Trademarks

A Trademark is often referred to as a “brand” or “brand name”. A Trademark can apply to goods and/or services. A Trademark used in connection with the provision of services may also be referred to as a “service mark.” A Trademark is a visible sign that can, in the course of trade, distinguish the goods or services of one trader from those of other traders. Such visible signs may include words, including names, signatures, colours, designs, letters, numbers and the shape of the goods or their packaging or any combination of these.

By distinguishing your goods or services from those of other traders, a Trademark is probably the single most valuable marketing tool that most traders can have.

As the owner of a registered Trademark, you:

Have the exclusive right to use your registered Trademark as a brand name, for the goods and services specified in the registration *
Have the exclusive right to authorize other people to use your registered Trademark for the goods and services specified in the registration *
Have a registered Trademark which is personal property and can be sold *
Can stop other people from using your Trademark as their brand name, on the goods or services of your Trademark registration.

No. Registration is not compulsory but without registration a Trademark owner cannot bring an action in court for infringement to protect the Trademark. Suing for infringement of a registered Trademark is much simpler than launching a common law action for passing off to protect an unregistered mark. Traders are therefore advised to register their Trademarks where possible.

No. Trademarks which are, or are confusable with, words or symbols which other traders or service providers in the same field should be free to use in the normal course of their business will not be registered as a Trademark. For instance the word BANK alone is not registrable as a Trademark for banking and financial institutions.

Before you apply to register a Trademark you should check the Register of Trade and Service Marks to find out if anyone one is has already applied for or has registered your Trademark. The owner of a registered Trademark can take legal action anyone who is using a Trademark that is the same or similar to theirs for the same or similar goods or services. However, two identical or similar Trademarks can be registered if the goods or services they cover are so different that people would never think they came from the same supplier. The Trademark Register can be searched at the Corporate Affairs and Intellectual Property Office, Belmont Road, St. Michael. There is no cost for a search of the Register.

In addition to Trademarks identifying the commercial source of goods or services, several categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted “ISO 9000” quality standards are an example of such widely recognized certifications.

A Trademark will not be registered if the same or a similar business name is on the Business Name Register and the business trades in the same or similar type goods and services for which the Trademark is requested. The consent of the owner of the Business name must be obtained before the Trademark will be registered

A domain name is a site address on the Internet. Many persons also seek to register their domain names as a Trademark in several countries. In registering a domain name as a Trademark in Barbados, the generic top- level domain name (gTLDs) such as .com, .int, .net, .org, must be disclaimed since exclusivity cannot be given to these gTLDs.

An application for registration of a Trademark must be filed at the Corporate Affairs and Intellectual Property Office, 7th Floor, Baobab Towers, Warrens Industrial Estate, St. Michael

The application must contain a clear reproduction of the sign filed for registration, including any colours, forms, or three-dimensional features. The application must also contain a list of the goods or services to which the sign would apply. The list of goods or services must fall under one class as set out in the Nice Classification. http://classifications.wipo.int/fulltext/nice

The sign must fulfill certain conditions in order to be protected as a Trademark. For instance, the sign must be distinctive, so that consumers can distinguish it as identifying a particular product or service, as well as from other Trademarks identifying other products or services.

It must neither mislead nor deceive customers or violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another Trademark owner.

This may be determined through a search and examination done at the Office or by the opposition of third parties who claim similar or identical rights. The cost of an application is $75 plus $25 if you are using an agent. 5 copies of the mark must be submitted along with the application.

Upon approval the mark will be advertised in the Official Gazette which will cost between $100 – $150 per mark. Anyone having an objection to the mark as advertised must file a formal notice of opposition at the office within 90 days of the publication.

You are advised to obtain professional help. If you use a Trademark agent or attorney-at-law then their fees will have to be added to those payable to the office.

Indefinitely. A Trademark is registered for 10 years and can be renewed every 10 years. The renewal fee is $50 for each class.

No. But registration in Barbados can be used as evidence abroad of the Trademark’s international reputation.

* You can use your Trademark before it is registered if no one else is using the Trademark on similar goods or services * Although the letters ‘TM’ can be used with your Trademark at any time, the (R) symbol may only be used with a registered Trademark * A Trademark is not registered as soon as you file your application. The application must be examined first. You cannot claim that the Trademark is registered until you receive the Certificate of Registration. * If your Trademark is registered, the protection given by registration is from the date you filed your application – and not from the date it was examined or accepted.