Turks and Caicos Islands (TC)
10-01-2011 (Newsletter Issue 11/11)Introduction of Annual Maintenance FeeThe Turks & Caicos Islands Trade Marks (Amendment) Rules took effect on July 29, 2011.
They require the payment of an annual maintenance fee of USD 100.00 for each trademark registration in Turks & Caicos Islands, beginning January 1, 2012. If a particular mark is registered in more than one class, the official fee of USD 100.00 covers all classes.
A one month grace period until Feburary 1st is allowed each year for late payment, failing which the trademark rights are deemed to be in abeyance and will remain in suspense unless and untill all past due fees have been paid, at which time the rights are then deemed to be fully restored.
Source: George C. J. Moore, Barrister - Carribean Trademark Services, West Palm Beach, Florida
Legal basis is the Trade Marks Ordinance 2007 that went into effect on October 8th, 2007.
In Turks & Caicos Islands, one can apply to register a trade mark in either of two ways: based upon a UK registration or independently within the local system.
If the subject mark has been registered in the UK, it can be registered in Turks & Caicos Islands in the same class or classes that are covered by the UK registration. But it is not possible to extend an EU or an IR trademark to Turks & Caicos Islands.
If the subject mark has not been registered in the UK, an application can be made within the local system.
Trademark protection is obtained by registration. It can also be acquired by mere use within the jurisdiction whereby it is protected only by common law. Only if a mark is registered under the act is it entitled to protection under the Trade Marks Ordinance.
Nice classification, 9th edition
Service marks are now registrable in classes 35-45.
Registrable as a trademark is any sign capable of being represented graphically which is capable of distinguishing goods or services. The mark may consist of words (including personal names), designs, numerals, letters, or the shape of goods or their packaging.
Trade marks, service marks, certification marks and collective marks can all be registered under the act. However, a certification mark can only be based upon an existing registration of the same certification mark in the UK.
The application is filed at the trademarks registry in Grand Turk.
Multi-class applications are possible.
A signed Authorisation of Agent form is needed. It need not be notarised or legalised.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
After formal examination and acceptance, the mark is published in the weekly Gazette for opposition.
The processing time from first filing to registration is typically nine to twelve months.
Any applicant or owner of a UK registration who files an application to register the same mark based upon the UK registration obtains the same filing/registration date as in the UK, except that a claim under the Trade Marks Ordinance cannot complain of infringement that occurred prior to the date of registration in Turks & Caicos.
National:
An opposition must be filed within one month of the date of publication.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Turks and Caicos are a British Overseas Territory with its own trademark law. CTMs and IR designating the UK cannot be re-registered in TC.
Marks registered prior to October 8th, 2007 were for a period of 14 years and that remains unchanged. Marks registered within the local system on or after October 8th, 2007 are for a period of 10 years.
On the other hand, any marks which are registered on or after October 8th, 2007 based upon a UK registration have terms which are identical to that of the corresponding UK registration.
Previously, all marks which were registered based upon a UK registration had a term of 14 years irrespective of the period remaining on the underlying UK registration.
All renewals effectuated on or after October 8th, 2007 are for a period of 10 years.
The payment of an annual maintenance fee of USD 100.00 is required for each trademark registration in Turks & Caicos Islands, beginning January 1, 2012. If a particular mark is registered in more than one class, the official fee of USD 100.00 covers all classes.
A one month grace period until Feburary 1st is allowed each year for late payment, failing which the trademark rights are deemed to be in abeyance and will remain in suspense unless and untill all past due fees have been paid, at which time the rights are then deemed to be fully restored.
The grace period for renewals is 6 months from the expiration date of the trademark.
No local use or intent to use is necessary prior to application but failure to use the trademark within a period of five years following registration may subject the trademark to an action by an interested party for cancellation by the Court.
The official fee for a registration is USD 200.00 (approx. EUR 157.00) for each class, except for UK-based applications for which the official fee is USD 275 for the first class and USD 100.00 (approx. EUR 78.00) for each additional class.
The Registrar also imposes a fee of USD 175.00 for publication of an application in the Gazette, regardless of the number ofclasses covered by the application. A similar fee is charged for the publication of renewals and proprietorship changes, such as ssignments and mergers, and changes of name or address.
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