Somaliland Intellectual Property Law
As a yet unrecognised country which has been re-building its infrastructure and its nascent democracy since May 1991, Somaliland has, as yet not developed any modern laws dealing with intellectual property. Somaliland does, however, consider itself bound by the international conventions that the 1960 to 1991 Somali (Democratic) Republic has acceded to, as generally confirmed in Article 10 of the Constitution of the Republic, and, in the field of human rights even those that have not been acceded to Somali Republic state. It remains the case, however, that whilst full compliance with and application of some of these conventions and involvement in their governing bodies is severely constrained by the Somaliland’s lack of international recognition, there is a commitment on the part of Somaliland to abide, as far as it is allowed to do so, by the provisions of these international conventions.
Intellectual Property (IP) Law is that area of law which relates to legal rights concerning creative effort or commercial reputation or goodwill. The (UN) World Intellectual Property Organisation WIPO mentions, in its website, that IP is divided into two categories:
- Industrial property, which includes
- inventions (patents),
- industrial designs, and
- geographic indications of source.
- Copyright, which includes
- literary and artistic works such as novels, poems and plays, films, musical works,
- artistic works such as drawings, paintings, photographs and sculptures, and
- architectural designs.
- Rights related to copyright also include those of
- performing artists in their performances,
- producers of phonograms in their recordings, and
- those of broadcasters in their radio and television programs.
There is increasing interest in the recognition of “traditional knowledge and expressions of folklore” as IP rights.
IP rights can also be covered by laws dealing with “breach of confidence”, “passing off”, “malicious falsehoods” enforced through civil litigation and criminal laws that outlaw criminal conduct involving counterfeiting or fraud of intellectual property.
Besides WIPO which administers international conventions on IP, the World Trade Organisation WTO administers the TRIPS Agreement (Trade Related Aspects of Intellectual Property Rights). There also regional arrangements for countries in different continents.
IP treaties acceded to by the pre 1991 Somali (Democratic) Republic:
The Somali (Democratic.) Republic (SDR) acceded to the Convention establishing WIPO on 18 August 1982, with effect from 18 November 1982. This was confirmed by Notification Notice No. 120 to WIPO dated 19 August 1972. None of the other IP conventions administered by WIPO has been acceded to by the SDR (see this WIPO table of IP treaty accessions). Both the territories of Somaliland and Somalia would have been covered by some of the pre 1960 IP conventions through their respective status as a British Protectorate and an Italian colony/Trusteeship territory before their union in 1960.
The SDR ratified on 14 May 1978 the 1977 OAU Cultural Charter for Africa which, in article 25, states that “African governments should enact national and inter-African laws and regulations guaranteeing the protection of copyright, set up national copyright offices and encourage the establishment of authors’ associations responsible for protecting the moral and material interests of those who produce work that gives spiritual and mental pleasure”. We have, as yet, no record of any such law having being passed.
The SDR also acceded to the 1976 Lusaka Agreement which established ARIPO (the African Regional Intellectual Property Organisation) so enable “to pool the resources of its member countries in industrial property matters together in order to avoid duplication of financial and human resources.” However, the SDR was not a member of the following ARIPO conventions, such as:
Somaliland Intellectual Property Laws
Copyrights in the Somaliland Protectorate were covered by the UK Copyright Act 1911. The Act was extended to Somaliland (and to the other then British Dominions and Protectorates) by the Order in Council, 24 June 1912 (Source: The Laws of the Somaliland Protectorate (1950), Vol. 1, xxvi - Table of British & Indian Acts Applied in the Somaliland Protectorate).
Until January 1975, the following Somaliland Protectorate laws relating to intellectual property were still in force in the territory of Somaliland:
- The United Kingdom Trade Marks Ordinance No. 9 of 6 August 1938. This was the UK Trade Marks Act 1938 which, in the UK, has since been extensively amended from 1994.
- The United Kingdom Patents Ordinance No. 9 of 13 November 1924, as amended by Ordinances 7 and 17 of 1932. Again this very dated Ordinance would have been similar to this 1924 UK Patent Act applying to Grenada.
