New Trademarks Act provides path to implementation of Madrid Protocol

The Caribbean island nation of Trinidad and Tobago is developing new trademark laws that the country hopes to finalise by the end of 2015. The Senate considered the new Trademarks Bill 2014 in April, and the new Trademarks Act was assented to on June 12 2015. A proclamation is all that is needed to bring the new act into effect, replacing the existing Trademarks Act, Chap 82:81. This will likely happen after completion of new regulations, which are currently in development.

Importantly, the new act provides for a path to implementation of the Madrid Protocol. Thus, Trinidad and Tobago may soon become the second Commonwealth Caribbean nation giving effect to Madrid – the first being Antigua and Barbuda. Although the act does not specifically implement Madrid, it allows for the minister responsible for IP rights to make regulations giving effect to the provisions of the Madrid Protocol.

In addition, trademark owners will be able to register goods and services in Classes 1 to 45 of the Nice Classification under the new laws. The current framework provides for registration of trade and service marks only in classes 1 to 42, as Trinidad still uses the Seventh Edition of the Nice Classification. This has long been a source of frustration for trademark owners. Thus, the new laws will provide better coverage – in particular for services – and align Trinidad & Tobago’s classification with much of the rest of the world.

Any pending applications filed under the existing laws that have not been advertised may be converted for examination under the new laws. Applicants must request conversion from the controller and pay a fee, and the request must be made within six months after commencement of the new act. All existing registrations, whether in Part A or Part B of the current register, will be deemed “registered trademark[s]” for the purposes of the new act. If an existing registration was associated with other related trademarks, notably these associations will cease to have effect upon the new law going into effect.

A longer non-use period will be provided to owners of registered marks, increasing from three to five years. There are a number of provisions that would enhance border enforcement measures, and well-known marks will enjoy greater protection. It will also become possible register collective marks.

Katherine Van Deusen Hely, Caribbean IP - Katherine Van Deusen Hely PLLC, West Palm Beach