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Rights and protection

Ownership

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.

Unregistered trademarks

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.

Registered trademarks

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:

  • devices;
  • brands;
  • headings;
  • labels;
  • tickets;
  • names;
  • signatures;
  • words;
  • letters;
  • numerals;
  • 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:

  • devices;
  • names;
  • signatures;
  • words;
  • letters;
  • numerals; or
  • any combination thereof.

Can a mark acquire distinctiveness through use?

Yes.

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:

  • origin;
  • material;
  • mode of manufacture;
  • quality;
  • 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.

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