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What is the primary legislation governing trademarks in your jurisdiction?
Which international trademark agreements has your jurisdiction signed?
The Bahamas is a party to:
- the Paris Convention; and
- the World Intellectual Property Organisation Convention.
Which government bodies regulate trademark law?
Trademarks are regulated by the Intellectual Properties Section of the Registrar General's Department, which falls under the Office of the Attorney General and Ministry of Legal Affairs.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership is determined on a first-to-use basis.
What legal protections are available to unregistered trademarks?
Owners of unregistered trademarks must rely on the common law tort of passing off. The Trademarks Act (6/1906) specifically prohibits seeking injunctive relief or damages for infringement of an unregistered mark.
How are rights in unregistered marks established?
Rights in an unregistered mark are established through local use of the mark.
Are any special rights and protections afforded to owners of well-known and famous marks?
Under certain circumstances, the owner of a well-known mark may register it defensively in additional classes without using it in relation to those classes. To qualify for these defensive registrations, the mark must be an “invented word or invented words”.
To what extent are foreign trademark registrations recognised in your jurisdiction?
The Bahamas allows for applications with Paris Convention priority dates based on existing foreign rights and applications made in convention countries.
What legal rights and protections are accorded to registered trademarks?
The owner of a registered mark has the exclusive right to use it on and in connection with the goods for which it is registered.
Who may register trademarks?
Natural persons, partnerships and business entities may register trademarks.
What marks are registrable (including any non-traditional marks)?
Registerable trademarks must contain at least one of the following:
- the name of a company, individual or firm represented in a special or particular manner;
- the signature of the applicant or its predecessor in business;
- an invented word or words;
- other words that do not refer to the character or quality of goods and are not a surname or geographical name; or
- any other distinctive mark.
Numerous features are prohibited from being part of a registered mark, such as symbols, arms, crests and flags relating to a nation, international organisation or the British royal family. The registrar may also require proof of consent to use a living person’s name.
Can a mark acquire distinctiveness through use?
Yes. The Trademarks Act specifically allows the registrar to consider the extent to which an applied-for mark has acquired distinctiveness through the applicant’s use.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
An application for the registration of a mark will be examined on both absolute and relative grounds. The registry will conduct a search of registered marks and applications to determine if the mark is similar to other registered or applied-for marks concerning the same goods.
Are collective and certification marks registrable? If so, under what conditions?
Certification marks are allowed to distinguish the “origin, material, mode of manufacture, quality, accuracy or other characteristic” of certified goods from that of uncertified goods. The applicant cannot carry on a trade in the goods concerned. The applicant must deposit approved regulations for the use of the certification mark with the Intellectual Properties Section of the Registrar General's Department. These regulations are open to public inspection. The registrar must consent to the transfer of a certification mark.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes, a simple authorisation of agent is required. Notarisation and legalisation are not required. However, the original copy must be provided to the registry at the time of filing (photocopies and facsimiles, among other things, are not accepted).
What information and documentation must be submitted in a trademark registration application?
To register a trademark, the applicant must submit a written, signed application which includes:
- its name and address;
- a request for registration of the trademark;
- a statement of the class (according to the local classification system) and goods; and
- a representation of the mark.
What rules govern the representation of the mark in the application?
A representation of the mark must be submitted on the registry’s supplied form, within a specific space. Provisions are made for attaching or supplying larger representations. Four additional representations of the mark must be submitted within a similar space on a separate supplied form.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The initial application fee for a mark is B$50. Additional fees to complete the registration apply if the application is accepted.
How are priority rights claimed?
To claim Paris Convention priority, an applicant must state in its application the name of the convention country where and the date on which its original application was made. Moreover, the applicant must submit a certified copy of the original application with its Bahamian application. If the original application was not in English, a certified translation is also required.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Searches are available, but not required, prior to filing. The searching party must submit the required search request form to the registry and pay a fee of B$40 per class. Search results can be slow.
What factors does the authority consider in its examination of the application?
An application is reviewed to ensure that all procedural formalities are met. Absolute and relative grounds are considered during examination to determine that:
- the mark is not one of the enumerated non-registrable marks (eg, a representation of Queen Elizabeth II);
- the mark is distinctive; and
- there are no conflicting earlier marks.
Does the authority check for relative grounds for refusal (eg, through searches)?
Yes. The registry will perform a search when examining each trademark application.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes. Applicants will have one month after notice of the registry’s objections to request a hearing.
Can rejected applications be appealed? If so, what procedures apply?
Yes. The appeal of a rejection must be taken to the Supreme Court. The registrar and the applicant will be allowed to appear and argue their cases. The registrar, except with leave of court, must rely only on the written grounds for its rejection and the materials used to arrive at that decision.
When does a trademark registration formally come into effect?
The application date serves as a trademark’s formal registration date.
