June 15, 2015
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TRINIDAD AND TOBAGO: Draft Trade Marks Bill Makes Way for Madrid
The new Trade Marks Bill, 2014 went before the Senate of Trinidad and Tobago for consideration on April 13, 2015.
Once passed into law as the Trade Marks Act, the bill would repeal and replace the current Trade Marks Act, Chap. 82:81. Perhaps most notably, the bill includes provisions that would allow the Minister responsible for intellectual property rights to make regulations giving effect to the provisions of the Madrid Protocol. Thus, Trinidad and Tobago is paving the way towards implementation of the Madrid Protocol and allowing designation of the country on international applications filed through the World Intellectual Property Organization. It would be one of the first Commonwealth Caribbean countries to implement the Madrid Protocol—the only other country that has done so thus far is Antigua and Barbuda.
The Trade Marks Bill provides for greater protection of well-known trademarks in the islands. There are also a number of provisions regarding border enforcement measures. These provisions allow for trademark owners to alert the Comptroller of Customs & Excise to potentially infringing goods that are being transited to or through the country. Notably, trademark owners will be required to deposit an amount of funds to cover any expenses incurred by the State in seizing and investigating the potentially infringing goods.
Although it has been possible to register certification marks under the current legal framework, it will also be possible to register collective marks under the new law.
With respect to classification of goods and services, the bill indicates that goods and services “shall be classified … according to a prescribed system of classification,” leaving the door open to implementation of the most recent version (the tenth edition) of the Nice Classification. Trinidad and Tobago currently adheres to the seventh edition of the Nice Classification, which provides registration up to Class 42 only.
Applicants will be allowed to convert pending applications that have not yet been advertised to become applications examined under the new law. This process will require the applicant to give notice to the Controller and pay a prescribed fee; however, it is important to note that conversion will be possible only for six months after the commencement of the new law. Existing registered marks will be deemed registered trademarks for the purposes of the new law. While existing disclaimers or limitations entered on the register under the prior law will remain viable, all associations entered with respect to other registered marks will cease to have effect upon commencement of the new law.
Once the new law becomes effective—hopefully, by the end of this year—no application for revocation of an existing registered mark registered under the prior law may be made until more than five years have passed from the commencement of the new law. Importantly, the new law increases the non-use period from three years to five years.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association