The protection and exploitation of the commercial value of a business' intellectual property rights is integral and can present key opportunities to remain competitive and also maximise on profitability within a highly competitive market.
In this chapter, Jonathan Walker and Fanta Punch, Partners in Hamel-Smith's Intellectual Property Practice Group, provide a broad overview of Intellectual Property Law in Trinidad and Tobago.
Intellectual Property Rights in Trinidad & Tobago are managed by the Intellectual Property Office (IPO). Since 2000, Trinidad & Tobago has been certified compliant with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) by the World Trade Organisation (WTO).
Trinidad & Tobago is not a member of the Madrid Protocol. A new Trade Marks Act was passed in May 2015. Once proclaimed, it will facilitate this country's accession to the Protocol. At present, the Trade Marks Act 1997 governs trademark law.
Intellectual Property legislation in Trinidad & Tobago governs:
- Industrial Designs
- Integrated Circuits
- Geographical Indications
- New Plant Varieties
The Trade Marks Act (TMA) provides for the registration of distinctive trademarks in respect of both goods and services. Variations of a trademark may be registered as series marks thereby garnering protection for each variation but lowering the costs of renewal. Collective trademarks and certification trademarks can also be registered.
Under the TMA, well known marks that have not yet been registered can be protected. To determine if a trademark is well-known, account is taken of the knowledge of the trademark, including knowledge of the mark in Trinidad and Tobago.
Well known marks are protected by preventing other traders from registering marks which are identical with or confusingly similar to the well-known marks as they relate to:
Only the legitimate owner of a well-known mark would be permitted to register the trademark.
- identical or similar goods and services; or
- whose use would indicate a connection between the owner of the well-known mark and the applicant of the confusingly similar mark.
An applicant for a trademark must list the classes of goods and services intended for use with the trademark. A single application may be used for multiple classes of goods and services.
At present, the IPO uses the 7th Edition of the Nice Classification to classify goods and services and not later editions, as is the case with most countries. As a result the IPO often queries specifications which do not conform to the 7th Edition. Therefore great care must be taken with respect to the classes of goods and services when preparing trademark applications in Trinidad and Tobago based on foreign applications.
Applications claiming priority may be filed at the IPO within six (6) months of the filing date of an application for the same trademark in a country that, like Trinidad and Tobago, is a signatory to the Paris Convention.
Trade and service marks are registered for a period of ten (10) years and may be renewed on application within six (6) months of expiry for an unlimited number of further ten (10) year periods, upon payment of the prescribed fee.
While use is not a prerequisite to renewal, a mark may be removed from the Register upon an application by a third party for lack of bona fide intention to use the mark and three (3) years non-use, or non-use of the mark for a continuous period of five (5) years.
The proprietor of a registered trademark has the exclusive right to use the mark in relation to the specified goods and/or services as well as the right to initiate infringement proceedings against traders using confusingly similar marks.
A party that infringes a registered mark may be prevented from further acts of infringement by way of injunction and may be liable to pay damages to the registered proprietor in appropriate cases.
Registered and unregistered trademarks may be assigned with or without goodwill by filing the prescribed forms and upon payment of the requisite filing fee. A trademark may be assigned for all or some of the goods listed in the specification. The Controller has a discretionary power to refuse a request for a trademark assignment if there would be any confusion among consumers in relation to the source of the goods.
If an assignment is made without the goodwill of the business, the assignment shall not take effect unless the assignee applies for directions in relation to the advertisement of the assignment no later than six (6) months from the date on which the assignment is made or within such extended period as the Controller may direct. In addition to the foregoing, the assignee must advertise the trademark in such form and manner and within such period as the Controller may direct.
Trademarks which are conditionally accepted for registration subject to an association with other similar trademarks must all be assigned together and not separately, but they are for all other purposes deemed to have been registered as separate trademarks.
LicenceA licensee of a trademark may be recorded on the Trademark Register as a registered user of the trademark. Use of the mark by the registered user will be deemed to be used by the registered proprietor.
