TRADEMARKS FILING AND PROSECUTION IN VANUATU
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Vanuatu are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.
|Relevant office||Vanuatu Intellectual Property Office|
Ministry of Tourism, Trade, Industry, Commerce, and Ni-Vanuatu Business
|Nice classification||Yes (11th edition)|
|Multi class system||Yes|
|Documents required for filing a trade mark application||Simply signed Power of Attorney|
|Prosecution process||Filing publication of the mark in trademark journal opposition (within 28 days from the date of publication) registration renewal|
|Registration term||10 years after the filing date of the application|
|Renewal term||10 years|
Trademark searches in Vanuatu
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark searches in Vanuatu can be conducted for word marks, device marks, numeral and labels. The official search can be conducted at the records of the Vanuatu Intellectual Property Office (VIPO). The application form (section 98) needs to be submitted along with cover letter and payment receipt for conducting official search. The application form for conducting the search is available on the official website of the registry as TM Application for inspection of any file in the registry in the trademark forms column. 
Trademark word search edition of Vanuatu follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Vanuatu can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Vanuatu.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filing trademark applications in Vanuatu
A person may file a multi class or single class trademark applications in Vanuatu.
Trademark applications in Ecuador can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Vanuatu:
Ordinary trademark applications filed in Vanuatu are applications which are filed without claiming any priority. Ordinary applications are filed with the registrar of trademark at the Vanuatu intellectual property office (VIPO). The form filing the application is available on the official website of the registry as TM New Registration Application in the trademarks forms column. Multi class trademark applications can be filed in Vanuatu. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority/convention trademark applications in Vanuatu:
Vanuatu is not a member of the Paris convention but it is possible to claim conventional priority from an application made in the convention country. The application form is available on the official website of the registry as TM Application for Priority-Convention country in the trademark forms column. A list of convention countries is available on the https://vanipo.gov.vu/images/pdf/TM_Convention_Countries.pdf 
Trademark classes for goods and services in Vanuatu
Vanuatu follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
The application for the registration must be filled correct according to the NICE classification system to provide description of the relevant Class applied to the trademark to be registered.
Trademark examination in Vanuatu
Once the application is submitted for the registration, it is examined by the registrar and decide whether the application has been made in accordance with this act and will involve a formal examination and substantive examination on absolute and relative grounds. The grounds of rejection are defined under sections 24-29 of the act namely, trademark containing certain signs, trademarks that cannot be represented graphically, trademarks not distinguishing applicant’s goods or services, trademark scandalous or its use contrary to law, trademarks likely to deceive or cause confusion and identical trademarks.
The registrar can accept the application subject to conditions and limitations.
If the registrar is of the view that the application is not in accordance with the act and there are grounds of rejecting it, in this case the registrar must reject the application. The registrar cannot reject application without giving the applicant an opportunity of being heard.
The registrar must notify the applicant in writing of his decision and advertise the decision in the gazette.
Trademark oppositions in Vanuatu
Once the application has successfully completed the examination stage, it is accepted and published in the official gazette for the third party observation. Any interested party may file a notice of opposition within 28 days from the date of publication and must be in approved form available on the website of the registry as TM notice of opposition application in trademark forms column.
The opponent must serve the copy of the notice of opposition to the applicant.
The notice of opposition can be filed on the grounds as specified under sections 33-37 of the act and cannot be filed on any other grounds. The grounds are namely, the applicant does not own or intent to use trademark, trademark similar to trademark that has acquired a reputation in Vanuatu, trademark containing or consisting of a false geographical indications and application defective.
The registrar will give the applicant and the opponent the opportunity of being heard on the opposition.
The registrar must decide the application for the registration is refused or it is accepted subject to the conditions or limitations for the goods or services specified in the application in regard of the grounds established in the opposition.
Trademark registration in Vanuatu
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 10 years after the filing date of the application and registration certificate is issued.