Trademarks

All you need to know about Trademarks

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What is a Trade mark?

A trade mark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.The Trade Marks Act of 2003 and its regulation of 2006 are two principal legal instruments governing the registration of trade marks in Antigua and Barbuda.

What are the types of Trade marks?

Collective Marks

A collective mark is a mark that distinguishes the goods or services of members of an organization from those of other organizations. A collective mark is usually owned by an association or any other entity, such as a public institution or a cooperative.

 

A Certificate Marks 

A certification mark is a mark that indicates the goods or services in connection with which it is used or certified by a proprietor of the trade mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

 

Word Marks

A word mark is a trade mark that consists of words only, without any accompanying design or graphics.

 

Design/Device Mark

A design/device mark is a mark which consists of images/pictures and graphics without any accompanying words.

 

Word and Design/ Device

Word and design/device marks, otherwise known as combination marks or mixed marks, are marks which are comprised of words and images/pictures.

 

Colour Marks

Colour marks are marks which are filed in colour, have some or all of the elements identified in:

  1. Word mark
  2. Design/device marks 
  3. Word and design/device mark.

Or the mark for registration may be a particular colour, that is used or proposed to be used to identify the goods and/or services of the trader.

Why should I have a Trade mark?

A trade mark adds value to your business as an intangible asset. In today’s economy this is being more recognized and used in commercial transactions. In addition, by distinguishing your goods or services from those of other traders, a trade mark is one of the single most valuable marketing tools that most traders can have.

What rights does Trade mark Registration provide?

A Trademark: 

  • Allows you to initiate legal proceedings for the infringement of your trade mark under the Trade Marks Act 2003
  • Allows the proprietor of the mark to have documentary proof of its ownership of the mark;
  • Is personal property, which may be sold, licensed or franchised;
  • May prevent unauthorized persons or entities from using your trade mark without your permission;
  • Gives public notice of the registered proprietor of the mark and authorized users of the mark may be recorded in the Trade Marks Register.

Do I have to Register my Trade mark?

No. Registration is not compulsory, but without registration a trade mark owner cannot bring an action in court for infringement to protect the trade mark. In addition, with an unregistered trade mark, the trade mark holder is required to file a common law action to protect their unregistered mark. Registering your trade mark is strongly advised.

Can I apply for a trade mark myself or do I have to retain an Attorney?

Applicants located and resident in Antigua and Barbuda can apply for a trade mark themselves or through an agent. 

However, applicants located outside of Antigua and Barbuda will be required to obtain a local agent as an address for service in Antigua and Barbuda is necessary.

What do I need to know about differentiating between goods and services?

A marketing strategy should establish a clear link between your products or services and you, as the producer or provider of such products or services. Customers should be able to distinguish, at a glance, between your products or services and those of your competitors and associate them with certain desired qualities. Trade marks are protected only in connection with specific goods and services. When registering a trade mark, you must indicate the goods and services for which you want to register it.

How do I classify my Trade mark?

Classification of trademarks is done using the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The Nice Classification is available on the World Intellectual Property Organization’s website at: https://www.wipo.int/classifications/nice/nclpub/en/fr/.The European Union Intellectual Property Office Network of Databases is also a great resource for trademark classification. This network is available on the European Union Intellectual Property Office website at: :https://euipo.europa.eu/ohimportal/en/databases 

What do I need to complete a Trade mark application?

  • Applicant’s name and address (Form 1)
  • Applicant’s nationality or state of establishment and the legal nature of the legal entity (if a company);
  • Authorization of Agent (Form 2) (If you are not a resident in Antigua and Barbuda represented by an Attorney and/or agent)
  • List of the goods and/or services in relation to which the mark will be registered in accordance with the International Classification of Goods and Services (International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement);
  • Copy of the trade mark
    • The application must contain a clear reproduction of the sign filed for registration, including any colours, forms, or three-dimensional features. Representation of mark 
    • Other than a word mark, three (3) additional and identical reproductions of the mark shall be submitted. 
  • Certified translation – If the mark is in any other language other than English.
  • Authorized permission from the competent authorities to use a country’s name.

When I file an application at the Intellectual Property Office, what happens next?

When a trade mark application is filed, it goes through the following process: –

  • Formality Examination
  • Examination of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (11th Edition)
  • Search for Prior Rights
  • Determination of Registrability
  • Publication/Opposition period
  • Registration (if no “opposition”)

You may contact the Office to determine the status of your application.

May I conduct a search for registered or pending trade marks?

