Trinidad and Tobago Anticounterfeiting Legislation Ushers in New Era

Published: December 9, 2020

Fanta Punch M. Hamel-Smith & Co. Port Of Spain, Trinidad And Tobago Anticounterfeiting Committee—Latin America and Caribbean Subcommittee

Pamela Hernandez Minino Santo Domingo, Dominican Republic Anticounterfeiting Committee—Latin America and Caribbean Subcommittee

Trinidad and Tobago’s new Trade Marks Act, 2015 (Act No. 8 of 2015), which took effect in June 2020, brings numerous advantages to trademark owners. Among the changes are broader definitions of trademarks, increased protection of well-known marks and new protection for collective marks, a new electronic filing system, and greater ease of doing business. Aside from the improvements in the prosecution of trademarks, the new Act also provides for increased border enforcement measures, marking a significant advance in the battle against counterfeits in the country.

On anticounterfeiting, INTA recently hosted a virtual policy dialogue with brand owners and representatives of the country’s Customs and Excise Division to exchange ideas and experiences on the issue, including the impact of the COVID-19 pandemic. Representatives from Crocs Inc., Novartis, Pfizer, and UL shared their strategies for tackling the spread of counterfeit goods in the Caribbean, with key examples of successful outcomes resulting from collaborations with the Customs and Excise Division.

The event, which was held on September 9, was moderated and organized by Fanta Punch (Hamel Smith, Trinidad and Tobago) and Guillermo López (Bolet & Terrero, Venezuela), both members of the Latin America and Caribbean Subcommittee of the Anticounterfeiting Committee. In addition to brand owners, 18 government officials attended.

The virtual gathering was a follow-up to the Subcommittee’s policy dialogue held a year earlier, which brought together to discuss border enforcement measures. The dialogue, held on July 8, 2019, focused on issues present under the previous legislation that impacted the ability of Trinidad and Tobago Customs and Excise to effectively combat counterfeiting. These included lack of data recordal systems, indemnity management, available data, and potential liability faced by Customs and Excise for damage caused to an alleged infringer’s goods.

The new Trade Marks Act addresses some of these issues. Note that the new Trade Mark Act, 2015 (Act No. 8 of 2015), was enacted in 2015, but the Act and the accompanying Trade Mark Regulations first came into effect on June 25, 2020. Below are three key provisions.

1. Clear Definitions of Counterfeiting

The new Act now provides definitions of “counterfeit goods,” “counterfeit trade marks,” and “infringing goods.”

(a) Goods are “infringing goods”, in relation to a registered trademark, if they or their packaging bear a sign identical or similar to that mark and the—

(a) application of the sign to the goods or their packaging was an infringement of the registered trademark; or
(b) goods are proposed to be imported into Trinidad and Tobago and the application of the sign in Trinidad and Tobago to them or their packaging would be an infringement of the registered trade mark; or
(c) sign has otherwise been used in relation to the goods in such a way as to infringe the registered mark.

(b) Goods are “counterfeit goods,” in relation to a registered trademark, if—

(a) they are infringing goods in relation to that mark; and
(b) the sign borne by them or their packaging is a counterfeit trademark.

A sign is a “counterfeit trademark,” in relation to a registered trademark, if the sign—

(a) is identical to, or so nearly resembling the registered trademark as to be calculated to deceive; and
(b) is applied to goods or services—(i) without the express or implied consent (conditional or otherwise) of the proprietor of the registered trade mark; and (ii) to falsely represent the goods or services to be the genuine goods or actual services of the proprietor or a licensee of the registered trademark.

2. The Role of Customs and Excise in Border Enforcement Measures

The new Act gives Customs and Excise a far greater role to play in terms of enforcing the intellectual property rights of brand owners. It now has the authority to seize and detain counterfeit goods at ports of entry. It can act at the request of the brand owner, on its own suspicions, and can enforce court orders.

As part of Customs and Excise’s new, far-reaching powers, it may now detain imported goods as well as goods for export and goods in transit. It can examine goods in transit on reasonable suspicion that they may be counterfeit. The Act also provides immunity to Customs and Excise for actions done in good faith in the execution of their power and authority.

The Border Enforcement Measures Regulations of 2020, which form part of the Act, set out two key ways for Customs and Excise to detain goods: (1) on behalf of brand owners by lodging a notice of objection to the importation of counterfeit goods; and (2) ex-officio actions by Customs.

Objection Procedure
The process involves filing a notice, providing evidence of current valid trademark registration, agent authority documentation (where applicable), information on the infringing goods, requisite security or indemnity, and filing fees TT $500 (US $74). An objection can be filed within 60 days, after which a new objection can be filed.

The Act allows the Comptroller of Customs and Excise to retain the right to request such security as may be required against any liability or expense incurred by the Division in the execution of its duties. An example is payment of compensation to an alleged infringer, where goods have been wrongly detained.

The objection procedure involves notification by Customs and Excise to both the brand owner and potential infringer that the goods have been detained. A brand owner can commence infringement proceedings initially within a 10-day period (with the option to seek a further 10-day extension). It is possible for parties to obtain samples or inspect the goods, though a deposit and the requisite undertakings for handling samples are required.

Where no infringement action has begun (or where the goods have not been forfeited by the alleged infringer or destroyed by agreement or otherwise), and no order is granted by the court within 90 days, the goods may be released to the alleged infringer/importer. Similarly, if no action is taken by the brand owner, Customs and Excise must release the detained goods.

Ex-Officio Actions
Customs has exofficio power/authority to detain suspicious counterfeit goods that are either imported or to be exported without notifying the trademark owner. It can act on its own suspicions about whether certain goods may be counterfeit and detain them. It can then notify the brand owner, which may commence an objection procedure which can either lead to an agreement with the importer on admission of liability or that the goods be forfeited to the state. The brand owner is also entitled to commence trademark infringement proceedings against the importer within the prescribed period of time.

3. Penalties for Criminal Offenses

The Act lists in detail the criminal offenses related to counterfeiting, such as falsification of a genuine registered trademark without consent or falsely applying a registered trademark to goods or services, and it gives stiff penalties for criminal conduct. For example, a person who counterfeits a registered trademark can be liable for fines of up to TT $250,000 (US $37,000) and imprisonment of 10 years.

Armed with the new Trade Marks Act, Customs and Excise now has the support and authority to take actions against the flow of counterfeit goods into Trinidad and Tobago with some level of independence. The aim is to bring significant wins in the domestic fight against counterfeiting.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2020 International Trademark Association