Jan 12, 2023 (Newsletter Issue 1/23)Madrid E-Filing AvailableTrinidad and Tobago has signed up for the Madrid e-Filing service. As of 10 January 2023, trademark holders from Trinidad and Tobago will be able to file their applications for international trademark registrations online, directly via the website of the Trinidad and Tobago Intellectual Property Office (TTIPO) hereSource: www.wipo.int Nov 19, 2020 (Newsletter Issue 19/20)Declarations on Accession to Madrid ProtocolOn October 12, 2020, the Government of Trinidad and Tobago deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Trinidad and Tobago wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Trinidad and Tobago requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Trinidad and Tobago will not present to WIPO requests for the merger of international registrations resulting from division because the law of Trinidad and Tobago does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).
The Madrid Protocol will enter into force, with respect to Trinidad and Tobago, on January 12, 2021.
For further information, please refer to Information Notice No. 63/2020 hereSource: www.wipo.int Oct 22, 2020 (Newsletter Issue 17/20)
Accession to Madrid Protocol
On October 12, 2020, the Government of Trinidad and Tobago deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General.
The Protocol will enter into force for Trinidad and Tobago on January 12, 2021.
After this date, local brand owners in Trinidad and Tobago can begin using the Madrid System to protect their trademarks in the 122 territories of the System’s other 106 members by filing a single international application and paying a single set of fees.
Source: www.wipo.int
Jul 09, 2020 (Newsletter Issue 11/20)New Trademarks Law Implemented On June 25, 2020, the Trade Marks Act No. 8 of 2015 came into effect in Trinidad and Tobago repealing the Trade Marks Act, Chap. 82:81. The new Act was originally passed in June 2015, but its implementation was delayed pending the finalisation of the Trade Marks Regulations 2020.
Some of the important changes include:
- Online filing of trademark applications
- Use of latest Nice Classification (11th edition)
- Unified Register, instead of Part A and Part B Register
- Broader definition of marks for registering non-conventional marks
- Enhance protection for “well-known” marks
- Introduction of protection for collective marks
- Revised rules on ground of revocation on grounds of non-use
For further information, please see the article of our Country Index Partner HSM IP Ltd. here
Source: HSM IP Ltd., Cayman Islands Nov 19, 2019 (Newsletter Issue 16/19)
Accession to Singapore Treaty
WIPO notifies the accession of Trinidad and Tobago to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Trinidad and Tobago, on January 4, 2020.
Source: www.wipo.int
Jul 28, 2015 (Newsletter Issue 12/15)New Laws SoonAfter considering the Trade Marks Bill, 2014 in April of this year, the Senate of Trinidad & Tobago assented to the Trade Marks Act, 2015 on June 12, 2015. The remaining step to bring the new Act into effect is a proclamation, which will likely happen after completion of companion regulations. This new act will replace the existing Trade Marks Act, Chap. 82:81
Perhaps most notably, the act allows the Minister in charge of intellectual property to make regulations giving effect to the provisions of the Madrid Protocol. This positions Trinidad to become one of the few Commonwealth Caribbean countries to implement Madrid – the only other country having done so thus far being Antigua & Barbuda. Implementation of Madrid may be an exciting prospect to many trademark applicants, as it allows for simplified filing across multiple jurisdictions simultaneously. However, some countries have taken to issuing regular provisional refusals, and it is possible that the Intellectual Property Office in Trinidad will follow suit. The Registry in Antigua & Barbuda regularly issues provisional refusals to international applications which must be dealt with individually and on a local basis.
Another important change for mark owners is that the new act will implement the most recent version of the Nice Classification system. At present, Trinidad still follows the Seventh Edition of the Nice Classification, which only protects goods and services up to Class 42. Bringing the most current version of Nice into effect will be an exciting change for trademark owners, as they will be able to better protect their goods and services of interest.
Source: Caribbean IP, USA Jun 30, 2015 (Newsletter Issue 10/15)Draft Trade Marks Bill 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.
Source: INTA Bulletin Vol. 70 No. 11 of June 15, 2015
Contributor: Caribbean IP, USA and verifier: J.D. Sellier + Co., Trinidad and Tobago
Legal basis is the Trademarks Act, 2015 (referred to as the Act).
Trinidad & Tobago joined the Madrid Protocol which will be effective as of January 12, 2021. The Trademark Act provides that the Minister may make regulations to give effect to the provisions of the Madrid Protocol or of any treaty, convention, arrangement or engagement relating to trademarks to which Trinidad and Tobago is a party.
Trademark protection is obtained by registration.
Unregistered trademarks may also be protected under the common law of passing off.
Nice classification, 11th edition
According to the Act, a “trademark”, except in relation to a certification trademark, is any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person, from goods or services so dealt with or provided by any other person. This includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof, as well as any scent, sound, taste, or three-dimensional marks, to the extent that they are capable of graphical representation and distinguishing.
The following trademark types are registrable: trademarks, service marks, collective marks and certification marks.
The application is filed at the Intellectual Property Office.
Multiple-class applications are possible.
An application can include goods in any number of classes, but with additional charges for each additional class.
Foreign applicants need a local agent.
A power of attorney authenticated by any Consulate is not necessary.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Trademark applications accepted by the Registrar are published once in an Electronic Trademarks Journal. The publication is weekly every Wednesday
The approximate time frame for completing the registration process of a trademark in Trinidad & Tobago is from 8 months to 2 years.
National:The opposition period is 3 months from publication date of the application.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Protection begins with the date of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years. However, if priority it claimed, the trademark registration will be valid for 10 years from the priority date and not the date of filing in Trinidad and Tobago.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official application fee is TTD 1,400 for one class and TTD 150 for each additional class. Registration certificates are issued electronically, although hard copies can be requested on payment of an additional fee of TTD 350.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Mar 08, 2023
HSM IP Ltd., Grand Cayman, Cayman Islands
Aug 15, 2022
Ogier, Camana Bay, Cayman Islands