Both these Ordinances were repealed in 1975 by the Trade Marks and Patents Law – Law No. 33 of 16 January 1975 which extended to the territory of Somaliland the following 1955 Italian laws which applied to Somalia:
- Ordinance No. 1 of 22 January 1955 on Industrial Inventions (Patents). (Incomplete Italian copy available)
- Ordinance No. 2 of 22 January 1955 on Industrial Designs. (Ordinanze n.2 rep. Brevetti per Modelli Industriali - 17 articles and a table in Italian)
- Ordinance No. 3 of 22 January 1955 on Trade Marks. (Ordinanza n. 3 rep. Brevetti per Marchi d’impress - 73 articles and Tables A, B & C in Italian. Table C sets out 49 classes of product classification.)
The Ordinances were based on the Italian law and practice at that time and are hence out of date. As far as we can trace, no English language versions are available, but an English language of the Italian Trade Mark decree No. 929Italian Trade Mark Law Roayal Decree 929 -1942 of 21 June 1949 (as updated since in 1996 as can be seen from the repealed provisions) is available at this link.
A short summary of the process under the 1955 Ordinances is also available at the website of IP Specialist firm, Adams & Adams.
A law which, we believe covered the rights of authors of Somali language books published in the SDR, Sharciga Xuquuqda (literally Rights Law, but also subtitled Copyright Law) - Law No. 66 of 7 September 1977 - was passed in 1977. (A copy, when available will be posted here).
Prior to 1991, registrations of trademarks and patents in the Somali (Democratic) Republic were undertaken by a unit located, at various times in different ministries. [Examples of registrations undertaken in the 1980s and published in the Official Bulletin can be seen here].
The fees for registration were updated by Law No. 3 of 8 December 1987 which set out:
- New tables A & B replacing the tables A & B of the three 1955 Ordinances and dealing with the fees.
- Fees were to be paid in dollars unless the registration was requested by a resident Somali firm/agency (Art. 3).
- Period for industrial design registration was 7 years from date of registration (Art 4(1))..
- Period for trade marks registration was 10 years (Art. 4(2)).
It is believed that no registrations have been carried out properly since 1989/90. In any case as the Republic of Somaliland is now a sovereign, though yet unrecognised, state even if a system of registration is re-started in Somalia, it will no legal force within the territory of Somaliland.
- Somaliland, therefore, needs to develop its own up to date IP legislation which is compatible WIPO and TRIPs conventions/agreements and use it for protecting the intellectual rights of its own citizens and businesses in Somaliland even if, until international recognition, the legislation cannot offer the wider registration benefits that can be gained through the regional ARIPO conventions and the Patent Co-operation treaty. Negotiations with neighbouring Ethiopia and Djibouti may also lead to reciprocal arrangements for protection of IP rights regionally. It may also be worthwhile seeking the assistance of ARIPO,
- Somaliland businesses are already aware of the disadvantages of lack of appropriate legislation that can help them protect their trademarks and industrial designs within Somaliland itself and the Ministry of Commerce & Industry needs to take steps to legislate in respect of at least these two areas, as matter of urgency. Other IP laws can then follow. A consultation will ascertain the more urgent IP aspects that need to be covered.
Current position in Somaliland
Despite the current lack of new IP legislation in the Republic of Somaliland it is incorrect to assume that everyone can infringe the IP rights of others with impunity.
Leaving aside patents, lack of registration does not deprive IP owners of their rights. In general.
- Copyright is an inherent right that automatically arises on creation of an original work. The first owner is usually the author of the work. Copyright protection generally runs from the date of creation, or recording, of the copyright work, and lasts until the expiry date. The expiry date depends on the category, the work and the periods set in legislation which can be different in various countries. Absence of a copyright © mark does not diminish the right but it shows its assertion.
- Trade marks which are not registered (denoted as instead of ® for registered trademarks) may be enforced in some countries through a “passing off” claim against the person who uses the mark (see below for Somaliland possible equivalent action).
- In some countries [e.g EU countries] an unregistered design disclosed to the public may be enforceable for a period. In the UK the right to an unregistered design is protected but it is advisable to retain a dated design drawing and the copying of the design has to be proved to succeed in an infringement claim.
Somaliland has various civil and criminal legislation and functioning courts that ought to provide some remedies for blatant infringements of some IP rights.
