Trade Marks Prosecution Factsheet: English speaking Caribbean

• 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

• 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

• 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

• Due every 10 years with a 6-month grace period
• Restoration is possible at the discretion of the Registrar

• 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

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

• 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

• 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

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

• Due every 10 years with a 6-month grace period
• Restoration is not available

• 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

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

• Due every 10 years with a 6-month grace period
• Restoration is by "re-registration" only – see below

• 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

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

• 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

• 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

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.

• 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

• 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

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. 

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

• 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

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.

• 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

• 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

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

• Due every 10 years with a 6-month grace period
• Restoration is not available

• 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

• 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

• 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

• 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

• 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

• 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

• 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

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. 

• 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

• 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

• 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

• 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

• 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

• Due every 10 years with a 6-month grace period
• Restoration is not available

• 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

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.

• Due every 10 years with a 12-month grace period
• Restoration is not available

• 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

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.

• Due every 10 years with a 12-month grace period
• Restoration is not available

• 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

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.

• 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

• 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

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.

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.

• 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

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.

• 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