2011                            Intellectual Property                             No. 9  
 
 
 
 
 
 
 
 
 
 
SAMOA  
 
Arrangement of Provisions  
 
PART I  
PRELIMINARY  
 
1. Short title and commencement  
2. Interpretation  
3. Act to bind State  
 
PART II  
PATENTS  
 
4. Definition of  “patent”  
5.  Patentable inventions  for the 
purpose of a standard patent   
6. Right to patent  
7. Application for a patent  
8. Unity of invention; amendment 
and division of application  
9.  Information concerning 
corresponding foreign 
applications patents  
10. Filing date and examination  
11. Grant of patent and changes in 
patents  
12. Rights conferred by patent  
13. Duration and maintenance fees  
14. Exploitation by Government or 
authorised person   
15. Import of patented 
pharmaceutical products  
16.  Non-voluntary licences  
17. Invalidation  
18. Test batches of patented 
products   PART III  
INNOVATION PATENT S 
 
19.   Definition of “innovation 
patent”  
20. Patentable inventions for the 
purpose of an innovation 
patent   
21. Right to an innovation patent  
22.   Application for an innovation 
patent  
23.   Unity of invention: 
amendment and division of 
application  
24.   Information concerning 
corresponding foreign 
applications  
25.   Filing date and formalities 
examination  
26. Grant of innovation patent 
and changes in in novation 
patents  
27.  Rights conferred by 
innovation patent  
28.  Invalidation  
29.  Innovation patents to expire  
30.  Conversion of applications of 
patent or innovation patent  
 
PART IV  
DESIGNS  
 
31.  Definition of “design” and 
“creator”  
 
 
  
2                           Intellectual Property                          2011, No. 9  
 
32.   Design right   
33. Ownership of design right   
34. Duration of design right  
35.  Qualification for design right 
protection  
36.  Rights of design right owner and 
infringement  
37.  Registrable design  
38.  Right to registration of design  
39.  Application for   registration  
40.  Examination and registration of 
design   
41.  Applicant to be notified of non -
complying application  
42.   Rights conferred by registration  
43.  Duration; Renewal   
44.  Invalidation    
 
PART V  
MARKS  AND COLLECTIVE 
MARKS  
 
45. Definition s  
46. Acquisition of the exclusive 
right to a mark  
47.  Registrability   
48. Application for registration  
49. Filing date and e xamination  
50. Acceptance and publication  
51. Applica nt to be notified of non -
complying application  
52. Revocation of acceptance    
53. Opposition    
54. Withdrawal of application  
55. Registration of mark    
56. Rights conferred by registration  
and infringement   
57. Duration and renewal  
58. Invalidation    
59. Removal on grounds of non -use  
60. Collective marks  
 
PART VI  
PLANT BREEDER’S RIGHTS  
 
61.  Definition s and application  
62. National treatment  
63.  Persons entitled to make 
application for plant breeders  
rights  64. Application for plant 
breeder’s rights  
65. Applicant to be notified of 
non-complying application  
66. Publication of application  
67. Filing date and e xamination  
68. Provisional protection  
69. Grant of plant breeder’s rights  
      and changes in rights  
70. Novelty  
71. Distinctness  
72. Uniformit y 
73. Stability  
74. Scope of plant breeder’s 
rights  
75. Exceptions to breeder’s rights  
76. Exhaustion of the breeder’s  
      rights  
77. Duration of plant breeder’s   
       rights  
78. Exploitation by Government  
79. Measures regulating 
commerce  
80. Variety  denomination  
81. Invalidation of plant 
breeder’s right  
82. Cancellation of plant 
breeder’s rights  
 
PART VII  
GEOGRAPHICAL 
INDICATIONS  
 
83. Definitions of “area”, 
“geographical indication”  
84. Prohibition against use of 
misleading geographical 
indications  
85. When geographical indication 
regarded as applied to a 
product  
86. When geographical indication 
regarded as misleading  
87. Institution of proceedings 
regarding use of misleading 
geographical indication  
88. Remedies available in 
proceedings regarding use of 
misleading geographical 
indication  2011, No. 9                        Intellectual Property                            3 
 
89.  Defences available in 
proceedings regarding use of 
misleading geographical 
indication  
90.  Presumptions when 
geograph ical indication is 
registered  
91.  Application for registration  
92.  Persons entitled to apply for 
registration  
93.  Filing date, e xamination and 
acceptance of application  
94.  Applicant to be notified of non -
complying application  
95.  Publication and opposition   
96.  Registration  
97.  Conditions on registration  
98.  Homonymous indications  
99.  Effective date of registration  
100. Effect of registration  
101. Saving of right to use certain 
descriptions, names or marks  
102. Act not to be construed as 
limiting other laws preventing 
misuse of geographical 
indications  
 
PART VIII  
LAYOUT -DESIGNS OF 
INTEGRATED CIRCUITS  
 
103. Definition of “integrated circuit” 
and “layout -design”  
104. Registrable layout - designs of 
integrated circuits  
105. Right to registrat ion of layout -
design  
106. Application for registration  
107. Examination and registration of 
layout -design  
108. Applicant to be notified of non -
complying application  
109. Rights conferred by registration  
110. Commencement and duration of 
protection  
111. Invalidation  
 
PART IX  
ENFORCEMENT AND 
ADMINISTRATION OF RIGHTS  
 
112. Personal Property  113. Changes in registration  
114. Disclaimer  
115. Powers of entry  and search  
116. Licence contract  
117. Agents  
118. Intellectual Property 
Registry  
119. Registers  
120. Correction of errors; 
extension of  time 
121. Replacement certificate of 
registration  
122. Language of documents and 
translations  
123.  Exercise of discretionary 
powers  
124. Competence of court; 
Appeals  
125. Infringement  
126. Convention applications  
 
PART X  
MISCELLANEOUS  
 
127.  Civil protection for the 
Registrar  
128.  Fees  
129. Grace period for fees  
130. Restoration of rights into 
Register  
131. Forms  
132. Offence for groundless 
threat of legal proceedings  
133. Offence of making false 
entries in register, et c., for 
production or tendering false 
entries  
134. Offence for making false 
statements for the purpose of 
deceiving or influencing any 
authority or officer  
135.  Penalties  
136. Offences by companies  
137. Regulations  
138. Repeal  
139. Consequential amendment s 
140. Savings and Transitional  
 
Schedules  
 
 
__________  4                              Intellectual Property                            2011, No. 9  
 
 
2011, No.  9 
 
AN ACT  to provide protection for intellectual property rights in 
Samoa which are marks, patents,  innovation patents , plant 
breeder’s  rights , design rights, registered designs, geographical 
indications  and lay-out design s of integrated circuits . 
                                                                                     [11th October 201 1] 
 
BE IT ENACTED  by the Legislative Assembly of Samoa in 
Parliament assembled as follows:  
 
PART I  
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 nominat ed by the Minister.  
 
2. Interpretation - In this Act, unless the context provides 
otherwise:  
“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 p redecessor in title;  
“business ” means any activity established primarily for the 
purpose of generating a profit, and includes an enterprise;  
“Convention country ” means a country which is a member of the 
Paris Convention  or other international agreements re lating to 
intellectual property rights to which Samoa is a party ; 
“determined fee ” means a fee determined under section 1 28; 
“Government   agency ” means any public body as defined under 
section 2 of the Public Bodies (Pe rformance and 
Accountability) Act 200 1 and includes any person, whether 
incorporated or not, duly authorized in writing by the 
Government to act on its behalf;  
“industry ” includes the handicraft, agriculture, fishery, 
pharmaceuticals and services industry;   
2011, No. 9                          Intellectual Property                                5 
 
“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 ; 
“Minister ” m eans the Minister responsible for Commerce, 
Industry and Labour;  
“Ministry ” means the Ministry responsible for Commerce, 
Industry and Labour;  
“Paris Convention ” means the Paris Convention for the 
Protection of Industrial Property of March 20, 1883, as 
revised from time to time ; 
“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 estab lished 
under section 1 18; 
“repealed enactments ” means the  Acts repealed under section 
138; 
“test batches ” in relation t o 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 design ation identifying and 
distinguishing a business;  
“writing ” in relation to any requirement under this Act for 
applications to be “in writing ” includes  electronic mail, telex, 
telegrams and  any other electronically p roduced means of 
communication . 
 
3. Act to  bind State - This Act binds the State.  
 
PART II  
PATENTS  
 
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 the y are inventions, are excluded from 
patentability :  
6                              Intellectual Property                            2011, No. 9  
 
(a) a discovery, scientific theory or mathematical method;   
(b) a scheme, rule or method for performing a menta l 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 envir onmental 
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 k nown process, machine or 
apparatus unless such known process results in a new 
product or employs at least one (1) new 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 disclosur e, 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 i f 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 titl e; or 
(b) an abuse committed by a third party with regard to the 
applicant or the applicant’s predecessor in title.   
2011, No. 9                          Intellectual Property                                7 
 
(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), t he right to a 
patent belongs to the inventor.  
(2) When two ( 2) or more persons have jointly made an invention, 
the right to the patent belongs to them jointly.  
(3) When two ( 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 a ssigned, 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 determined fee.  
(3) An application must contain  the following : 
(a) the app licant’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 
inventio n;  
(e) one (1) or more claims and any drawings referred to in the 
description o f 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 indigen ous community whether 
from Samoa or elsewhere;    
8                              Intellectual Property                            2011, No. 9  
 
(h) a statement disclosing the source and geographical origin 
of any biological material used for the invention;  
(i) a written  authorization 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 inv ention.  
(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 subsections (3)( d) and ( e)  to interpret the claim.  
(9) The  Regis trar 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 ava ilable 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 it is being examined by the Registrar . 
  
2011, No. 9                          Intellectual Property                                9 
 
8. Unity o f invention; amendment and division of application -
(1) An application for a patent must relate to one (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 u nder 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) Each 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 gran ted 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) Any 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 file d 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 fore ign 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 inval idating 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  recei ves the application  for a patent .   
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(2) Despite subsection (1), the Registrar must accord  the filing 
date only whe n the application fee is paid and the requirements  of 
section 7(2) to (4) are met.  
(3) If an application does not fulfil the requiremen ts under 
subsection (2), the Registrar may require the applicant to file any 
correction to the application.  
(4) If a correction is made  in accordance with subsection (3) , the 
Registrar is to accord  the filing date as being the date upon which he 
or she recei ved 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 draw ings which are not included in 
the application, the Registrar may requ est 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 o f 
the missing drawings.   
(8) Whe n 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 informa tion 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), 
section 5, and section 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 re port submitted under section 
9(2)(a) or a final deci sion submitted under section 
9(2)(c) relating to the patent on a corresponding 
foreign application;   
2011, No. 9                         Intellectual Proper ty                               11 
 
(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 opinio n that the application complies with  the requirements 
of Section s 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 Patent s 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 determined  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 result s 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 1 8, any pers on intending to 
exploit a patent ed invention in  Samoa must first obtain the consent of 
the owner of the patent.  
(3) For the purposes of 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 fo r 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.   
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(4) Subject to subsection ( 5) and section s 14, 15, 16 and 1 8 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 pa tent 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 w hich 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 
trans ferred 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 1 26, 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  
maintenance fee must be paid in advance every five ( 5) years to the 
Registrar starting five ( 5) years after the filing date of the application 
for grant of  the patent.   
(3) If the five ( 5) yearly maintenance fee is not paid in accordance 
with the provisions of this subsection, the patent lapses.   
 