What is the term of protection and how can a registration be renewed?
The term of a trademark registration is 14 years. The mark can be renewed for successive 14-year terms. To renew the mark, the owner must pay the renewal fee (B$80) and submit the prescribed form to the registry. To remove the mark from the registry after the renewal date has passed, the registrar must advertise the non-renewal. This is rare in practice. The owner can renew the mark late, but must do so within 30 days of the non-renewal advertisement and pay a late fee. Beyond that period, a mark may be restored, on payment of additional fees, if the owner satisfies the registrar that restoration is just.
What registration fees apply?
In addition to the application fee, an B$80 fee applies to complete the mark’s registration.
What is the usual timeframe from filing to registration?
The timeline of registration can vary significantly, but a new application often takes approximately two years to complete registration, absent opposition or official action.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. Oppositions must be made within one month of the mark’s advertisement for opposition. If the grounds for the opposition include similarity to registered marks, the opponent must cite those marks’ registration numbers and the number of the Gazette in which they were advertised. Periods are provided for the applicant and opponent to submit evidence and argument concerning the opposition. The registrar will then notice a hearing for the opposition. For non-resident applicants or opponents, the registrar may require a bond or other security for costs.
What is the usual timeframe for opposition proceedings?
Once an opposition has been fully argued and the evidence has been submitted (each step of which has a specified period), the opposition decision can take several years.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes. The registrar’s determination in an opposition may be appealed to the Supreme Court. The applicant, opponent and registrar can all be party to the appeal. Without leave of court, the parties cannot add additional grounds for opposition on appeal.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes. A mark can be cancelled for non-use if the registration was made without a bona fide intention to use the mark and no bona fide use has occurred. No non-use term applies to this cancellation. Alternatively, a mark may be cancelled for non-use if no bona fide use has occurred in the preceding five years. To have the mark cancelled for non-use, an aggrieved party must make an application to the courts.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
The Trademarks Act (6/1906) provides broad authority for the court to remove an entry from the register if it was made “without sufficient cause” or is “wrongfully remaining on the register”. Potential grounds for cancellation actions include the fact that the:
- mark is generic, descriptive or otherwise non-distinctive;
- mark is misleading, deceptive or disparaging;
- mark is a geographical indication;
- mark violates public policy or morality;
- mark is used to mislead;
- application for the mark was made in bad faith; or
- mark is otherwise contrary to the law.
Who may file a request for revocation and what is the statute of limitations for filing a request?
An application for revocation may be made by any aggrieved person. The Intellectual Properties Section of the Registrar General's Department may make the application in instances of fraud.
No specific statute of limitations exists for revocation actions in the Trademarks Act to bring a cancellation action. However, a mark is generally incontestable seven years after registration, unless:
- the registration was obtained via fraud;
- the mark’s use is calculated to deceive or would otherwise be disentitled to protection (eg, for an illegal good);
- the mark is contrary to the law or morality; or
- the mark consists of a scandalous design.
What are the evidentiary and procedural requirements for revocation proceedings?
Revocations are achieved through an action brought before the courts. Normal evidentiary and procedural rules apply.
What is the appeal procedure for cancellations or revocations?
As cancellation and revocations are brought as actions in court, the normal appeal process applies. Appeals may be taken to the Court of Appeals, with further appeal possible to the Judicial Committee of the Privy Council.
What is the procedure for surrendering a trademark registration?
To surrender a registration, the trademark owner must submit the prescribed form and pay the associated fee (B$40). The registrar “may require such evidence by declaration or otherwise as he may think fit as to the circumstance in which the application [for surrender] is made”.
Which courts are empowered to hear trademark disputes?
The Supreme Court is empowered to hear trademark disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil actions for infringement and the common law tort of passing off can be taken against infringers. To bring an infringement action, the mark concerned must be registered.
In addition, numerous criminal provisions exist in the Trademarks Act (6/1906) for infringing activities. The criminal penalty is a B$200 fine and forfeiture of the concerned goods.
Who can file a trademark infringement action?
A trademark owner can bring an action for infringement. Further, subject to any agreement between the parties, a registered user of a mark may be able to bring an infringement action if it first calls on the mark’s owner to institute infringement proceedings in respect of a matter that affects its interests and the owner refuses or fails to do so within two months of being called on.
Prosecutors bring criminal infringement actions.
What is the statute of limitations for filing infringement actions?
The Trademarks Act provides no specific limitations period. However, the Limitations Act 1995 provides a six-year limitations period for torts (including passing off) and actions to recover a sum by virtue of a written law (including the Trademarks Act).
What is the usual timeframe for infringement actions?
