You should register your trade mark for the following reasons:
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.
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.
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 www.wipo.int/trademarks/en
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not remedy the defects or reply in a timely manner to the Controller’s queries, the application will be deemed to be withdrawn.
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.
There is no analogous system in the Caribbean similar to that of the European Community 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.
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.
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.
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.