Trinidad and Tobago: New trade mark law

The Trade Marks Act, No. 8 of 2015 (‘the Act’), came into force on 25 June 2020. The Act replaced the old legislation, the Trade Marks Act, Chap.82.81. The Act brings trade mark law in Trinidad and Tobago into line with trade mark law in much of the world. The Act should terefore be seen as a positive development. 

Here are some noteworthy features of the new legislation:

GENERAL

Madrid Protocol

The Act gives effect to the Madrid Protocol, which means that foreigners can designate Trinidad and Tobago in an International Registration.

Any person in Trinidad and Tobago who wishes to use the Madrid system for filing abroad must be either a citizen or domiciliary of Trinidad and Tobago, or have an industrial or commercial establishment there.

Concept of a trade mark

The Act refers to a ‘sign’, which is defined as a ‘letter, word, name, signature, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof.’

The term ‘trade mark’ is defined as ‘any sign capable of being represented graphically and which is capable of distinguishing goods or services.’

Some local lawyers interpret these provisions to mean that the concept of a trade mark has been expanded to include scents, sounds, tastes and three-dimensional marks. We would urge some caution here.

Collective and certification marks

Collective marks have been added to the list of trade marks that can be registered. Certification marks have always been registrable.

Series marks

There is provision for series marks for trade marks that are very similar and belong to the same party.

Associated marks

There is no longer provision for similar or identical marks owned by the same party to be associated with one another.

Single register

The concept of Part A and Part B registrations that appeared in the old legislation has been dropped. All marks will now appear in a single register, and this includes old Part B registrations.

Nice Classification

Local lawyers believe that it is implicit that the most recent version of the Nice Classification (11th Edition) will be applied. Until now the Intellectual Property Office (IPO) has used the 7th Edition.

Publication and opposition

Publication of accepted applications will now be limited to an online IPO publication, and there will be no cost involved in this. Previously trade mark applications were advertised in a local newspaper.

Duration

The registration term is 10 years, and this can be renewed for further 10-year periods.

Official fees

Official fees will be increased and fees will in future be charged for certain actions that were previously free of charge.

Renewals

An application for renewal must be filed no later than 6 months after the date of expiry.

Non-use

The non-use period remains at 5 years. This term runs from the completion of the registration period, presumably the date of issue of the certificate of registration.

REGISTRATION PROCESS

Priority claims

There is provision for priority claims.

Registrability

In order to be registrable a mark must now be ‘capable of distinguishing.’ An application will be refused if the mark is ‘devoid of any distinctive character.’

A shape mark will be refused if the shape results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods.

Disclaimers

There is provision for disclaimers to be entered.

Examination

There will be examination on absolute grounds (inherent registrability) and relative grounds (prior rights).

Refusal - earlier trade marks including well-known marks

An application can be refused on the basis of an earlier trade mark. This term is defined to include a trade mark that, at the date of the application, was well-known. In order for a trade mark to be well-known it is not necessary for there to be a registration or commercial establishment in Trinidad and Tobago.

Honest concurrent use

A refusal based on an earlier mark can be overcome on the basis of honest concurrent use.

ENFORCEMENT

Infringement

The infringement right extends to similar goods or services and, in the case of a mark that is well-known, dissimilar goods and services.

Counterfeit goods

Counterfeit goods are specifically defined in the legislation. There are provisions regarding counterfeit and border measures.

Passing off, unfair competition

These actions are specifically recognised in the Act.

CONTRACTUAL MATTERS

Assignments

An assignment can be without goodwill.

Licensing

Licensing of trade marks is recognised.

contact us for further information.

Date published: 13 July 2020
Author: Spoor & Fisher

Tags: Trinidad and Tobago trade mark new law Caribbean