Challenges in trademark registration in Caribbean countries

16 May 2024

Many Caribbean countries are working in modernizing their trademark registration systems, but still face problems that hinder the process.

16 May 2024

Trademark registration in the Caribbean countries can vary significantly from one country to another, as each has its own IP registration system and specific laws related to trademarks. In general, the process of registering trademarks in the region can pose various challenges, the following, among others:

Slow and bureaucratic process

Some Caribbean countries may have complex and bureaucratic procedures for trademark registration, which can slow down the process and make it difficult to protect intellectual property rights.

Lack of resources

Some Caribbean countries may lack the resources and capacity to efficiently administer the registration of trademarks. This can lead to delays in processing applications and a lack of effective protection for trademark owners.

Limited protection

In some cases, the protection offered to trademarks may be limited compared to other countries with more developed systems. This may include shorter periods of protection, lack of protection against infringement or less rigorous enforcement of intellectual property laws.

Lack of harmonization

The lack of harmonization between the trademark registration systems of different Caribbean countries can make it difficult for trademark owners to protect their rights across the entire region.

High costs

The costs associated with trademark registration can be prohibitive for some businesses, especially those that are small or medium-sized.

Communication and tracking problems

Due to the manual nature of some trademark registration systems in the region, there may be communication and tracking problems, which may result in a lack of updates on the status of registration applications.

Because of this, it is crucial to carefully plan ahead and be patient during the registration process.

Time frames for obtaining protection

In Guyana, the entire trade mark registration system is manual. There is no electronic filing and the registration process, from the filing date to the issuance of the certificate, can take about four years.

In the Bahamas, no proof of filing is issued. Instead, a fee receipt is issued within six to eight months of filing the application. Registration can take about 4-5 years until the certificate of registration is issued.

In Barbados, the proof of filing of a trademark is issued within 12-15 months. As for the grant, it can take 7-8 years for the Office to process the trademark registration.

In Haiti, the processing time from first filing to registration is 2-4 years, provided no oppositions are filed. The political situation and the state of emergency in Haiti can significantly complicate the trade mark registration process causing further delays and additional difficulties.

In Suriname, the processing time from first filing to registration is approximately 3 years.

In Bermuda, Cuba, Dominica, Jamaica, Honduras, Puerto Rico, St. Vincent and the Grenadines and Trinidad & Tobago, the processing time from first filing to registration is approximately 1.5-2.5 years. Meanwhile, in Nicaragua, Panama, Dominican Republic, St. Lucia, St. Vincent and St. Kitts the registration process is relatively faster, approximately 6-9 months.

Nice Classification and Caribbean TMclass

In recent decades there has been significant movement in many jurisdictions, including the Caribbean, towards harmonization of intellectual property laws with international standards and global treaties. The adoption of the Nice Classification System in almost the entire Caribbean region is an example of this harmonization process. The recent participation of Antigua and Barbuda, Belize, Haiti, Saint Lucia, Trinidad and Tobago, and Saint Vincent and the Grenadines in the Caribbean TMclass initiative is undoubtedly a significant demonstration of the Caribbean’s commitment to enhancing its intellectual property regulations. By joining TMclass, these countries demonstrate their willingness to adopt international standards and modern tools to improve the efficiency and effectiveness of their intellectual property systems.

Caribbean TMclass is a regional interface of TMclass, a tool developed by the European Union Intellectual Property Office (EUIPO), which provides a database of gods and services classification for trademark registration. The regional interface tailored to the specific needs of CARIFORUM member states – currently, Antigua and Barbuda, Belize, Cuba, Dominican Republic, Haiti, Saint Kitts and Nevis, Saint Lucia, Trinidad and Tobago, Saint Vincent and the Grenadines – enables the Intellectual Property Offices of these countries to access and utilize the classification of goods and services more efficiently and effectively. This standardizes and simplifies the process of classifying goods and services in trademark registration applications, facilitating the harmonization of trademark registration procedures in the region. This, in turn, promotes a more favorable environment for innovation and economic development in the Caribbean by facilitating the registration and protection of trademarks in CARIFORUM member states.