Constitutional provisions: Article 16(2) of the Somaliland Constitution states that “the law shall determine the rights to authoring, creating and inventing” and therefore recognises that these IP rights shall be protected in Somaliland. Secondly mindful of the fact that new Somaliland laws cannot promulgated quickly in all spheres of life, Article 130 of the Constitution confirms that the pre 1991 Somali (Democ.) Republic laws “which were current and which did not conflict with the Islamic Sharia, individual rights and fundamental freedoms shall remain in force in the country” until the promulgation of new laws.
This means that so far as possible the 1955 (Italian) ordinances can be implemented in Somaliland now but, in practice, they have to be revised first to make them in accord with the Constitution because these laws set up a registration system in the Somali Republic and through ministries in a country that Somaliland no longer considers to be part of. In any case these ordinances are extremely dated and Somaliland might as well draft its own new modern IP laws. In the mean time, Article 16(2) not only imposes a duty on the State to promulgate IP laws, but, as a constitutional provision, it is also a statement to the Government and to the courts about the determination of IP rights.
Civil Code 1974: In the light of the Article 16(2) of the Constitution and in the absence of a modern and workable IP laws in Somaliland, there are, in our view cogent arguments for the use of the Civil Code in appropriate cases where a loss relating to the infringement of the an unregistered IP rights (principally trademarks and designs) can be shown to have caused loss to the owner.
When a trader/business uses the trademarks (or packaging, brand, advertising etc) of another business or copies its designs and misleads prospective buyers into believing that its goods/services are those of the other business, and that leads to damage to the goodwill or trade reputation of the other business, a claim similar to “passing off” and also for unjust enrichment can, in our view, be brought under the following Articles of the 1974 Civil Code:
- Article 160: “Every fault which causes injury to another person imposes an obligation for payment of damages by the person who committed it”.
- Under Article 167, the judge shall decide, in all the circumstances, the extent of damages for the loss suffered. The limitation period is 3 years from the date the victim knew of the injury and the identity of the perpetrator, and, in any case, such a claim will expire after 15 years from the date the act was committed (Article 175).
- In trading/business, another claim for unjust enrichment may also arise under Article 176: “a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him. This obligation remains even if the profit has disappeared at a later stage”. The limitation period for such a claim is the same as that relating to Article 160 (see Article 177).
Civil claims: Claims under the Civil Procedure Code 1973 can be made to the appropriate Regional Court (or, in small claims at the District Court) in line with Article 8 (appropriate forum) and 117 and 118 (issue of proceedings) of Civil Procedure Code. But, as in all civil claims, pre-action letters and notice to the offending party will put them on notice and clarify the basis of the claim. In any case prior Assertion of the IP right through precautionary notices and prior clear identification of ownership of the IP right may assist in not only
- heading off likely infringements, but may also
- serve as evidence of prior assertion of the IP right.
Criminal prosecutions: The Penal Code 1963 protects the public from criminal abuse of IP rights:
- Article 365: The offence of counterfeiting, alteration or use of identification marks of literary or artistic work or patents and industrial designs or models or products, including foreign ones. This offence is committed provided the IP right holder has complied with the “provisions of domestic law or international conventions for the protection of literary, artistic or industrial property”. As there is no domestic Somaliland law yet in place, the prosecution will depend on the IP rights owner complying with international conventions, in which case those rights which do not necessarily require registration could well still be covered by this Article. The following article, however, has a much wider reach.
- Article 397: Offence of selling or circulating literary or artistic works or industrial products with domestic or foreign trade or other marks likely to deceive the purchaser as to their origin, source or quality of the work or product. It does not matter for this offence whether the IP related to the work or product was registered under domestic or international law, as the offence is aimed at protecting the public from deceptive or misleading trademarks, names or indications.
- Article 394: Fraud against domestic industries by offering for sale in national or foreign markets their industrial products with counterfeit or altered distinct names or marks. There is no requirement in the offence for the IP rights to be covered by any domestic legislation or international convention. This Article however applies only to “industrial products” manufacturers and not to trading or other commercial concerns.
- Article 395: Offence of selling to the public articles different from the ones the purchasers thought they were getting and involving fraud as to their origin, source, or quality.
- Article 396: Offence of selling non-genuine products as genuine.
An IP owner affected by the above offences or anyone else may make a complaint about these offences the police or the Attorney General’s office or even a judge under Article 17 of the Criminal Procedure Code 1964. The relevant IP owner who incurred a loss as a result of the offence may, as an injured party, seek from the same court compensation under Article 14 and 119 of the Criminal Procedure Code.