14. Exploitation by  Government or author ised person -(1)  
Subject to the provisions of this section , the Minist er 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 inter est so requires; or  
(b) the Minister  has determined that :  
2011, No. 9                         Intellectual Property                               13 
 
(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 authorized ; and  
(b) subject to the payment to the owner o f 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 includ e consideration of the 
need to correct anti -competitive practices.   
(4) The Minister must m ake 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 receivin g a request from any party , 
and after hearing any party wishing to be heard, vary the terms of the 
decision authorizing the exploitation of the patented invention if the 
Minister considers that the circumstances justify the variation.  
(6) Subject to subsec tion ( 7), the Minister must terminate an 
authorisation u pon 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 Governme nt agency or third person designated  in 
the authorization  has failed to comply with the terms 
of the decision.  
(7) Despite  subsection (6), the Minister must not terminate the 
authorization if he or she is satisfied that the re is a  need for adequate 
protect ion of the legitimate interests of the Government agency or 
third person designated  the authorization.    
(8) The authorization granted under subsection (1) may only be 
transferred with the business of that person or with the part of the 
business within wh ich the patented invention is being exploited.  
(9) The authorization 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) .   
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(10) Subject to subsection (11), any person intending to obtain the 
Minister’s authorization u nder 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 rea sonable time.  
(11) Despite subsection ( 10), proof will not be required  in cases of 
national emergency , other c ircumstances of extreme urgency , for 
public non -commercial use or to remedy practices determined by the 
Minister to be anti -competitive . 
(12) If authorization 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 auth orized for : 
(a) public non -commercial use ; or 
(b) if a judicial or administrative body has determined that the 
manner of exploit ation of the patented invention  by the 
owner of the  patent or the owner’s licensee  is anti -
competitive  and the Minister is satis fied that the 
issuance of the compulsory licence would remedy the 
practice.  
(15) Any 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 Gov ernment agency; or  
(c) a third person authorized 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.  
  
2011, No. 9                         Intellectual Property                               15 
 
(2) The authorization granted under subsection (1) must not 
include a right to export the patented phar maceutical 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 authorization under subsection (1).  
(4) An authorization granted unde r subsection (1) must include 
conditions addressing:   
(a) the acts authorized to be done in relation to the patented 
pharmaceutical product under the authorization ; and  
(b) the quantity of the patented pharmaceutical product 
covered by the authorization ; and 
(c) the duration of the authorization ; and  
(d) a requirement for the patented pharmaceutical product to 
be clearly identified as being imported under the 
authorization  through specific  labelling  or marking; 
and 
(e) any other terms or conditions as the M inister 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 receivi ng a request from any party, 
and after hearing any party wishing to be heard, vary the terms of the 
decision authorizing the exploitation of the patented invention if the 
Minister considers that the circumstances justify the variation.  
(7) Subject to subse ction (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 Governm ent agency or third person designated in 
the authorization has failed to comply with the terms 
of the decision.  
(8) Despite subsection (7), the Minister must not terminate the 
authorization if he or she is satisfied that there is a need for adequate 
protec tion of the legitimate interests of the Government agency or 
third person designated in the authorization.    
(9) An authorization granted under subsection (1) is non -exclusive 
and may only be transferred with the business of that person or with 
the part o f the business within which the patented invention is being 
exploited.   
16                             Intellectual Property                           2011, No. 9  
 
(10) No remuneration shall be paid to the owner of a patent 
granted in relation to a patente d pharmaceutical product where an 
authorization 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 authorization.  
(11) Where no remuneration ha s been paid in the other country, 
then the authorization is subject to the payment to the owner of 
adequate remuneration.  
(12) The Minister shall as soon as practicable after the grant of an 
authorization under this section give notice in writing to the ow ner of 
the patent of the grant of the authorization and its terms and 
conditions.  
(13) The authorization 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 th e 
rights under section 12(1); or  
(c) the issue of a non -voluntary licence under section 1 6 (1) 
and (2).  
(14) Any person intending to obtain the Minister’s authorization 
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) Any 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 authorized 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 ing redients necessary for their 
manufacture and diagnostic kits required for their use.   
2011, No. 9                         Intellectual Property                               17 
 
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 o f 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 t he 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 determined fee. 
(5) In this section:  
“earlier patent ” means a patent granted that is made in rel ation 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) Any interested person may apply  to the 
Supreme Court  to invalidate a patent.  
(2) The Supreme C ourt must invalidate the patent if the  applicant  
proves that : 
(a) any of the requirements of sections 5 and sections 7 to 10 
are not fulfilled ; or 
(b) the owner of the patent is not the invento r or the inventor’s 
successor in title.  
(3) Any 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 C ourt must be notified  by the applicant  to the R egistrar who 
must record it in the registry at the earliest opportunity.  
(5) Any person affected by the invalidation of a patent may appeal 
to the  Court of Appeal for a review of the Supreme C ourt’s decision .  
18                             Intellectual Pr operty                           2011, No. 9  
 
18. Test batches of patented products -(1) Despite section 12  
and subject to subsection (2), t est batches of a patented product may 
be produced without the consent o f the patent  owner six (6) months 
before the e xpiry of the patent.  
(2) Test batches must not be put on the market before the expiry 
date of the patent.  
 
PART III  
INNOVATION PATENT S 
 
19. Definition of “innovation  patent ”-(1) In this Act 
“innovation  patent ” means the title granted to protect an increme ntal 
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, an ywhere 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), disclos ure 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.   
2011, No. 9                         Intellectual Property                               19 
 
(2) Whe n two ( 2) or more persons hav e jointly made a n invention, 
the right to the innovation patent belongs to them jointly.  
(3) Whe n two ( 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 t he 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 a n invention is made in execution of a commission or an 
employment contract, t he 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 in novation patent.  
(2) An application must be in writing and accompanied by a 
determined 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 (1) 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 a nd geographical origin 
of any biological material used for the invention; and  
(i) a written authorization 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 st atement 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 skil l in the art; and   
20                             Intellectual Property                           2011, No. 9  
 
(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 w hich 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 
necessar y 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), t he 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 o f application 
-(1) An application for an innovation patent must relate to one (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 a ny time during the examination process.  
(3) Despite subsection (2), an amendment must not go beyond the 
disclosure required under section 2 2(5)(a) in the initial application.  
(4) Subject to subsection (5), an applicant may divide an 
application (‘divisiona l application’), at any time during the 
examination process.   
2011, No. 9                         Intellectual Property                               21 
 
(5) Despite subsection (4), the divisional application must not go 
beyond the disclosure required und er section 2 2(5)(a) in the initial 
application.  
(6) Each 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) Any 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 fili ng 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 whe n the application fee is paid and the requirements of 
section 2 2(2) to (4)  and section 2 4 are met.  
(3) If an application does not fulfil the requirements under 
subsection (2), the Registrar may require the applicant to file any 
correction to the application.   
22                             Intellectual Property                           2011, No. 9  
 
(4) If a correction is made in accordance with 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 unde r 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 2 0, the R egistrar 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 
innovati on patent and a copy of the innovation patent; 
and  
(c) make available copies of the innovation patent to the 
public, on payment of the determined fee.  
(3) Subject to subsection (4),  the Registrar must, upon the request 
of the owner of the innovation paten t, 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 t he applicant in writing of the Registrar’s decision.  
  
2011, No. 9                         Intellectual Property                               23 
 
27. Rights conferred by innovation patent -(1) A person who is 
granted an innovation patent under section 2 6(1), has the exclusive 
right to exploit the innovation patent.  
(2) Any person intending to exploit an innovation patented 
invention in Samoa must first obtain the consent of the owner of the 
innovation patent.  
(3) For the purposes of 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 pro cess.  
(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 p erforms 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 mak ing 
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 b een made.  
   
24                             Intellectual Property                           2011, No. 9  
 
28. Invalidation -(1) Any interested person may apply to the 
Registrar to invalidate an innovation patent.  
(2) The Registrar must invalidate the innovat ion patent if the 
applicant proves that:  
(a) the claimed invention did not qualify for a n innovation 
patent ; or 
(b) the description and the claims do not comply with the 
requirements of section 20 and sections 22, to 25; or 
(c) any drawing which is necessa ry for the understanding of 
the invention has not been furnished; or  
(d) the owner of the innovation patent is not the inventor or 
his o r her successor in title.  
(3) Any invalidated innovation patent, or claim or part of a claim, 
has no legal effect from t he 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) Any 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 1 26, an 
innovation patent expire s, without possibility of renewal, at the end of 
the seventh year after the date of the filing of the application.  
 
30. Conversi on of applications of patent  or innovation      
patent -(1) Subject to subsection (3), a t any time before the grant or 
rejection of a patent, an applicant for a patent may, upon payment of 
the determined fee , convert  his or her application into an applicati on 
for an innovation  patent , which  is to be  accorded the filing date of the 
initial application.  
(2) At  any time before the grant  or rejection  of an innovation 
patent,  an applicant  for  an innovation patent  may,  upon payment   of  
the determined fee, conve rt 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 IV  
DESIGNS  
 
31. Definition o f “design” and “creator”  - In this Part:  
“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 -   
2011, No. 9                         Intellect ual Property                               25 
 
(i) a method or principle of construction; or  
(ii) features of shape or configuration of an 
article which  -  
(A) are dictated solely by the function 
which the article has to perform; or  
(B) are dependent upon  the appearance of 
another article of which the article is 
intended by the designer to form an 
integral part ; 
“creator ”, in relation to a design, means the person who created 
it. 
 
32. Design right -(1) A design right is a property right which 
subsists in ac cordance 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 in accordance with 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 in pursuance of a 
commission or in the course of employment.  
(2) Whe n two ( 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 des ign was first recorded in 
a design document or an article was first made to the design, 
whichever first occurred.   
26                             Intellectual Property                           2011, No. 9  
 
35. Qualification for design right protection - The provisions of 
this Part concerning design right applies  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 c reators.  
 
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 f or 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 des ign 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 t he 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 i n any 
other way, prior to the filing date or, if applicable, 
prior to the priority date of the application for 
registration.  
(3) The following d esigns are  not registrable : 
(a) contrary to public order or morality ; or  
2011, No. 9                         Intellectual Property                               27 
 
(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 authorized by 
the competent authorit y of that Stat e or organisation .  
 
38. Right to registration of design -(1) The right to a  design 
belongs to the creator . 
(2) Whe n two ( 2) or more persons have jointly made a design , the 
right to the design belongs to them jointly.  
(3) Whe n two ( 2) or more persons have m ade 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. Appl ication for  registration -(1) An application for the 
registration of a registered design must be filed with the Registrar and 
be accompanied by the  determined  application fee.  
(2) An application for registration of a registered design must 
contain all of th e following : 
(a) the applicant’s name, address and nationality  including the 
details of any agent s 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 authorization of the agent appointing the 
represent ative of the applicant, if any.   
28                             Intellectual Property                           2011, No. 9  
 
(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 (2) or more designs may be the subject of the one (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 t he 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 th at the conditi ons referred to in 
subsection ( 2) are met, he or she must : 
(a) register the design  in the Registered Design s 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, 
her or she must refuse the application  and advise the applicant of his 
or her decision to refuse the application.  
(5) If an application does not fulfil the requirements under section  
39(2) to (4) , the Registrar may re quire the applicant to file any 
correction to the application.  
(6) If a correction is made in accordance with subsect ion (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 Regist rar must : 
(a) inform the applicant; and   
2011, No. 9                         Intellectual Property                               29 
 
(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 own s a 
registered design registered under section 40(3) has the exclusive 
right to exploit the registered design  for commercial purp oses. 
(2) Exploitation of a registered design means the making, selling 
or importation of articles incorporating the registered design.  
(3) Any person intending to exploit a registered design in Samoa 
must first obtain the consent of the owner of the desig n. 
(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 air craft, 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 1 26, t he 
registration of a registered design is for a period of five ( 5) years from 
the filing date of the application for registration . 
(2) The registration of a registered design may be renewed for  two 
(2) further consecutive periods of five ( 5) years by the payment of the 
determined  renewal fee.  
 
