IP/N/6/WSM/1  
1 February 2019 
(19-0582) Page: 1/6 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original:  English   
 
CHECKLIST OF ISSUES ON ENFORCEMENT1 
RESPONSES FROM SAMOA  
Introduction  
Civil and Administrative Procedures and Remedies  
 (a)  Civil judicial procedures and remedies  
 
1.  Specify the courts which have jurisdiction over IPR infringement cases.  
 
• Supreme Court of Samoa. Refer to section  124, IP Act 2011.  
 
2.  Which persons have standing to assert IPRs? How may they be represented? Are 
there  requirements for mandatory personal appearances before the court by the right 
holder?   
 
• The proprietor of an IP right - owner (natural/legal persons, individual, joint/collective 
owners), successor, predecessor - licensee, assignee, agent etc.  
 
3.  What authority do the judicial authorities have to  order, at the request of an 
opposing party, a party to a proceeding to produce evidence which lies within its control?  
 
• Statutory. Refer to section 53(6), IP Act  2011.  
 
4.  What means exist to identify and protect confidential information brought forward 
as evidence?  
 
• Statutory. Refer to  section  125(4), IP Act 2011.  
 
5.  Describe the remedies that may be ordered by the judicial authorities and criteria, 
legislative  or jurisprudential, for their use:  
 
- injunctions;  
 
-  damages, including recovery of profits, and expenses, including attorney's 
fees;  
 
-  destruction or other disposal of infringing goods and materials/implements for 
their  production;  
 
-  any other remedies.  
 
                                                
1 Document IP/C/5 . IP/N/6/WSM/1  
 
- 2 - 
 
   (a) Injunctions  
 
o use of misleading GIs, section 88(2), IP Act 2011;  
o prevention of an infringement or an unlawful act,  section  125, IP Act 2011;  
o copyright infringements, section 25 of Copyright Act 1998 
 
(b) damages, including recovery of profits, and expenses, including attorney's fees  
 
o use of misleading GIs, section 88, IP Act 2011;  
o prevention of an infringement or an unlawful act, section  125, IP Act  2011;  
o copyri ght infringements, sections 26 and 28, Copyright Act 1998 
 
(c) destruction or other disposal of infringing goods and materials/ implements for their 
production  
 
o Infringement of Copyright Act 1998 or IP Act 2011, section 314 Cust oms Act  2014 
 
(d) any other remedies  
 
o Fines, section  135, IP Act 2011;  
o Imprisonme nt, section  135, IP Act 2011  
 
6.  In what circumstances, if any, do judicial authorities have the authority to order the 
infringer  to inform the right holder of the identity of third persons involved in the 
production and  distribution of the goods or services found to be infringing and of their 
channels of distribution?  
 
• Redress obtained through a civil claim.  
 
7.  Describe provisions relating to the indemnification of defendants wrongfully 
enjoined. To  what extent are public authorities and/or officials liable in such a situation 
and what "remedial  measures" are applicable to them?  
 
• Redress obtained through a civil claim.  
• Civil Protection for the Registrar or delegate provided under s.127 of IP Act 2011 if he or 
she acted in good faith or acted under the authority of the Registrar.  
 
8.  Describe provisions governing the length and cost of proceedi ngs. Provide any 
available da ta on the actual duration of proceedings and their cost.  
 
• There is no specific provision. However from a number of infringement cases that have 
made it to Court, the average duration of proceedings is 3 days and costs awarded are 
usually less than 10,000 t ala. That is about 4,000USD.  
 
(b)  Adminis trative procedures and remedies  
 
9.  Reply to the above questions in relation to any administrative procedures on the 
merits and  remedies that may result from these procedures.  
 
Length and cost of administrative proceedings:  
 
• The process usually takes about 3 months and costs are  minimal;  
• The process usually involved the Office of the Registrar receiving a complaint which 
triggers an investigation and a visit to the location where accused is located upon 
reception  of a warrant. Ministry officers, officers usually conduct investigatio n which 
includes the taking of evidence;  
• Once confirmed then a letter cautioning the infringer is prepared. (Most matters are 
resolved at this  level);  
• If warning is not obeyed then the Registrar will proceed to prosecute the infringer through 
the Attorney General's Office pursuant to Cop yright Act 1998 or IP Act 2011;  
• At the border, the Registrar's Office works in collaboration with the Ministry for Revenue 
and Customs, the Attorney Gene ral's Office  and the Ministry of Police to assess any IP/N/6/WSM/1  
 
- 3 - 
 
  infringing g oods detained by Customs. Upon confirmation of infringement then forfeited 
by Comptroll er and disposed of pursuant to section s 313 and 314 of the Customs 
Act 2014;  
• Any wrongful detention is compensated. Section 317, Customs Act 2014.  
 