Infringement actions, exclusive of any appeal, usually last several years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Trademarks Act makes no specific provision for injunctive relief. Injunctions in The Bahamas for trademark infringement are governed by the common law conception of injunctive relief. Interlocutory injunctions, including ex parte injunctions, are available. The Supreme Court Act and the Rules of the Supreme Court govern injunctive relief and the related procedures.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Trademark owners can seek damages, accountings, injunctive relief and delivery up. Punitive damages are not available.
What customs enforcement measures are available to halt the import or export of infringing goods?
Pursuant to the Customs Management Act 2011, a trademark owner may apply to the Customs Department to seize certain infringing goods during import and export. A reasonable bond or other security or assurances may be required to protect the rights of the importer or exporter. Approved applications can be enforced for a maximum of one year, but can be renewed.
When goods are detained, the trademark owner must bring an infringement action within 10 days (or three days if the goods are perishable). Extensions are available only for non-perishable goods. An alternative, simplified system exists for the destruction of such goods, but it cannot be used if the owner of the goods objects.
These provisions do not apply to non-commercial goods in a traveller’s baggage and under the limits of duty-free allowances.
What defences are available to infringers?
An infringement defendant can raise numerous affirmative defences, including that:
- the mark is invalid;
- the defendant is an honest, concurrent user of the mark;
- the use constitutes use of a registered mark;
- the statute of limitations applies;
- the defendant has the status of a registered user of the mark and is using it within the scope of that status;
- the defendant’s use constitutes the bona fide use of its own name or place of business or that of its predecessors in business;
- that the mark is a bona fide description of the character or quality of the defendant’s goods;
- the defendant has the owner’s express or implied consent to use the mark;
- trademark exhaustion applies; and
- the defendant’s use of the mark is reasonably necessary to indicate that its goods are parts of or accessories to the owner’s goods.
What is the appeal procedure for infringement decisions?
Appeals of Supreme Court decisions in an infringement action may be made to the Court of Appeals, the highest domestic court in The Bahamas. Further appeals may be taken to the Judicial Committee of the Privy Council in London, but these appeals are not as of right.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Marks may be assigned only in connection with the goodwill of the business concerned in the registered goods. To record the assignment of a mark, the assignor and assignee must submit a joint request to record the assignment, along with the required fee of B$80, to the Intellectual Properties Section of the Registrar General's Department. The registrar may require the assignee to declare an oath that it was assigned and has accepted the mark and associated goodwill.
An assignment need not be recorded to have legal effect. However, failure to record the assignment may jeopardise the rights of the assignee.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The Trademark Act does not recognise licensing as such. Instead, it provides for a system for recording registered users, which must be approved by the registrar to have status as such. Thus, entry into a licence agreement will generally result in an application for a registered user. Authorised use by the registered user is deemed use by the owner. Use within the scope of registered user rights also serves as a defence to infringement should a dispute occur.
To record a registered user, the owner and proposed registered user must jointly apply to the registrar and pay the associated fee of B$40. The owner must also make a statutory declaration setting out:
- the relationship between the parties;
- the exclusivity or non-exclusivity of the right;
- any restrictions on future registered users;
- which of the registered goods are covered;
- any conditions or restrictions regarding the use or characteristics of goods; and
- the length of the permitted use, including if perpetual.
The registrar can require additional evidence or information. It must then evaluate the application and determine that registering the user will not be contrary to the public interest. The registrar can impose conditions or restriction and must refuse the application if it appears that the grant would “tend to facilitate trafficking in the trade mark”.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The Trademark Act does not recognise licensing as such, but rather the concept of registered users. The parties agreeing to a licence will generally want to consider applying for the licensee to be a registered user of the mark and should provide for such application in their agreement. The application will contain certain provisions that it would be wise to also include in any licence agreement. As such, a licence agreement would typically address, at a minimum:
- the exclusivity or non-exclusivity of the licence;
- any restrictions of future licensing by the licensor, if not exclusive;
- the scope of the goods covered by the licence;
- any restrictions on use or quality control provisions;
- the term of the licence or the proposed registered user status (registered users can have perpetual terms); and
- a contingency if the registrar does not approve the licensee as a registered user.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Local laws contain no specific provisions regarding the registration of a security interest.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes. The Bahamas is a member of the Berne Convention. Trademark owners can register certain trademarks for protection under the Copyright Act.
Moreover, owners may attempt to protect a trademark as a design if it qualifies for protection under the Industrial Properties Act.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
No special regime exists for the protection of trademarks online. Thus, the Trademarks Act (6/1906) still governs the online use of trademarks. Domain names are not regulated by the registry unless applied for as trademarks and cannot be enforced without a registration in an infringement proceeding.
The country-code top-level domain for The Bahamas is ‘.bs’. It also has second-level domains (eg, ‘.edu.bs’ and ‘.com.bs’). The ‘.bs’ county code top-level domain is administered by the University of The Bahamas. The Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy is used to contest domain name registrations in The Bahamas.