination and the Registrar shall register the denomination
so submitted, unless it considers the denomination unsuitable, in which case, the Registrar shall require the breeder to submit another
denomination.
(6) The Registrar must ensure that the authorities of the members of UPOV are informed of matters concerning variety denominations, in
particular the submission, registration and cancellation of denominations and any such authority may address its observations, if
any, on the registration of a denomination to the Registrar.
(7) A person who offers for sale or markets propagating material of a variety protected within Samoa is obliged to use the denomination
of that variety, even after the expiration of the plant breeder’s right in that variety, except where, under subsection (4),
prior rights prevent such use.
(8) When a variety is offered for sale or marketed, it is permitted to associate a trademark, trade name or other similar indication
with a registered variety denomination and if such an indication is so associated, the denomination must nevertheless be easily recognizable.
(9) The denomination shall be registered by the Registrar at the same time as the plant breeder’s right is granted.
81. Invalidation of plant breeder’s right – (1) An interested person may apply to the Supreme Court to invalidate a plant breeder’s right.
(2) A breeder’s right is to be declared void when it is proven that:
(a) any of the requirements of this Part is not fulfilled; or
(b) that, where the grant of the plant breeder’s right has been essentially based upon information and documents furnished by the breeder, the conditions laid down in sections 72 and 73 were not complied with at the time of the grant of the breeder’s right; or
(c) that the plant breeder’s right has been granted to a person who is not entitled to it, unless it is transferred to the
person who is so entitled.
(3) No plant breeder’s rights shall be declared void for reasons other than those specified under subsection (1).
82.Cancellation of plant breeder’s rights – (1) A plant breeder’s right may be cancelled if:
(a) it is established that the conditions laid down in sections 72 and 73 are no longer fulfilled; and
(b) after being requested to do so within 6 months—
(i) the breeder does not provide the Registrar with the information, documents or material which are necessary for verifying the maintenance of the variety; or
(ii) the breeder fails to pay such fees as may be payable to keep his or her right in force; or
(iii) the breeder does not propose, where the denomination of the variety is cancelled after the grant of the right, another suitable
denomination.
(2) No plant breeder’s right shall be cancelled for reasons other than those under subsection (1).
PART 7
GEOGRAPHICAL INDICATIONS OR APPELLATION OF ORIGINS
83. Definitions – In this part:
“appellation of origin” means a denomination as referred to in Article 2(1)(ii) of the Geneva Act of the Lisbon Agreement;
“Administrative Instructions” means the Administrative Instructions made under the Geneva Act of the Lisbon Agreement as revised from time to time;
“area” includes a country, region, trans-border geographical areas, locality or place;
“Common Regulations” means the Common Regulations under the Geneva Act of the Lisbon Agreement, as last revised;
“Contracting Party” means any State or intergovernmental organization party to the 1999 Act;
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