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Factsheet Trade Marks English Speaking Caribbean

Trade Marks Prosecution Factsheet: English speaking Caribbean

Guide

02 January 2024

Cayman Islands, British Virgin Islands

Download guide

Trade marks legislation in the English speaking Caribbean has its roots in various iterations of the UK's trade mark legislation.

This is with the exception of the US Virgin Islands, which allows for the lodging of US federal registrations as a means to stronger local protection. Historically, the root to trade marks protection for the vast majority of the region was achieved through the re-registration of UK trade marks, but this has since fallen away for the most part, and today, standalone national filings are acceptable. Within the English speaking Caribbean you will also find some attractive stealth / submarine filing jurisdictions. Learn more in our guide.

Anguilla

Type of filing Both national applications and applications for the re-registration of UK trade mark registrations are accepted 
Priority Paris Convention Priority can be claimed, but Anguilla is not a party to the Paris Convention
Single or multi-class Both goods and services may be protected
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Term of initial registration
  • 10 years from the filing date for national registrations
  • UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods
Renewals
  • Due every 10 years with a 6-month grace period for national registrations
  • Due on the expiry of the underlying UK registration if UK-based and may be removed from the Register if not renewed within 12 months of expiry
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Original Power of Attorney
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits certifying changes of name / address / mergers
  • UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO in addition to the above documents
  • Priority-based applications (new filings only): a certified hard copy priority document issued by the relevant IPO in English along with an original notarised priority declaration
Observations Anguilla’s trade mark filing and registration process is one of the smoothest in the Caribbean. The period from filing to registration can take as little as 4 months in straightforward cases. Office actions are seldom issued.

 

Antigua and Barbuda

Type of filings Both National and Madrid based applications are accepted
Priority Paris Convention Priority can be claimed. Antigua and Barbuda is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Term of initial registration 10 years from the filing date
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is possible at the discretion of the Registrar
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Use: Declaration attesting to any use of the mark to date or an intention to use the mark in Antigua and Barbuda (new filings only)
    • Assignment or licence agreements
    • Official Antigua and Barbuda Intellectual Property and Commerce Office (ABIPCO) forms to be signed by the applicant/relevant parties to an assignment or merger
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits or declarations certifying changes of name / address / mergers
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO along with an original notarised priority declaration
  • Copy of the original registration certificate (renewals only): this is necessary to verify the original application and registration dates which must be stated on renewal application form and to establish whether reclassification is required on renewal
Note: All documents to be signed on behalf of the proprietor must be signed by a director or officer with corporate seal, if available, and the capacity of the person signing on behalf of the proprietor must be stated on the Authorisation of Agent. If this is not possible and, instead, an authorised signatory or attorney signs, then a notarised true copy of the original Authorisation or Power granted from the proprietor to the authorised signatory or attorney must also be provided.
Observations

ABIPCO is meticulous in its attention to detail when it comes to the spelling, format and punctuation of a proprietor name and address and the observation of proper formality requirements generally. It is therefore extremely important to present names and addresses exactly as they appear on the Register and ensure all formality requirements are met before filing documents at ABIPCO to ensure a smooth process.

Office actions are frequently issued in respect of new filings and typically concern:

  • requests for a description of the mark (usually if a logo/device mark) and any colour claim (if a mark is filed in colour, but without a colour claim, this should be stated on the application form)
  • specification queries (ABICO accepts goods and services in the ABICO list of the EUIPO’s TMClass Database. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu))
  • requests for the translation or transliteration of any non-English words or non-Roman characters in the mark or proprietor details (to be certified at the Registrar’s discretion)
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
  • other formality queries
Unresolved office actions issued in respect of renewal and recordal documents filed at ABIPCO are common. Therefore, a full search of the Register is always strongly recommended prior to filing further renewal and/or recordal applications, which will not be processed until all historical issues are addressed. It is often necessary to withdraw and re-file old applications to seek to bring the Register up to date. However, it can be difficult to rectify chain of title recordal issues retrospectively, especially in respect of companies which have since dissolved or where signatories are unavailable, so it is prudent to always keep all chain of title and name/address changes up to date on the Register.

