Registration and use

Ownership of marks

Who may apply for registration?

A person or legal entity may apply for registration if that person is the owner of the trademark, is using or intends to use the trademark.

Scope of trademark

What may and may not be protected and registered as a trademark?

The following may be registered as trademarks in Saint Lucia pursuant to the Trade Marks Act: letters, words, names, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shapes, colours and any combination of these. No clear distinction is made in the Act in respect of service marks. Service marks are considered trademarks associated with services and are registered in the same manner as trademarks for goods. Collective and certification trademarks are recognised and may be protected and registered as trademarks in Saint Lucia. Non-traditional marks such as sounds and smells cannot be registered in Saint Lucia, as the law does not provide for their protection.

Unregistered trademarks

Can trademark rights be established without registration?

Trademark rights may be established without registration and said rights in unregistered marks are secured through wide and exclusive use of the mark leading persons to identify the mark as belonging to someone for specific goods or services. These marks are protected under the common law tort of ‘passing off’. Passing-off claims are costly, consequent on the volume of evidence necessary to support a passing- off claim.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A famous trademark is offered protection even if it is not used in Saint Lucia. If the famous trademark is not registered in Saint Lucia, the owner may nonetheless be able to pursue an infringement action under the common law tort of passing-off even if the trademark is not used domestically. The owner will need to prove that the famous trademark is known to the Saint Lucia public and that there was an intention to deceive and or confuse by using the infringing trademark for identical or similar goods and that if used in relation to other goods or services there is a connection with the owner of the trademark and that the interests of the owner are likely to be damaged by such use.

The benefits of registration

What are the benefits of registration?

A registered trademark is personal property and a right in respect of a registered trademark is enforceable in the same way as rights in respect of any other personal property. The registered owner of a trademark has the exclusive rights to use the trademark; to authorise other persons to use the trademark in relation to goods and services or both in respect of which the trademark is registered and most importantly the right to refuse third-party use of the same or similar mark in the normal course of trade. and to obtain relief under the Act in any instance of infringement.

A registered owner of a trademark or an authored user, is protected in respect of infringement of their mark in that the Act permits him or her to give to the Comptroller of Customs a notice (in the form prescribed) objecting to the importation, after the date of notice, of goods that infringe their trademark. This notice given by the owner or authorised user remains in force for two years unless it is duly revoked and allows the Comptroller to effect seizure and to deal with goods that are imported into Saint Lucia if the importation infringes, or appears to infringe, a registered trademark. An action for infringement of a registered trademark may be brought in the High Court or any other court that has jurisdiction to hear the action. There are no specialised courts. The relief that a court may grant in an action for infringement of a trademark includes an injunction, damages or an account of profits.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The following documents are required in support of a trademark application in Saint Lucia:

  • a duly notarised authorisation of agent (power of attorney);
  • a description of the mark if the mark is a design mark or logo and if colours are claimed a specification of the colours;
  • a representation of the mark measuring 8cm x 8cm;
  • a description of the classes of goods and services pursuant to the Nice Classification; and
  • if the application claims priority, a certified copy of the application of which priority is claimed and a translation of certified copy if in a language other than English. Electronic filing is not available.

Trademark registrability searches are available but not required or mandatory before filing an application. Trademark search fees are as follows:

  • the government fee: US$5 for up to three searches; and
  • the agent’s fee: US$250 per hour or part thereof.
Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

A trademark registration takes approximately six months from the making of the application to registration if the application is without objection. The registration of a trademark is taken to have effect from and including the filing date of the application or the priority date in the case where registration was in respect of a trademark whose registration had also been sought in one or more than one Paris Convention country, or the applicant claimed a right of priority for the registration of the trademark in respect of particular goods or services. The registration procedure is deemed final on the expiration of the opposition deadline being three months following the publication of the registration of the mark in the Official Gazette.

