New Trademark, Patent and Design Bills, 45, 46 and 471 of 2020 have been issued by the Fijian Parliament to update the IP laws pertaining to current acts dated from 1889 through to 1936. These Bills seek to implement Fiji’s intention to join the Paris Convention and assume the requirements to do so.
Written submissions on these proposed bills are being accepted by the Fijian Standing Committee on Justice, Law and Human Rights up until Saturday 13 February 2021.2
Current Situation
Fiji is neither a member of the Paris Convention nor the Patent Cooperation Treaty. Therefore. priority claims are unavailable.
Trade Marks
- Trade marks allow for the registration of trade marks covering goods only (not services) as a Fiji national application or as the re-registration of a United Kingdom (UK) registration
- Fiji uses its own classification system, allows only single class applications, and does not recognise any priority claims
Patents
- Patents allow for independent applications or applications from UK- based applications on a UK registration (within three years of the date of UK issue)
- Independent applications are examined in Australia
- No priority claims are available on the filing of applications
- Direct applications are valid for 14 years from the date of acceptance
Designs
- Designs are currently not registrable but designs registered in the UK enjoy the same privileges and rights in Fiji as in the UK
- Damages in breach of copyright in a design are not available if the defendant can prove that they were not aware of the registration and had no reasonable means of making themselves aware of it
Changes in New Bills
The Fijian Government Departments have suggested that Fiji will enter the Paris Convention and Madrid Protocol.3 The Fijian Parliament have indicated that their intention is to join the Paris Convention.
Trade Marks
The new bill changes propose to:
- Adopt the Nice Classification system, allowing for services to be registered
- Allow multi-class applications
- Allow registration of certification trade marks
- Recognise priority claims made under the Paris Convention
- Allow for regulations aimed at ascension to the Madrid Protocol
- Remove any provision for re-registration of UK registrations
- Set the renewal period to ten years
Patents
The new bill changes propose to:
- Recognise priority rights and applications
- Allow the Fijian office to conduct examinations
- Adopt the Paris convention
- Introduce a grace period for prior disclosures
- Exclude computer programs from patentable subject matter
- Expressly exclude methods of medical treatment from patentablility
- Introduce express exclusions for patentability based on public order or morality, discoveries, theories, mathematical methods, human beings and biological processes
- Define the patent term to be 20 years from patent date
- Enable filing of divisional applications
- Allow for provisional applications and complete applications within 12 months of provisional applications
- Introduce defined novelty and inventive step standards
- Introduce compulsory licensing
Designs
The new bill changes propose to:
- Allow for local design registration with the Fijian office to examine
- Allow designs to be registrable on the basis of being “new” and “original”
- Require examination for registrations
- Introduce a grace period of 6 months
- Set the maximum period of 10 years to be renewed at the 5-year mark
- Provide no account of profits or damages if no reasonable ground for believing the design is registered in Fiji. Markings on articles need to indicate that the design was registered in Fiji, and those registered without Fiji indication not held to provide these reasonable grounds
- Set compulsory license provisions
- Provide for recognition of priority applications in convention countries and filing of linked applications within 6 months of priority filing
- Allow for extensions of time, which are broadly drafted
As a result of not being a part of global IP agreements such as the Paris Convention, the Fijian government has identified lost opportunities and third parties adopting Fiji-originating IP rights. It is encouraging to see the actions taken to address lost opportunities. This may encourage other South-Pacific countries to update their laws and reap the benefits of participating in international IP agreements.
1 http://www.parliament.gov.fj/wp-content/uploads/2020/12/Bill-No-45-Trademarks-Bill-2020.pdf
http://www.parliament.gov.fj/wp-content/uploads/2020/12/Bill-No.-46-Patents-Bill-2020.pdf
http://www.parliament.gov.fj/wp-content/uploads/2020/12/Bill-No.-47-Designs-Bill-2020.pdf
3 Including the Standing Committee on Foreign Affairs and Defence in parliamentary paper no. 66. Of 2020 http://www.parliament.gov.fj/wp-content/uploads/2020/08/Consolidated-Treaty-Report-on-the-Review-of-the-Madrid-Agreement-Madrid-Protocol-and-Paris-Convention-FINAL-27-08-2020.pdf