 

The Bahamas

Type of filings National
Priority Paris Convention Priority can be claimed. The Bahamas is a party to the Paris Convention.
Single or multi-class Single class only (note that historically multi-class applications were accepted)
Classification Pre-1938 UK Classification (this is set out in Schedule 2 of the UK’s The Trade Marks Rules 2000).  This is an archaic system and does not extend to services.
Protection of goods and services Only goods may be protected
Terms of initial registration 14 years from the filing date, which is also deemed to be the effective date of registration.
Renewals
  • Due every 14 years
  • There is no official grace period; however, on or after the expiration date, the Registrar may advertise the fact of non-renewal in the Gazette and, if within one month the renewal (with late fees) has still not been filed, the Registrar may remove the registration from the Register
  • Where a registration is removed from the Register, restoration is still possible so long as the Registrar is satisfied that it is just to renew upon such conditions as they think fit to impose
Typical documentary requirements and formalities for key filings
  • Simply signed original Authorisation of Agent (one per class per application)
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Official Bahamas Registry forms signed by the applicant or relevant parties to an assignment or licence
    • Companies Registry certificates certifying changes of name / mergers
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

The Intellectual Property Section of the Registrar General’s Department can take weeks or even months to issue application numbers. The period to examination and publication may take more than a year. The time to registration can take even longer. Applications are not always processed in chronological order.

The law provides for the association of trade marks closely resembling a trade mark of the proprietor which are already on the register for the same goods as to be calculated to deceive or cause confusion if used by a person other than the applicant. However, in practice, associations do not appear to be recorded and, therefore, registrations which would otherwise only have been assignable as a whole by virtue of their association are assignable independently.

Office actions are often issued in respect of new filings and typically concern:

  • requests for a description of the mark and any colour claim if applicable and not stated on the application form (a trade mark may be limited in whole or in part to one or more specified colours - if a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours)
  • requests for the translation or transliteration of any non-English words or non-Roman characters in the mark or proprietor details (to be certified at the Registrar’s discretion)
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
  • other formality queries
It is important to pay close attention to the local classification number when completing documents, as if the corresponding Nice classification number is used in error, this will cause delays and documents may need to be re-executed and re-filed. 

Barbados

Type of filings National
Priority Paris Convention Priority can be claimed. Barbados is a party to the Paris Convention.
Single or multi-class Single class only
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the registration date
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Simply signed original Authorisation of Agent
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying mergers or changes of name
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

The Corporate Affairs and Intellectual Property Office (CAIPO) can take weeks or even months to issue application numbers. The period to examination and publication may take more than one year. The time to registration can take even longer. Applications are not always processed in chronological order.

Office actions are frequently issued in respect of new filings and typically concern:

  • requests for the translation or transliteration of any non-English words or non-Roman characters in the mark or proprietor details (to be certified at the Registrar’s discretion)
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
  • specification queries (terms which appear in The Alphabetical List of Goods and Services of the Nice Agreement without asterisk may be accepted and CAIPO also refers to the USPTO’s Trademark ID Manual for guidance)
  • other formality queries

 

Belize

Type of filings National
Priority Paris Convention Priority can be claimed. Belize is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted; however, a maximum of five classes is allowed when filing a multi-class application
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is by "re-registration" only – see below
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / mergers
    • Statutory Declarations certifying changes of name / address / mergers
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
  • Use: It is necessary to state on filing whether new applications are based on an intent to use the mark in Belize or actual use.  No evidence is required on filing
Observations

Office actions are almost always issued in respect of new filings and typically concern:

  • specification queries (as of 27 September 2021, BELIPO accepts goods and services in the BELIPO database and the Harmonised database of the EUIPO’s TMClass. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu))
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
After the expiry of the 6-month grace period for renewal, “restoration” is available within 1 year from expiry. However, this form of restoration is different to that applied in the UK and other Islands which allow for restoration. Rather, restoration in Belize is by "re-registration" only. A new application must be filed to restore the registration to the Register once it has been removed. Strangely, the original filing date is not retained, but the original trade mark number is.