44. Invalidation -(1) Any interested pers on 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) Any invalidated registered design , or claim or part of a claim, 
has no legal effect from the start.   
30                             Intellectual Property                           2011, No. 9  
 
(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 Regist er at the earliest opportu nity. 
(5) Any person affected by the invalidation of a registered design  
may appeal to the Court of Appeal for a review of the Supreme 
Court’s decision.  
 
PART V  
MARKS AND COLLECTIVE MARKS  
 
45. Definition s-(1) For the purposes of this Act : 
“collective ass ociation” means a n 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 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 perso ns who are 
not members of the collective association . 
“mark ” means any sign : 
(a) capable of being represented graphically; and  
(b) capable of distinguishing  the goods or services of  one 
person  from another  in the course of trade . 
“sign” includes the follow ing 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.   
2011, No. 9                         Intellectual Property                               31 
 
(3) References in this Act to use of a  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 mark  - The exclusive 
right to a mark  is acquired by  registration in accordance with the 
provisions of the Act.  
 
47. Registrability -(1) A 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 
mark is contrary to  law, public order or morality ; or 
(c) if the use or registration of a 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 authorized 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 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 mark’) is identical with, or confusingly 
similar to, or constitutes a common translation of, a 
mark th at 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 mark in relation to those goods or 
services would indicate a connection betw een those 
goods or services and the owner of the well -known 
mark and the interests of the owner of the well -known 
mark are likely to be damaged by such use;  or 
(g) if it is identical to a mark belonging to a different 
proprietor and already on the register , or with an 
earlier filing or priority date  -   
32                             Intellectual Property                           2011, No. 9  
 
(i) in respect of the same goods or services; or  
(ii) in respect of similar goods or services, and 
its use is likel y to deceive or confuse;  or 
(h) if it is similar to a 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 with 
respect to goods not originating in the territory 
indicated, if use of t he indication in the 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 mark for wines or spirits, it contains or 
consists of a geographical indication identifying wines 
or spirits not having this geographical origin.  
(2) Despite subsection (1)(a), a non -distinctive  mark may still be 
registered if it becomes distinctive through use.  
(3) Despite subsection (1)(b), the Registrar may register a mark 
even if use of the mark is re stricted or prohibited under the Tobacco 
Control Act 2008.  
 
48. Application for  registration -(1) An application for the 
registration of a mark must be filed with the Registrar and 
accompanied by the determined  fee. 
(2) An application for the registration o f a 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 mark;  and 
(c) a reproduction of the mark; and 
(d) a list of the g oods or services  or both  for which registration 
of the mark is requested, listed under the applicable 
class or classes of the International Classification  in 
Schedule 2 ; and 
(e) a written authorization of the agent appointing the 
representative of the appl icant, if any . 
(3) If a person, who claims to be the proprietor of several marks 
for the same goods or services or for goods  or services  of the same 
description within a single class, seeks to register those marks and the 
marks, although they resemble each  other in material particulars, 
differ in respect of :  
2011, No. 9                         Intellectual Property                               33 
 
(a) statements or representations as to the goods  or services  in 
respect of which the marks are used or propo sed 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 marks; or  
(d) colour,  
or in respect of any  two ( 2) or more of those matters, the marks may 
be registered as a series in one registration.  
 
49. Filing date and e xamination -(1) Subject to subsection (2), 
the Registrar must accord as the filing date, the date and time upon 
which the Registrar receives the app lication for a 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 in accordance with this section, 
the Registr ar must : 
(a) examine whether the application complies with the 
requirements of section 48; and 
(b) examine and determine whether the mark is a mark as 
defined in section 45 and i s registrable under section 
47. 
 
50. Acceptance and publication  - If the Regis trar is satisfied 
that:  
(a) the application complies with the requirements of section 
48; and 
(b) the mark is a mark as defined in section 45; and  
(c) the mark is registrable under section 47, 
he or she must accept the application and  cause the applicati on, 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 ap plicant; 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.   
34                             Intellectual Property                           2011, No. 9  
 
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 mark has convention 
priority.  
 
53. Opposition -(1) Any person may, within three ( 3) months  
from the date of publication u nder section 50, give written notice to 
the Registrar of opposition to the registration of the mark on the 
grounds that one (1) or mo re of the requirements of sections 45 and 
47 are 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 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 mu st within  two ( 2) months  from receiving the 
copy of the notice under subsection (1) send to the Registrar a written 
coun ter 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 opp osition;   
(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 in 
accordance with subsection (3) , the applicant is  taken  to have 
abandon ed the application.  
(5) If the applicant sends a counter -statement, the Registrar must , 
within seven ( 7) days of receiving the counter -statement,  provide  a 
copy of it to the person giving notice of opposition . 
(6) Within two ( 2) months of receiving a count er statement, the 
opposing person must:  
(a) file evidence in support of the notice of opposition; or   
2011, No. 9                         Intellectual Property                               35 
 
(b) notify the Registrar that he or she does not intend to fil e 
evidence; or  
(c) notify the Registrar that he or she wishes to withdraw the 
application.  
(7) The Registrar must decide whethe r the 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 ma y have been filed by any 
of the parties; a nd 
(c) considering the merits of the case.  
(8) Any 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 mark  may withdraw the  application at any time during its 
examination.  
 
55. Registration of mark -(1) Subject  to subsection (2), the 
Registrar must register a mark if the R egistrar is satisfied that:  
(a)  the application complies  with requirements of section 48; 
and 
(b) the mark is  a mark as defined in section 4 5; and  
(c)  the mark i s registrable under section 4 7.  
(2) Despite subsection (1), the Registrar must not registe r a mark 
if: 
(a) the mark has  been opposed within the period referred to in 
section 5 3; or 
(b) the registration of the mark has been opposed and the 
opposition has  not been withdrawn or has not been 
decided in the applicant’s favour . 
(3)  When the Registra r registers  a mark under subsection  (1), the 
Registrar must : 
(a) record the mark in the Trade Marks Register; and  
(b) issue to the applicant a certificate of registration of the 
mark.    
(4) If an Applicant does not satisfy the requirements under 
subsectio n (1) the Registrar must refuse the application.  
 
56. Rights conferred by registration and infringement -(1) A 
person who owns a mark registered under section 55 has the 
exclusive right to use the registered mark in relation to all or any of 
the goods or se rvices in respect of which the mark is registered.   
36                             Intellectual Property                           2011, No. 9  
 
(2) The right under subsection (1) extends to the use of a sign 
similar to the registered mark and use in relati on to goods and 
services similar to those for which the mark has been registered.  
(3) A person infringes a registered mark if the person does not 
have the right to use the registered mark and uses as a mark in the 
course of trade , a sign : 
(a) identical wi th the registered mark in relation to any goods 
or services in respect of which the mark is registered;  
(b) identical with the registered mark in relation to any goods 
or services that are similar to any goods or services in 
respect of which the mark is r egistered, if that use 
would be likely to deceive or confuse;  
(c) similar to the registered mark in relation to any goods or 
services that are identical with or similar to any goods 
or services in respect of which the mark is registered, 
if that use would  be likely to deceive or confuse; or  
(d) identical with or similar to the registered mark in relation 
to any goods or services that are not similar to the 
goods or services in respect of which the mark is 
registered where the mark is well known in Samoa an d 
the use of the sign takes unfair advantage of, or is 
detrimental to, the distinctive character or the repute of 
the mark.  
(4) The rights conferred by registration of a 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 purp ose 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 is taken to affect rights of action in 
relation to geographical indications and against any perso n for 
passing off goods as those of another person or the remedies relating 
to those actions.  
  
2011, No. 9                         Intellectual Property                               37 
 
57. Duration  and renewal -(1) Subject to section 1 26, the 
registratio n of a mark is for a period of 10 years from the filing date 
of the application for registration.  
(2) The registration of a mark may, upon request, be renewed  for 
consecutive periods of  10 years  upon  the payment of the determined 
renewal fee.  
(3) Any renew al of registration  may b e made within 12 months 
before the expiry date of the registration.  
(4) A late renewal fee will apply after the expiry date of the 
registration.  
 
58. Invalidation -(1) Any interested person may make a request to 
the Supreme Court for the registration of a mark to be invalidated.  
(2) The Supreme Court  must invalidate the registration of a mark 
if the person requesting the invalidation proves that any of the 
requirements of sections 45 and 47 are not fulfilled.  
(3) Any invalidated 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) Any person affected by th e 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 mark in the Trade 
Marks Register.  
 
59. Removal on  ground of non -use-(1) Subject  to subsection s 
(2) and (3) , any interested person may request the Registrar to remove 
a mark from the Trade Marks R egister  on the ground o f non -use. 
(2) The Registrar may remove a mark if he or she is satisfied that  
up to one ( 1) month prior to filing the request the mark had, after its 
registration, not been the subject of genuine use  by the registered 
owner or a licensee during a continuou s period of not less than  three 
(3) years .  
(3) A mark must not be removed if it is shown  that: 
(a) special circumstances prevented the use of the mark ; and  
(b) there was a good faith intention to use the mark.  
(4) The use in subsection (3) includes use b y licen sees or 
authorized persons.  
  
38                             Intellectual Property                           2011, No. 9  
 
60. Collective  marks -(1) Subject to subsections (2) and (3), 
sections 45 to 59 apply to  collective marks . 
(2) If an application  is made for registration of a collective mark:  
(a) the registered owner must designate the mark as a 
collective mark and must provide  a copy of the  rules  
governing  the use of the collective mark; and  
(b) the registered owner of a collective mark must  notify the 
Registrar of any changes made in respect of the  rules  
referred to in paragraph (a)  within one ( 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 collect ive mark if the 
person requesting the invalidation proves – 
(a) that only the registered owner uses the 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 permit s 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 VI  
PLANT BREEDER’S RIGH TS 
 
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 o f 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 A ct;   
2011, No. 9                         Intellectual Property                               39 
 
“variety ” means a plant grouping within a single botanical taxon 
of the lowest known rank, which grouping, irrespective of 
whether the conditions for the gran t 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 sai d 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 shall apply 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 accor ded 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 S tate and, where the member of UPOV is 
an intergovernmental organization, a national of the States which are 
members of that organization and includes a natural person or legal 
entity.  
 
63. Persons entitled to make application for plant breed ers 
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 t he new 
variety or his or her assignee : 
(a) a breeder or his or her assignee;   
40                             Intellectual Property                           2011, No. 9  
 
(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 p lant 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 individua l 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 fil e 
an application to the Registrar for a right to breed a plant.  
(2) An application must be in writing and accompanied by a 
determined fee.  
(3) An application must contain : 
(a) the applicant’s name, address and nationality including the 
details of any agent s 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 p lant 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 knowl edge 
available within any local or indigenous community 
whether from Samoa or elsewhere; and  
(g) a written authorization of the agent appointing the 
representative of the applicant, if any.  
(4) If the applicant is not the breeder, the request must be 
accom panied by a statement justifying the applicant’s right to the 
plant breeder’s rights.   
2011, No. 9                         Intellectual Property                               41 
 
(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 recognized.  
(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 ne w 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 (1 0), 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 w ithdraw 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 app lication – 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;   
42                             Intellectual Property                           2011, No. 9  
 
(d) such particu lars relating to the application and the plant 
concerned as may be prescribed or as the Registrar 
thinks appropriate.  
 