The estimated time for filing the trademark would increase if queries are raised by the Registrar and the applicant has to satisfy any office queries by making submissions and convening meetings with the Registrar to ventilate said queries, or if a third party files an objection to the trademark application.

The total cost of registering a trademark in a single prescribed class is US$1,740, inclusive of agent and official fees. The fee would increase if the application is in respect of more than one prescribed class and if the mark is a combined mark or a logo, as the publication costs are increased in such cases.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The classification system followed in Saint Lucia is the Nice Classification, since Saint Lucia is a party to the Nice Agreement and is obliged to adopt and apply the said classification for the purpose of registration of trademarks. Multi-class applications are available and there is an approximate 50 per cent saving on each additional class registered.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Registrar carries out a substantive examination and issues a report if they believe there are grounds for rejecting an application. The Registrar examines the representation of the trademark to ensure that it meets the criteria for distinctiveness as well as the specification of goods or services to ensure that they accord with the Nice Classification. Applications are also examined for potential conflicts with other trademarks. The letter of consent is not specified in the Trademarks Act of Saint Lucia; however, it has been used in the review of trademark applications after rejection if the parties indicate that the owners of the respective trademarks are affiliated entities.

If, in the course of an examination of an application, the Registrar reasonably believes that the application has not been made in accordance with the Act or the Regulations, or there are grounds for rejecting the said application, the Registrar must report that belief in writing to the applicant. Applicants are given the opportunity to respond to objections raised by the trademark office by written submissions to rectify the application and to overcome an objection. The response may:

  • contest the Registrar’s belief expressed in the report;
  • contest any other matter arising out of the report;
  • provide further documentary evidence in support of the application; or
  • request that the application be amended in accordance with the Act.
Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Foreign applicants may claim priority rights when making an application for registration of a trademark in Saint Lucia should the same application have been filed in one or more than one Paris Convention country and provided that the Saint Lucia application is made within six months after the day on which that application, or the first of those applications, was made.

The applicant must file notice of the claim, which notice must specify in respect of the earlier application or, if there is more than one earlier application in respect of each earlier application, the Paris Convention country in which the earlier application was filed, the date on which the earlier application was filed and the number (if applicable) of that earlier application. The claim for priority should be made when filing the application, although the certified copy of the application of which priority is claimed can be furnished to the Registrar within six months of making the application.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

There are no words or symbols used to indicate trademark use or registration in Saint Lucia. Markings are neither provided for under the Trademarks Act nor used by convention and are not mandatory in Saint Lucia. Symbols, however, offer the benefit of an added level of protection for registered trademark owners as symbols notify potential infringers that a mark is registered or is in the process of being registered and assist the registered owner of a trademark in making a case and collecting damages in court for infringement since, by the markings, an infringer would be taken to have had knowledge that the mark was duly registered or in the process of being registered.

Appealing a denied application

Is there an appeal process if the application is denied?

The nature of the objection and the stage at which the objection is raised dictates how an appeal will proceed. Should the objection of the Registrar be raised at the examination stage and relate to the specification of goods and services or a clerical error or obvious mistake, the applicant will be granted the opportunity via a further application to convince the Registrar otherwise or to effect amendments or corrections to the application at that stage.

The applicant may also appeal to the High Court against any decision of the Registrar that leads to the subsequent rejection of an application.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Any person may oppose the registration of a trademark by filing a notice of opposition with the Registrar within three months from the day on which the acceptance of the application is published in the Official Gazette.

