All change in the Caribbean

Changes to trademark legislation in the Caribbean can take some time to get approved and implemented. However, in the last couple of years there has been plenty of activity worthy of review. The British Virgin Islands was the first to get the ball rolling when it finally implemented its Trademarks Act, 2013; then Trinidad and Tobago passed its new Trademarks Act (8/2015) – although this has not yet come into force. Most recently, the Cayman Islands passed the Trademarks Law, 2016, which is expected to take effect shortly. This article compares the trademark laws of these three Caribbean countries, focusing on the registration, examination and opposition processes. It also touches on the standing of well-known marks, non-use provisions, the applicability of the Madrid Protocol and the role of Customs.

Routes to registration

On September 1 2015 the Trademarks Act, 2013 and the Trademarks Rules, 2015 came into effect in the British Virgin Islands. Previously, the Trademarks Act (Cap 158) and the Registration of UK Trademarks Act (Cap 157) offered a dual registration system under which brand owners could either register trademarks directly in the British Virgin Islands or re-register existing UK trademark registrations there. The new law abolished the re-registration process and modernised the archaic provisions of the old law – which contained references to ‘wood blocks’, ‘electrotypes’ and ‘foolscap paper’. Under the new law, it is possible to claim Paris Convention priority from one or more valid applications when filing a trademark application in the British Virgin Islands, which can buy brand owners some time when deciding whether to roll out protection there.

The old BVI re-registration process was generally more cost effective and quicker than the national registration route, as examination was minimal (registrations could be obtained in a matter of weeks). A similar re-registration system is currently in force in the Cayman Islands pursuant to the Patents and Trademarks Law, 2011 and the Patents and Trademarks Regulations, 2012. Currently in the Cayman Islands, re-registrations of existing UK or EU trademark registrations are automatically accepted for registration upon application, subject to a basic examination process. No national registration route is currently available. However, on December 19 2016, the Trademarks Law, 2016 was published – once implemented, this will abolish the re-registration regime and introduce a national registration route for the first time. While the accompanying regulations are still forthcoming, it is anticipated that the new law will be implemented in the first quarter of 2017. Unlike in the British Virgin Islands, Paris Convention priority cannot be claimed in the Cayman Islands under the new law, so the onus to file as soon as possible in the Cayman Islands is greater, particularly given that it is a first-to-file country.

Trinidad and Tobago’s Trademarks Act (Chapter 82:81), which has been amended seven times since it came into force on January 2 1957, provides for a national registration route only. Paris Convention priority can be claimed from one or more valid applications. Trinidad and Tobago’s Trademarks Act (8/2015) was assented to on June 12 2015, but has not yet been implemented, with no date set as yet. The new act continues to offer a national registration route only, along with modernised provisions.

The new BVI law introduces a use or intention-to-use requirement on application forms. Under this, BVI trademark applicants must now state whether:

• the trademark is being used, by the applicant or with its consent, in relation to the goods or services concerned; or
• the applicant honestly intends to use the trademark or to allow it to be used in relation to the goods or services concerned.

Similar provisions apply under the current and new law in Trinidad, but are notably absent from Cayman’s current and new laws.

Classification

Multi-class applications are currently accepted in the British Virgin Islands, the Cayman Islands and Trinidad and Tobago. Under the new BVI trademark law, applications must be filed in accordance with the Nice Agreement adopted on June 15 1957, as subsequently amended. Trinidad and Tobago will take a similar position towards classification once the new law is implemented; but for the time being, applications must be filed in accordance with the Seventh Edition of the Nice Classification, which forms Schedule 3 of the current law. In the Cayman Islands, once the new law is implemented, the classification position will again be similar to that in the British Virgin Islands. However, under the current law, the specification of a Cayman re-registration of a UK or EU registration must entirely mirror that of the underlying registration.

Class headings are generally acceptable under the new BVI trademarks law. In Trinidad, class headings will not be accepted unless they are sufficiently clear and precise. The position that will be taken in Cayman under the new law once implemented is unclear at this point, but it is expected that the approach towards examination will be similar to that adopted by the UK IP Office.

Trinidad and Tobago is a business hub for many industries in the Caribbean; the islands have one of the highest per capita incomes in Latin America

Picture: lidian Neeleman/Shutterstock.com

Trademark searches and examination

Pre-filing searches for similar and identical marks can be conducted in the British Virgin Islands and in Trinidad and Tobago before the respective registries. In the British Virgin Islands, it is also possible to request the registrar’s opinion on the registrability of a mark for an additional fee. Currently, in the Cayman Islands, trademark searches are confined to identical marks only and it is difficult to search for similar marks. However, similarity searches of the underlying UK and EU registers can be conducted and any potentially conflicting results cross-checked against the Cayman register. It is unclear whether similarity searches will be available under the new law or whether searching, at least initially, will be restricted to identical marks only.

