Fiji – Paris Convention accession and practice update

Two years ago we reported that the Fijian Parliament had passed IP bills that created the new Acts of 2021.  Whilst the commencement date is still to be announced, these laws will bring Fiji into line with the international trade mark community, with major changes such as adaptation of the Nice classification and provisions for Madrid protocol designations.

In partial preparation for these new laws, Fiji deposited its instrument of accession to the Paris Convention for the Protection of Industrial Property on 19 October 2023, so becoming the 180th member state.  Fiji will become bound by the Paris Convention on 19 January 2024, though its legal framework will only apply once the local laws are enacted. 

Its current 1933 Trade Marks Act is almost a century old and uses a classification system that is based largely on the one created with the UK’s Trade Mark Registration Act of 1875 (referred to colloquially as “pre-1938 classification”).  There are 50 classes of goods, with a catch-all class 50 then divided into a further ten sub-classes.  Services cannot be protected apart from via the tenuous (International) class 09 and 16 equivalents for goods used for such services.

Whilst the changes to the law await a commencement date, we are pleased to report an important update to local practice, where the local Registry is now allowing applicants to file a second application for the same trade mark within the same class, as long as it covers different goods.  This change mirrors the current practice in most other countries.  Once registered, the second application will be associated with the initial registration.

By allowing multiple applications for the same trade mark in the same class, businesses can now secure broader protection for their brand across a wider range of goods. This flexibility enables them to adapt to evolving market demands and expand their product offerings without compromising their trade mark rights or requiring perfect foresight.  However, with the original goods precluded from the second application, the owner is left with no option other than to maintain both registrations.

The previous practice was to allow further goods to be added to the registration via a post-grant amendment.  This stance was not supported by the law, nor did it allow third parties the opportunity to contest the application for the goods that were added after the opposition period had ended.

Goods can also be added to recently filed applications on the basis that it was a clerical error, as long as it is before the application is approved for publication.

This practice change is welcomed in advance of the major shifts expected by the new law.