Why should I register my trade mark?
You should register your trade mark for the following reasons: -
- A trade mark registration is prima facie evidence that the proprietor of the mark has an exclusive right to the use of the mark in relation to the particular goods or services;
- The trade mark proprietor can prevent unauthorised third parties from using the registered trade mark pursuant to the Trade Marks Act; and
- A trade mark registration gives notice to the public that a particular mark is registered in the name of a specific proprietor and may act as a deterrent to entities who were considering the adoption of an identical or a similar mark.
- Additionally, pursuant to section 66A(1)(a) of the Trade Marks Act, it is unlawful to apply to goods or their packaging a mark identical to, or likely to be mistaken for a registered trade mark without the consent of the proprietor of the registered trade mark.
In civil proceedings, a plaintiff who files an action pursuant to the Trade Marks Act relies on his statutory title to prove that the defendant infringed the plaintiff’s mark. By contrast, a plaintiff in a passing-off or unfair competition action has a greater evidentiary burden to establish its goodwill and reputation in the mark and to adduce evidence of actual confusion in order to succeed in its claim of passing-off or unfair competition.
Should a trade mark be searched before filing?
There is no requirement that a trade mark must be searched prior to filing. However, if a trade mark is searched prior to filing the proposed applicant will be able to ascertain within a short time frame whether a particular trade mark is available for registration and whether he should incur any further expenses in relation to the filing of a trade mark application or the adoption of a particular trade mark. This will also assist the proposed applicant in determining whether his trade mark usage will infringe the rights of any other registered trade mark proprietors.
What is the cost of a trade mark search?
Our professional fees for a trade mark search are US $260.00 and the government filing fee is US $4.
Does the International Classification System apply?
Yes. Trinidad and Tobago utilises the International Classification of Goods and Services (Nice Classification) for the purposes of trade mark registrations. There are thirty-four (34) classes of goods and eight (8) classes of services. The full text of the Nice Classification may be found at http://www.wipo.int/trademarks/en
Can multi-class applications be filed?
Multi-class applications may be filed.
Are colour marks accepted for registration?
Trade mark applications may be filed in colour.
What documents and information are required for the filing of a trade mark application?
The prescribed application form and an Authorisation of Agent must be completed and filed. The application form and Authorisation of Agent must be filed on size A4 paper. The Intellectual Property Office will accept a facsimile copy of the Authorisation of Agent. You may therefore print, sign and fax this document to us. However, the Intellectual Property Office requires that the original Authorisation of Agent be also filed in due course. Please therefore also mail the original executed document to us as well. Only one Authorisation of Agent is required for several applications in the name of the same applicant.
In addition to the Authorisation of Agent, we require the following in order to file the application: -
- The applicant’s name and address;
- The applicant’s State or Country of Incorporation or the applicant’s nationality if the applicant is an individual;
- Specification of the goods and/or services in accordance with the Nice Classification; and
- Eight specimens (no larger than 8 cm x 8 cm) of the mark.
What is the cost of filing a trade mark application?
Our professional fees for filing a single class trade mark application are US $500.00 and the government-filing fee is US $50. For each additional class included in the application, there is an additional professional charge of US $100.00 and a government-filing fee of US $17.00.
Can an application bear the same filing date as an application in a foreign country (priority applications)?
Yes, provided that the earlier application was filed in a country that is a party to the Paris Convention and an application for the same mark and the same goods or services is filed in Trinidad and Tobago within six months of the filing of the application in the foreign country. A certified copy of the earlier application must be filed at the Intellectual Property Office within three months of filing the application for the same mark at the Intellectual Property Office.
What is the procedure for securing a trade mark application from filing to grant?
The Controller at the Intellectual Property Office examines the application in order to determine whether it complies with all the formal and legal requirements. If the Controller has no queries or objections to the application, the application is accepted for registration and sent for publication. If there are official queries or objections to the application, the applicant is invited to remedy same by filing the requisite documents or response within a stipulated time frame. Once the correct documentation is filed in response, the mark is accepted for registration and sent to a daily newspaper for publication. When the application is published in the newspaper, a third party may file a notice of opposition to the application within three months of the advertisement. If no oppositions to the application are filed, the Certificate of Registration is issued.
