A guide to trademarks in the Caribbean

The Caribbean consists of a diverse mix of islands, each with its own trademark law and practice. The route to trademark prosecution can seem confusing at first blush. Most of the islands were at one time or another overseas territories or dependencies of the UK, France or the Netherlands, and some, such as the Cayman Islands, remain overseas territories.

The unique historic and cultural ties of each island have naturally affected the development of their respective trademark laws. While these laws have developed at differing rates in each of the islands, there are some common themes.

Anguilla, Bermuda, the British Virgin Islands (BVI), the Cayman Islands, Montserrat, and Turks and Caicos are the remaining British overseas territories in the Caribbean. With the exception of Bermuda and the BVI, trademark registrations can be obtained in all of the aforementioned territories on the basis of an underlying UK trademark registration.

It is also possible to re-register European Union trademark (EUTMs) registrations in the Cayman Islands and Turks and Caicos. Re-registrations of international designations of UK and EUTMs are also accepted in Turks and Caicos. The position is the same in practice in the Cayman Islands, although perhaps due to an oversight in the drafting of the Patents and Trade Marks Act 2011, technically speaking only re-registrations of international designations of UK trademark registrations are expressly provided for, while international designations of EUTMs are not.

Registered trademark protection can be obtained via a national registration route, in addition to the foreign re-registration route described above, in the territories of Anguilla, Montserrat and Turks and Caicos. The position is the same in Guyana, even though it gained independence from Britain in 1966. Indeed, the re-registration of a UK trademark covering services is the only way to obtain service mark protection in Guyana. Service marks cannot currently be protected under the national trademark registration regime.

Bermuda offers a national trademark registration route only. However, section 18(4) of the Bermuda Trade Marks Act 1974 provides the registrar with the discretion to accept local applications for registration if the identical mark has already been registered in the UK. This means that the registrar may make an assumption that a mark is acceptable on an absolute grounds examination if it has already been registered in the UK. The registrar will, however, subject the Bermudian re-registration to any conditions or limitations to which the UK registration is subject.

With the implementation of the Trade Marks Act 2013 in September 2015, the BVI ended its practice of accepting re-registrations of UK trademarks. Therefore, Bermuda and the BVI are currently the only British overseas territories with a national trademark registration regime only.

The Cayman Islands remains the only overseas territory not to offer a national registration route. A new trademark law has been drafted and is the process of being finalised in the Cayman Islands. Once the new law is passed and implemented the re-registration of UK and EUTMs in the Cayman Islands will no longer be possible. A national trademark registration regime will be available instead.

To re-register or not

If a brand owner owns a UK or EUTM from the outset, there is not much difference in the cost of re-registering that UK registration/EUTM in one of the Caribbean re-registration countries compared to the cost of obtaining a national registration in the same Caribbean country.

The downside of going down the re-registration route is that the duration and validity of the Caribbean re-registration is totally dependent on the duration and validity of the underling UK or EUTM registration. Therefore, if the UK or EUTM registration were to become invalid on grounds of a likelihood of confusion with an earlier UK or EUTM registration, or revoked on grounds of non-use, then the Caribbean re-registration would be lost too.

While national registrations can take longer to be processed than re-registrations of UK or EUTM registrations, for the most part the national route offers a stronger level of protection. That said, in certain circumstances, the national registration route may not protect the full breadth of brand owners’ rights and therefore a re-registration will be worth considering instead of, or in addition to, the national registration. For example, it is not possible to protect service marks in Guyana via the national registration route, but such marks can be protected under the UK re-registration route.

The only Caribbean/Central American signatories to the Madrid Protocol in the Caribbean are Antigua, Cuba, the BES Islands (Bonaire, Saint Eustatius and Saba), Curaçao and St Maarten (Dutch) and Mexico. The Madrid System can offer a simplified registration route in foreign countries. However, in our experience, the number of provisional refusals issued against designations of international registrations in Antigua, for example, is higher than the number of office actions issued against national registrations secured outside of the Madrid System.

"While national registrations can take longer to be processed than re-registrations of UK or EUTM registrations, for the most part the national route offers a stronger level of protection."

While the Caribbean signatories to the Madrid Protocol are small in number, and unlikely to grow very rapidly, Trinidad and Tobago is likely to be the next island to sign up. The Intellectual Property Office of Trinidad and Tobago has written about the benefits of the Madrid System on its website and it plans to join the protocol after the passage and acclamation of the Trademark Bill 2015.

The international route

It is also possible to obtain trademark protection in other Caribbean islands through a national registration in, or an international registration designating, the US, France or the EU. For example, national or international registrations designating the US automatically extend to Puerto Rico and the US Virgin Islands. Similarly, national or international registrations designating France automatically extend to Guadeloupe, Martinique, St Martin (French), and St Barthelemy.

The EUTM also automatically extends to Martinique, Guadaloupe and French Guiana in the Caribbean. However, in Caribbean countries where a national filing route is available, eg Puerto Rico, brand owners will want to seriously consider securing national protection additionally, to add an extra layer of protection locally and ensure their rights are protected to the highest degree.

Maintenance fees

Unique to the Cayman Islands and Turks and Caicos are annual fees, namely a maintenance fee paid to the local registry on or before January 1 each year until the expiration or renewal of the trademark registration. Upon renewal, the annual fee cycle starts again. A similar annuity tax is also unique to Honduras. These fees and taxes are viewed as an administrative burden by many brand owners. However, they appear to be here to stay.

In Turks and Caicos, while the grace period for payment expires on February 1 of each year, currently no late payment penalty fees apply even if the annual fee is paid outside of the grace period. In the Cayman Islands, a further penalty fee kicks in for any annual fees paid outside of the grace period, which ends on March 31 of each year.

If annual fees are not paid up to date, the trademark registration to which they relate will no longer be in good standing and the brand owner will not be able to enforce the registration against third-party infringers, for example. Additionally, trademark renewals cannot be processed until all outstanding annual fees are paid up to date. Furthermore, it is not possible to avoid annual fees by simply re-registering the mark and forgoing the earlier filing date previously secured.

The local registrars also have the power to cancel any registration for which annual fees remain unpaid for a period of more than 12 months. This is seldom enforced but remains a possibility.

Presently, annual fee payments can be made in advance for the ten-year period up to the expiry/renewal date of the Cayman Islands or Turks and Caicos trademark registration. However, advance payments will no longer be accepted in the Cayman Islands when the anticipated new trademark law is implemented. Further, the Cayman registry has also indicated that it may issue a practice direction to this effect before the implementation of the new law.

Annuity taxes are due every year in Honduras on each anniversary of the registration date. Payment can be made in advance (covering the ten-year period of the registration), annually, or at the time of filing the renewal application. It is necessary to pay these taxes in order to renew the registration.

An optional rehabilitation tax can be paid in Honduras at the end of any three-year period of consecutive non-use. The payment of this tax cures the non-use of the registration. As long as the tax is paid, any third-party application to cancel a registration on grounds of non-use will be unsuccessful.

Sophie Davies is an attorney at HSM IP. She specialises in all aspects of intellectual property protection, enforcement, and dispute resolution. Davies works on the committee responsible for drafting new IP legislation in the Cayman Islands and is a member of the Intellectual Property Caribbean Association, AIPLA and Marques. She can be contacted at:
sdavies@hsmoffice.com