IP in Guyana: the theory and the practice
Copyright is governed by parts of the UK Copyright Act 1956, which were extended to Guyana by the Copyright (British Guiana) Order 1966 No. 79 in February 1966, shortly before independence in May of that year. A new Copyright Act was drafted more than a decade ago (in 1999, then President Bharrat Jagdeo said that updated copyright laws were key to the country’s development and that he intended to have a draft bill, in circulation at the time, in place by the following year) but it is still not known when it will be enacted.
Guyana has been a member of the World Intellectual Property Organisation (WIPO) since July 1994 and is a signatory to the Berne Convention and the Universal Copyright Convention.
The bulk of intellectual property (IP) activity in Guyana relates to the registration, renewal and assignment of trademarks. Patent registration business is significantly smaller and there is virtually no copyright activity here, mainly because the 1956 UK Act has been repealed in the UK.
The Trade Marks Act provides for registration of a trademark in Part A, Part B or Part C of the register.
Trademarks that are strongly distinctive are capable of registration in Part A; weaker marks, which are still inherently capable of distinguishing goods with which the proprietor is or may be connected in the course of trade from goods in respect of which no such connection exists, may be registered in Part B of the register.
Trademarks that have been registered in the UK are automatically registrable in Guyana in Part C of the register and confer on the proprietor the same rights and privileges as the UK registration, from the date of the UK registration.
"PATeNT ReGIsTRATIoN bUsINess Is sIGNIfIcANTlY smAlleR AND TheRe Is VIRTUAllY No coPYRIGhT AcTIVITY, mAINlY becAUse The 1956 Uk AcT hAs beeN RePeAleD IN The Uk."
Service marks are not registrable in Guyana under the current act. Our firm has, however, persuaded the Registrar of Trademarks to give a liberal interpretation to the provisions of the act that allow UK-registered marks to be automatically registered in Guyana, so as to enable the registration in Guyana in Part C of the register of service marks that have been registered in the UK.
The Patents & Designs Act provides only for inventions to be patented in Guyana, with the exception that a chemical process or pharmaceutical preparation that has been patented in the UK is automatically registrable here.
It takes approximately five years for a trademark to be registered and longer for a patent due to the delays involved in obtaining professional examinations of applications.
The Trademarks Registry is in the process of being computerised with the aim of expediting searches and registrations, but significant improvements have not to date taken place, largely due to lack of qualified registry staff.
The protection against infringement of trademarks aff orded by the Trade Marks Act has led to a number of high profile cases being successfully prosecuted in Guyana, in all of which this firm has been involved.
The litigation has resulted from the fact that piracy in trademarked goods is big business in Guyana, with practically all counterfeit goods being imported from China.
It is to be noted that there are no customs or other laws in Guyana that specifically address the importation of counterfeit goods. It has therefore been left to individual proprietors who wish to do so to seek protection by bringing actions for trademark infringement.
So, in C.J. Clark International Ltd v Mohan Lall, where the defendant had imported counterfeit ‘Clarks’ shoes from China into Guyana, the plaintiff had to resort to an action for infringement of its locally registered trademark. It succeeded in having the counterfeit goods seized pursuant to an order akin to an Anton Piller order (ex parte search order) and the goods were returned to the defendant only after the offending mark had been removed.
Similar action was taken by the plaintiff in 2007 in Unilever PLC v Mohamed Khan, where the defendant had imported counterfeit ‘Lux’ soap from China into Guyana. The action for infringement by the plaintiff of its locally registered trademark Lux resulted in the seizure and eventual destruction of the counterfeit goods.
The 2001 case of Sterling Products Ltd v Continental Agencies Ltd involved two local companies. The defendant infringed the plaintiff’s registered trademark Baker’s Pride and the resulting litigation saw the court ordering the seizure and destruction of all packaging material bearing the plaintiff’s trademark.
More recently, a Brazilian company, S.A. Grings SA, brought an action against a local company, RNK Investments International Inc, for infringement of its locally registered trademark Piccadilly in respect of shoes. The court ordered the seizure of the counterfeit shoes which the defendant had imported from China.
What these cases demonstrate is that in order to stem the trade in counterfeit goods in Guyana, proprietors of trademarks must first get their mark protected by local registration and then, if and when the mark has been infringed, launch their own action in the local courts (which have been for the most part of great assistance).
Unfortunately, customs authorities do not have the legislative power to detain and destroy counterfeit goods. In fact, revenue officials tend to view such importation as a lucrative source of revenue for the Treasury and have not been particularly sympathetic to, or helpful in, such cases.
Apart from permitting the registration of service marks, the automatic registration of UK-registered marks locally in Part C of the register has a significant advantage in that the date of local registration is the date of the UK registration.
The effect of this pre-dating is illustrated by two cases argued by the firm.
In Florsheim Shoe Co v Cameron, a local cobbler registered the trademark Florsheim in his name. Florsheim Shoe Company of the UK, who were the genuine owners of the mark but had not registered it in Guyana at the time of the local registration, applied for and obtained registration of the mark in Part C of the Guyana register based upon the UK registration.
"To stem the trade in counterfeit goods, proprietors of trademarks must first get their mark protected by local registration and then, if and when the mark has been infringed, launch their own action in the local courts."
This had the effect of making the Part C registration predate the date of the local registration. The plaintiff was then successfully able to bring an action against the defendant to have his mark expunged from the register on the ground that at the time the defendant’s mark was accepted for registration, the plaintiff’s mark (by virtue of its pre-dated UK registration) was already on the register.
The Florsheim case was followed some 40 years later in the LALAH’S Curry Powder case, when in 1988, a local condiment manufacturer, Ricks & Sari Industries Ltd, registered the plaintiff ’s trademark as its own. The strategy employed in the Florsheim case was again successfully used and resulted in the Ricks & Sari registration being expunged from the register.
The only genuine copyright case, namely Rudolph Grant v Banks DIH Ltd and Guyenterprise Ltd, was successfully defended by this firm in 1998. In that case, the plaintiff was unsuccessful in his claim that the defendants had infringed his copyright in a sound recording entitled Mash in Guyana.
A rare civil no-case submission was upheld by the court after the evidence revealed that it was not the defendants who had infringed the plaintiff’s copyright as alleged and that in any event that the plaintiff had failed to prove, as required by the UK Copyright Act 1956, that the record bore any label identifying him as the copyright owner.
The inadequacy of Guyana’s copyright law has resulted, and continues to result, in difficulties in registering copyright and widespread copyright infringement. Businesses making and selling pirated CDs, DVDs and text books operate openly and with impunity, and are widely patronised.
Local artists and writers are deeply concerned about the lack of legislation and its effects on their livelihood, and some have emigrated because they could not make a living here. Without an adequate legislative framework we are unable to take action on behalf of persons whose copyright has been infringed.
Rafiq Khan is an attorney at Cameron & Shepherd. He can be contacted at: trademarks@cameronandshepherd.com