What are some of the main official queries or objections that may be raised by the Controller?
- A request for the clarification of the specification of goods;
- A request for a disclaimer of exclusive rights to certain elements of the mark that are deemed to be not distinctive or common to the trade;
- A request to associate the mark with any other identical or similar marks in the name of the same proprietor;
- A request to transfer the mark to Part B of the Register;
- A refusal of the mark on the grounds that it is not distinctive or that the mark is deceptive or that the mark is a common surname.
Responses to official queries or objections are usually required within two months of the date of the relevant notice. The applicant may be required to amend the application or comply with various conditions as stipulated by the Controller or submit legal arguments in favour of the registration of the mark. If the applicant does not remedy the defects or reply in a timely manner to the Controller’s queries, the application will be deemed to be withdrawn.
What response is required to a third party notice of opposition?
When a third party files a notice of opposition, the applicant is required to file a counter-statement within one month of the receipt of that notice of opposition. The opponent must then file a statutory declaration that outlines the evidence in support of its case within one month of the receipt of the counter-statement. If the opponent does not file a statutory declaration, he shall be deemed to have abandoned the opposition.
If the opponent files a statutory declaration, the applicant must file a statutory declaration in reply within one month of the receipt of the opponent’s statutory declaration. Within one month of the receipt of the applicant’s statutory declaration, the opponent may file a statutory declaration in reply. No further evidence may be filed.
The Controller will then give notice to the parties of the date when arguments will be heard in the case. The time frames for filing the counter-statement and the statutory declarations may be extended by making the requisite application to the Controller.
How long does it take to secure a trade mark registration?
Presently, it takes approximately twelve to eighteen months to secure a trade mark registration provided that there are no official objections or queries to the application or third party oppositions.
Does the grant of a trade mark registration in Trinidad and Tobago preserve my rights in all other territories in the Caribbean?
No. The grant of a trade mark registration in Trinidad and Tobago preserves the proprietor’s rights only in relation to Trinidad and Tobago. In order to secure trade mark rights in other Caribbean jurisdictions, the applicant must register the mark in each of the other jurisdictions. We may arrange for the registration of your marks in other Caribbean jurisdictions.
Is there any analogous system in the Caribbean similar to that of the European Community trade mark?
There is no analogous system in the Caribbean similar to that of the European Community trade mark.
How long is a trade mark valid for?
A registered trade mark is valid for ten years from the filing date and may be renewed for successive ten year periods ad infinitum.
Is use a prerequisite to the renewal of a trade mark?
Use is not a pre-requisite for the renewal of a mark, however, a mark may be struck off the Register on either of the following grounds - (i) five years non-use or (ii) lack of bona fide intention to use the mark and three years non-use.
What is the procedure for a trade mark renewal?
The applicant must file the prescribed application form and pay the prescribed fee. An Authorisation of Agent form must also be filed if the attorney on record for your trade mark registration is not the same attorney who has been instructed to file the renewal application. Particulars of the trade mark number, initial filing date of the trade mark application and the current proprietor’s name and address on the Trade Marks Register are required in order to complete the application form.
What is the cost of filing a trade mark renewal application?
Our professional fees are US $280.00 and the government-filing fee is US $35.00. The Certificate fee is US $25.00.
Is any type of symbol required to give notice of a registered or unregistered trade mark?
Our Trade Marks Act does not require the use of any type of symbol in order to give notice of a registered or unregistered trade mark. However, it is an offence to represent that an unregistered mark is a registered trade mark.
Is using a variation of the trade mark permissible?
Although it is advisable to use the mark exactly as it is registered, minor variations to a mark, provided that it is not an infringement of another’s mark, are permissible. However, in so far as the varied mark differs substantially from the mark on the Trade Marks Register, the mark in use will be an unregistered mark.
Do you have to state the ownership of a registered trade mark?
In depicting your registered trade mark, there is no requirement that the proprietor of the registered trade mark should be stated. However, stating the proprietorship of a registered trade mark gives notice to the public that the particular mark is registered in the name of a specified entity.