 

Bermuda

Type of filings National
Priority Paris Convention Priority cannot be claimed. Bermuda is not a party to the Paris Convention.
Single or multi-class Single class only 
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 7 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • The first renewal is due 7 years from the filing date and subsequent renewals are due every 14 years thereafter
  • A 6-month restoration period is available and has effect from the date of expiry. The Registrar must be satisfied that restoration is just in the circumstances and may apply conditions to the renewal
Typical documentary requirements and formalities for key filings
  • Simply signed scanned Authorisation of Agent
  • Simply signed scanned accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / mergers
  • Where Statutory Declarations are required (e.g. licence recordals), original signature and notarisation is required
  • Use: It is necessary to state on filing whether new applications are based on an intent to use the mark in Bermuda or actual use. No evidence is required on filing
Observations

In accordance with Practice Note No. 7, the wording "; all included in Class X" must be added to the end of each specification for clarity and precision.

The Register is split into two parts: Part A (for distinctive trade marks, whether inherently distinctive or distinctive through use) and Part B (for “less distinctive” trade marks, which are nonetheless capable of distinguishing goods/services connected to the proprietor under the trade mark from goods/services in the case of which no such connection subsists).

Office actions are almost always issued in respect of new filings and typically concern:

  • specification queries
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
  • requests for clarity concerning any colour claims (a trade mark may be limited in whole or in part to one or more specified colours - if a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours)
  • requests for the association of trade marks
  • a likelihood of confusion with earlier applications/registrations

Section 18(4) of The Trade Marks Act 1974, as amended, can be used to overcome specification objections, requests for associations and/or disclaimers in cases where the mark, owner and specification of the Bermuda application are identical to an existing UK trade mark registration and the same conditions or limitations will apply as those imposed by the UK IPO.

It is necessary to reclassify trade marks registered under an older classification regime on renewal and the reclassification publication process can be costly due to the requirement to advertise the mark with full specification in The Royal Gazette.

 

The British Virgin Islands

Type of filings National
Priority Paris Convention Priority can be claimed, but the BVI is not a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years
  • A 6-month restoration period is available from the date of removal from the Register 
  • Prior to 1 September 2015, the registration/renewal term was 14 years for national registrations
Typical documentary requirements and formalities for key filings
  • No Power of Attorney is required for most filings
  • Original notarised accompanying documents are required where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / mergers
    • Certificates certifying the translation / transliteration of any non-English words, numerals or non-Roman characters in a trade mark into English with an indication of the original language (new-filings)
  • Use: It is necessary to state on filing whether new applications are based on an intent to use the mark in the BVI or actual use. No evidence is required on filing
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

The BVI’s trade mark filing and registration process is one of the smoothest in the Caribbean. The period from filing to registration can take as little as 6 months in straightforward cases. Office actions are seldom issued.

However, if claiming priority, a scanned copy of the certified priority document must be provided with the application form within the 6-month priority period. Furthermore, the original certified hard copy priority document must be filed within 60 days of the application date. Failing this, the priority claim will be denied, and it will be necessary to withdraw the priority claim. The date of the withdrawal of the priority claim will then become the trade mark application date for the BVI filing. 

We recommend that the schedules to any assignment or licence agreements should simply include the trade mark registration numbers and name of mark / logo (if a logo, the logo itself should be included rather than a description) for recordal purposes. Office actions will issue if incorrect/old classes and/or names / descriptions of logos are included. 

 

The Cayman Islands

Type of filings National
Priority Paris Convention Priority cannot be claimed. The Cayman Islands is not a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals

Renewals: Due every 10 years with a 6-month grace period. Restoration is also possible after the expiry of the grace period.

