Registration of Trademarks in Trinidad and Tobago
05 January 2015
Presently in Trinidad and Tobago the legislative regime governing trade marks is the Trade Marks Act (‘the Act”). The Act is, to a great degree, similar to the 1938 Trade Marks Act of the United Kingdom. There is under discussion however a Trade Marks Bill which contains provisions similar to those of the United Kingdom Trade Marks Act, 1994. Those discussions are still at a preliminary stage and it is unlikely that new legislation will soon be enacted.
The registration of trade marks is a relatively simple process once there are no objections to the trade mark itself. Upon the filing of an application and the payment of the requisite fee, the Controller of the Intellectual Property Office (“the Controller”) will determine whether the trade mark ought to be accepted or rejected. If accepted, the trade mark would then be advertised so as to allow third parties to object to its registration on the Trade Mark Register. Assuming that there are no objections or, if there are, no successful objections, the Controller would proceed to register the trade mark upon the payment of the registration fee. It is only upon the actual registration, i.e. the entry of the trade mark on the register, that the owner of the trade mark would be entitled to all of the rights and privileges that flow from registration.
It is noteworthy though that registration of a trade mark is not compulsory in Trinidad and Tobago and the owner of a mark may, though not protected by the legislation, still have legal protection under the common law and may institute an action against any party that it alleges is passing off its goods and mark as the owner’s.
Often times an owner of a trade mark may find that the Controller may have accepted the mark for registration but that a third party objects to its registration on the ground that it is confusingly similar to its registered trade mark and is the therefore likely to confuse and/or to deceive the public into thinking that the applicant’s trade mark is its own. The applicant will then be called upon to defend its application if it can and it will be for it to establish that its trade mark is not confusingly similar to that of the opponent. Evidence of use of the applicant’s trade mark in Trinidad and Tobago though often of great assistance, is not determinative of the issue whether the trade mark is confusingly similar to the opponent’s.
The applicant must be able to establish that its trade mark is distinctive. Also, evidence of use is restricted to that period prior to the application being filed. Further, if evidence of use is to be adduced, it is important to note that evidence of use in the island of Trinidad alone may not be sufficient.
The applicant should adduce evidence of use in the island of Tobago as well. Omitting one of the two islands allows the opponent to contend that the evidence is not indicative of whether the public would be confused and/or deceived. It is worth remembering in this regard that Trinidad and Tobago is a unitary republic.
An applicant will also usually wish to adduce evidence in support of its application for registration that its trade mark has been registered in other territories. Under the current state of law this is of no real relevance to the Controller although if the trade mark has been registered in territories that have a similar legislative framework as Trinidad and Tobago it is an aspect that may be considered.