Trade marks in the Caribbean – An overview
As with Africa, trade mark registration in the Caribbean can be challenging. This is no real surprise if you consider the Caribbean’s rich history and diverse make-up. Much of the Caribbean comprises former British colonies and, even today, a number of the territories have the status of ‘British Overseas Territory’. There are also a number of states and territories with French, Spanish and Dutch heritage.
The Caribbean offers an array of trade mark registration options. For a list of states and territories that Spoor & Fisher handles as part of its Caribbean practice, please see this link. Most of these states and territories are islands, but a few of them form part of Central and South America.
The types of trade mark protection that are available in the Caribbean are as follows:
1. Automatic coverage through foreign registrations
A US trade mark registration automatically covers Puerto Rico.
Puerto Rico also has an independent registration system (see later).
French trade mark registrations automatically cover the following territories: Guadeloupe; Martinique; St Martin (French part); St Barthélemy.
Guadeloupe and Martinique each have the status of French ‘overseas department’, whereas St Martin (French part) and St Barthélemy each have the status of French ‘overseas collectivity’.
Whereas EUTM registrations (which obviously cover France) also extend to Guadeloupe, Martinique and St Martin (French part), this does not seem to be the case with St Barthélemy.
2. Extension of UK trade mark registrations
These territories (which are British Overseas Territories) allow for the extension of UK trade mark registrations: Anguilla; Monserrat.
It is important to note that this is not something that happens automatically, in each case it is necessary to make a formal application for extension. It is also important to bear in mind that an extension is dependent on the existence of the original registration.
Although it is clear that in the case of Anguilla this right to an extension includes EUTM registrations (which naturally cover the UK), this does not appear to be the case with Monserrat. It is also worth bearing in mind that the situation with EUTM registrations may change when the UK formally leaves the EU.
UK/EU rights are also recognised in the Turks & Caicos Islands. There is no provision for formally extending UK/EU trade mark registrations, but special priority may be claimed of UK and EU applications/registrations, provided that the Turks & Caicos application is filed no more than 12 months after the effective date of the UK/EU application/registration.
Anguilla, Monserrat and the Turks & Caicos Islands also have independent registration systems (see later).
The Cayman Islands used to allow for the extension of UK registrations but this came to an end in 2017 when new legislation came into effect.
3. Independent registration systems (national registrations)
The following states and territories have independent registration systems offering national registrations through direct filing: Anguilla; Antigua & Barbuda; Aruba; Bahamas; Barbados; Belize; Bermuda; BES Islands*; British Virgin Islands; Cayman Islands; Cuba; Curacao; Dominica; Dominican Republic; Grenada; Guyana; Haiti; Jamaica; Monserrat; Puerto Rico; St Kitts & Nevis; St Lucia; St Maarten (Dutch part); St Vincent & The Grenadines; Suriname; Trinidad & Tobago; Turks & Caicos Islands.
4. Madrid Protocol
The following states and territories can be covered through the Madrid Protocol, in other words through an international registration: Antigua & Barbuda; BES Islands*; Cuba; Curacao; St Maarten (Dutch part).
The international registration system has been in place in these states and territories for some time. In the case of Antigua & Barbuda the Madrid Protocol has been in force since 1999, and the system seems to work - international registrations covering the islands are examined locally, refusals are issued and applications are published, although this seemingly never happens within 18 months. The trade mark legislation in Antigua & Barbuda specifically incorporates the Madrid Protocol, dispelling any doubts as to whether or not the state has properly adopted it.
In the case of Cuba the international registration system has been in force since 1995, and there is examination, refusals do occur, and publication takes place (not always within 18 months).
In the case of the BES Islands, Curacao and St Maarten (Dutch part), the Madrid Protocol has been in effect since 2003, when the islands were still part of the Netherlands Antilles.
*The BES Islands are Bonaire, St Eustatius and Saba. These islands were part of the Netherland Antilles, but this entity was dissolved on 10 October 2010 and the three islands now have the status of ‘special municipalities’ of the Netherlands. Curacao and St Maarten/St Martin, which also both formed part of the Netherlands Antilles, have since 2010 had the status of ‘autonomous states’ within the Kingdom of Netherlands.