Yes. Applicants may search the Trade Mark Index Books free of charge and request the Trade Marks Register (for registered marks) or the pending Register (for pending applications) at a cost per trade mark. All fees are quoted in Eastern Caribbean Dollars.

What are the Trade mark databases used for?

The Antigua and Barbuda Intellectual property and Commerce Office principally employs an automated database known as the Industrial Property Automated System (IPAS) to conduct international and local trade mark searches. Also, in use however supplementarily is the TM View automated database.

What are Advanced Search Modalities?

Advanced Search Modalities identify all marks that were either registered prior to the applicant’s mark or marks that possess an earlier filing date, which may be pending registration. This may be identical or confusingly similar to the applicant’s mark. The search for protected emblems under Article 6ter of the Paris Convention should also be conducted and any similar or identical protected emblems identified in the search report.

What are Unacceptable trademarks?

Outlined within the table below are the absolute and relative grounds in which trade mark applications can be refused. These grounds can also be referenced in the Trade Marks Act of 2003 of Antigua and Barbuda.

Absolute grounds for refusal of a trade mark application are The relative grounds for refusal of a trade mark applicant are that the mark
  • Signs which do not satisfy the definition of a trade mark under the Trade Marks Act of 2003 of Antigua and Barbuda.
  • Is identical to an earlier trade mark and the goods or services are identical with those for which the earlier trade mark is protected.
  • Trade marks which lack distinctiveness or are incapable of distinguishing the applicant’s goods or services.

Example: An orange seller cannot trade mark the term ‘orange’ as it is a generic word, or ‘juicy’ as it is merely a descriptive term for an orange. However, ‘Apple’ was able to be trade marked in terms of computers, as an apple is not common to computers.

  • Is identical or similar to an earlier trade mark and the goods or services are identical or similar to those for which the earlier trade mark is protected. As a consequence, there is a likelihood of confusion by the public.
  • Applications that contain or consist of a geographical indication and the trade mark is used or intended to be used in relation to goods or services not originating from the place indicated in the geographical indication.

Example: An applicant cannot register for a Trade mark under the name “Tequila”, because Tequila is a geographical indication of Mexico.

  • Is identical or similar to the earlier trade mark that is well-known, and the goods or services are not similar, however the registration of the mark would indicate a connection between those goods or services and the owner of the earlier mark. There also exists a likelihood of confusion on the part of the public as the use and interests of the right holder of the earlier mark are likely to be damaged.
  • Signs which have become customary in the current language or in the established practices of the trade. 

Example: Registering the symbol of the red cross as a trademark of a medicine.

  • Conflicts with an earlier right, in particular the law of copyright or any law in relation to the trade mark.
  • Signs which are contrary to public policy or morality. 

Example: Applications for trade marks that are racist and offensive to the public or those having clear sexual connotation or profanity.

  • Conflicts with any rule of law (in particular, the law of passing off) protecting an unregistered mark or other sign used in the course of trade;
  • Signs which deceive the public as to the nature, quality or geographical origin of the goods or services.The most common cases of deceptive trade mark are related to a false indication of its geographical origin

Example: Registering an alcoholic beverage by the trade mark “Champaign”, with the knowledge that it was not produced in Champaign, France.

  • Applications filed in bad faith. The is filing a trade mark to undermine third parties or to obtain an exclusive right for purposes other than the functions of a trade mark. 

Example : Registering a trade mark without any intention to use it for the goods and services covered.

  • Signs which consist of or contain a representation of the Coat of Arms, national flag or other national symbols of the country, unless permission is received from the relevant authorities, or the trade mark is disclaimed.

Disclaimers: Where a mark is composed of non-distinctive elements, a disclaimer may be requested by the examiner.

How long will it take for a mark to be registered?

It may take about 12 months for a trade mark to be registered (if the application did not contain any deficiency or face any objection/opposition). Anyone having an objection to the mark as published must file a notice of opposition at the office within three months on which the application was published.

How long is a trade mark valid for?

A trade mark is valid for ten years from the filing date of the application and may be renewed for successive ten year periods upon the filing of the prescribed renewal application form and the payment of the prescribed fee.

What is meant by claiming priority?

The right of priority is an applicant’s right under the Paris Convention for the Protection of Industrial Property to benefit from an earlier filing date, if the application in Antigua and Barbuda, is filed within six months of the date of the first filing of the application in another Paris Convention country.

Is the trade mark registration protection valid internationally?