Under the new BVI and Cayman trademark laws, the registrar shall examine all trademark applications in order to ensure that the requirements for registration have been satisfied and carry out a search for earlier trademarks to the extent that he or she considers necessary. It is unclear whether the respective registrars will issue office actions on the basis of any earlier confusingly similar marks revealed by their searches. In Cayman, it is likely that the registrar will alert the owners of earlier confusingly similar marks of new potentially conflicting applications via their agent, but will not issue office actions based on this. Under the current law in Trinidad and Tobago, the examiner will issue office actions if his or her searches reveal any earlier marks which may cause confusion with the applied-for mark or device. However, wording similar to that adopted under the new BVI and Cayman laws has been introduced into the new law, making it unclear whether the examination process will change in this respect.

The other examination requirements under the new BVI, Cayman and Trinidadian laws are similar and are heavily based on UK trademark law. Marks can be refused registration if they:

• consist of signs which are not trademarks;
• lack distinctiveness – although this can be overcome through the submission of evidence of acquired distinctiveness through use;
• consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of the goods or services;
• consist exclusively of signs or indications which have become customary in the current language or in bona fide and established practices of the trade;
• are contrary to public policy or accepted principles of morality; or
• were filed in bad faith.

However, until the new Cayman law is implemented, applications will continue to be accepted on the basis that they are simple re-registrations of existing UK or EU registrations. Further, until the new Trinidadian law is implemented, applications will be examined under an outdated regime which first determines the level of a mark’s distinctiveness and then categorises it in Part A or B of the register.

In order to be registrable in Part A, a trademark must contain or consist of at least one of the following:

• the name of a company, individual or firm, represented in a special or particular manner;
• the signature of the applicant for registration or some predecessor in its business;
• an invented word or words; or
• a word or words with no direct reference to the character or quality of the goods or services, or a geographical name or surname that is not used according to its ordinary signification.

In order to be registrable in Part B, a trademark must be capable of distinguishing goods or services to which the owner is connected in the course of trade from goods or services where there is no such connection. The rights afforded to the owner of a Part B registration are narrower in scope than those afforded to the owner of a Part A registration. In the past this system has caused considerable confusion among brand owners, so the shift away from it will be welcomed once the new law is eventually implemented. It is hoped this will result in a regime that is not only more transparent, but also more consistent with other leading legislative systems.

Well-known marks

Well-known marks are not protected under existing Cayman trademark law. The new law provides the cabinet with scope to implement regulations for the defensive registration of well-known trademarks – it is believed that these will not be implemented initially. Further, as Cayman is not a party to the Paris Convention, it is not obliged to protect well-known marks, although such protection would be highly desirable to brand owners.

Well-known marks are now protected in the British Virgin Islands under the new trademark law. The registrar shall not allow the registration of marks which are identical or similar to an earlier trademark. Well-known marks are entitled to protection under the Paris Convention where a later mark would take unfair advantage of, or be detrimental to, its distinctive character or reputation in the British Virgin Islands.

Further, where a registered trademark has been used so much in relation to all or any of the goods or services for which it is registered that it has become exceptionally well known in the British Virgin Islands, and as a result its use in relation to other goods or services would likely detract from its distinctive character, it may – on the owner’s application to the registrar – be registered as a defensive trademark in respect of any or all of those goods or services. This is the case even if the owner does not use or intend to use the trademark in relation to those goods or services, or if the trademark is already registered (other than as a defensive mark) in the name of the applicant in respect of those goods or services.

In Trinidad and Tobago, a trademark shall not be registered if it is identical or confusingly similar to, or constitutes a translation of, a trademark which is:

• well known in Trinidad and Tobago as the mark of a person other than the applicant and used for identical or similar goods or services; or
• already registered with respect to dissimilar goods or services, where use of the trademark would indicate a connection between those goods or services and the owner of the registered trademark and its interests are likely to be damaged by such use.

In determining whether a trademark is well known, account shall be taken of knowledge of it, including knowledge in Trinidad and Tobago obtained as a result of its promotion in the relevant sector.

The new trademarks law seeks to provide a higher level of protection for well-known marks in Trinidad and Tobago and introduces a number of related infringement and enforcement provisions. For example, it provides that in certain circumstances, the owner of a well-known mark is entitled to an injunction to restrain the use in Trinidad and Tobago of any mark that is identical or similar to its mark in relation to identical or similar goods or services, where such use is likely to cause confusion.

While the Cayman Islands is the financial epicentre of the region, it has become a legal centre too, with many law firms setting up a Caribbean base there and regularly attending the Law Courts Building in capital George Town

Picture: Joymsk140/Shutterstock.com

Oppositions and observations

The new Cayman law will introduce opposition proceedings for the first time. Any person may oppose a trademark application within 60 days of the date of the application’s publication. In the British Virgin Islands, oppositions must be filed within three months of publication of the application for opposition under the new law. This time limit is the same under the current law in Trinidad and Tobago.

