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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

The High Court is empowered to hear trademark disputes.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Civil and criminal actions are available. The use of a mark in Trinidad and Tobago without the owner’s consent constitutes infringement.

Criminal offences include situations where a party:

  • uses a mark that is identical to or likely to be mistaken for a registered mark; and
  • has either an intention to gain for itself or to cause loss to another.

Penalties include fines and imprisonment.

Who can file a trademark infringement action?

Registered trademark owners can file an infringement action. In addition, subject to any agreement between the parties, registered users of a mark may be able to bring an infringement action if they have called on the owner to institute infringement proceedings in respect of a matter that affects their interests and the owner has refused or failed to do so within two months of being called on.

What is the statute of limitations for filing infringement actions?

The Trademarks Act does not provide a specific limitations period. According to the Limitation of Certain Actions Act, the limitations period for infringement actions is four years.

What is the usual timeframe for infringement actions?

Actions that go to trial may take several years to be resolved.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Injunctions are available at the interlocutory stage to prevent imminent or further infringement. The court will consider whether the owner could be adequately compensated by damages at the end of trial, if decided in its favour. 

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Remedies available to owners of infringed marks include:

  • damages;
  • final injunctions; and
  • an account of profits.

The prevailing party may also be awarded interest and costs. Punitive damages are not allowed.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Registered trademarks can be recorded with the local customs authority, the Trinidad and Tobago Customs and Excise Division. Registered trademark owners may give the comptroller of the Customs and Excise Division a notice objecting to the import of goods that infringe the registered mark. Such notice remains in force for two years from the day on which notice is given, unless it is revoked in writing.

Defence

What defences are available to infringers?

Potential defences to a defendant in an infringement action include:

  • the statute of limitations;
  • the defendant using its own registered mark;  
  • a person using their own name or the name of their place of business; and
  • use of a bona fide description of the character or quality of the goods or services.

Appeal

What is the appeal procedure for infringement decisions?

High Court decisions may be appealed to the Court of Appeal. Further appeals may be taken to the Judicial Committee of the Privy Council in London.

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