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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.
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