The Trademarks Act of Saint Lucia prescribes the grounds on which an opposition may be made, which grounds are similar to the grounds on which the Registrar may reject an application under the Act, except on the ground that the trademark cannot be represented graphically. Registration of a trademark may be opposed on the following grounds:

  • the applicant is not the owner of the trademark;
  • the applicant does not intend to use or authorise the use of the trademark, or to assign the trademark to a body corporate;
  • the opponent claims earlier use of a similar or identical trademark;
  • the trademark is substantially identical with or deceptively similar to a trademark that has acquired a reputation in Saint Lucia and because of the said reputation of the other trademark the use of the first-mentioned trademark would be likely to deceive or cause confusion;
  • the trademark consists of a false geographical indication;
  • the application was amended contrary to the Act;
  • the application contains certain signs prescribed by the Act not to be used as a trademark;
  • the trademark does not distinguish the applicant’s goods or services;
  • the trademark is scandalous or its use contrary to law; or
  • the trademark is likely to deceive or cause confusion.

The opponent must file with the registrar the notice of opposition, which must outline the grounds for the opposition. The opponent must also serve a copy of the notice of opposition on the applicant and file a statement setting out the particulars of service on the applicant within two days after service of the notice. An extension of time to file a notice of opposition may be sought from the Registrar. If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence within three months from the day on which the notice of opposition is filed.

Likewise, if the opponent does not intend to rely on evidence in support of the notice of opposition, they must, within three months from the day on which the notice of opposition is filed, serve on the applicant notice that the opponent does not intend to rely on evidence. If the opponent does not file evidence in support of the notice of opposition, or notice that they will not rely on evidence, or apply for extension of time, the opponent is deemed to have abandoned their opposition.

If the applicant intends to rely on evidence in answer to the opposition, the same procedure applies with respect to the time frame for serving a copy of the evidence in answer. The applicant must also file the original evidence with the Registrar within two days of serving a copy on the opponent. If the applicant does not intend to rely on evidence in answer to the opposition, the same procedure applies with regard to serving a copy of a notice that they do not intend to rely on evidence in answer. If the applicant does not file evidence in answer, or the notice that they will not rely on evidence in answer or, apply for an extension of time to do so, they are deemed to have abandoned their application. If the opponent intends to rely on evidence in reply to the evidence in answer to the opposition, the same procedure applies as stated above.

Upon completion of the evidence, the applicant or opponent may ask the Registrar to hear the parties to the opposition proceedings and the Registrar shall honour the request. Unless the proceedings are discontinued or dismissed, the Registrar shall decide to refuse to register the trademark or to register the trademark with or without conditions or limitations. An applicant or opponent may appeal to the High Court against a decision of the Registrar. No restrictions exist as regards who may oppose a trademark.

The cost of filing a notice of opposition is approximately US$1,000 and the cost of filing cancellation of proceedings is approximately US$400 (both inclusive of agent and official fees).

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The trademark registration remains in effect for 10 years from the date of filing the application and may be renewed for further 10-year periods. A person may request the Registrar to renew the registration of a trademark six months prior to the day on which the registration of the trademark expires. If a request for the renewal of the registration is made the Registrar shall renew the registration for a period of 10 years from the day on which the registration of the trademark would expire if it were not renewed. The cost of filing a renewal of a trademark is approximately US$1,250 per single class, inclusive of the cost of the certificate of renewal.

Proof of use is not required for maintenance unless the trademark registration is challenged.

Surrender

What is the procedure for surrendering a trademark registration?

The surrender of a trademark is known under Saint Lucia law as 'cancellation of registration'. If a trademark owner is minded to relinquish their rights in a trademark, the owner shall make a request to the Registrar who must upon receiving the request cancel the registration of the trademark if the Registrar is not obliged to notify a person recorded as claiming a right in respect of, or an interest in, the trademark. If an application has been made to the Registrar for the recordal of the assignment or transmission of the trademark and that assignment has not yet been recorded, the person to whom the trademark has been assigned or transmitted must be notified.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks, including two-dimensional and three-dimensional marks, could qualify for protection as designs, if they meet the criteria of new or novel and distinctive as stipulated in the Industrial Designs Act. Trademarks that may be creative or artistic in nature to qualify as a 'work' under the Copyright Act may also qualify for copyright protection.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Trademarks Act of Saint Lucia offers no specific protection for online trademarks or domain names.