Annual Fees: Separate and apart from renewals, annual fees are due every 1 January following the filing date once the application registers. The official fee is US$243.90 per mark in the first class per year plus US$121.95 per mark for each additional class per year. Where annuities are not paid prior to 31 March of each year (which marks the end of the annuity grace period) an additional official penalty fee of US$121.95 will apply per mark. Penalty fees were introduced in 2010. Registered rights are held in abeyance and are not in good standing or enforceable against third parties until annual fees are paid up to date.
Typical documentary requirements and formalities for key filings
  • No Power of Attorney is required
  • Simply signed scanned accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying mergers
Observations

Office actions are reasonably common in respect of specification queries and/or requests for disclaimers of non-distinctive/descriptive terms.

Except for certain class headings in classes 7, 37, 30 and 45, class headings and terms within the WIPO Nice Classification Database and EUIPO TMClass Database as accepted by the Harmonised offices are also accepted by the Cayman Islands Intellectual Property Office (CIIPO).

However, if claiming all goods/services in a class, or a large variety of goods/services, the Registrar may refuse to accept the application unless satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.

Series trade marks registrable under the repealed law, which allowed for the re-registration of UK trade mark registrations, must be divided before they can be renewed. The proprietor can choose whether to renew multiple marks in the series or only one following the division. However, if renewing multiple marks in the series, it is also important to ensure that all outstanding annuities and any penalties are paid up to date prior to division and renewal as, if this is not done, the outstanding annual fees will be payable in respect of each registration divided and renewed.

Unlike the position under the repealed law, it is no longer necessary to pay annual fees up to date for a renewal application to be processed, but registered rights are held in abeyance and are not in good standing or enforceable against third parties until annual fees are paid up to date.

As of 1 August 2016, annual fees cannot be paid up to the next renewal/expiry date in advance (Practice Note No. 01/2016); rather they must be paid annually.

 

Dominica

Type of filings National
Priority Paris Convention Priority can be claimed. Dominica is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date
Renewals
  • Due every 10 years with a 6-month grace period
  • Once a registration has been removed from the Register (usually within 1 month after expiry of the grace period) it is possible to restore it within 1 year from the date of removal if the Registrar is satisfied that it is just to do so
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent per application/registration accompanied by a notarial certificate or affidavit of due execution signed in front of a witness and notarised (the Notary cannot also be the witness)
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits or declarations certifying changes of name / address
  • Use: It is necessary to state on filing whether new applications are based on an intent to use the mark in Dominica or actual use.  No evidence is required on filing
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

Regarding new applications:

  • If the mark is filed with a logo, a description of the logo must be provided
  • General Authorisations of Agent covering more than one application/registration are not generally accepted

Office actions are sometimes issued in respect of new filings and typically concern:

  • specification queries (the 10th Edition of the Nice Classification applies and class headings are not typically accepted other than to the extent that a particular term also falls within The Alphabetical List of Goods and Services of the Nice Agreement without asterisk, in which case they may be accepted at the discretion of the Registrar)
  • requests for disclaimers in respect of any descriptive words / words lacking distinctiveness and/or requests to demonstrate acquired distinctiveness
  • a likelihood of confusion with earlier applications/registrations

 

Grenada

Type of filings National
Priority Paris Convention Priority can be claimed.  Grenada is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Original signed Authorisation of Agent bearing the company seal or notarised (if no company seal)
  • Original notarised accompanying documents where relevant to the particular type of filing to be made e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits or declarations certifying changes of name / address
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations Grenada’s trade mark filing and registration process is one of the smoothest in the Caribbean. The period from filing to registration can take as little as 6 months in straightforward cases. Office actions are seldom issued. Proprietor searches are not available and it is also possible to stall publication if desired by delaying the payment of publishing fees, making Grenada a good jurisdiction for stealth filings from which to claim Paris Convention priority. 