There is no direct requirement for licensing agreements to be registered. A trademark however, may be removed from the Register if it has not been used for five (5) years. If the license agreement is not registered then the licensee’s use of the mark will not count as bona fide use, and as such the marks will be susceptible to an application for their removal in the event that only the licensee uses the mark and not the proprietor. It is recommended that licence agreements be registered.
Passing Off and Unfair Competition
Unregistered trademarks are protected from unauthorized use partly by the common law action of passing off and by legislation. To prove an action in passing off, the injured party must show that:
Additionally, a party who has done an act which is found to be contrary to honest practices will also be found liable under the Protection of Unfair Competition Act (PUCA).
- the unregistered trademark has obtained goodwill and built up a reputation through use;
- the trademark or a similar mark has been used in the course of trade or business dealings , such use being likely to cause confusion by the general public;
- the proprietor of the unregistered trademark has suffered some loss or damage.
Under the PUCA legislation, any act or practice in the course of industrial or commercial activities that causes or is likely to cause confusion with respect to another’s enterprise, activities, products or services, shall constitute an act of unfair competition.
The Act lists a number of factors that may cause confusion, including the use of a trademark, whether registered or not; and further states that unfair competition may arise when there is damage or the likelihood of damage to another’s goodwill or reputation, or through the dilution of the goodwill or reputation attached to a trademark, whether registered or not. Acts of unfair competition are also those acts that can mislead the public, in particular, in relation to products or services offered and acts that can discredit another’s enterprise or activities.
The remedies available to a successful party who brought an action for unfair competition would not be dissimilar from those available under the common law, such as injunctions, damages.
The disclosure, acquisition or use by a third party of a trade secret without the consent of the person lawfully entitled to the trade secret shall also constitute an act of unfair competition.
A trade secret is defined as any information:
- which is not generally known among or readily accessible to persons who normally deal with such information;
- has commercial value because it is a trade secret; and
- has been the subject of reasonable steps by the right holder to keep the information secret.
PatentsThe Patents Act provides that inventions must satisfy the criteria of novelty, inventive step and industrial applicability.
An invention is new if it does not form part of the ‘state of the art’. ‘State of the art’ is all matter that was available to the public before the priority date of the invention. An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art.
Patents will not be granted for:
- A discovery;
- Any aesthetic creations;
- A scheme, rule or method for performing a mental act, a game or doing business;
- Diagnostic, therapeutic and surgical methods for treatment of humans or animals;
- The presentation of information; and
- An invention the commercial exploitation of which would be contrary to public order or morality or which is prejudicial to human, animal or plant life or health, or to the environment, provided that such refusal is not based on the sole ground that the commercial exploitation is prohibited by a law in force in Trinidad and Tobago.
International Priority Applications
Trinidad and Tobago allows for the filing of patent applications claiming priority under the Paris Convention as well as National Phase applications under the Patent Co-operation Treaty (PCT) system.
- Under the Paris Convention, the Trinidad and Tobago application must be filed within twelve (12) months of the date of filing of the patent whose priority is claimed;
- Under the Patent Co-operation Treaty (PCT) system, applications for the protection of inventions may be filed through a single international application, with national phase applications for the other countries where protection is sought;
- An applicant must enter the national phase in Trinidad and Tobago within thirty-one (31) months of the priority date of the international application. If an International Preliminary Examination is not requested the applicant must enter the national phase in Trinidad and Tobago within thirty (30) months of the priority date of the International Application.
The period of protection of a patent is twenty (20) years from the filing date without the possibility of extension. A prescribed annuity fee, is payable for each year from the second year, in order to maintain the validity of the patent.
Issuance of a utility certificate affords protection to an owner of a useful innovation who may otherwise be unable to meet the criteria for patentability.