67. Filing date and e xamination -(1) Subject to subsection (2), 
the Registrar must accord as the filing date, the date and time upon 
whic h 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 examin e 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 authorization a s provided in section 
74.  
(3) Provisional protection shall only take effect in relation to 
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 op inion that the application complies with the 
requirements of section s 62 to  64 and the plant variety is:  
(a) new; and  
(b) distinct; and  
(c) uniform; and   
2011, No. 9                         Intellectual Property                               43 
 
(d) stabl e, 
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 determined fee.  
(3) Subject to subsection (4), the Registrar must, upon the request 
of the owner of the plant breeder’s right, make change s 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 t he 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 one ( 1) year before the date of filing 
of the application; and  
(b) in a territory other than Samoa, than  four ( 4) years or, in 
the case of trees or of vines, earlier than six (6) years 
before the said 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 o f 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 vari ety in the official register of 
varieties.   
44                             Intellectual Property                           2011, No. 9  
 
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 p ropagation, 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 reprodu ction (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 s ubject 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) in respect of harvested material, including entire plants and parts 
of plants, obtained through th e unauthorized 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 in relation to the said propagating material.  
(4) The provisions of subs ections (1) to (3) shall 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 vari ety; and  
2011, No. 9                         Intellectual Property                               45 
 
(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 th e 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 o f 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 pri vately 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 ot herwise 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.   
46                             Intellectual Prop erty                           2011, No. 9  
 
(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 five ( 5) 
years and is subject to the payment of a determined fee.  
(5) An extension may be made subject to such conditions, if any, 
as the Regi strar considers appropriate.  
(6) Any 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 con sent 
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 p erson 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 authorizing 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 a nd are unlikely to recur . 
(7) Despite subsection (6), the Minister must not terminate the 
authorization 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 t he authorization.    
(8) Any 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 authorized to exploit the plan t breeder’s 
right.  
  
2011, No. 9                         Intellectual Property                               47 
 
79. Measu res regulating  commerce - The plant breeder’s right is 
independent of any measure to regulate the production, certification 
and marke ting 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 
establi shed 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 t he 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), p rior 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, in accordance 
with the provisions of 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 submis sion, registration and cancellation of 
denominations and any such authority may address its observations, if 
any, on the registration of a denomination to the Registrar.    
48                             Intellectual Property                           2011 , No. 9  
 
(7) Any 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, in acc ordance with the 
provisions of subsection (4), prior rights prevent such use.  
(8) When a variety is offered for sale or marketed, it is permitted 
to associate a trade  mark, 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) Any interested 
person may apply to the Supreme Court to invalidate a plant breeder’s 
right.  
(2) A breeder’s right is to be declared null and 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 t he 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 null and void for 
reasons other than those specified under subsectio n (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 six (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 fo rce; or   
2011, No. 9                         Intellectual Property                               49 
 
(iii) the breeder does not propose, where the 
denomination of the variety is cancelled after the 
grant of the right, another suitable denomination.  
(2) N o plant breeder’s right shall be cancelled for reasons other 
than those under subsection (1).  
 
PART  VII 
GEOGRAPHICAL INDICATIONS  
 
83. Definitions of “area”, “geographical indication” - For the 
purposes of this Part:  
“area ” includes a country, region, local ity or place;  
“geographical indication ” means an indication, however 
expressed, which identifies a product as originating in a 
particular area, if some quality, reputation or other 
characteristic of the product is essentially attributable to its 
geographic al origin;  
“misleading geographical indication ” means a geographical 
indication that is misleading as described in section 86; 
“product ” means any natural or agricultural product or any 
product of handicraft or industry.  
 
84. Prohibition against use of mis leading geographical 
indications -(1) No person is to apply a misleading geographical 
indication to any product.  
(2) No person shall:  
(a) sell any product;  or 
(b) import any product for sale in Samoa;  or 
(c) export any product for sale outside Samoa; or  
(d) manufacture any product for sale , 
if a misleading geographical indication is applied to the product.  
(3) Any person who contravenes subsections (1) and (2) commits 
an offence.  
  
85. When geographical indication regarded as applied to a 
product - A geograp hical indication is taken to have been applied to 
a product if:  
(a) the product or its package is marked with, contains or 
bears the geographical indication; or  
(b) the geographical indication is used in any advertisement 
for the product; or   
50                             Intellectual Property                           2011, No. 9  
 
(c) the geographical indication is used in any other manner 
that indicates or suggests that the product originates in 
a particular area.  
 
86. When geographical indication reg arded as misleading -(1) 
A geographical indication is regarded as misleading, when applied to 
or in relation to a product:  
(a) if it suggests that the product originates in an area other 
than its true area of origin and it misleads the public as 
to the area  of origin of the product; or  
(b) if its application to or in relation to the product constitutes 
unlawful competition; or  
(c) in the case of a wine or spirit, if the geographical 
indication is applied to a wine or spirit that does not 
originate in the a rea suggested by the indication, even 
if -   
(i) the true origin of the wine or spirit is 
indicated; or  
(ii) the geographical indication is used in 
translation and that translation evokes the original 
geographical indication; or  
(iii) the geographical in dication is accompanied 
by an expression such as “kind”, “type”, “style”, 
“imitation” or the like.  
(2) A geographical indication is regarded as misleading as 
provided in subsection (1) if it falsely represents to the public that the 
product originates in an area other than the product’s true area of 
origin, even if it is literally true as to the area in which the product 
originates.  
(3) For the purpose of determining whether a geographical 
indication:  
(a) suggests that a product originates in a particula r area; or  
(b) misleads the public as to the area of origin of a product,  
regard must be given  to the general understanding of consumers or 
users of the product concerned if it has been, is being or is intended to 
be sold.  
 
87. Institution of proceedings  regarding use of misleading 
geographical indication - Any interested person  may initiate 
proceedings in the Supreme Court in order to: 
(a) prevent a contravention of section 84; or  
(b) seek any other remedy arising out of a contravention  of 
section 84.  
2011, No. 9                         Intellectual Property                               51 
 
88. Remedies available in proceedings regarding use of 
misleading geographical indication - (1) Any person initiating 
proceedings under section 87 is  entitled to an y appropriate remedy  
available in respect of the infringement of any proprietary  right.  
(2) Remedies available include s but is not limited to the seeking 
of an  injunction  or damages . 
(3) Subject to subsections ( 4) and (5) , the Supreme Court has the 
power t o award damages as it thinks fit if it is satisfied that effective 
relief would not otherwise be available to the plaintiff or applicant.  
(4) Despite subsection (3), the Supreme Court must only award 
damages if it is established  that the defendant contrave ned section 84 
and has given  regard to:  
(a) the flagrancy of the contravention; and  
(b) any benefit shown to have accrued to the defendant as a 
result of the contravention; and  
(c) the need to deter the defendant and other persons from 
further such cont raventions .  
(5) Despite subsection (3), the Supreme Court must not award 
damages if it is established  that the defendant contravened section 84 
but that at the time of the contravention : 
(a)  he or she was not aware  of the contravention ; and  
(b) he or sh e had no reasonable grounds for suspecting that he 
or she was not entitled to use or apply the geographical 
indication concerned in the manner he or she did . 
 
89. Defences available in proceedings regarding use of 
misleading geographical indication -(1) In any proceedings relating 
to any product involving a foreign geographical indication identifying 
any wine or spirit, it is a defence to establish that a defendant used the 
geographical indication concerned in Samoa continuously with regard 
to the same or a similar product:  
(a) for at least ten years before the 15th April, 1994;  
(b) in good faith before the 15th April, 1994 ; or  
(c) the relevant indication is identical with a term customary 
in common language as the common name for such 
products in Samoa.  
(2) In any proceedings relating to the application of a foreign 
geographical indication, it is a defence for the defendant to establish 
that: 
(a) the indication is not or has ceased to be protected in the 
foreign country concerned ; or  
(b) has fallen into di suse in that country .  
52                             Intellectual Property                           2011, No. 9  
 
(3) In any proceedings under this Part,  it is a defence for the 
defendant to establish that he or she is entitled to use the geographical 
indication concerned by virtue of section 101(3). 
(4) This section must not be taken as limiting the defences that 
may be available to a defendant in  any judicial  proceedings . 
 
90. Presumptions whe n geographical indication is registered - 
In any proceedings r eferred to in section 87 regarding the application 
of a registered geographical indication it is  presumed, unless the 
contrary is proved, that : 
(a) the indication concerned is a geographical indication as 
defined in section 83; and  
(b) each product which  is recorded in the register  in relation to 
the indication concerned has some quality, reputation 
or other characteristic that is essentially attributable to 
its geographical origin.  
 
91. Application for registration -(1) An application for the 
registratio n of a geographical indication must be filed with the 
Registrar and must specify:  
(a) the applicant’s name, address and nationality , the capacity 
in which the applicant is applying for registration  and 
the details of any agents used by the applicant for th is 
purpose; and 
(b) the geographical indication for which registration is 
sought;  and 
(c) the geographical area to which the geographical indication 
applies;  and 
(d) the products to which the geographical indication applies; 
and 
(e) the quality, reputation  or other characteristic of the 
products which is attributable to its geographical 
origin; and  
(f) such other particulars and information as may be 
prescribed.  
(2) An application for the registration of a geographical indication 
must be accompanied by the determined fee  and an authorization of 
the agent appointing the representative of the applicant, if any . 
 
92. Persons entitled to apply for registration - An application 
for the registration of a geographical indication may be made by or on 
behalf of any o f the following:   
2011, No. 9                         Intellectual Property                               53 
 
(a) persons carrying on the activity as a producer in the 
geographical area specified in the application, with 
respect to the products specified i n the application, as 
well as a group of such persons;  
(b) a person who, in the course of business, consumes or uses 
a product to which the geographical indication is 
applied or is to be applied;  
(c) any organization established to represent or further th e 
interests of persons referred to in paragraph (a) or (b).  
 
93. Filing date, e xamination and acceptance of application -(1) 
Subject to subsection (2), the Registrar must accord as the filing date, 
the date and time upon which the Registrar receives the app lication 
for registration of a geographical indication.  
(2) Despite subsection (1), the Registrar must accord the filing 
date only when the requirements of section 91 are met.  
(3) The Registrar must accept an application lodged with him or 
her in accorda nce with section 91 if he or she is satisfied that:  
(a) the application complies with the requirements of section 
91; and  
(b) the applicant is entitled to lodge the application under 
section 92; and  
(c) the indication sought to be registered is a geographi cal 
indication as defined by this Act; and  
(d) the application of the geographical indication to the 
products specified in the application will not be 
contrary to public order or morality; and 
(e) if the application is for the registration of a foreign 
geographical indication, that it is protected in the 
foreign country concerned and has not fallen into 
disuse in that country ; and  
(f) if the application is for the registration of a foreign 
geographical indication, the relevant indication is not 
identical wi th the term customary in common language 
as the common name for such products in Samoa.  
(4) If the Registrar is not satisfied, then he or she  must  reject the 
application.  
 
94. Applicant to be notified of non -complying application - If 
the Registrar conside rs that an application does not comply with the 
requirements of this Act, the Registrar must : 
(a) inform the applic ant; and   
54                             Intellectual Property                           2011, No. 9  
 
(b) give the applicant an opportunity to respond, or to amend 
the application by correcting only those matters set out 
in section 91 within a time to be s pecified by the 
Registrar.  
 
