TRADEMARKS FILING AND PROSECUTION IN TRINIDAD AND TOBAGO
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Trinidad &Tobago may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. The unregistered trademarks in Trinidad & Tobago are protected under the common law of passing off.
|Intellectual Property Office
Office of the Attorney General and Ministry of Legal Affairs
|Multi class system
|Documents required for filing a trade mark application
|Simply signed Power of Attorney
|Filing publication of the mark in the trade mark journal opposition(within 3 months from the publication date) registration renewal
|10 years from the date of application
Trademarks searches in Trinidad & Tobago
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Trinidad & Tobago can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of Intellectual Property Office. An option for search for a trade mark is available on the official website of the registry in all fields and in marks name. The users can refine their search with the following option like Name only, both name and logo and logo only. There is no cost for conducting general search of the trade mark, if details are required for the specific trade mark; the cost is $50.00 per trade mark.
Trademark word search edition of Trinidad & Tobago follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Trinidad & Tobago to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Trinidad & Tobago. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Trinidad & Tobago can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in Trinidad & Tobago
A person can file multi class or single class application trademark application in Trinidad & Tobago.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Trinidad & Tobago:
Ordinary trademark applications filed in Trinidad & Tobago are applications without claiming any priority. Applicants/agents must obtain a copy of Trade Mark Application Form (TM No.2) and Authorization of Agent Form (TM No.1) available on the official intellectual property office website of trade mark forms section. The applicants can file ordinary applications online using online filing service namely, WIPO file. To use the online filing system of the registry, user’s need a WIPO file account is required which can be requested by sending an email to email@example.com. Tutorial video is also available on the official website for the online filing. Multi class trademark applications can be filed in Trinidad & Tobago. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Trinidad & Tobago/Convention trademark application in Trinidad & Tobago:
A priority trademark application may be filed in Trinidad & Tobago. A priority trademark application should be filed in Trinidad & Tobago within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Trinidad & Tobago within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Trinidad & Tobago follows the nice classification of classes. Intellectual property office uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
How to determine the right “nice” class(es) for your trade mark applications, video is available for tutorial On how to use the Madrid goods and services manager as a tool for easy classification of your goods and services for your trade mark applications.
Trademark examination in Trinidad & Tobago
Once the application for the registration is submitted, the controller will examine the application whether it complies with all the legal requirements. The controller examines the application on the absolute and relative grounds.
If controller feels that the application does meet the necessary requirements or additional requirement or evidence is required to meet those requirements, the controller in this case will inform the applicant and will give prescribed time to amend the application or provide the sufficient information or evidence.
If the applicant responds within the prescribed time period and in case the controller is not satisfied with the information or evidence, the controller may refuse the application for the registration.
If the applicant fails to respond within the prescribed time period in this case the application shall be treated as withdrawn.
When the controller is satisfied that all the requirements of registration are met, the application for the registration is accepted.
Trademark opposition in Trinidad & Tobago
When the application for registration meets all the requirements of registration it is accepted and published in the official gazette for the third party observation. Any interested party may file notice of opposition along with the grounds of opposition within 3 months from the date of publication.
The controller will inform regarding such observations to the applicant. A person making observation does not become party to any proceedings in relation to the application.
Trademark registration in Trinidad & Tobago
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of application and the registration certificate is issued.