Business brief 2012: Barbados
Patents
Protection and enforcement
Patents are granted for new inventions (worldwide novelty) that express an inventive advance and are industrially applicable. Disclosure by the applicant within one year preceding the date of application is not a bar to novelty.
Some ‘inventions’ are excluded: discoveries; scientific theories; mathematical methods; games, business schemes; mental acts; surgical or therapeutic treatments; diagnostic methods; biological processes; immoral or environmentally prejudicial inventions. Products for use in surgical or therapeutic treatments and diagnostic methods are patentable.
Most patent applications filed in Barbados are national phase entries under the Patent Cooperation Treaty, within the 30-month limit. Local inventors are encouraged to file international applications using WIPO’s International Bureau.
The inventor must always be identified. An applicant who is not an inventor must state his or her entitlement to the grant (eg, by assignment, inheritance or employment). Foreign applicants must be represented by a local patent agent.
Documentary requirements include a power of attorney; specification; drawings; statement of ownership or assignment (if the inventor is not the applicant); copies of any communication, decision or search relating to the invention; priority documents. All non-English words or documents must be translated into English.
The grant lasts 20 years from the filing date. Annuities become payable from the second year after the filing date; late payment within six months attracts a penalty. There is no opposition procedure.
Licences must be registered. A compulsory licence may be granted if an invention is not being sufficiently used; importation is considered to be ‘use’. Proceedings for invalidation and infringement, and appeals against a compulsory licence, can be filed at the High Court by any interested person. Remedies include an injunction and/or damages.
Trademarks
Registration and protection
Trade, service, certification and collective marks may be registered. The common law action of passing off provides additional protection for unregistered marks and trade dress.
Marks must be visible signs; sound and smell marks are not permitted. Although well-known marks are protected, there is neither a definition nor official listing of ‘well-known’ marks.
Non-English words and documents must be translated and/or transliterated into English. Priority may be claimed based on an earlier application in another Paris Convention or TRIPS Agreement member country, supported by a certified official copy of the prior application.
Barbados uses the Nice Classification (10th Edition): applicants should stick as closely as possible to the language of the classification, in order to avoid costly office actions. Registration may be opposed during the 90 days after publication in the Official Gazette.
Use is not required for registration or renewal, but a mark may be removed from the register if it has become generic or if it has fallen into disuse for five years between registration and application for removal. Registration lasts for 10 years and may be renewed every 10 years, with a six-month grace period for late renewal (at additional cost).
Foreign applicants must have a local agent. The average cost to register a mark is about $950, including estimated advertising rates which vary. A typical office action runs to about $280. The cost of opposition proceedings will depend on the particulars of the case.
Changes to the owner’s name must be recorded in the register, supported by a certified copy of the official document effecting the change. Changes of address must also be notified, but no supporting evidence is required.
Transfers of ownership must be registered. Licences need not be registered, but an unregistered licence will not affect third parties.
“In the absence of a formal registration system for copyrighted materials, local creators are encouraged to date a record of their creation and send it to them-selves by registered post.”
A registered owner whose rights are being, or are about to be, infringed may seek relief by injunction, damages and/or an order for the erasure, removal, obliteration, delivery up or destruction, of the offending material.
Penalties for competitive offences or infringement range from a fine of $5,000 or imprisonment for two to six years or both, to $20,000 or imprisonment for 10 years or both; continuing offences attract additional fines of $500 per day.
Key threats and common mistakes
Because Barbados is very small, some believe they can get away with infringing on the trademarks or trade dress of foreign businesses. Imported knock-offs may be caught at customs if the owner of the mark is aware of the importation. The offended owner can object to entry and seek detention and ultimately destruction of goods bearing infringing marks.
Infringement online, where there are no borders and transactions and identities are harder to verify, is virtually impossible to police. ‘Ostrich syndrome’—refusing to conduct market research and clearance searches before adopting a mark—is a common mistake of trademark owners. Failure to register and then monitor marks, especially on the Internet, and thinking that the Caribbean is one legal jurisdiction, are also common.
Copyright
Protecting against copyright infringement
In the absence of a formal registration system for copyrighted materials, local creators are encouraged to date a record of their creation and send it to themselves by registered post, not to be opened except in court as evidence of the date and content of their creation. Where appropriate, creators are also encouraged to join a collective society.
Key challenges for copyright holders
Lack of public awareness of the significance and value of intellectual property is probably the biggest challenge to maximising the return on investment for local copyright owners, especially in the cultural industries. The relatively recent international successes of Barbadian musical superstars (eg, Rihanna and Cover Drive) have brought some focus to bear on the potential value of IP.
Dealing with infringement
Rights owners must be prepared to enforce their own private rights, and should not expect the authorities to lead the charge for them. Although there are laws in place to deal with infringement, in a market as small as Barbados, the time/money/cost:benefit ratio militates against enforcing relatively small incidents of infringement.
Counterfeiting
Little, if any, data exist to permit analysis of the true extent of counterfeiting in Barbados. Anecdotally, the cultural industries (especially music and film) seem most at risk from piracy.
More needs to be done to inculcate a culture of recognition of and respect for IP rights, starting with the youngest citizens and permeating the entire society. Some gains may be possible through education and public outreach programmes.
General
Barbados has a robust legislative framework for protecting IP, with the last major changes made in 2006. Barbados would definitely benefit from comprehensive computerisation of the intellectual property office’s records to facilitate searches and processing of applications. Presently, searches are conducted manually, as the accuracy of results from computerised searches cannot be guaranteed. Patent searches are done strictly by the exact title of the pending or registered invention—no fishing allowed!