95. Publication and opposition -(1) As soon as practicable after 
an application for the registration of a geographical indication has 
been accepted, the Registrar must  cause a notice of acceptance of the 
application to be publish ed in the Savali.  
(2) Any person may, within three ( 3) months from the date on 
which an application was advertised in accordance with subsection 
(1), give notice to the Registrar that he or she opposes the registration 
of the geographical indication on the  grounds that the application 
does not meet any one  (1) or more of the requirements specified in 
sections 91, 92, 93 and 101. 
(3) A notice of opposition must be given in writing in the 
prescribed manner and must include a statement of the grounds of 
opposi tion. 
(4) The Registrar  must  send a copy of such notice to the applicant 
and the applicant may send a counter -statement to the Registrar 
within two ( 2) months of the receipt of the notice of opposition.  
(5) If the applicant fails to file a counter -stateme nt in accordance 
with this subsection, the applicant is taken  to have abandoned his or 
her application.  
(6) If the applicant sends a counter -statement, the Registrar must , 
within seven ( 7) days of receiving the counter -statement,  provide a 
copy to the pers on who gave notice of the opposition and, after 
hearing the parties, if either or both wish to be heard, and considering 
the merits of the case, must decide whether the geographical 
indication should be registered.  
 
96. Registration -(1) If the Registrar fi nds that the requirements 
referred to in section 93 have been fulfilled, and either:  
(a) the registration of the geographical indication has not been 
opposed within the prescribed time limit; or  
(b) the registration of the geographical indication has been 
opposed and the opposition has been decided in the 
applicant’s favour,  
the Registrar must register the geographical indication  in the 
Geographical Indications Register and issue to the applicant a 
certificate of registration.  
(2) An application that does n ot comply with the requirements of 
section 93, must be refused by the Registrar.   
2011, No. 9                         Intellectual Property                               55 
 
97. Conditions on registration - When registering a geographical 
indication, the R egistrar may impose such conditions on its 
registration as in his or her opinion are necessary to protect the rights 
of the proprietor of any trade mark that was registered or used in good 
faith:  
(a) before the date of commencement of this Act; or  
(b) in the case of a foreign registered geographical indication, 
before it  was protected in the foreign country 
concerned.  
 
98. Homonymous indications - When registering as a 
geographical indication a name or word which, when written or 
uttered, has two ( 2) or mor e meanings, the Registrar must impose 
such conditions on its registration as, in his or her opinion, are 
necessary to ensure:  
(a) that the various meanings are differentiated from each 
other;  and 
(b) that the public is not misled; and  
(c) if two ( 2) or mor e of the meanings refer to different 
geographical areas, that all producers concerned are 
treated equitably.  
 
99. Effective date of registration - Subject  to section 1 26, the 
effective date of registration of a geographical indication is the date 
on which the application for registration was lodged with the 
Registrar in accordance with section 91. 
 
100. Effect of registration -(1) Only producers carrying on their 
activity in the geographical area specified in the register  have the 
right to use in the course of trade a registered geographical indication, 
with respect to the products specified in the register, provided that 
such products possess the quality, reputation or other characteristic 
specified in the register.  
(2) The registration of a geographical ind ication must not be taken 
as giving the registered owner exclusive rights in that geographical 
indication.  
(3) Registration of a geographical indication under this Act shall, 
in any proceedings under this Act, raise a presumption that such 
indication is a geographical indication within the meaning of this Act.  
  
101. Saving of right to use certain descriptions, names or 
marks -(1) Nothing in this Act prevent s the application to any product 
of a description or name which is customarily used  in  Samoa  as  the   
56                             Intellectual Property                           2011, No. 9  
 
common name for that product , even if the description or name is 
identical to a geographical indication applied elsewhere to that 
product.  
(2) Nothing in this A ct is to limit the right of any person, in the 
course of business, to use his or her name or the name of his or her 
predecessor in business, unless his or her use of that name is likely to 
mislead the public.  
(3) Nothing in this Act is to prevent:  
(a) The registration of a mark under this Act that is identical 
or similar to a geographical indication, if the 
application for the mark’s registration was made in 
good faith before the commencement of this Act or 
before the geographical indication was protected i n its 
country of origin; or  
(b) The use of a mark that is identical or similar to a 
geographical indication if -  
(i) the mark was registered in good faith under 
this Act  or before the commencement of this Act 
or before the geographical indication was pro tected 
in its country of origin; or  
(ii) the person who uses the mark acquired the 
right to do so through use in good faith before the 
date of publication of this Act or before the 
geographical indication was protected in its 
country of origin.  
 
102. Act n ot to be construed as limiting other laws preventing 
misuse of geographical indications - This Act must not be taken as 
limiting any other law which prohibits or restricts the application or 
use of misleading geographical indications, in particular:  
(a) the crime of fraud; and  
(b) the torts of passing off and unlawful competition; and  
(c) any enactment relating to the labelling or sale of any 
goods, consumer protection and unfair competition.  
 
PART VIII 
LAYOUT -DESIGNS OF INTEGRATED CIRCUITS  
 
103. Definition  of “integrated circuit” and “layout -design”  - In 
this Part:   
2011, No. 9                         Intellectual Property                               57 
 
“integrated circuit”  means a product, in its final form or an inter 
mediate form  in which the elements , at least one of which is 
an active element, and some or all of the interconnections are 
integrally formed in and on a piece of material and which is 
intended to perform an electronic function;  
“layout -design ” is synonymous with “ topography ” and means 
the three -dimensional disposition, however expressed, of          
the elements, at least one of which is an active element, and of 
some or all of the inter -connections of an integrated circuit, or 
such a three -dimensional disposition prepared for an 
integrat ed circuit intended for manufacture .  
 
104. Registrable layout -design s of integrated circuits -(1) 
Layout -designs of integrated circuit s are registrable to the extent that 
they are original .   
(2) For the purposes of subsection (1), a layout -design is 
consi dered to be original if it is the result of its creator’s own 
intellectual effort and is not common place among creators of layout -
designs and manufacturers of integrated circuits at the time of its 
creation.  
(3) A layout -design consisting of a combination  of elements and 
inter-connections that are commonplace is to be protected only if the 
combination taken as a whole is original within the meaning of 
subsection ( 2). 
(4) A person may apply for registration  only where  the layout -
design  has not yet been comm ercially exploited, or has been 
commercially exploited for not more than two ( 2) years anywhere in 
the world.  
(5) No layout -design or integrated circuit which has been 
commercially exploited, anywhere in the world, for more than two ( 2) 
years prior to the  entry into force of this Act  may be registered .  
 
105. Right to registration of layout -design -(1) The right to 
protection of a layout -design belongs  to the creator of the layout -
design.  
(2) When two ( 2) or more persons have jointly  created  made  a 
layout -design, the right to the layout -design belong s to them jointly.  
(3) When two ( 2) or more persons have made the same layout -
design independently of each other, the person whose application has 
the earliest filing date has the right to the layout -design , as long as the 
application is not withdrawn, abandoned or rejected.   
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(4) The right to a layout -design may be assigned, or may be 
transferred by succession.  
(5) If a layout-design is made in execution of a commission or an 
employment contract, the right to the layout design  belongs to the 
person having commissioned the work or the employer unless a 
contractual provision says otherwise.  
 
106. Application for  registration -(1) An application for the 
registration of a layout -design must be filed with the Registrar and be 
accompanied by the determined application fee.  
(2) An application for registration of a layout -design must 
contain : 
(a) the applicant’s name, address and nat ionality in cluding the 
details of any agen ts used by the applicant for this 
purpose; and  
(b) each creator ’s name;  and 
(c) a request for registration of the layout -design  and a brief 
description of the layout -design ; and  
(d) a copy or drawing of the layout -design together with 
information defining the electronic function which the 
integrated circuit is intended to perform but the 
application may omit such parts of the copy on 
drawing that relate to the manner of manufacture of 
the integrated circuit, provide d the parts submitted are 
sufficient to allow the identification of the layout -
design ; and  
(e) specify the date of first commercial exploitation of the 
layout -design anywhere in the world or indicate that 
such exploitation has not commenced; and  
(f) a wri tten authorization of the agent appointing the 
representative of the applicant, if any.  
(3) 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 layout -design . 
(4) An application may contain a request that the publication of 
the layout -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.  
(5) A separate application must be filed for each layout -design.  
(6) An applicant for the registration of a layout -design may 
withdraw the application at any time during its examination.   
2011, No. 9                         Intellectual Property                               59 
 
107. Examination and registration of layout -design -(1) If at the 
time of receipt, the applicant meets the requirements of section  
106(1) , the Registrar must accord the date of receipt of the application 
as the filing date.  
(2) After accor ding a filing date, the Registrar must examine the 
application for compliance with the requirements of section 106. 
(3) If the Registrar is satisfied that the conditions referred to in 
subsection (2) are met, he or she must:  
(a) register the design in the Layout -Design s of Integrated 
Circuits Register ; and  
(b) issue to the applicant a certificate of registration of the 
layout -design .   
(4) If the Registrar is satisfied that the conditions are not fulfilled, 
her or she must refuse the application and advise the applicant of his 
or her decision to refuse the application.  
(5) If an application does not fulfil the requirements under section 
106, the Registrar may require the applicant to file any correction to 
the application.  
(6) If a correction is made in acco rdance with 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.  
 
108. Appli cant 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 106 within a time to be specified by the 
Registrar.  
 
109. Rights conferred by registration -(1) A person who owns a 
registered layout -design under section  107 has the exclusive right to 
exploit the registered layout -design . 
(2) Any person intending to exploit a registered layout -design in 
Samoa must first obtain the consent of the owner of the layout -design . 
(3) For the purposes of this Act, “to exploit” a registered layout -
design  means any of the following :  
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(a) reproducing any part of the protected layout -design, 
whether by incorporation in an integrated circuit or 
otherwise, except the act of reproducing any part that 
does not comply with the originality requirement in 
section 104; and  
(b) importing, offering for sale, selling or using the protected 
layout -design, an integrated circuit in which the 
protected layout -design is incorporated or an article 
incorporating such an integrated circuit in so far as it 
continues to contain an unlawfully reproduced layout -
design.  
(4) Protection under this Act is not depend ent upon whether or not 
the integrated circuit which incorporates the protected layout -design 
is itself incorporated in an article.  
(5) The rights under a registered layout -design do not extend to : 
(a) the reproduction of the protected layout -design for pri vate 
purposes or for the sole purpose of evaluation, 
analysis, research or teaching; or 
(b) the incorporation in an integrated circuit of a layout -design 
created on the basis of such analysis or evaluation and 
which is itself original within the meaning of  section 
104; or 
(c) acts in respect of a protected layout - design, or in respect 
of an integrated circuit in which such a layout -design 
is incorporated, that has been put on the market  
anywhere in the world  by or with the consent of the 
right holder; or 
(d) acts performed in respect of an identical layout -design 
which is original and has been created independently 
by a third party; or  
(e) acts performed in respect of an integrated circuit 
incorporating an unlawfully reproduced layout -design 
or any article  incorporating such an integrated circuit if 
the person performing or ordering such an act did not 
know and had no reasonable ground to know; when 
acquiring the integrated circuit or the article 
incorporating such an integrated circuit, that it 
incorporate d an unlawfully reproduced layout -design.  
(6) If a person under subsection (5)(e) has  received sufficient 
notice that the layout -design was unlawfully reproduced, that person 
may perform any of those acts only with respect to the stock on hand 
or ordered before such time and is liable to pay to the right holder a 
sum equivalent to a reasonable royalty such as would be payable 
under a freely negotiated licence in respect of such a layout -design.   
2011, No. 9                         Intellectual Property                               61 
 
110. Commencement and duration of protection -(1) Subje ct to 
section 1 26, protection of a layout -design under this Act commences : 
(a) on the date of the first commercial exploitation, anywhere 
in the world of the layout -desig n, by or with the 
consent of the right holder, provided that an 
application for protection is filed by the right holder 
with the Registrar in accordance with section 106; or  
(b) on the filing date accorded to the application for the 
registration of the lay out-design filed by the right 
holder, if the layout -design has not been previously 
exploited commercially anywhere in the world.  
(2) Protection of a layout -design under this Act expires at the 
end of the tenth calendar year after the date of commencement of 
protection.  
 