Provisional Measures  
(a)  Judicial measures  
 
10.  Describe the types of provisional measures that judicial authorities may order, and 
the legal  basis for such authority.  
 
• Copyrighted Materials  
 
o Injunctions; and  
o Other remedies;  
 
▪ Impound copies of infringing works;  
▪ Impound tools used  to make infringing works  
 
See section 25 of Copyright Act 1998  
 
• All other categories of IP under IP Act 2011.  
 
o Injunction;  
 
See section 125 of IP Act 2011  
 
11.  In what circumstances may such measures be ordered inaudita altera parte ? 
 
• Under section 25(a) of the Copyright Act, it is to prohibit the committing or continuation 
of committing an infringement;  
• Section 25(b) is issued so to impound infringing copies;  
• Section 25(c) is issued to impound equipment used to produce infringing copies;  
• Under section 125 of  IP Act, it is to prevent infringement, immin ent infringement or an 
unlawful  act. 
 
12.  Describe the main procedures for the initiation, ordering and mainte nance in force 
of provisional  measures, in particular relevant time -limits and safeguards to protect the 
legitimate interests  of the defendant.  
 
• Proceedings for the recovery of IP are by way of action purs uant to Supreme Court 
Rule 11. 
 
• Injunction may be o btained through an application for Interim Order pursuant to Supreme 
Court Rule 71 by an order for a writ of injunction through an action pursuant to Supreme 
Court Rule  196. 
 
• Limitation Act 1975 - after 6 years from date which the cause of action accrued . 
 
13. Describe provisions governing the length and cost of proceedings. Provide any 
available data  on the actual duration of proceedings and their cost.  
 
• There are no legislative provisions which govern the length or cost of proceedings. The 
length of relevant proceedings is usually determined by th e Court and costs by each law 
firm. 
 
 IP/N/6/WSM/1  
 
- 4 - 
 
  (b)  Administrative measures  
 
14.  Reply to the above questions in relation to any administrative provisional measures.  
 
• Copyright Act provides for injunctional  relief and any other remedies deemed fit for 
infringement of folklore and for the enforcement of copyright rights.  See sections  25 and 
30 of the Copyright Act 1998.  
 
• The Intellectual Property Act 2011, provides  for injunction as a remedy and  any other 
remedies the Court deems fit for the use of misleading geographical indication pursuant 
to section 88; and as a preventativ e measure against infringement, an imminent 
infringement or an unlawful act as per  Act. 
 
Special Requirements Related to Border Measures  
15.  Indicate for which goods it is possible to apply for the suspension by the customs 
authorities  of the release into free circulation, in particular whether these procedures are 
available also  in respect of goods which involve infringements of intellectual property 
rights other than  counterfeit trademark or pirated copyright goods as defined in the TRIPS 
Agreement (footnote  to Article 51). Specify, together with relevant criteria, any imports 
excluded from the application  of such procedures (suc h as goods from another member 
of a customs union, goods in transit  or de minimis imports). Do the procedures apply to 
imports of goods put on the market in  another country by or with the consent of the right 
holder and to goods destined for exportation?  
 
• Materials that infringe copyright, trade marks, registered designs.  
 
See section 308 of Customs Act 2014  
 
16.  Provide a description of the main elements of the procedures relating to the 
suspension of the  release of goods by customs authorities, in partic ular the competent 
authorities (Article 51),  the requirements for an application (Article 52) and various 
requirements related to the duration  of suspension (Article 55). How have Articles 53 
(security or equivalent assurance), 56  (indemnification of the i mporter and of the owner 
of the goods) and 57 (right of inspection  and information) been implemented?  
 
• A person who is the owner of an IP right may give notice to the Comptroller stating that 
he or she is the owner of such IP right and to suspend the custo ms clearance procedure 
of any such goods that are suspected to infringe the owner's IP rights. See  section  307 
of the Customs Act 2014;  
• Comptroller may suspend the clearance of certain goods if he or she has reasonable 
grounds to suspect that such goods in fringe the IP rights of the person who  gave notice;  
• Comptroller may request a security from the pers on who gave notice, see section  309, 
Customs Act 2014;  
• Comptroller must give notification to claimant and importer of the suspended customs 
clearance, see  section  310 Customs Act 2014;  
• Comptroller must allow claimant and importer to inspe ct and examine detained goods, 
see section  311, Customs Act 2014;  
• Goods detained must be kept in a secure place until Comptroller:  
 
o Revokes the notice upon review;  
o Receives an order of the Court to release goods;  
o Abandonment of infringement proceedings;  
o 10 days has lapsed since notification given under s. 310 and no notice of 
infringement proceedings have been served to the Comptroller.  
 