 

Guyana

Type of filings Both national applications and applications for the re-registration of UK trade mark registrations are accepted 
Priority Paris Convention Priority cannot be claimed. Guyana is a party to the Paris Convention, but there are no local implementing regulations.
Single or multi-class
  • Single class applications only for national applications
  • Single and/or multi-class applications in respect of UK re-registrations as dictated by the underlying UK registration
Classification
  • Nice (current Edition) for UK re-registrations
  • For national applications, the Fourth Schedule of the Trade Marks Rules applies to goods in classes 1 – 34
Protection of goods and services
  • National registrations protect goods only
  • Services can be protected when re-registering a UK registration in Guyana if the UK registration covers the relevant services
Terms of initial registration
  • 7 years from the filing date for national registrations, which is also deemed to be the effective date of registration
  • UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods
Renewals
  • After the initial 7-year term, renewals are due every 14 years with a 1-month grace period for national registrations
  • Renewals are due on the expiry of the underlying UK registration if UK-based and may be removed from the Register if not renewed within the expiry/renewal deadline
  • Restoration is also possible after the expiry of the grace period in respect of national registrations
Typical documentary requirements and formalities for key filings
  • Original signed Authorisation of Agent (one per application/registration and per type of work to be completed (e.g. new application, assignment recordal, renewal…)
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / merger
    • Affidavits certifying changes of name / address / mergers
  • UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO is also required in addition to the above
Observations

The Registrar automatically associates identical/similar marks owned by the same proprietor on examination – no office action is issued prior. Associated trade marks must be assigned together as a matter of law. However, as a matter of practice, the Registrar tends to take a lenient approach. 

Office actions are frequently issued in respect of a likelihood of confusion with earlier applications/registrations and requests for disclaimers in respect of any descriptive words and/or words lacking distinctiveness. 

Requests for clarity concerning any colour claims and codes are also common (a trade mark may be limited in whole or in part to one or more specified colours - if a trade mark is registered without limitation of colour, it is deemed to be registered for all colours).

 

Jamaica

Type of filings Both National and Madrid based applications are accepted
Priority Paris Convention Priority can be claimed. Jamaica is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is also possible if filed within 6 months of the expiry of the grace period/removal from the Register if, having regard to the circumstances of the failure to renew, it is just to renew
Typical documentary requirements and formalities for key filings
  • Simply signed scanned Authorisation of Agent is required for most filings
  • Original notarised accompanying documents are required where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying mergers
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations Jamaica’s national trade mark filing and registration process is one of the smoothest in the Caribbean, despite the odd office action in respect of a specification query or disclaimer request. One of the key attractions is Jamaica’s capability as a stealth filing jurisdiction. It normally takes over 6 months for new applications to publish, certified copies of Jamaican applications are quick and easy to obtain, and proprietor searches will not reveal any pending unpublished applications to third parties.

 

Montserrat

Type of filings Both national applications and applications for the re-registration of UK trade mark registrations are accepted 
Priority Paris Convention Priority cannot be claimed. Montserrat is not a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration
  • 10 years from the filing date for national registrations, which is also deemed to be the effective date of registration
  • UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods
Renewals
  • Due every 10 years with a 6-month grace period for national registrations
  • UK-based registrations may be cancelled by the Registrar if not renewed within 3 months of the UK expiry/renewal deadline
  • Restoration is also possible in respect of national registrations if filed within 6 months of the expiry of the grace period/removal from the Register if, having regard to the circumstances of the failure to renew, it is just to renew
  • The Registrar also tends to allow an additional discretionary 6-month restoration period in respect of UK re-registrations as a matter of practice, although this is not provided for by law
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent per application/registration with details of mark / logo specified
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Official Registry forms to be signed by the applicant or relevant parties to the assignment / merger
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits or declarations certifying changes of name / address / mergers
  • UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO is also required in addition to the above
Note: All documents must be signed by a director/officer/employee or general counsel of the proprietor and their capacity must be clearly stated on the Authorisation of Agent.  If, on the other hand, an authorised signatory or attorney who is not an employee, director or officer of the proprietor signs, then a notarised true copy of the original Authorisation or Power granted from the proprietor to the authorised signatory or attorney must also be provided, as well as a notarised sworn declaration.
Observations Montserrat’s Registry is efficient at processing applications within 6 months or less, but the formality requirements and amount of paperwork can be onerous compared with some of the other Caribbean countries. 

