Business Brief 2021: Caribbean Region
TRADEMARK PROTECTION
Trademark registration in the Caribbean region provides brand owners with enforceable rights to stop others from capitalising on a company’s success. There is no universal approach or blanket law that governs the practice in the region, rather each jurisdiction has its own legislation.
Registration of trademarks can be achieved via a UK registration or a national registration. Anguilla, Guyana, Montserrat, and Turks and Caicos Islands allow both national registration and re-registration of UK trademarks. Dominica, Trinidad and Tobago, and Jamaica, among others, only allow national registration. UK registration as an absolute prerequisite to registration is no longer required in any of the jurisdictions in the Caribbean region.
The signatories to the Madrid Protocol in the Caribbean are Antigua and Barbuda, Trinidad and Tobago, Cuba, and BES Islands (Bonaire, Saint Eustatius and Saba), as well as the Dutch territories of Curacao and St Maarten. This filing system allows for filing in a foreign country (including one of the Caribbean islands) and designating multiple jurisdictions for re-registration.
This system of filing may be more efficient but applications can be provisionally refused when they do not meet the statutory requirements of a particular jurisdiction.
Most jurisdictions accept applications for registration claiming priority if the applications are filed within in six months of the priority application. The application must include the mark description, the classification(s) to be claimed for protection, and products to be protected. Documentary requirements also include a declaration for priority.
In the British Virgin Islands, Antigua and Barbuda, Dominica, St Maarten, and Barbados, partial priority is available and applicants are allowed to select the classes they wish to cover and do not have to claim all classes covered in the underlying priority registration.
Anguilla requires all classes from the priority application to be covered in the application filed in Anguilla claiming priority. It is not possible to claim priority with respect to trademark applications in Bermuda, Cayman Islands, Costa Rica, Guyana, Montserrat and Puerto Rico.
“UK registration as an absolute prerequisite to registration is no longer required in any of the jurisdictions.” - Keesha Fleming
Fees for filing for registration of a trademark vary. Belize has fees of $213 for one mark in one class and charges $38 for each additional class. Anguilla has fees of $260 for one mark in one class with each additional class costing $50. Renewal fees also vary.
In Bermuda the fee for renewal is $506 for the first class and $506 each additional class and fees for applications to record changes in ownership range from $130 to $265 per class. Completely opposite to Bermuda is Guyana where official fees for renewals are $2 for the first class and $2 for each additional class and applications to record changes in ownership range from $2 to $4 per class.
PATENT PROTECTION
Registration for patent protection in the Caribbean can be via local patent applications or applications to extend the rights protected under a UK registration. For instance, Commonwealth countries will extend protection for UK and European patents designating the UK. The Dutch islands of Curacao, Caribbean Netherlands, and St Maarten extend rights of patents granted in the Netherlands.
In St Kitts and Nevis and in St Lucia, patent applications via local applications or re-registration are filed to establish a priority filing date but examinations of the applications are pending the passing of regulations.
In Anguilla there is no provision for local registration of designs, but UK design registrations are automatically extended to Anguilla. Also in Anguilla, UK and European patents designating the UK can be registered if filed within three years of patent registration issuance.
This is true also in a number of jurisdictions such as Bermuda, British Virgin Islands, Guyana, and the Turks and Caicos Islands.
The Cayman Islands is not a contracting state to the Patent Cooperation Treaty and does not have a local patent registration system. Its registry extends patent rights that have been registered in the UK or through a European patent designating the UK.
COUNTERFEITING
Counterfeit goods in the Caribbean include, but are not limited to, pharmaceutical items, shoes, jewellery, food items, electronics, clothing, cosmetics, bags, watches, perfumes, computer software, appliances, and games.
Counterfeit goods are available both in-store and online. Some Caribbean jurisdictions are addressing the issue of counterfeit goods through legislation, and via the court system.
Anti-counterfeiting efforts in the region often lack funding to train personnel, as well as the technology needed to address online counterfeit listings. The burden is on the proprietor to register trademarks and rely on legislative procedures in place to address counterfeiting. In the absence of legislation, the place for recourse is the court through civil claims.
Customs officers are given statutory authority to seize counterfeit goods and police officers are authorised to investigate and conduct raids. Trinidad and Tobago has legislature to address the importation, possession, sale and labelling of counterfeit goods. Criminal and civil proceedings are both available in this jurisdiction and any jurisdiction with similar legislation.
St Maarten has copyright legislation, trademark legislation, as well as criminal legislation. Under these laws, both civil and criminal procedures can be used in anti-counterfeiting efforts. The legislature empowers local authorities to confiscate counterfeit goods and destroy them.
Keesha Fleming Lake is managing partner of Caribbean Trademark Services. She can be contacted at: ip@caribbeantrademarks.com