The opposition procedure is heavily based on the UK opposition procedure. The British Virgin Islands’ opposition procedure under the new law is also heavily influenced by UK procedure. Trinidad and Tobago already has a working opposition procedure under its existing law. It is unclear whether this time limit will change under the new law, although no change is anticipated.

Under the new Cayman, BVI and Trinidadian laws, any person may make observations, in writing, to the registrar as to whether the trademark should be registered, at any time before registration – the registrar shall inform the applicant of any such observations. However, a person that makes such observations does not become a party to any proceedings regarding the application. Such provisions did not exist in any of the earlier laws in any of these countries and will be welcomed by brand owners which do not necessarily want to embark on full-blown opposition proceedings, but nonetheless wish to raise concerns in the hope of influencing the registrar’s decision.

Non-use

Non-use provisions do not exist under Cayman’s current trademark law and there are no plans to introduce them under the new law. Perhaps the policy reasoning behind this is that annual fees (ie, taxes) must be paid each January 1 in Cayman in order to keep a registration in good standing. Given this, rather than being ‘use it or lose it’ rights, trademarks in Cayman are ‘pay for it or risk losing it’ rights. If annual fees remain unpaid as of March 31 each year, the rights protected by the registration are held in abeyance from April 1 until the annual fee and additional penalty have been paid.

By contrast, under the new BVI law, registrations may be revoked if they are not put to genuine use in relation to the registered goods or services for a continuous period of at least three years, provided that there is no valid reason for non-use. This is a relatively short period and may prompt some brand owners to file a fresh application before it expires, in certain circumstances, in order to ensure that the necessary protection is in place while they prepare to launch in the British Virgin Islands.

Under the current Trinidadian law, a trademark registration can be revoked on grounds of non-use if:

• the trademark was registered with no bona fide intention on the part of the applicant and there has been no bona fide use of it for a continuous period of three years or longer, up to one month before the date of the application for revocation; or
• up to one month before the date of the application for revocation, a continuous period of five years or longer has elapsed during which the trademark was registered but no bona fide use was made of it.

Under the new Trinidadian law, it will be possible to revoke a trademark registration on the grounds of non-use if it has not been put to bona fide use in the course of trade in Trinidad and Tobago by the owner or with its consent within the five years following completion of the registration procedure and there are no proper reasons for non-use, or if its use has been suspended for a continuous period of five years and there are no proper reasons for this.

International perspective

Only a few Caribbean countries – including Antigua and Barbuda, Bonaire, Saint Eustatius and Saba, Cuba, Curacao and St Maarten (Dutch part) – are party to the Madrid Protocol; the rest are unlikely to join any time soon. Based on its new trademark law, Trinidad and Tobago plans to join this select group. If this happens, it will become possible to designate Trinidad as part of an international registration or base an international registration on a Trinidadian application or registration – this would dramatically reduce the cost of obtaining trademark protection in Trinidad and Tobago. However, office actions are common in the jurisdiction and it is not expected that they will reduce in number, particularly given fears over a loss of trademark registration work locally, which is the key factor dissuading other Caribbean countries from joining Madrid.

When it comes to the fight against counterfeits at the border, the existing Cayman trademarks law and old BVI trademarks law were silent as to the role of Customs in that battle, to the detriment of brand owners with issues in these countries. Thankfully, the new Cayman and BVI laws introduce legislation under which rights holders can file notices with Customs, requesting that the commissioner of customs detain any infringing goods, materials or articles coming into the country. The existing law in Trinidad and Tobago is similar in scope, although the new law seeks to introduce more detailed and far-reaching provisions. Under the new laws of the Cayman Islands, the British Virgin Islands and Trinidad and Tobago, the rights holder must provide certain undertakings for this in order to provide security for any liability or expense which the commissioner of customs may incur as a result of acting on the rights holder’s customs notice.

Slowly but surely, trademark legislation is being modernised in the Caribbean. In British overseas territories such as the British Virgin Islands and Cayman, there is a clear leaning towards the UK legislative approach to trademarks. Former Commonwealth countries, such as Trinidad and Tobago, are also taking a similar approach. While the new BVI and Cayman laws undoubtedly offer brand owners a longer overall route to registration than was available previously, the fact that these countries now have stronger trademark legislation in place is, on benefit, a balance. Such brand owners may have previously been dissuaded from seeking to enforce their rights in these jurisdictions, given the uncertainties of the former legislation. In the future, the Cayman Islands should look to join the Paris Convention in order to offer brand owners a further increased level of protection.