The criteria for the grant of a utility certificate are:
At any time before a patent is granted or before an applicant is notified that his patent is refused, an applicant for a patent may request that his patent application be treated as a request for a utility certificate or that his request for a utility certificate be treated as an application for a patent. A utility certificate is valid for ten (10) years.
A patent or utility certificate may be licensed or assigned by the proprietor. The licence contract must be in writing and may be recorded in the Register. If the licence contract is not recorded, the licence is ineffective against third parties, unless otherwise decided by the Court.
The Patents Act has provision for non-voluntary licences. At any time after the expiration of three (3) years from the date of grant of a patent, or four (4) years from the date of the filing, whichever is later, any interested person may apply to the Court for the grant of a licence under the patent on any of the following grounds, namely:
A non-voluntary licence is not exclusive; and cannot be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used. It is limited to the supply of the patented invention predominantly in Trinidad and Tobago.
An interested party may apply to the Court to terminate the non-voluntary licence, where the circumstances for the grant of the non-voluntary licence have ceased to exist. A non-voluntary licence shall not be granted under the Patents Act unless the person applying for the licence has taken all reasonable steps to obtain the licence from the patentee and has been unable to obtain same. A non-voluntary licence shall not be granted for a patent for an integrated circuit.
Original literary, musical, artistic and dramatic works are protected by copyright by the sole fact of their creation irrespective of its mode or form of expression.
The original owner of copyright in a work is the author who created the work. If a work is created in the course of employment, the employer is the owner of copyright. There are special provisions, which specify the owners of copyright in works of joint authorship, collective works, audiovisual works and the owners of neighboring rights in performances, sound recordings and broadcasts.
No formal requirements, such as registration, are necessary to secure protection of copyright. It is however advisable to include a copyright notice on every copy of the published work to give reasonable notice of copyright ownership.
Copyright is typically protected for fifty (50) years after the death of the author. In some cases, however, the duration of protection may last between twenty-five (25) to one hundred (100) years from the making of the work.
Copyright protection subsists in derivative works such as translations, adaptations, arrangements and other transformations or modifications of works, collections of works and collections of mere data (databases). Collections of works and databases are granted copyright protection only if such collections are original by reason of the selection, co-ordination or arrangement of their contents. The protection of the derivative work is without prejudice to any protection of a pre-existing work incorporated in or utilized for the making of the derivative work.
Moral rights are granted to the author, namely, the right to be identified as the author of the work, the right to not have the author’s name indicated on the copies of the work, the right to use a pseudonym and the right to object to derogatory treatment of the work.
Moral rights cannot be transferred during the life of the author. Upon the author’s death moral rights may be transmitted by testamentary disposition or by operation of law. Moral rights may be waived in writing by the author provided that the waiver states specifically the right to be waived and the circumstances of the waiver.
Neighbouring rights are granted to various entities for the fixation, broadcast, rental, distribution and reproduction of the work.
An action for copyright infringement may be filed before our local courts. The court may grant injunctive relief, impound copies of the infringing works, order forfeiture and seizure of all infringing works, make an award of damages, order an account of the infringer’s profits and/or order the destruction of the infringing copies. In respect of the same infringement the court cannot order an account of profits and an award of damages. There are also criminal penalties for copyright infringement for profit-making purposes and the constabulary has special powers to deal with copyright infringement.
Assignment and Licence
Copyright and neighbouring rights are transmissible in whole or in part by assignment, by disposition and by operation of law as personal or moveable property. An assignment of copyright or neighbouring rights is not effective unless it is in writing and signed by or on behalf of the assignor.
A licence granted by the owner of copyright or neighbouring rights is binding on every successor in title to his interest except a bona fide purchaser for value without notice of the licence or a person deriving title from such a purchaser. The rights of the licensee or assignee are limited to the terms of the relevant assignment agreement. An exclusive licensee has the same rights against a successor in title who is bound by the licence in the same manner as the original licensor.