St Kitts and Nevis

Type of filings National
Priority Paris Convention Priority can be claimed. St. Kitts and Nevis is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years with a 6-month grace period
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Original notarised and witnessed Power of Attorney with Notary seal affixed per application/registration specifying the details of the application/registration (mark/logo) and the type of filing to be made
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address
    • Statements (new filings)
    • Statutory Declarations and/or Affidavits (new filings / changes of name / address)
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

Despite having a backlog of pending applications during the period 2015 – 2018, the St. Kitts and Nevis IPO (IPOSKN) has since caught up for the most part and newly filed applications are processed efficiently by freshly trained examiners. The publication of applications is, however, still handled outside of the IPO’s control and can sometimes result in processing delays.

Office actions are mostly issued in respect of specification queries and requests for disclaimers in respect of any descriptive words / words lacking distinctiveness.

IPOSKN accepts goods and services in the IPOSKN list of the EUIPO’s TMClass Database and will also likely accept terms in the EUIPO TMClass Database as accepted by the Harmonised offices. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu).

 

St Lucia

Type of filings National
Priority Paris Convention Priority can be claimed. St. Lucia is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration unless priority is claimed, in which case the priority filing date is the effective date of registration
Renewals
  • Due every 10 years with a 12-month grace period
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent with company seal or, if unavailable, a notarial certificate must accompany the Authorisation of Agent
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / address / mergers
    • Affidavits certifying changes of name / address
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

The St. Lucia Registry of Companies and Intellectual Property (ROCIP) generally processes straightforward applications in around 6 months. Office actions are mostly issued in respect of a likelihood of confusion with earlier applications/registrations, specification queries and requests for disclaimers in respect of any descriptive words / words lacking distinctiveness.

The ROCIP accepts goods and services in the ROCIP list of the EUIPO’s TMClass Database. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu). The ROCIP often requires the words "not included in other classes" to be inserted at the end of specifications which may fall within more than one class, e.g. "clothing".

 

St Vincent and the Grenadines

Type of filings National
Priority Paris Convention Priority can be claimed. St. Vincent is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years with a 12-month grace period
  • Restoration is not available
Typical documentary requirements and formalities for key filings
  • Original notarised Authorisation of Agent with company seal (if available)
  • Original notarised accompanying documents where relevant to the particular type of filing to be made,  e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying changes of name / mergers
  • Priority-based applications (new filings only): a certified hard copy priority document in English issued by the relevant IPO
Observations

The St. Vincent and the Grenadines Commerce and Intellectual Property Office (CIPO-VC) generally processes applications in around 6 months. Office actions are mostly issued in respect of specification queries and requests for disclaimers in respect of any descriptive words / words lacking distinctiveness.

The CIPO-VC accepts goods and services in the CIPO-VC list of the EUIPO’s TMClass Database. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu).

 

Trinidad and Tobago

Type of filings Both National and Madrid based applications are accepted
Priority Paris Convention Priority can be claimed. Trinidad and Tobago is a party to the Paris Convention.
Single or multi-class Both single and multi-class applications are accepted
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration
Renewals
  • Due every 10 years with a 6-month grace period
  • Thereafter, it is possible to restore the registration within 6 months from the removal of the trade mark from the Register following the expiry of the grace period if the Registrar is satisfied that it is just to do so and upon such conditions as they may think fit to impose
Typical documentary requirements and formalities for key filings
  • Simply signed scanned Authorisation of Agent
  • Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g. assignment or licence agreements
  • Scanned copies of certified Companies Registry certificates certifying changes of name / mergers
  • Priority-based applications (new filings only): a scanned copy of the certified copy priority document in English issued by the relevant IPO
Observations

The Trinidad and Tobago Intellectual Property Office (TTIPO) generally processes applications in around 18 months to 2 years. Trinidad and Tobago is often used as a stealth filing jurisdiction given that: it normally takes over 12 months for new applications to be examined and even longer to be published; certified copies of Trinidad and Tobago applications are quick and easy to obtain; and proprietor searches are not possible unless a physical visit to the TTIPO is made by a local agent.

