The Bahamas has published new trade mark legislation, the Trade Marks Act 47 of 2024, which replaces the antiquated Trade Marks Act of 1906, and is in line with the legislation that is now followed by much of the world, bringing the law more in line with the Paris Convention and TRIPS Agreement.

It should be noted that the new Act is not yet in force, and it is not yet known when it will come into effect.

Here are the most significant provisions of the new Act:

Definitions. These have been expanded within the new law. Notably, the definition of a ‘sign’ now provides for registration of a colour, three-dimensional shapes, holograms, moving images, sounds, scents, tastes and textures.

Registrability. Distinctiveness, either inherent or acquired through use, is a requirement – Section 7.

Restrictions on registration. These include lack of distinctiveness, descriptiveness and the armorial bearings of The Bahamas – Section 8.

Prohibitions on registrations. These include confusing similarity with an earlier identical or similar mark for the same or similar goods or services, or with a well-known mark in the Bahamas, and bad faith or acts of unfair competition – Section 9.

Intention to use. There must be a bona fide intention to use and this is to be stated at the time of filing – Section 11.

Division. Division of an application into two or more separate applications is possible – Section 13.

Classification and service marks. Classification must be in accordance with ‘a prescribed system of classification’ – Section 14. The Nice classification is now recognised in place of the old British classification, and the protection of service marks is possible for the first time.

Convention priority. This is now recognised in the law, and there is a six-month term – Sections 15 and 16.

Examination. A written decision will be provided with a refusal, and representations and additional evidence will be allowed – Section 17.

The registration process. This comprises examination, acceptance, overcoming any opposition, and registration – Section 20. Where the Registrar examines and refuses or conditionally accepts a trade mark application, the applicant may only appeal such a decision before the Court. This is unchanged from the previous law.

Opposition. Grounds include bad faith, lack of registrability and non-distinctiveness. There is a Statement of Opposition, a Counter Statement, and parties can submit evidence and submit representations whereafter a decision is handed down – Section 22. Opposition rulings can be taken on appeal – Section 23.

Rival claims. There is a provision for a court determination where two or more parties seek registration of the same or nearly identical mark – Section 24.

Defensive registrations of well-known marks. A defensive registration of a well-known registered mark is possible where it is ‘likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those goods and services and the registered owner of the mark’ – Section 25. Yet, there are problematic contradictions. The definition of a well-known trade mark states that protection will be afforded ‘whether or not that person carries on business or has any goodwill in the Bahamas’. But Section 9(4) states that ‘when determining whether an earlier trade mark is well-known, regard shall be had to the extent to which it is known to the public in the Bahamas, based upon the nature and extent of its use in the Bahamas, and the nature and extent to which it has been promoted in the Bahamas’.

Disclaimers. Exclusive rights in a specific part of a trade mark can be disclaimed – Section 28.

Renewals. The renewal term is now 10 years, instead of 14 years – Section 30. It is also worth noting that partial renewal in respect of certain goods or services is now possible. Where a registration is not renewed, the new legislation sets out a six-month grace period where, if no fee is paid, the registration shall lapse.

Paris Convention. The following provisions apply in The Bahamas: Article 6bis (well-known marks); Article 6ter (state emblems); and Article 6septies (registration in the name of an agent of the proprietor without the proprietor’s permission) – Section 32.

Costs. Costs can be awarded and enforced by a court – Section 35.

Colour limitations. These are possible – Section 38.

Association. The association of identical or near-identical marks in the name of the same proprietor is possible. The Registrar may accept use of an associated mark or a trade mark ‘with additions or alterations not substantially affecting its identity’ – Section 39.

Certification and collective marks. These are provided for – Section 41. Certification marks were previously registerable under the old law. Detailed provisions for the registration of certification and collective marks are now contained in the second and first schedules respectively.

Assignments of marks. These must be recorded – Section 42. The new law provides that registrations may be assigned with or without goodwill. This is a departure from the old Act, which prescribed that registrations may only be assigned with goodwill. The provisions dealing with assignments have been significantly expanded.

Apportionment of trade marks on dissolution of a partnership. This is provided for – Section 44.

Series marks. This is possible where there are ‘a number of trade marks which resemble each other as to their material particulars, and which differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark’ – Section 45.

Unrenewed trade marks. A trade mark that has been removed for non-payment of renewal fees shall ‘for the purpose of any application for registration during one year after the date of such renewal, be deemed to be a trade mark which is registered’, except if there has been no bona fide use of the trade mark during the two years immediately before the removal – Section 46 .

Licensing. A trade mark licence must be in writing – Sections 48 and 49. It is worth noting that the term ‘registered user’ under the old law has fallen away. The new legislation sets out detailed provisions on licensing and, as well as the rights of exclusive licensees in case of infringement.

Rights conferred. The trade mark owner has the right to use or authorise use of the mark and to obtain relief for infringement. A passing off action is also possible – Section 50.

Co-ownership of a registered trade mark. This is possible – Section 51.

Registration is conclusive after five years. Although this is not applicable if the registration was obtained by fraud – Section 52. It is worth noting that the previous law stated that, in all legal proceedings relating to a registered trade mark, the original registration of such a trade mark shall, after the expiration of seven years from the date of registration, be taken to be valid in all respects. But not if it was obtained by fraud or was considered contrary to law or morality as detailed in Section 9 of the old Act. The term has now been reduced to five years from the date of original registration or five years from commencement of the new law, whichever occurs last. In terms of the new law, the provisions are slightly expanded on by stating that ‘unless the trade mark offends against the provisions of Section 8’ which is quite extensive (see earlier).

The acts amounting to infringement. These include the unauthorised use of a mark that is well-known in The Bahamas – Section 54. The wording for trade mark infringement has been improved upon and now contains detailed provisions relating to the acts amounting to infringement. A registration, of course, remains a pre-requisite.

The rights of non-exclusive and exclusive licensees in case of infringement. These are set out – Sections 55 and 56.

Non-use as a defence to infringement proceedings. A trade mark proprietor can prohibit the use of a mark ‘only to the extent that the registration of the trade mark is not liable to be to be revoked’ on the basis of non-use at the time the action for infringement is brought – Section 58.

Delivery up of infringing goods. This is possible – Section 59.

Sensitive information. A trade mark owner may, in infringement proceedings, request the court to order the alleged infringer to disclose banking and other commercial information – Section 60.

Disposal of infringing goods. The court can order this – Section 63.

Revocation. A registered trade mark can be revoked on various grounds including five years’ non-use, the fact that the mark has become generic, and the fact that it is likely to mislead the public – Section 65.

Grounds for invalidity. These include: lack of distinctiveness; descriptiveness; confusing similarity with earlier marks for the same or similar goods; and bad faith applications – Section 66.

Limitation and exceptions. These include: bona fide use of a name and the use of indications concerning the kind or quality of the goods – Section 68.

Passing off. This remedy is not affected by the legislation – Section 69.

Honest concurrent user. The concept of allowing registration on this basis is recognised – Section 70.

Provision restricting importation of infringing goods. The owner of a registered trade mark may give notice to the Comptroller of Customs to treat goods that are expected to arrive in The Bahamas as prohibited goods – Section 77.

Police officers. Search-and-seizure powers have been extended to police officers with regards to possible counterfeit goods – Section 86.

 

The new Act creates a robust framework for trade mark registration and enforcement that will be fit for purpose and meets modern standards. It is, therefore, a welcome development and we await news on its promulgation.

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