Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Apart from through opposition and cancellation proceedings, the Trade Marks Act protects registered trademarks owners by providing for the Comptroller of Customs to effect seizure and deal with goods that are imported into Saint Lucia if the importation infringes, or appears to infringe, a trademark registered in Saint Lucia.

There are no specialised courts or tribunals in respect of trademarks in Saint Lucia. Consequently, legal proceedings regarding the enforcement of rights of a trademark owner must be commenced in either the civil or criminal courts. Civil proceedings must originate in the High Court and criminal proceedings in the magistrates’ court or the High Court, depending on the size of the claim.

The Act specifies the various criminal offences that could arise in respect of trademarks and the various penalties that may be imposed once there is contravention of these sections of the Act.

Procedural format and timing

What is the format of the infringement proceeding?

Trademark infringement proceedings are commenced like any other civil action in the High Court (civil) by filing and serving a claim form and a statement of claim. All other pleadings are filed and served based on a prescribed schedule. The defendant is required to file and serve a defence and any counter claim applicable. Once a defence is filed a case management hearing will be scheduled by the court. The matter could at this stage be referred to a court-appointed mediator (by consent of the parties). Should the parties not agree to mediate then trial directions will be given, and the matter escalated to trial. The Case Management Order defines how disclosure will be made and outlines the timetable by which the parties will progress the trial. Evidence is given via written witness statements with cross-examination and re-examination of witnesses.

Expert witnesses are permitted with the leave of the court. Expert evidence is given via witness statement with cross-examination and re-examination.

Skeleton arguments must be provided to the judge prior to the trial and pursuant to the Case Management Order. The case is heard by a single High Court judge. The time frame of the hearing depends on a number of variables, including the complexity of the matter, and can last from one day to three days.

All criminal offences under the Act would be enforced by the Director of Public Prosecution and would, in the first instance, be heard in the magistrates’ court. A decision of the magistrate may be appealed to the High Court.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof in a civil action is on the balance of probabilities, and in a criminal action beyond a reasonable doubt.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A registered owner of a trademark has the exclusive right to obtain relief if the trademark has been infringed. If a trademark is registered in the name of two or more persons as joint owners of the trademark, the rights granted to those persons are to be exercised by them as if they were the rights of a single person.

An authorised user of a registered trademark may also bring an action for infringement of the trademark (subject to any agreement with the trademark owner) if the registered owner refuses or neglects to bring an action within the prescribed period.

The Act does not specify who may bring a criminal complaint; however, a registered owner or authorised user or an agent of an affected party would have standing to lodge a criminal complaint.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The boarder enforcement measures available to halt the import and export of infringing goods are the usual mandatory searches conducted by local customs officials at the various ports of entry and departure including both air and sea ports and the detention and confiscation of goods suspected of infringing IP rights, including trademarks.

Under the Act, activities occurring outside of Saint Lucia (being the country of registration of the trademark) can support a charge of infringement or dilution. Saint Lucia's trademark laws contain provisions with respect to enforcement of a registered owner’s rights in both civil and criminal proceedings to include the award of damages, seizure, forfeiture or destroy orders, imprisonment and fines. The objective of this provision is to protect registered trademarks by allowing the Comptroller of Customs to seize and deal with goods manufactured outside of Saint Lucia that are imported into Saint Lucia if the importation infringes, or appears to infringe, a registered trademark.

The registered owner or an authorised user of the registered trademark may give to the Comptroller notice in a prescribed form objecting to the importation of goods that infringe the trademark. The Comptroller must seize such suspected infringing goods unless satisfied that there is no reasonable ground for believing that the notified trademark has been infringed by the importation of the goods. Should the objector not bring an action for infringement and give notice to the Comptroller within the prescribed period, the Comptroller is obligated to release the seized goods to the designated owner. If a case is made out after examination of the suspected infringing goods, the matter may be passed on the courts for prosecution.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Disclosure of documents is always pursuant to an order of the court. The judge typically orders standard disclosure, but may, at his or her discretion, order specific or other disclosure. Privileged documents such as ‘without prejudice’ correspondence do not have to be produced.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