However, some jurisdictions still have their own specific rules:

Bahamas: has its own national product classification. Currently, services are not recognized, and it is not possible to obtain protection for them.

Belize: Multi-class applications are allowed, however, up to a maximum of five classes per application. From the sixth class and onwards, a new application is required.

Guyana: It is possible to file multi-class trademark applications if the application is based on a previous UK registration. However, for applications under the local system, a separate application must be filed for each class. In addition, it is not possible to register service marks within the legal framework of the local system.

Applications based on UK trademarks can cover goods and services from classes 1 to 45, although the number of classes will reflect the underlying UK registration. In the case of local applications, international classes from 1 to 34 apply and can only be used to register products.

Haiti: Multi-class applications can be filed, but they will be treated as separate trademarks and a separate certificate would be issued for each class. Although Haiti is not a member of the Nice Agreement, it currently uses the Nice classification. In addition, registration is compulsory for pharmaceutical products (class 5). They cannot be sold if the trademark is not registered.

Suriname: 9th edition of Nice classification applies but only for classes 1 to 34. It is not possible to register trademark for services in Suriname.

Use, maintenance fees, refurbishment fees, declaration of use

The use of the trademark in the Caribbean, as in any other region, is essential to maintain ownership rights over that trademark. Some countries have additional requirements, such as:

Declaration of use

Haiti: Proof of use or an affidavit of non-use must be submitted during the first three months of the sixth year of registration or renewal. If a Declaration of Use or a legitimate excuse of non-use has not been submitted within the above-mentioned period, the registration loses its validity. However, once the registration has lapsed, the holder of the lapsed registration has a priority period of three months to re-file the same mark.

Puerto Rico: All applications based on use of the mark in commerce must indicate the month/date/year of the date of first use and provide a specimen of use. These applications require the submission of two declarations of use:

  • Declaration of continued use – between the 5th and 6th year from the date of submission.
  • Declaration of continued use – to be submitted with the renewal.

If not currently in use, applications shall be submitted with intent to use. Such applications require the submission of three declarations of use:

  • Declaration of first use: before the third year from the date of submission.
  • Declaration of continued use: between the 5th and 6th year from the date of submission.
  • Declaration of continued use: to be submitted together with the renewal.

Maintenance fees

Honduras

This annual fee is mandatory for all trademarks. The purpose of this fee is to keep the trademark alive. It is basically a requirement for renewal as the renewal application cannot be filed until all outstanding annual fees have been paid.

The maintenance fee can be paid annually or wait until renewal, in which case the renewal fee must be paid together with the cumulative annual fee. There is no difference nor additional consequences if the maintenance fee is paid yearly, or the cumulative annual fee is paid together with the renewal fee.

Cayman Islands

The registration is protected for ten years as of the date of filing the application with CIIPO if the annual fees are paid. Once a trademark is registered in the Cayman Islands, an annual fee must be paid to the Cayman Islands Government on 1 January of each year. The Cayman Islands are unique in that the Government requires payment of an annual fee to maintain each trademark registration. The annual maintenance fee must be paid by 1 January each year, otherwise the Cayman Islands registration will be considered invalid. In addition, there is a penalty for late payment of the annual fee, but there is also a grace period allowing payment without penalty, until 31 March of each year.

Rehabilitation rate

The rehabilitation fee is applicable only in Honduras and is not compulsory. It is a fee that the Intellectual Property Law of this country establishes to avoid Cancellation Actions due to non-use.

This fee must be paid starting from the third year after the registration date if the trademark is not being used in Honduras. The Honduran IP law grants this 3-year period to develop the trademark. Therefore, it is advisable to pay this fee as of the third year of the registration date if the trademark is not being used.

Duration of protection

Most Caribbean countries protect the trademark for a period of 10 years. Some exceptions are the Bahamas, where a trademark registration is valid for 14 years from the date of application, Bermuda and Guyana, for 7 years.

It is important for trademark owners seeking protection in Caribbean countries to research and understand the specific requirements and challenges associated with trademark registration in each country individually. In addition, they can seek specialized legal advice to help them navigate the registration process and effectively protect their intellectual property rights in the region.

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Irena Kurteva

Lawyer

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