Tim Lince

The trend of IP legislative reform in the Caribbean is set to continue after a new trademarks law was recently assented by the Trinidad and Tobago’s government. The development follows recent moves to update trademark legislation in the Cayman Islands and the British Virgin Islands, and one commentator notes that the changes should result in more international brands seeking protection in the jurisdiction.

Trinidad and Tobago has a population of 1.2 million people, and is the third richest country by GDP per capita in the Americas (after the United States and Canada). The current legislation, the Trademarks Act Chapter 82:81, is based on the UK’s Trademarks Act 1938, and was last updated in 1997. However, it is set to be replaced by a new law (Act No 8/2015), which HSM IP attorney Sophie Davies says will “hopefully” be passed by the end of the year.

The most significant change for international brand owners will be accession to the Madrid Protocol, a move that Davies says “local businesses and the IPO are embracing”: “With Madrid, there are always concerns that this could take away from the number of national trademark filings in the acceding country. However, the view that seems to have been taken by the local government/IPO is that accession to Madrid should not result in a reduced amount of work.”

Indeed, this position is argued explicitly on the Trinidad IPO’s website in a post entitled ‘Benefits of the Madrid System’, which states: “The overall volume of work for local trademark agents should not be expected to decrease by accession to the Madrid System. Trademark agents can expect to engage, in addition to tasks ensuing from the filing of applications, in tasks like searches, responses to objections, raising of objections, requests for annulment or cancellation, dispute settlements, licence and assignment contracts, among others. Bearing in mind that the number of marks protected locally would gradually increase as a result of accession to the Madrid System, the overall volume of work for agents should also increase commensurately.”

It’s a message that seems to have been embraced at local level, and Davies identifies clear benefits for some specific local brands: “The Trinidad Carnival is a big money-maker for famous bands such as Tribe, Fantasy and Yuma, who attract masqueraders from all over the world. However, the owners of these businesses need to be able to protect themselves from a trademarks perspective, both locally and internationally, as copycats are common. Also, Trinidad’s famous Soca (Soul of Calypso) artist Machel Montano heavily utilises his brand with a full range of merchandise and an online store. Perhaps now that there is more of a focus on IP and trademarks, other famous artists, such as Bunji Garlin and Fay-Ann Lyons, will focus further on the protection and exploitation of their brands. Finally, the number of fashion designers is increasing in Trinidad all the time. [For example], Jin Forde of J Angelique not only produces business wear, but also a range of carnival clothing under the Mon Diva brand. These are all brands that will benefit from these improved local trademark laws.”

However, the move is also significant for international brand owners. Davies admits that “Trinidad is probably a ‘peripheral’ country for some international brand owners”, but feels that they may now “be more likely to designate Trinidad and Tobago under a Madrid filing (perhaps even at the last minute, almost as an afterthought, when filing a wider international registration designating a variety of countries) rather than ‘going out of their way’ to file a national application”.

Beyond the ability to file international applications, there are other changes to note. For instance, the non-use period for a mark in the country will increase from three to five years and the new law will implement the 10th edition of the Nice Classification system (the current law only adheres to the seventh edition), meaning that brand owners can attain protection within Classes 43-45. Also important for trademark counsel, both locally and outside of Trinidad and Tobago, is that proprietors of well-known trademarks will be able to, for the first time, lodge an injunction against the unauthorised use of marks identical or similar to a well-known mark (where such use is likely to cause confusion). The registration of collective marks will also be permitted.

Whether designating Trinidad and Tobago as part of a clear market entry strategy or just because doing so is now easier and more convenient, the legislative changes do seem set to pave the way for an increased international brand presence in the region. 

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