111. Invalidation -(1) Any interested person may apply to the 
Supreme Court for the invalidation of the registration of a layout -
design on the grounds that : 
(a) the layout -design is not  registrable  under section 104; or 
(b) the right holder  is not entitled to register under section 
105; or  
(c) the application was not filed within the time limit referred 
to in section  110, if the layout -design has been 
commercially exploited, anywhere in the world, before 
the filing of the application for re gistration of the 
layout -design.  
(2) Whe n the grounds for invalidation are established with respect 
only to a part of the layout -design, only the corresponding part of the 
registration is cancelled.  
(3) A cancelled layout -design registration, or any part of it, is to 
be regarded as void from the  commencement  date of the protection.  
(4) The Registrar of the Supreme Court must notify the Registrar 
of the decision of the Supreme Court or the decision on any appeal (if 
any) and the Registrar must record it a nd publish a reference referring 
to it as soon as possible.  
 
PART IX   
ENFORCEMENT AND ADMINISTRATION  
OF RIGHTS  
 
112. Personal Property  – Any right duly granted or awarded  
under the provisions of this Act is to be considered, for all intents and 
purposes,  as personal property belonging to the owner of that right.   
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113. Changes in registration -(1) Any change in the registration 
of a patent, innovation patent , registe red design , mark , collective 
mark, plant breeder’s right, geographical indication  or layout -design , 
or in the ownership of an application for any of them, must be in 
writing and must, upon the request of any interested party to the 
Registrar, be recorded.  
(2) A change which should be recorded under subsection (1) has 
no effect against third parties until such recording is effected.  
(3) Any change in the ownership of the registration of a collective 
mark, or of an application for registration, requires previ ous approval 
by the Minister.  
(4) A change in ownership of the registration of a mark or a 
collective mark is invalid if , in the opinion of the Registrar,  it is likely 
to deceive or cause confusion, particularly in regard to the nature, 
origin, manufacturi ng process, characteristics, or suitability for their 
purpose of the goods or services in relation to which the mark or 
collective mark is intended to be used or is being used.  
(5) A change in ownership of the registration of a geographical 
indication is i nvalid if , in the opinion of the Registrar,  it is likely to 
deceive or cause confusion, particularly in regard to the origin of the 
products in relation to which the geographical indication is intended 
to be used or is being used.  
 
114. Disclaimer -(1) If, in determining whether a right under this 
Act is to be registered, or is to remain on the register, the Registrar or 
the Supreme Court considers that there are public interest reasons for 
doing so, the Registrar or the Supreme Court may require, as a 
condi tion of the right being on the relevant Register, that the owner : 
(a) Disclaims any right to the exclusive use of any part of the 
registered right; or  
(b) Makes any other disclaimer that the Registrar or the 
Supreme Court considers necessary for the purpos e of 
defining the owner’s rights under the registration.  
(2) If a disclaimer has been registered in respect of a part of any 
registered right, a person not infringe the right by using that part of 
the right.  
 
115. Powers of entry and search -(1) Subject to subsection (2), 
the Registrar may, pursuant to a warrant issued by the Supreme 
Court, : 
(a) enter and search any building, vessel or vehicle; or 
(b) stop and search any person; or   
2011, No. 9                         Intellectual Property                               63 
 
(c) pass across any land.  
(2) The Registrar, after obtaining the prior written approval of the 
Attorney -General , may  only exercise powers under subsection (1) 
without a warrant:  
(a) where there is no time to apply for a warrant; and  
(b) if he or she believes, on reasonable grounds, that an 
infringement of any rights granted under this Act is 
occurring or has occurred or an offence is being or has 
been committed against this Act.  
 
116. Licence  contract -(1) A copy of each licence contract 
conc erning a patent, innovation patent , a registered design , mark , 
collective mark , plant breeder’s rights, geographical indication or 
layout -design or concerning an application for any of them, must be 
in writing and may be submitted to the Registrar, who mus t keep its 
contents confidential but must record it.  
(2) If an application made under section  113 in relation to the 
change of registration of a patent, innovation patent, registered 
design, mark, collective mark, plant breeder’s right, geographical 
indica tion or layout design complies with this Act, the Registrar must 
notify any person recorded under this section as a licen see of such 
right.  
(3) The recording of a licence under this section is presumed to 
constitute notice to others of the existence of the  licence.  
 
117. Agents -(1) An applicant for any right, proceeding, process or 
record under this Act whose ordinary residence or principal place of 
business is outside Samoa  must be represented by a legal practitioner 
resident and practising in Samoa . 
(2) Any applicant wishing to use an agent  for any application 
under this Act  must notify the Registrar in writing of their nominated 
agent.  
(3) The Registrar must keep a record of all agents notified under 
subsection (2).  
(4) Any applicant who fails to comply w ith subsection (2) will be 
taken as not being represented by their agent.  
 
118. Intellectual Property Registry -(1) The Intellectual Property 
Registry is established within the Ministry  which is to be kept by the 
Registrar .  
64                             Intellectual Property                           2011, No. 9  
 
(2) The Registrar  is responsible for all matter s relating to the 
procedure for the grant of patents , innovation patents , the registration 
of registered designs, marks , collective marks, plant bree der’s rights , 
geographical indications, layout -design s, and for the administration of 
granted rights and protection s as provided for under  this Act . 
(3) Any person appointed as Registrar may be assisted by a 
Deputy and any other delegated personnel  as may be appointed  under 
the provisions of the Public Service Act 2004.  
(4) The Registrar must supervise and perform all duties required 
by this Act and has the authority to carry out studies, programs or 
exchanges of items or services regarding domestic and int ernational 
intellectual property law.  
(5) Decisions under this Act must be signed by the Registrar or 
his or her delegate.  
 
119. Registers -(1) The Intellectual Propert y Registry must keep 
and maintain the following registers:  
(a) Patents Register;  
(b) Innovation Patents Register;  
(c) Registered Designs Register;  
(d) Trade Marks Register;  
(e) Plant Breeder’s Rights Register;  
(f) Geographical Indications Register; and  
(g) Layout -Design s of Integrated Circuits Register.  
(2) The registers may be inspected  by an y person, and any person 
may obtain extracts  from them upon the payment of a determined fee.  
 
120. Correction of  errors; extension of time -(1) The  Registrar 
may correct any error of  translation or  transcription, clerical error or 
mistake in any application  or document filed with the Intellectual  
Property  Registry or in any recordin g effected pursuant to this Act.  
(2) If the Registrar is satisfied that the circumstances justify it, he 
or she may, upon receiving a written request, extend the time for 
doing an y act or taking any proceeding under this Act, upon notice to 
the parties concerned and upon such terms as the Registrar directs.   
(3) Subject to subsection (4), a n extension under subsection (2) 
may be granted even though the time for doing the act or ta king the 
proceeding has expired.   
(4) Despite subsection (3), any extension granted shall : 
(a) last 60 days at any one (1) time; and  
(b) not be granted  more than three ( 3) times . 
  
2011, No. 9                         Intellectual Property                               65 
 
121. Replacement certificate of registration - The Registrar 
may issue a further certificate of registration if : 
(a) any interested person applies in writing for a further 
certificate of registration; and  
(b) the determined fee, if any, has been paid; and  
(c) the Registrar is satisfied that a certificate of registration 
has been lost or destroyed or in any other case in 
which he or she thinks it expedient.  
 
122. Language of documents and translations  - Any application 
under this Act must  be in English and any document forming part of 
an application or submitted to the Registrar which is in a language 
other than English must  be accompanied by a certified English 
translation.  
 
123. Exercise of discretionary powers - The Registrar must give 
any party to a proceeding before him or her an  opportunity of being 
heard before exercising adversely to that party any  discretionary 
power vest ed in the Registrar by this Act.  
 
124. Competence of court; A ppeals -(1) The Supreme Court has 
jurisdiction in cas es of dispute relating to  the application of this Act 
and in matters which under this Act are to be referred to the Court. 
(2) Any decision taken by the Registrar under this Act, in 
particular the grant of a patent  or an innovation patent  or the 
registrati on of a registered design , mark , collective mark,  
geographical indication or layout -design , or the refusal of an 
application for such a grant or registration, may be the subject of an 
appeal by any interested party before the Supreme Court and such  
appeal must , unless otherwise provide d for in the Act,  be filed within 
12 months of the date of the decision.  
 
125. Infringement -(1) On the request of the owner of  the right or  
the title of protection, or of a licensee if the licensee has requested the 
owner to i nstitute court proceedings for specific relief and the owner 
has refused or failed to do so, the court may grant an injunction to 
prevent infringement, an imminent infringement, or an unlawful act 
and may award damages and grant any other remedy provided f or in 
the general law.   
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(2) Any person who knowingly performs an act which constitutes 
an infringement in relation to any trade mark right or protection 
accorded by  this Act , if committed wilfully or by gross negligence 
and for profit -making purposes,  commits an offence and is liable on 
summary conviction to a fine of 1,000 penalty units  or t o 
imprisonment not exceeding five ( 5) years  or both . 
(3) For the purposes of  proceedings, other than criminal 
proceedings, in respect of the violation of the rights of the owner of a 
patent  or innovation patent , if the subject matter of the patent or 
innovation patent is a process for obtaining a product, the burden of 
establishin g that a product was not made by the process is on the 
alleged infringer if either of the following conditions is fulfilled : 
(a) the product is new;  
(b) a substantial likelihood exists that the product was made 
by the process and the owner of the patent or 
innovation patent has been unable through reasonable 
efforts to determine the process actually used.  
(4) In requiring the production of evidence, the court before 
which the proceedings referred to in subsection ( 3) take s place must 
take into account the l egitimate interests of the alleged infringer in 
not disclosing manufacturing and business secrets.  
 
126. Convention applications -(1) If any person who : 
(a) has applied for protection of any right or protection  in a 
Convention country or is the legal repres entative or 
assignee of a person who has made such application; 
and  
(b) applies in terms of this Act, within  12 months  from the 
date of the application for protection in the Convention 
country, for registration of the right or protection ,  
he or she  is entitled, if his or her right or protection  is otherwise 
registrable in terms of this Act, to registration of his or her right or 
protection  in priority to other applicants and the registration has the 
same date as the date of the application in the Conventi on country . 
(2) If applications have been made for the registration of a right or 
protection in two ( 2) or more Convention countries, the period of 12 
months  referred to in subsection (1)  (b) is reckoned from the date on 
which the earlier or earliest of th ose applications was made.  
(3) If a person has applied for protection for a right or protection 
by an application which in accordance with : 
(a) the terms of a treaty subsisting between any two ( 2) or 
more Convention countries, is equivalent to an 
applicat ion duly made in any one of those Convention 
countries; or   
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(b) the law of any Convention country is equivalent to an 
application duly made in that Convention coun try,  
he or she is taken  for the purposes of this section to have applied in 
that Convention country.  
(4) The registration of a right or protection  must  not be 
invalidated by reason only of the use of the right or protection  in 
Samoa during the period spe cified in this section as that within which 
application may be made.  
(5) The application for the registration of a right or protection 
under this section is made in the same manner as is required in the 
case of any ordinary application under this Act.  
(6) An application under this section shall state : 
(a) the Convention country in which such application for 
protection was made; and 
(b) the number of the application; and  
(c) the effective date of the application,  
and shall be accompanied by a copy of the Co nvention application 
certified as correct by the registry with in which it was filed.  
(7) In this section  “right or protection ” means any right or 
protection pertaining to patents, innovation patents , registered 
designs, mark s, collective marks, plant breed er’s rights, geographical 
indications and circuit layouts as are duly accorde d under this Act.  
 