Office actions are mostly issued in respect of specification queries and requests for disclaimers in respect of any descriptive words / words lacking distinctiveness.

The TTIPO accepts goods and services in the TTIPO list of the EUIPO’s TMClass Database. Classification guidance is also available on Caribbean TM Class: Classification Assistance - TMclass (europa.eu).

 

The Turks and Caicos Islands

Type of filings National
Priority Paris Convention Priority can be claimed, but Turks and Caicos is not a party to the Paris Convention
Single or multi-class Single class only
Classification Nice Classification
Protection of goods and services Both goods and services may be protected
Terms of initial registration 10 years from the filing date, which is also deemed to be the effective date of registration unless priority is claimed, in which case the priority filing date is the effective date of registration
Renewals and annual fees

Renewals: Due every 10 years with a 1-month grace period. Thereafter, it is possible to restore the registration within 5 years from the expiry of the grace period if the Registrar is satisfied that it is just to do so.

Annual Fees: Separate and apart from renewals, annual fees are due every 1 January following the filing date once the application registers. The official fee is US$100 per mark in the first class per year plus US$0 per IDENTICAL mark for each additional class per year. Where annuities are not paid prior to 31 January of each year (which marks the end of the annuity grace period) registered rights are held in abeyance and are not in good standing or enforceable against third parties until annual fees are paid up to date. It is necessary to pay annual fees up to date in order to renew a trade mark registration.
Typical documentary requirements and formalities for key filings
  • Simply signed scanned Authorisation of Agent
  • Scanned accompanying documents are required where relevant to the particular type of filing to be made, e.g.
    • Assignment or licence agreements
    • Companies Registry certificates certifying change of name / address / mergers
  • Priority-based applications (new filings only): a scanned copy of the certified copy priority document in English issued by the relevant IPO
Observations

The Turks and Caicos Island’s trade mark filing and registration process is one of the smoothest in the Caribbean. The period from filing to registration can take as little as 6 months in straightforward cases. Office actions are seldom issued.

However, if claiming all goods/services in a class, or a large variety of goods/services, the Registrar may refuse to accept the application unless satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make, if and when it is registered.

If a trade mark consisting of non-English words, numerals or non-Roman characters is to be filed, a translation and/or transliteration is required on filing.

 

United States Virgin Islands

Type of filings Re-registrations of existing US federal trade mark registrations only
Priority Paris Convention Priority cannot be claimed
Single or multi-class Both single and multi-class applications are accepted, as dictated by the underlying US federal trade mark registration
Classification Nice Classification
Protection of goods and services Both goods and services may be protected, as dictated by the underlying US federal trade mark registration
Terms of initial registration To expire on the same date as that of the underlying US registration unless renewed for further 10-year periods
Renewals Due on the same date as that of the underlying US federal registration and renewable for further 10-year periods thereafter
Typical documentary requirements and formalities for key filings
  • A simply signed Authorisation of Agent is required
  • A certified hard copy of the underlying US federal registration is required from the United States Patent and Trademark office, where relevant to the particular type of filing to be made, namely,
    • "Trademark registration with title and status" for new filings and renewals
  • "Trademark abstract of title" for assignments / changes of name / mergers 
Observations The re-registration process is straightforward and efficient, with certificates issued within two or three months of filing. Whilst the US federal trade mark registration does itself extend to the US Virgin Islands, re-registering the federal registration locally may add an additional layer of protection should it become necessary to enforce the trade mark in the USVI.

 

 

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