The legislation affords protection to designs that satisfy the requirements of universal novelty and conformity with public order and morality. Novelty is not defeated by any disclosure by the applicant or his predecessor in title or an unauthorised third party, which occurred one (1) year prior to the filing date or priority date. Priority may also be claimed upon filing provided that an application for the same industrial design was filed in another country that is a signatory to the Paris Convention, within six (6) months of filing locally.
The duration period of protection is five (5) years from the date of the filing or the priority date. Renewal of the registration is granted for two (2) further 5-year periods upon payment of the prescribed fee.
A registered owner may initiate legal proceedings for actual or imminent infringement. The remedies available to a registered owner on request to the court are essentially injunctive relief and damages in appropriate cases. A right holder may apply to the court for relief in the event of actual or imminent infringement. The remedies available are in essence injunctive relief and damages.
Assignment and Licence
The owner of a registered industrial design or an application therefore may assign the design or grant licences in respect of the design. A copy of each licence contract concerning a registered industrial design, or an application therefore, shall be submitted to the Controller who shall keep its contents confidential but shall record it and publish a reference thereto. An unrecorded licence contract is ineffective against third parties. Similarly, any change in the ownership of the registration of an industrial design, or in the ownership of an application therefore, shall be in writing and shall upon the request of any interested party be recorded and, except in the case of an application, published by the Controller. A change in the ownership shall not be effective against third parties until the Controller has recorded same in the Register.
Original layout-designs of integrated circuits are protected against reproduction, importation, sale or other distribution in a commercial setting. A layout-design is original if it is the result of the creator’s own intellectual effort and was not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
Provision is made, however, for the protection of a layout-design that consists of a combination of elements that are commonplace but when taken together satisfy the conditions of originality. The right to protection of such a design belongs to its creator or his successor in title. Where two (2) or more persons have jointly created the layout-design, protection shall vest in such persons jointly.
If the essential content of the application for the registration of an integrated circuit has been taken from the layout-design of another person without his consent, that person may, in writing, request the Controller to transfer the application to him. If the application has already resulted in a registration, that person may, within three (3) years from the publication of the registration in writing, request the Controller to transfer the registration to him and to rectify the entry in the Register accordingly.
The term of protection is ten (10) years calculated either from the date of first commercial exploitation or in the absence of such, from the filing date.
A right holder may apply to the Court for relief in the event of actual or imminent infringement. The remedies available are in essence injunctive relief and damages.
Assignment and Licence
A change in the ownership of a protected layout-design is required in writing, and it is advisable that such change be recorded otherwise it will have no effect against third parties.
Upon registration of the layout-design, any licence contract concerning a layout-design shall be submitted to the Controller who shall keep its contents confidential but shall publish a reference thereto. The licence contract is ineffective against third parties until such submission has been made.
Geographical Indications that are used to designate a product that originates from a particular region and whose quality, reputation or characteristics are essentially attributable to that region are protected.
Protection is not dependent upon registration although registration would raise the presumption that it is a geographical indication within the meaning of the Geographical Indications Act (GIA). A number of exclusions exist and these are not afforded protection under the GIA. These exclusions refer to those geographical indications that do not correspond to the definition within the Act, those that are contrary to public order and morality and those which have fallen into disuse in their country of origin. Only producers who carry on their activity in the geographical area as specified by registration have the right to use a registered geographical indication.
The Plant Varieties legislation provides protection in the form of plant breeder’s rights in respect of new plant varieties and related matters. Protection is afforded to a variety provided it is new, distinct, uniform and stable.
There are three (3) separate periods of protection relative to different species of plants ranging from fifteen to eighteen (15-18) years following the grant of protection. An annual fee is payable for the whole period of protection.
Assignment and Licence
An application for the grant of a plant breeder’s right may be assigned or may otherwise be transferred. The assignment or transfer shall be in writing and shall be signed by the parties.
An assignment or transfer is registered in the Register on the applicant’s request and upon payment of the prescribed fee. No assignment or transfer to a successor in title shall have effect against a third party until after such registration.■