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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks in Trinidad and Tobago are:
- the Trademarks Act 11 1955, last amended by Act 31 1997; and
- the Trademarks Rules 1956, last amended by the Trademarks (Amendment) Rules 1997.
Which international trademark agreements has your jurisdiction signed?
Trinidad and Tobago is party to:
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Nice Agreement;
- the Vienna Agreement; and
- the Paris Convention.
Which government bodies regulate trademark law?
The Trinidad and Tobago Parliament (House of Representatives and Senate) regulates trademark law.
The trademark registry is the Intellectual Property Office, a department within the Ministry of the Attorney General and 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 of a trademark in Trinidad and Tobago is determined on a first-to-use basis.
What legal protections are available to unregistered trademarks?
Common law rights in passing off are available to unregistered marks. The Trademarks Act prohibits infringement actions for unregistered marks.
How are rights in unregistered marks established?
Rights in unregistered marks are established through use of the mark in Trinidad and Tobago.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes, marks that meet the threshold for being well known in Trinidad and Tobago can block the local registration of other identical or similar marks, even if the well-known mark is unregistered.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Paris Convention priority may be claimed in Trinidad and Tobago. Further, if the legislature of any Commonwealth country that is not party to the Paris Convention provides for the protection of marks registered in Trinidad and Tobago, then the president may extend Paris Convention protection to marks registered in that country.
What legal rights and protections are accorded to registered trademarks?
The registration of a mark confers a property right on the trademark owner and provides access to remedies for infringement. The rights differ between registration under Parts A and B of the register. To be registrable under Part A, the mark must be adapted to distinguish the goods or services of the owner from those of other parties. Marks that are not registrable under Part A may be registered under Part B if they are capable of distinguishing the goods or services of the owner from those of other parties. Practically speaking, there may be a fine line between ‘adapted’ and ‘capable’.
Registration under Part A confers the exclusive right to use the mark and such right is deemed to be infringed by any party which uses an identical mark (or so similar a mark that it is likely to deceive or cause confusion) for the same, similar or related goods or services as those for which the mark is registered.
Registration under Part B gives similar rights; however, in an infringement action, no injunctive or other relief will be granted if the defendant can establish that its use of the mark is unlikely to deceive, cause confusion or otherwise indicate a connection in the course of trade between its own goods or services and those of the registered owner.
Who may register trademarks?
Any legal person, both local and foreign, including natural people and business entities, can register a trademark. Registration may be made either by a single entity or person, or by two or more parties jointly.
What marks are registrable (including any non-traditional marks)?
In relation to goods, the following marks are registrable:
- any combination thereof; or
- packaging or the shape of goods – provided that the mark does not exclusively consist of a shape which:
- results from the nature of the goods;
- is necessary to obtain a technical result; or
- gives substantial value to the goods.
In relation to services, the following marks are registrable:
- numerals; or
- any combination thereof.
Can a mark acquire distinctiveness through 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.
Are collective and certification marks registrable? If so, under what conditions?
Certification marks are registrable. The mark must be adapted to distinguish in the course of trade goods certified by any party in respect of:
- mode of manufacture;
- accuracy; or
- other characteristics from goods not so certified.
The applicant must file regulations governing the use of the mark, including the cases in which the owner must certify goods and authorise the use of the mark. These regulations must be approved by the controller.
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, but power of attorney is not required at the time of filing.
Neither notarisation nor legalisation is required.
What information and documentation must be submitted in a trademark registration application?
The following information must be submitted in a trademark registration application:
- the name and address of the applicant;
- a request for registration of the mark;
- a statement detailing the class of goods or services; and
- a representation of the mark.
What rules govern the representation of the mark in the application?
One representation should fit into the space provided on the application form. Provisions are made for attaching or supplying larger representations. Four additional representations should also be supplied.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The application fees are:
- US$50 for the first class; and
- US$17 for each additional class in a multi-class application.
There is an additional US$7 fee for filing an address for service, as well as additional fees for the completion and publication of the registration. There are no additional fees for applications claiming priority.
How are priority rights claimed?
To claim a priority right, the rights holder must provide a simple, English-language copy of the application on which the priority claim will be based. A certified copy of the priority application must then be provided within three months of the filing date.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Searches are available and recommended but are not required. Searches can be done on the Intellectual Property Office’s website, but the results are not always accurate and full details of marks are not available. Official registry searches are performed in person at the local registry by the applicant or a local agent.
The fees for trademark searches vary depending on the amount of information obtained.
What factors does the authority consider in its examination of the application?
The application is reviewed to ensure that all procedural formalities are met. Absolute and relative grounds for refusal are considered during examination.
Does the authority check for relative grounds for refusal (eg, through searches)?
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. If it appears that the requirements for registration are not met, the controller will inform the applicant and give it an opportunity to make representations or to amend the application.
Can rejected applications be appealed? If so, what procedures apply?
Yes, an applicant can request a written statement of the grounds for the controller’s decision to refuse or conditionally accept a mark. This decision can be appealed to a judge in chambers.
When does a trademark registration formally come into effect?
The registration of a mark takes effect from the date of filing, after the publication period has ended without opposition (or any opposition has been resolved in the applicant’s favour).
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years from the date of filing. Thereafter, marks may be renewed for successive 10-year periods.
What registration fees apply?
The registration fees are:
- approximately US$120 for publication fees (fees may vary depending on the size of the advertisement); and
- US$25 for the issuance of a certificate.
What is the usual timeframe from filing to registration?
The usual timeframe is approximately 12 to 18 months, provided that there is no opposition or objection to registration.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes, any party may give notice to the controller of opposition to the registration of a mark within three months of the advertisement of the application. The written notice must state the grounds of the opposition and, if the ground for opposition is that the mark resembles a prior registered mark, the number of the existing registration must be included along with the number of the Gazette in which it was published. The opponent must submit two copies of the notice.
The controller will then send a copy of the notice of opposition to the applicant. The applicant has one month to submit two copies of a counter statement to the controller. Failure to submit a counter statement in a timely manner will result in the application being deemed abandoned.
The opponent then has one month to submit evidence by way of statutory declaration in support of the opposition. If the opponent submits no evidence, the opposition will be deemed abandoned. If the opponent submits evidence, the applicant will have one month to submit evidence in support of the application. Finally, the opponent will have one month to submit rebuttal evidence by way of statutory declaration in reply.
On completion of the evidence, the controller will give notice to the parties of a date for hearing arguments in the case.
What is the usual timeframe for opposition proceedings?
Opposition proceedings typically take six to 12 months but may take longer.
Are opposition decisions subject to appeal? If so, what procedures apply?
The decision of the controller is subject to appeal to a judge in chambers.
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 may be removed on the grounds of non-use if a continuous period of five years or longer has elapsed at any time before the date of the application for removal and during which:
- the trademark was registered;
- there was no genuine use of the mark in Trinidad and Tobago by the owner (or a registered owner) in relation to the goods or services for which it was registered; and
- there were no proper reasons for non-use.
Non-use removal actions can be brought before the court or, in certain circumstances, the registry.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
Besides the procedure for removal of a mark on the grounds of non-use, there are limited statutory provisions regarding the revocation of a mark. However, there is a general power for the courts to order removal of a mark from the register if:
- the entry was made without sufficient cause; or
- the entry wrongly remains on the register.
Potential grounds include where the mark:
- is descriptive;
- is non-distinctive;
- is misleading, deceptive or disparaging;
- is functional;
- is generic;
- consists of a geographical indication;
- is against public policy or morality; or
- otherwise should not have been registered.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any aggrieved party may petition for the removal of a mark. Further, the controller may apply for revocation in the case of a fraudulent registration.
What are the evidentiary and procedural requirements for revocation proceedings?
According to the Trademarks Act, applications must be made to the court. If the court finds in favour of the revocation of a mark, then there are statutory provisions and regulations governing the process of removal by the registry.
What is the appeal procedure for cancellations or revocations?
Matters before the registry may be appealed in the High Court. Matters before the High Court may be appealed to the Court of Appeal. Further appeals may be taken to the Judicial Committee of the Privy Council in London.
What is the procedure for surrendering a trademark registration?
Registered trademark owners may request cancellation of their own marks with respect to some or all of the registered goods and services. The prescribed form for this purpose is a simple request for cancellation to be signed by the registered owner.
Which courts are empowered to hear trademark disputes?
The High 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 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.
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.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Remedies available to owners of infringed marks include:
- final injunctions; and
- an account of profits.
The prevailing party may also be awarded interest and costs. Punitive damages are not allowed.
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.
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.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Assignments may be filed with the registry with respect to pending and registered marks. Associated marks must be assigned as a group. Suitable documentary evidence (ie, a certified copy of the deed of assignment or a confirmatory assignment) must be submitted, which should include some consideration.
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?
In Trinidad and Tobago, the registered user of a mark may be recorded. Failure to record a registered user will likely have the effect that the registered user agreement is not recognised as valid and enforceable between the parties, at least until the registered user agreement was recorded. It is unlikely that such an agreement would be deemed valid and enforceable in respect of third parties. In addition, use by the registered user is unlikely to inure to the benefit of the trademark owner.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The trademark owner and proposed registered user must apply in writing to the controller and furnish a statutory declaration made by the owner (or someone with authority to act on the owner’s behalf), which includes:
- the particulars of the relationship, including quality control provisions and whether the proposed registered user will be the sole registered user;
- the goods or services affected;
- any conditions or restrictions proposed with respect to:
- the characteristics of the goods or services;
- the mode or place of permitted use; or
- any other matters; and
- the duration (or lack thereof) of the permitted use.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
There are no specific provisions in local legislation regarding the registration of a security interest.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Copyright may be invoked to protect artistic elements of designs. There are no provisions for the filing of copyright locally in Trinidad and Tobago, and protection is automatic at the time of creation or fixation. Trinidad and Tobago is a party to the Berne Agreement.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
There are no specific provisions in local legislation regarding domain names. However, depending on the circumstances, a trademark owner may be able to make an infringement claim.
The country-code top-level domain for Trinidad and Tobago is ‘.tt’, which is administered by the Trinidad and Tobago Network Information Centre.