• Where detained goods are forfeited by consent or after proceedings pursuant to 
sections  314 and 315 of Customs Act 2014, forfeited goods are to be disposed of outside 
the channels of commerce in a manner to avoid harm to o wner of IP right;  
 
• If detention of goods is wrongful then importer is co mpensated, section 317 of Customs 
Act 2014.  IP/N/6/WSM/1  
 
- 5 - 
 
  17.  Describe provisions governing the length and cost of proceedings. Provide any 
available data  on the actual duration of proceedings and their cost. How long is the validity 
of decisions  by the competent autho rities for the suspension of the release of goods into 
free circulation?  
 
• See sections 307 to 317 of the Customs Act 2014.These provisions provide for the length 
of time and process regarding the treatment of suspected goods.  That is upon an 
application by  an interested party such goods may  be detained for  10 days and a further  
10 days upon application and satisfaction of the Comptroller that it is necessary. Goods 
however may be released to the importer upon the lapse of the first 10 days if claimant 
fails to serve the Comptroller with a noti ce of infringement proceedings. This can be 
extended . 
 
18.  Are competent authorities required to act upon their own initiative and, if so, in what  
circumstances? Are there any special provisions applicable to ex offici o action?  
 
• No. Action of Comptroller triggered by a notification by a claimant. See sections  307 and 
308 of Customs Act 2014.  
 
19.  Describe the remedies that the competent authorities have the authority to order 
and any criteria  regulating their use.  
 
• The Comptroller has the power to suspend customs clearance procedure;  
• Demand a security from the claimant before suspending customs clearance;  
• Release detained good after 10 days if not served with a notice of infringement 
proceedings.  
• Forfeit goods by consen t of importer;  
• Destroy infringing goods or dispose them through channels outside of the commercial 
channels harmful to the claimant;  and 
• Order claimant to compensate an i mporter for wrongful detention.  
 
See sections 307 to 317 of Customs Act 2014.  
 
Crimina l Procedures  
20.  Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.  
 
• Supreme Court of Samoa. See section 2 of the Copyright Act 1998 and Section 2 of the 
Intellectual Property Act 2011.  
 
21.  In respect of which infringements of which intellectual property rights are criminal 
procedures and penalties available?  
 
• All types of infringements - Copyrighted Materials see  section 25(2) of Copyright 
Act 1998;  
• Misleading Geographical Indications see  section  102(a) of  IP Act; 
• Violation of  rights of Patent owner see section  125(3) of IP Act;  
• Violation of  right of innovative patent owner see  section  125(3)  of IP Act;  
• Making false statements - All intellectual properties to be registered under IP Act see  
section  134; 
 
22.  Which public authorities are responsible for initiating criminal proceedings? Are they 
required  to do this on their own initiative and/or in response to complaints?  
 
• Attorney General or prosecutor acting under the direction of the Attorney General, a 
constab le or a private person. See section 2 of the Crimes Act 2013.  
 
23.  Do private persons have standing to initiate criminal proceedings and, if so, who?  
 
• Yes, see section 2 of the Crimes Act 2013 and section 2 of the Criminal Procedure 
Act 1972 where the definition of prosecutor includes a private or local body.  
 IP/N/6/WSM/1  
 
- 6 - 
 
  24.  Specify, by category of IPR and type of infringement where necessary, the penalties 
and other remedies that may be imposed:  
 
-  imprisonment;  
-  monetary fines;  
- seizure, forfeiture and destruction of infringing goods and materials and 
implements for their production;  
- other.  
 
- imprisonment  
 
• All categories see section  125 IP Act 2011;  
 
- monetary fines  
 
• All categories see section  125 IP Act 2011;  
 
- seizure, for feiture and destruction of infringing goods and materials and implements for 
their production  
 
• All categories may be seized by the police under sections 30 and 3 1 of the Police 
Powers Act 2007  and section 61 of the Police Service Act  2009;  
 
- other.  
 
25.  Describe provisions governing the length and any cost of proceedings. Provide any 
available  data on the actual duration of proceedings and their cost, if any.  
 
• There are no specific legislative provisions governing the length and cost of proceedings. 
But from practice it can take about 6 months. Costs are determined independently by law 
firms. Government prosecutions born by Government budget.  
 
 
__________