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Which courts are empowered to hear trademark disputes?
The Supreme 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 actions for infringement and the common law tort of passing off can be taken against infringers. To bring an infringement action, the mark concerned must be registered.
In addition, numerous criminal provisions exist in the Trademarks Act (6/1906) for infringing activities. The criminal penalty is a B$200 fine and forfeiture of the concerned goods.
Who can file a trademark infringement action?
A trademark owner can bring an action for infringement. Further, subject to any agreement between the parties, a registered user of a mark may be able to bring an infringement action if it first calls on the mark’s owner to institute infringement proceedings in respect of a matter that affects its interests and the owner refuses or fails to do so within two months of being called on.
Prosecutors bring criminal infringement actions.
What is the statute of limitations for filing infringement actions?
The Trademarks Act provides no specific limitations period. However, the Limitations Act 1995 provides a six-year limitations period for torts (including passing off) and actions to recover a sum by virtue of a written law (including the Trademarks Act).
What is the usual timeframe for infringement actions?
Infringement actions, exclusive of any appeal, usually last several years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Trademarks Act makes no specific provision for injunctive relief. Injunctions in The Bahamas for trademark infringement are governed by the common law conception of injunctive relief. Interlocutory injunctions, including ex parte injunctions, are available. The Supreme Court Act and the Rules of the Supreme Court govern injunctive relief and the related procedures.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
Trademark owners can seek damages, accountings, injunctive relief and delivery up. Punitive damages are not available.
What customs enforcement measures are available to halt the import or export of infringing goods?
Pursuant to the Customs Management Act 2011, a trademark owner may apply to the Customs Department to seize certain infringing goods during import and export. A reasonable bond or other security or assurances may be required to protect the rights of the importer or exporter. Approved applications can be enforced for a maximum of one year, but can be renewed.
When goods are detained, the trademark owner must bring an infringement action within 10 days (or three days if the goods are perishable). Extensions are available only for non-perishable goods. An alternative, simplified system exists for the destruction of such goods, but it cannot be used if the owner of the goods objects.
These provisions do not apply to non-commercial goods in a traveller’s baggage and under the limits of duty-free allowances.
What defences are available to infringers?
An infringement defendant can raise numerous affirmative defences, including that:
- the mark is invalid;
- the defendant is an honest, concurrent user of the mark;
- the use constitutes use of a registered mark;
- the statute of limitations applies;
- the defendant has the status of a registered user of the mark and is using it within the scope of that status;
- the defendant’s use constitutes the bona fide use of its own name or place of business or that of its predecessors in business;
- that the mark is a bona fide description of the character or quality of the defendant’s goods;
- the defendant has the owner’s express or implied consent to use the mark;
- trademark exhaustion applies; and
- the defendant’s use of the mark is reasonably necessary to indicate that its goods are parts of or accessories to the owner’s goods.
What is the appeal procedure for infringement decisions?
Appeals of Supreme Court decisions in an infringement action may be made to the Court of Appeals, the highest domestic court in The Bahamas. Further appeals may be taken to the Judicial Committee of the Privy Council in London, but these appeals are not as of right.
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