No. Trade mark protection is territorial.  This means that the rights granted by trade mark registration are limited to the territory (a country or a region) in which the mark is registered. A trade mark can be registered through national, regional (e.g., the European Union) or international registration procedures.  In particular, an applicant can choose to either:

 

  • File a separate trade mark application with the Intellectual Property Office in each territory (country or region) where protection is being sought; or

 

  • Use the Madrid System for the International Registration of Marks, which requires only one application to register a mark in multiple territories (multiple countries, multiple regions, or both).  The Madrid System is governed by the Madrid Protocol and is administered by the World Intellectual Property Organization (WIPO). Antigua and Barbuda has been a member of the Madrid Protocol since 2000.

  Marid System: https://www.wipo.int/madrid/en/how_madrid_works.html 

What are the methods of payment?

The Antigua and Barbuda Intellectual Property and Commerce office facilitates payment by cash, cheque, debit, or credit card.

How do I maintain a Trade mark?

A Trade mark must be renewed. If renewal does not occur, the trade mark will no longer exist.

What if the Registrar objects to the Registration of a Trade mark?

If, upon examination, in accordance with section 5 of the Act, the Registrar objects to the application for registration of a mark, he/she shall notify the applicant in writing of his objections with all the relevant details and invite the applicant to amend the application, to submit his observations in writing or to apply for a hearing within two months from the date of the notification; if the applicant does not comply with the invitation within the set period, he shall be deemed to have withdrawn his application. (Section 16 of the Trade marks Regulation).

Who are the competent authorities in Trademark disputes?

The Registrar of the Antigua and Barbuda Intellectual and Commerce Office is the competent authority. Any decision taken by the Registrar in particular, the registration of a mark, collective mark, or the refusal of an application may be the subject of an appeal by any interested party before the Court. Such appeal shall be filed within two months of the date of the decision. The High Court of Antigua and Barbuda shall have jurisdiction in cases of these under the Trade mark Act 2003.

What are the procedures for a Trademark opposition?

Any person may, within three months of the date on which the application was published, give notice to the Registrar of opposition to the registration on Form 3 which shall include a statement of the grounds of opposition.

Where the opposition is based on a mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and –

  1. The details of the authority with which the mark is registered;
  2. The registration number of that mark;
  3. The classes in respect of which that mark is registered; and
  4. The goods and services in respect of which-
    • The mark is registered; and
    • The opposition is based; 

Where the opposition is based on a mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in sub-regulation (2) (a) to (d), with references to registration being construed as references to the application for registration. 

The Registrar shall send a copy of Form 3 to the applicant and the date upon which this is done shall, for the purposes of regulation 20, be the “notification date”.

Are there any decisions referencing registered Trade mark?

The Philip Morris Products S.A vs British American Tobacco (Brands) Limited and the Caribbean Idol (Antigua and Barbuda Idol) INC. vs IDOLS (FreMantleMedia Ltd.) are noted cases which reference registered Trade marks. The decisions may be found here: Caribbean Idol (Antigua and Barbuda Idol) INC. vs IDOLS (FreMantleMedia Ltd.) and here: Philip Morris Products S.A vs British American Tobacco (Brands) Limited

Trademark Checklist

If these requirements are complied with: Your application will proceed to the Examination stage. 

If these requirements are not complied with: You will be notified by the Registrar to provide the necessary information or to amend the application within a stipulated deadline. If you fail to do so, your application will be deemed never to have been made.

Trademark Fees

Matter of Proceeding Amount
For the registration of one mark $250.00
For registration of more than one mark for goods in one class:
  1. For the first mark
  2. For each additional mark (for series of trademarks)
$250.00

$75.00

For registration of the same mark for goods in more than one class:
For the first mark $250.00
For each additional class $50.00
For the renewal of mark on:
On or before the date of expiration $175.00
Within three months after expiration $200.00
More than three months after expiration $300.00
Restoration of mark to the register $300.00
For any other alteration or rectification $40.00
For settling a special case by the Registrar $175.00
For inspecting the register $25.00
For office copies, per page $15.00
For certified copies and every certificate $50.00
For recording of Change of Name or Address $40.00
For filing counterstatement or any opposition proceedings document. $100.00
For filing of license contract $50.00
Filing of any other document not included above $25.00
Trademark Applications

When a trade mark application is filed it goes through the following process:

Formality Examination

You are strongly encouraged to conduct a search to ensure that there are no existing marks on our register that are identical or similar to yours.
Note: If there is a similar or an identical mark found and this mark is protected for similar/identical goods and/or services as specified in your trade mark application, it is possible that your application will face an objection.

Examination of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (11th Edition)

Search for Prior Rights

Determination of Registrability

Publication/Opposition Period

Registration (if no “opposition”)

Click the link below to access ABIPCO’s trademark classification of acceptable goods and services: