Tonga - New Industrial Property Act

Newsletters and Bulletins / August 1999 / Tonga

As noted in our March 1999 Newsletter (N.S. 190), a new Industrial Property Act has been enacted in Tonga and we have now received some details thereof. The principal features of the new law are listed below.

Patents, Utility Models and Designs

Under the new legislation patents will be obtainable for inventions that "permit in practice the solution of a specific problem in a field of technology". To be patentable the invention must be new, involve an inventive step and be industrially applicable. However, patents will not be available for, inter alia, mathematical methods, methods of doing business, mental acts, playing games, methods of treatment of humans or animals by way of therapy, surgery or diagnosis or inventions contrary to public order or morality. The patent term will be twenty years from filing. Novelty will be destroyed by publication anywhere in the world or by public use or disclosure in Tonga. However, a one-year grace period is provided for disclosures by the inventor or his successor-in-title. Additionally, it appears that claims to priority from applications filed in Paris Convention countries will be recognized.

Utility model protection will be available for inventions that are new but do not demonstrate a sufficient inventive step to qualify for patent protection. Such protection will have a maximum duration of seven years from filing.

Design protection will be available for an initial term of five years which will be capable of renewal for two further five-year periods. Protection will not cover anything required to produce a technical result. A grace period similar to that provided for patents will be available for designs also.

Trademarks

1) The present practice provides for the re-registration of United Kingdom trademarks, and, under the new law, this will no longer be possible.

2) All existing registrations will be abolished and proprietors of such registrations must re-register their marks within 12 months from the effective date of the new law.

3) A single application may be filed in respect of multiple classes of the International Classification of Goods and Services.

4) Trademarks will be examined on the basis of Tongan registration criteria.

5) Convention priority claims may be made.

6) Trademark registrations will be effective for a period of 10 years and renewable for additional 10-year terms.

7) The new law provides for opposition proceedings.

8) Collective marks may be registered.

9) Licensing of marks with effective quality controls is permitted.

10) Acts of unfair competition, which are defined as acts of competition contrary to honest practices in industrial or commercial matters, are unlawful.

Although the new Act will not go into effect until the Industrial Property Regulations are passed by the legislative authorities, trademark applications are presently being accepted. The applications being filed now are expected to be deemed as filed on the first day of business under the legislation which may not go into effect before January 1, 2000.

Editor's note: See the update on this discussion in our June 2000 Newsletter (N.S. 192).

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