PART X  
MISCELLANEOUS  
 
127. Civil protection for the Registrar -(1) Claims made by or 
against the R egistrar  must  be made pursuant to the Government 
Proceedings A ct 1974.  
(2) Despite any other law, no action, suit or proceedings for any 
act or omission in connection with the responsibilities, powers or 
duties imposed on the Reg istrar  by this Act is to be brought or 
maintained against:  
(a) any person who has been or is the Reg istrar  if such person 
has been or is acting in good faith; or  
(b) any person who has been or is acting  under the authority of 
the Registrar  under the Act if such p erson has been or 
is acting in good faith.  
(3) The Government and the Reg istrar is not  liable for any costs 
or damages in any legal proceedings challenging any action taken 
under this Act, or for any failure  or refusal to take any action which is 
authorised by this Act.   
68                             Intellectual Property                           2011, No. 9  
 
128. Fees - The Minister, may by Notice published in the Savali, 
determine : 
(a) the types of fees payable;  and 
(b) the rate at which such fees are to be  calculated; and  
(c) the amounts of such fees,  
in respect of any matter un der this Act.  
 
129. Grace period for fees -(1) Despite any provision of this Act 
but subject to subsection (2), the Registrar may grant a grace period 
of six (6)  months for the late payment of any fee required under this 
Act. 
(2) Any late payment of fees  is subject to a late payment fee 
determined by the Minister.  
 
130. Restoration of rights into Register -(1) S ubject to 
subsection ( 2), the owner of any right conferred under this Act may 
apply to the Registrar for the restoration of his or her rights:  
(a) if he or she has failed to make payment  of any fees 
required under this Act; or  
(b) if registration of his or her rights conferred under this Act 
has lapsed.  
(2) The Registrar may restore a person’s right conferred under this 
Act within the Registry if: 
(a) the applicant has made application 12 months from the 
renewal date of his or her protected right; and  
(b) the applicant has paid all the requisite fees including any 
late fees; and  
(c) the Registrar thinks it is appropriate to do so in the 
circumstances.  
 
131. Forms  – The Minister may by Notice published in the 
Savali, approve, amend, or replace the form for any application, 
certificate, notice, agreement or any other document required under 
this Act.  
 
132. Offence for g roundless threat of legal proceeding s-(1) 
Any person claiming to be the owner of a right conferred under this 
Act who,  by circulars, advertisements or otherwise,  threatens any 
other person with any legal proceedings or liability in respect of an 
alleged infringement of any right conferred un der this Act knowing 
that it was not in fact an infringement of any legal rights of the person 
making such threats , commits an offence.   
2011, No. 9                         Intellectual Property                               69 
 
(2) Any person convicted of  an offence under subsection (1) is 
liable to a fine of 50 penalty units or imprisonment not exceeding five 
(5) years or both.  
(3) It is a defence for the person making a groundless threat if that 
person with due diligence, commences and prosecutes an acti on for 
infringement of the right claimed by him  or her . 
 
133. Offence of making false entries in register, etc., for 
production or tendering false entries  - Any person who : 
(a) makes or causes to be made a false entry in  any of the 
Registers  kept under thi s Act, or  
(b) makes or causes to make writing falsely purporting to be a 
copy of any entry in such register, or  
(c) produces or tenders or causes to be produced or tendered 
as evidence any such entry or writin g, knowing the 
same to be false,  
commits an off ence and is liable upon conviction to a fine not 
exceeding 100 penalty units or imprisonment not exceeding seven ( 7) 
years or both.  
 
134. Offence for making false statements for the purpose of 
deceiving or influencing any authority or officer  - Any person  
who: 
(a) with a view to deceiving any authority or officer in the 
execution of the provisions of this Act ; or 
(b) with a view to procuring or influencing the doing of 
omission of anything in relation to this Act or any 
matter under this Act , 
makes a false  statement or representation knowing the same to be 
false  commits an offence and is  liable upon conviction to a fine not 
exceeding 100 penalty units or imprisonment not exceeding seven ( 7) 
years or both.  
 
135. Penalties  - Every  person who commits an offe nce against 
this Act for which no other penalty is prescribed is liable                        
on conviction to a fine not exceeding 1,000 penalty units                      
and, imprisonment for a term not exceeding five ( 5) years, and, if the 
offence is a continuing one, to a further fine not exceeding 10 penalty 
units for every day after the first day on which the offence has 
continued.   
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136. Offences by companie s-(1) Subject to subsections (2) and 
(3), if any offence under this Act has been committed by a company, 
every person who at the time the offence was committed was in 
charge of, and was responsible to the company for, the conduct of the 
business of the com pany, as well as the company is taken  to be guilty 
of that offence and is liable for prosecution.   
(2) Despite  subsection (1), if an offence under this Act has been 
committed by a company, and it is proved that the offence was 
committed with the consent or  connivance of, or is attributable to any 
negligence on the part of, any director, manager, secretary or other 
officer of the company, such director, manager, secretary or other 
officer is taken  to be guilty of that offence and is liable for 
prosecution.  
(3) Despite subsection (1), it is a defence if a person proves that 
the offence was committed without his or her knowledge or that he or 
she exercised all due diligence to prevent the commission of the 
offence.  
(4) In this section:   
“company ” means any body  corporate and includes a firm or 
other association of persons; and  
“director ” in relation to a firm means a partner in the firm.  
 
137. Regulations -(1) The Head of State acting on the advice of 
Cabinet, may make regulations prescribing any matter  required for 
the implementation of this Act.   
(2) Without limiting the generality of subsection (1), regulations 
made pursuant to this section may provide for all or any of the 
following : 
(a) prescribing measures for issuing any licence under this 
Act; 
(b) the ope ration of, and conditions and procedures observed 
by any applicant under this Act;  
(c)  the manner in which any application or procedures is to be 
undertaken under this Act;  
(d) the appointment, powers and duties of delegated 
personnel;  
(e) the duties and  procedures to be followed by the  Registrar 
in examining or reviewing any application under this 
Act; 
(f)  developing standards and measures required to be 
observed by any right or protection holder;   
2011, No. 9                         Intellectual Proper ty                               71 
 
(g) prescribing the terms and conditions of licences issued 
under this Act;  
(h) requiring the provision of certain  information related to 
any application under this Act;  
(i) the management of any register required to be  kept under 
the Act;  
(j) determining processes and matters relating to access and 
benefit sharing of any of the rights under this Act;  
(k) prescribing offences against the regulations and penalties 
for such offences, not exceeding a fine of  500 penalty 
units, or imprisonment not exceeding three ( 3) years, 
or both, and, if the offence is a continuing one, a 
further fine not exceeding five ( 5) penalty units for 
every day that the offence has continued;  
(l) prescribing any other matter, which is required or 
authorised to be prescribed by this Act.  
 
138. Repeal -  The following enactments are repealed - 
(a) Patents Act 1972 ;  
(b) Trade  Marks Act  1972 ;  
(c) Industrial Designs Act  1972 . 
 
139. Consequential amendments  – The Customs Act 1977 is 
amended in accordance  with the table in Schedule 3.   
  
140. Savings and Transitional -(1) All patents granted and marks 
and industrial designs registered  under the repealed enactments  
remain in force and, subject to subsections ( 2), (3) and (4) , are taken 
to have been granted o r registered under the corresponding provisions 
of this Act. 
(2) Patents taken to have been granted by virtue of subsection (1) 
remain in force for the unexpired portion of the period of protection 
provided under the Patents Act 1972 , subject to the paymen t of 
determined fees provided for in this Act.  
(3) Marks taken to have been registered by virtue of subsection 
(1) remain in force for the unexpired portion of the period of 
protection provided under the Trade Marks Act 1972 and upon 
renewal shall be subje ct to the provisions of this Act.  
(4) Industrial designs  taken  to have been granted by virtue of 
subsection (1) remain in force for the unexpired portion of the period 
of protection provided under the Industrial Designs Act 1972  and 
upon renewal shall be s ubject to the provisions of this Act.   
72                             Intellectual Property                           2011, No. 9  
 
(5)Any authorisation, registration, appointment, approval, 
cancellation, suspension, condition, order, advice, direction or a ct of 
authority under or concerning the repealed enactments , so far as they 
are subsisting or in force at the time of the repeal of those  Acts, is to 
continue and have effect under the corresponding provisions of this 
Act until such time as they are altere d, amended or cancelled, as the 
case may require, under the provisions of this Act and, if there is any 
question or concern as to what is a corresponding provisions of this 
Act, the Minister by notice in writing may for all purposes declare a 
provision of this Act to be a corresponding provision.  
(6)  Despite the provisions of this Act, all applications and other 
matters arising out of or under the repealed enactments which are not 
determined or otherwise dealt with under such provisions at the date 
of the commencement of this Act are to be determined or otherwise 
dealt with under the corresponding provisions of this Act with such 
modifications, adaptations and alterations as the Minister may 
determine in writing from time to time.  
(7) Any register kept unde r the repealed Enactments shall 
continue to be maintained and shall be taken to be part of the registers 
kept under this Act.  
(8) Any reference to any provision or matter under or concerning 
the repealed enactments  in any enactment  is to be taken for all 
purposes as a reference to the corresponding provision or matter in 
this Act, unless the Minister by Notice determines otherwise.   
2011, No. 9                         Intellectual Property                               73 
 
 
SCHEDULE 1  
Classifications for Registered Designs (Section 39) 
International Classification for Designs under the Locarno 
Agreement  (Ninth Edition )  
 
  Class 1  Foodstuffs  
  Class 2  Articles of clothing an d haberdashery  
  Class 3  Travel goods, cases, parasols and personal 
belongings, not elsewhere specified  
  Class 4  Brushware  
  Class  5  Textile piecegoods, artificial and natural 
sheet material  
  Class 6  Furnishing  
  Class 7  Household goods, not elsewhere specified  
  Class 8  Tools and hardware  
  Class 9  Packages and containers for the transport or 
handling of goods  
  Class 10  Clocks and watches and other measuring 
instruments, che cking and signalling 
instruments  
  Class 11  Articles of adornment  
  Class 12  Means of transport or hoisting  
  Class 13  Equipment f or production, distribution or 
transformation of electricity  
  Class 14  Recording, communication or information 
retrieval equipment  
  Class 15  Machines, not elsewhere speci fied 
  Class 16  Photographic, cinematographic and optical 
apparatus  
  Class 17  Musical instruments  
  Class 18  Printing and office machinery  
  Class 19  Stationery and office equipment, artists ’ 
and teaching materials   
74                             Intellectual Property                           2011, No. 9  
 
  Class 20  Sales and advertising equipment, signs  
  Class 21  Games, toys, tents and sports goods  
  Class 22  Arms, pyrotechnic articles, articles for 
hunting, fishing  and pest killing  
  Class 23  Fluid distribution equipment, sanitary, 
heating, ventilation and air -conditioning 
equipment, solid fuel  
  Class 24  Medical and laboratory equip ment  
  Class 25  Building units and construction elements  
  Class 26  Lighting apparatus  
  Class 27  Tobacco and smokers ’ supplies  
  Class 28  Pharmaceutical and cosmetic products, 
toilet articles and apparatus  
  Class 29  Devices and equipment against fire 
hazards, for accident prevention and for 
rescue  
  Class 30  Articles for the care and handling of 
animals  
  Class 31  Machines and appliances for preparing food 
or drink, not elsewhere specified  
  Class 32  Graphic symbols and logos, surface 
patterns, ornamentation  
 
