Fine print: Protections for intellectual property rights will be increased

In Trinidad and Tobago trademark rights are currently regulated by the provisions of the Trade Marks Act Chapter 82:81. A trademark under the act may include a device, name, signature, word, letter, numeral or any combination thereof capable of distinguishing the goods or services of the proprietor from that of another proprietor or competitor.

The List

Registration of a mark confers numerous benefits on its proprietor. The registered proprietor of a trademark under the act has the exclusive right to use that mark in relation to the particular goods or services and the right to prevent unauthorised third parties from using that mark or a mark identical to it or so nearly resembling it as to be likely to deceive or cause confusion. A mark, once registered, is valid for 10 years and can be renewed for consecutive periods of 10 years in perpetuity, provided it has not been removed from the register in accordance with the act.

The act dates back to 1955, but new legislation, in the form of the Trade Marks Bill 2014, has been drafted which is more in keeping with several of the changes and advances in intellectual property (IP). The bill passed both houses of parliament and will go into effect once proclaimed. It proposes several significant changes that will be of benefit to local and international businesses and investors. Among the significant changes are:

• Increase in the number of offences created, prescription of new and enlargement of existing penalties;

• Greater enforcement measures, which, inter alia, allow for the arrest without warrant of any person who sells any goods to which a trademark is falsely applied and the stop or search and board of any conveyance reasonably suspected of carrying goods with a falsely applied trademark;

• Empowerment of the minister responsible for IP to make provisions to enforce the provisions of the Madrid Protocol.

• Protection for well-known trademarks whether or not they are registered in T&T and irrespective of whether an application has been made for registration or whether the proprietor carries on business and has goodwill in T&T; and

• Empowerment of the minister responsible for IP to confer on a person who has filed an application for the registration of a mark in another country with which T&T has entered into a treaty, convention, arrangement of engagement for the reciprocal protection of trademarks, a right to priority for the purpose of registering that mark in T&T.

Promising Start

The new provisions, particularly those relating to the protection of well-known trademarks (though unregistered), increased enforcement mechanisms and priority in recognition of pending external applications, are great news for business. The provisions on the issue of parallel imports is a less welcome change. Parallel imports, or grey market goods, refer to genuine branded goods that are imported and sold without the permission of the trademark owner. The extent to which a proprietor can control the parallel import of its goods is reliant largely on the exhaustion rights regimes in the particular jurisdiction. The act does not expressly deal with the issue of parallel imports and as such makes it possible for a proprietor to enforce its IP rights against a parallel importer. However, the bill makes provision for international exhaustion of IP rights whereby the IP rights in the goods are exhausted when the goods are sold, regardless of jurisdiction.

Businesses and investors therefore must be aware of the change in the legislation and take steps to mitigate parallel imports of their goods and services, such as a careful review of its distribution chain and ensuring, inter alia, that provisions are made within its distribution and licensing agreements to deal with the issue of parallel importation. T&T looks forward to the bill coming into force as it will provide greater security.