It is difficult to offer a typical time frame for litigating an infringement or dilution or related action because there are few, if any, such actions brought in Saint Lucia. Most, if not all, such claims settle via mediation. Generally, the time period for litigation of civil claims in the High Court, from commencement of the claim to receipt of judgment in the matter, is approximately 12 to 18 months. The hearing of an appeal would conclude in a much shorter period, approximately three to six months.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period for filing an infringement action is six years from having knowledge of the infringement in line with the statutory limitation period for civil matters.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The cost of litigating a claim for infringement or dilution of a trademark, including trial preparation, trial and appeal would be no different from the cost of litigating any civil suit and would be assessed pursuant to the Eastern Caribbean Supreme Court Civil Procedure Rules 2000 (as amended), the overriding objective of which is to deal with cases in ways that are proportionate to the amount of money involved, the importance of the case and the complexity of the issues, among other things. Part 65 of the said Rules (as amended) deals with the ways in which costs are to be quantified, specifies a scale of fixed and prescribed costs and outlines percentages to be allowed at various stages of any claim from filing to trial.

Appeals

What avenues of appeal are available?

An appeal lies to the High Court against a judgment or order of a lower court exercising jurisdiction under the Trade Marks Act. Appeals to the Court of Appeal against a judgment or order of a single judge of the High Court can occur with the leave of the Court of Appeal. Correspondingly, with special leave of the High Court, an appeal lies to the High Court under the Act.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

There are a number of defences available to a charge of infringement or dilution of a registered trademark, including:

  • the defendant used the trademark in good faith;
  • the defendant used the trademark for comparative advertising;
  • the defendant used a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the goods or services or the time of production of goods or of the rendering of services;
  • the defendant used the trademark in good faith to indicate the intended purposes of the goods;
  • the defendant exercised a right to use the trademark given to him or her under the Act;
  • the court is of the opinion that the defendant would obtain registration of the trademark if he were to apply for it;
  • the trademark has been applied to, or in relation to, goods by, or with the consent of, the trademark owner; or
  • the defendant can show that he or she, or the predecessor in title, has continually used the trademark in relation to those goods or services from a time before the registration of the trademark or when the registered owner first used the trademark.

A person aggrieved by the threat of legal action for infringement of a registered trademark may also bring an action either in the High Court or in any other court having jurisdiction against the person making the threat to:

  • obtain from the court a declaration that the defendant has no grounds for making the threat;
  • obtain from the court an injunction restraining the defendant from continuing to make the threat; or
  • recover any damages that the defendant has sustained because of the defendant’s conduct.

Groundless threats of legal proceedings in respect of infringement of registered trademarks should be avoided.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The relief available to a successful party in an action for infringement of a registered trademark includes:

  • the granting of an injunction, which may be awarded subject to any condition that the court thinks fit;
  • delivering up or destruction of the infringing goods, at the option of the claimant; or
  • damages or an account of profits and payment of legal costs.

Criminal remedies are available in respect of:

  • falsifying a registered trademark;
  • falsely applying a registered trademark;
  • manufacture and possession of a die for use in the commission of an offence in respect of a registered trademark;
  • selling goods with false marks;
  • making false representations regarding trademarks;
  • making or causing a false entry to be made in the Register;
  • disobeying a summons;
  • refusing to give evidence; and
  • acting in a trademark matter without due authority.

A person who commits any of the above-mentioned offences is liable upon summary conviction to fines ranging from EC$250 to EC$250,000.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Mediation and arbitration (to a lesser extent) are both available to aggrieved parties to attempt resolution of their disputes by assisted negotiations outside of the more formal setting of the court.

Arbitration becomes operational in the event of a dispute if, by agreement, the parties have decided previously to pursue this medium. There are several benefits to arbitration, including the specialised expertise of the arbitrator over that of a judge and potential time savings to the parties. The lack of trained arbitrators in Saint Lucia means that significant costs may be incurred by the parties to secure the services of an arbitrator, including travel and accommodation costs.

The courts in Saint Lucia favour settlement of disputes by mediation and there is a Court Connected Mediation Programme in place to assist in this regard. Mediation is usually recommended in the first instance by the court. A matter may, however, be referred to mediation only with the consent of the parties. The benefits to the parties of engaging in mediation are:

  • it is a faster process, resulting in cost and time savings;
  • it is an informal setting as compared to the court; and
  • it is an opportunity for the parties to face each other and discuss their dispute in good faith with intent to settle.

In Saint Lucia, an agreement reached by mediation may be duly filed in the High Court, which decision is made an Order (by consent) of the court, thereby binding the parties.

The risk of using ADR techniques is that should the parties not reach agreement, the matter must revert to the courts.