 
SCHEDULE 2  
Classifications for Trademarks  (Section 48) 
 
International Classification of Goods and Services under the Nice 
Agreement  Ninth Edition  
 
 
Part 1           Classes of goods  
 
Item number 
(Class number)  Class of goods  
(Class heading)  
1 Chemicals used in industry, science and 
photography, as well as in agric ulture, 
horticulture   and    forestry;  unprocessed   
2011, No. 9                         Intellectual Property                               75 
 
 artificial resins, unprocessed plastics; 
manures; fire extinguishing 
compositions; tempering and soldering 
preparations; chemical substances for 
preserving foodstuffs; tanning 
substances; adhesives used in industry  
2  Paints, varnishes, lacquers; preservatives 
against rust and against deterioration of 
wood; colourants; mordants; raw natural 
resins; metals in f oil and powder form for 
painters, decorators, printers and artists  
3  Bleaching preparations and other 
substances for laundry use; cleaning, 
polishing, scouring and abrasive 
preparations; soaps; perfumery, essential 
oils, cosmetics, hair lotions; dentifr ices  
4  Industrial oils and greases; lubricants; 
dust absorbing, wetting and binding 
compositions; fuels (including motor 
spirit) and illuminants; candles, wicks  
5  Pharmaceutical, veterinary and sanitary 
preparations; dietetic substances adapted 
for m edical use, food for babies; plasters, 
materials for dressings; material for 
stopping teeth, dental wax; disinfectants; 
preparations for destroying vermin; 
fungicides, herbicides  
6  Common metals and their alloys; metal 
building materials; transportable 
buildings of metal; materials of metal for 
railway tracks; non -electric cables and 
wires of common metal; ironmongery, 
small items of metal hardware; pipes and 
tubes of metal; safes; goods of common 
metal not included in other classes; ores  
7  Machines a nd machine tools; motors and 
engines (except for land vehicles); 
machine coupling and transmission 
components (except for land vehicles); 
agricultural implements, other than hand 
operated; incubators for eggs  
8  Hand tools and implements (hand 
operated);  cutlery; side arms; razors   
76                             Intellectual Property                           2011, No. 9  
 
9  Scientific, nautical, surveying, electric, 
photographic, cinematographic, optical, 
weighing, measuring, signalling, 
checking (supe rvision), life -saving and 
teaching apparatus and instruments; 
apparatus for recording, transmission or 
reproduction of sound or images; 
magnetic data carriers, recording discs; 
automatic vending machines and 
mechanisms for coin operated apparatus; 
cash reg isters, calculating machines, data 
processing equipment and computers; 
fire-extinguishing apparatus  
10  Surgical, medical, dental and veterinary 
apparatus and instruments, artificial 
limbs, eyes and teeth; orthopaedic 
articles; suture materials  
11  Apparatus for lighting, heating, steam 
generating, cooking, refrigerating, drying, 
ventilating, water supply and sanitary 
purposes  
12  Vehicles; apparatus for locomotion by 
land, air or water  
13  Firearms, ammunition and projectiles; 
explosives; fireworks   
14  Precious metals and their alloys and 
goods in precious metals or coated 
therewith, not included in other classes; 
jewellery, precious stones; horological 
and chronometric instruments  
15  Musical instruments  
16 Paper, cardboard and goods made fro m 
these materials, not included in other 
classes; printed matter; bookbinding 
material; photographs; stationery; 
adhesives for stationery or household 
purposes; artists ’ materials; paint 
brushes; typewriters and office requisites 
(except furniture); instru ctional and 
teaching    material     (except   apparatus);  
plastic materials for packaging (not 
included in other classes); playing cards; 
printers ’ type; printing blocks   
2011, No. 9                         Intellectual Property                               77 
 
17  Rubber, gutta -percha, gum, asbestos, 
mica and goods made from these 
materials and not included in other 
classes; plastics in extruded form for use 
in manufacture; packing, stopping and 
insulating materials; flexible pipes, not of 
metal  
18  Leather and imitations of leather, and 
goods made of these materials and not 
included in other classes; animal skins, 
hides; trunks and travelling bags; 
umbrellas, parasols and walking sticks; 
whips, harness and saddlery  
19  Building materials (non -metalli c); 
non-metallic rigid pipes for building; 
asphalt, pitch and bitumen; non -metallic 
transportable buildings; monuments, not 
of metal  
20  Furniture, mirrors, picture frames; goods 
(not included in other classes) of wood, 
cork, reed, cane, wicker, horn, bo ne, 
ivory, whalebone, shell, amber, 
mother -of-pearl, meerschaum and 
substitutes for all these materials, or of 
plastics  
21  Household or kitchen utensils and 
containers; combs and sponges; brushes 
(except paint brushes); brush -making 
materials; articles for cleaning purposes; 
steel wool; unworked or semi -worked 
glass (except glass used in building); 
glassware, porcelain and earthenware not 
included in other classes  
22  Ropes, string, nets, tents, awnings, 
tarpaulins, sails, sacks and bags (not 
included in other classes); padding and 
stuffing materials (except of rubber or 
plastics); raw fibrous textile materials  
23  Yarns and threads, for textile use  
24  Textiles and textile goods, not included 
in other classes; bed and table covers   
78                             Intellectual Property                           2011, No. 9  
 
25  Clothing, footwear, headgear  
26  Lace and embroidery, ribbons and braid; 
buttons, hooks and eyes, pins and 
needles; artificial flowers  
27  Carpets, rugs, mats and matting , linoleum 
and other materials for covering existing 
floors; wall hangings (non -textile)  
28  Games and playthings; gymnastic and 
sporting articles not included in other 
classes; decorations for Christmas trees  
29  Meat, fish, poultry and game; meat 
extracts; preserved, dried and cooked 
fruits and vegetables; jellies, jams, fruit 
sauces; eggs, milk and milk products; 
edible oils and fats  
30  Coffee, tea, cocoa, sugar, rice, tapioca, 
sago, artificial coffee; flour and 
preparations made from cereals, bre ad, 
pastry and confectionery, ices; honey, 
treacle; yeast, baking -powder; salt, 
mustard; vinegar, sauces (condiments); 
spices; ice  
31  Agricultural, horticultural and forestry 
products and grains not included in other 
classes; live animals; fresh fruits and 
vegetables; seeds, natural plants and 
flowers; foodstuffs for animals, malt  
32  Beers; mineral and aerated waters and 
other non -alcoholic drinks; fruit drinks 
and fruit juices; syrups and other 
preparations for making beverages  
33  Alcoholic bevera ges (except beers)  
34  Tobacco; smokers ’ articles; matches  
 
Part 2   Classes of services  
 
Item number 
(Class number)  Class of services  
(Class heading)  
35  Advertising; business management; 
business administration; office functions  
36  Insurance;  financial affairs; monetary 
affairs; real estate affairs   
2011, No. 9                         Intellectual Property                               79 
 
37  Building construction; repair; installation 
services  
38  Telecommunications  
39  Transport; pack aging and storage of 
goods; travel arrangement  
40  Treatment of materials  
41  Education; providing of training; 
entertainment, sporting and cultural 
activities  
42  Scientific and technological services and 
research and design relating thereto; 
indust rial analysis and research services; 
design and development of computer 
hardware and software  
43  Services for providing food and drink; 
temporary accommodation  
44  Medical services; veterinary services; 
hygienic and beauty care for human 
beings or ani mals; agriculture, 
horticulture and forestry services  
45  Legal services; security services for the 
protection of property and individuals; 
personal and social services rendered by 
others to meet the needs of individuals  
 
 
SCHEDULE 3  
Consequential Amen dments to Customs Act 1977  
(Section  139) 
 
The Customs Act 1977 is amended as shown in the table below:  
 
Provision  Amendment  
Title in Part 
VIII A Omit the title and substitute:  
 
“BORDER PROTECTION 
MEASURES FOR COPYRIGHT, 
TRADEMARK AND DESIGN 
GOODS”   
80                             Intellectual Property                           2011, No. 9  
 
203A (a) after the word “copyright” in the 
definition of “copyright material” insert:  
“under the Copyright Act 1998;”;  
(b) after the definition of “Court”, insert:  
 
““des ign right material” means material 
that is the subject of design right under 
Part IV of the Intellectual Property Act 
2011;  
“infringing design”, in relation to a 
registered design, means a design that 
infringes a registered design under 
section 42 of the I ntellectual Property 
Act 2011;”;  
 
(c) omit the definition of “infringing sign”, 
and substitute:  
 
““infringing sign”, in relation to a trade 
mark, means a sign that infringes a 
registered mark under section 56 of the 
Intellectual Property Act 2011;”;  
 
(d) omit the definition of “infringement 
proceedings”, and substitute:  
 
““infringement proceedings” means 
proceedings brought under section 26 of 
the Copyright Act  1998  or section 125 of 
the Intellectual Property Act 2011;”;  
 
(e) after the definition of “infringement 
proceedings”, insert:  
 
““mark” has the same meaning as in section 
45 of the  Intellectual  Property Act 2011;  
“registered design” means a design registered 
under section 40 of the Intellectual 
Property Act 2011;”;  
  
2011, No. 9                         Intellectual Property                               81 
 
 (f) omit the definition of “register ed trade 
mark”, and substitute:  
 
““registered mark” means a mark registered 
under section 55 of the Intellectual 
Property Act 2011;”;  
 
(g) the definition of “trade mark” is repealed . 
 
203B (a) omit paragraph (a) and substitute:  
 
“(a) claims that he or she  is the owner of 
copyright material or design right 
material specified in the notice or is 
the owner of a mark or a design that 
is registered in respect of goods 
specified in the notice, as the case 
may be; and”;  
 
(b) omit sub -paragraph (i) and substitute  -  
 
“(i) are goods that infringe the 
owner ’s rights in copyright material 
or design right material; or”;  
 
after the word “sign” in sub -paragraph (ii) 
insert  “or infringing design”.  
 
203C (a) omit paragraph (a) an d substitute:  
 
“(a) prima facie evidence th at the 
claimant is the owner of the 
copyright in copyright material, 
design right in design right material 
or the owner of a registered mark or 
registered design;”;  
 
(b) omit paragraph (b) and substitute:  
 
“(b) a sufficiently detailed description 
of the co pyright material, design 
right material, registered mark or 
registered design;”.  
  
82                             Intellectual Property                           2011, No. 9  
 
203F Omit section 203 F and substitute:  
 
“203 F. Power to suspend customs 
clearanc e procedure  – If the Comptroller 
accepts the notice under section 203 D and the 
notice has not been revoked, the Comptroller 
may suspend the customs clearance of any 
goods which the Comptroller has reasonable 
grounds to suspect are goods which contain 
infringing copyright material, infringing 
design right material, an infringing sign or 
infringing design and which are being 
imported.”.  
 
203L Omit section 203 L and substitute:  
 
“203 L. Destruction of goods -(1) If, in 
proceedings under the Copyright Act 1998 or  
Intellectual Property Act 2011, the Court 
decides that any goods infringe an owner ’s 
rights in relation to copyright, design right, a 
registered mark or a registered design, the 
Court may make an order that the goods be 
destroyed or disposed of outside th e channels 
of commerce in such a manner so as to avoid 
harm to the owner of the copyright, design 
right, registered mark or registered design.”.  
 
 
 
__________  
 
The Intellectual Property Act 2011 is administered  
by the Ministry of Commerce, Industry and L abour.  
 
 
 
 
 
Printed by the Clerk of the Legislative Assembly,  
by authority of the Legislative Assembly.