HELPFUL INFORMATION ABOUT TRADEMARKS AND PATENTS IN TRINIDAD AND TOBAGO
THE REGISTRATION OF TRADE/SERVICE MARKS GENERALLY
The Trade Marks Act, Chap. 82:81 and the Trade Marks Rules regulate the registration of trade marks and service marks within Trinidad and Tobago. Protection is afforded for unregistered trademarks such as image rights, via the common law tort of Passing off as well as under the Protection Against Unfair Competition Act, Chap. 82:36.
The Trade Marks Act provides for classification of goods and services pursuant to the International Classification of Goods and Services (“Nice Classification”), 7th edition, which covers 34 classes of goods and 8 classes of services. A complete listing of the Nice Classifications can be found at http://www.wipo.int/trademarks/en.
The Trade Marks Register is divided into Part A, for registration of distinctive marks, and Part B, for registration of marks that are capable of distinguishing the goods or services of the applicant from those of another entity. For Part A registration, a mark must contain or consist of at least one of the following essential particulars: (a) the name of a company, individual or firm represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname; (e) any other distinctive mark.
The following marks are not registrable:
generic and descriptive terms;
marks which are deceptive or scandalous or contrary to law or morality;
marks which comprise official government symbols, such as the national flag or flags, symbols or emblems of countries;
a mark that is similar or identical to another mark on the Trade Marks Register; and
a mark recognised as a well-known mark of an entity other than the applicant for registration.
An application for trade/service mark registration in Trinidad and Tobago is based on an intention to use the mark and therefore no declaration of use is required.
The Application for Registration of a Trade/Service Mark
The following information is useful when applying for registration of trade/service marks in Trinidad and Tobago:
The Mark- Applications can be made for word marks, in block type or stylized, and device marks. If a device mark, a reproduction of same would be required.
Applicant information-The following information must be included in an application for registration of a mark: (a) name of the applicant; (b) address of the applicant; (c) nationality for individual applicants; or (d) for legal entities the jurisdiction of organization together with the legal nature of the entity (for instance, company, corporation, limited liability company etc.).
The Class(es)- The applicant must set out in the application the class(es) in which the proposed mark is to be used, along with a list of the goods and/or services within the class(es).
Color- Colors can be claimed and the proper name of all the colors must be indicated in the application. A trade mark registered in black and white/without limitations of color shall be deemed registered for all colors thereby offering broader protection for the mark. Black and white is therefore normally recommended in the absence of very distinctive colors.
Priority – As a signatory to the Paris Convention for the Protection of Industrial Property made on March 20, 1883 (“Convention”) Trinidad and Tobago law allows trade/service mark owners from other Convention countries to claim priority registration in respect of trade/service mark applications if such local application is made within six (6) months of the filing date of the foreign application.
Authorization of Agent Form
An Authorization of Agent form must be completed and executed by the individual applicant or a duly authorized representative of the legal entity. The power of attorney need not be witnessed, notarized or legalized but must be reproduced on A4 dimension paper with a left-hand margin of 1½ inches.
Duration of Application Process
The time period from application to registration is approximately 12 to 18 months including the 3-month publication/opposition period.
Validity and Renewal
A trade/service mark in Trinidad and Tobago is valid for 10 years from the date of application and may be renewed for successive periods of 10 years each. No proof of use is required on renewal. The Intellectual Property Office also accepts late renewals of up to six (6) months after the expiry date on payment of an additional late penalty fee.
Types of Patents
The administration of local patents is regulated by the Patents Act, Chap. 82:76. Here patents for inventions are registrable provided that:
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application.
International patents are also capable of registration within Trinidad and Tobago. These international patents, namely the Patent Cooperation Treaty (“PCT”) patent and the Paris Convention patent are registered in a foreign country which is a party to that particular convention (to which Trinidad and Tobago is also a party) and will be re-registered in this country claiming a priority date. These international patents must also conform to the statutory requirements of universal novelty, an inventive step and being capable of industrial application.
Patent application requirements
PCT: For national entry of a PCT patent application, the information as contained in the WIPO publication is required.
Paris Convention: A copy of the patent specification, claims, abstracts and drawings as filed in the priority country must be submitted as part of the application process.
Local Patent: Original specification, claims, abstracts and drawings must be submitted.
General Information about Applications
A signed power of attorney from the applicant must be submitted and this can be done separately after the local application has been filed.
Evidence as to the applicant’s entitlement to the invention is also necessary where the applicant is not the inventor. This can be done by way of a statutory declaration setting out the basis of ownership. This declaration can be submitted after the date of local filing.
With respect to PCT or Paris Convention patents, if there have been amendments to the patent description and/or claims which the applicant may wish to form part of the local application, such amendment can be submitted at the same time as the application. To assist the IPO, the examination reports from any other major examining officers may be submitted but this is not mandatory.
Patentees must pay annual fees (annuities) to maintain the patent and such fees increase in amount during the course of the patent term.
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