General trademark information in Aruba

Registration is not required to establish rights in a trademark; sufficient prior use establishes rights in a trademark; this is a "first-to-use" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

A. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

one to three months.

B. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it provides prima facie evidence of ownership and validity;
  • it helps to deter others from unlawfully using the trademark;
  • it provides a defense to infringement

 (although without registration, use of the trademark also provides a defense to infringement);

• enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
•  
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark for evidentiary reasons;
  • registration provides proof of use as of the registration date, which use would otherwise have to be proven by presenting documentation of use.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds

(depends on how the applicant has described the sound mark. If the application includes musical notation, the sound can be registered as a trademark.);

• trade dress/get-up;
•  mottos, letters, numbers, symbols, shapes, color combinations.

• The special requirements for the registration of three-dimensional shapes are:

 The shape must be considered, in its entirety, suitable to distinguish the goods and services for which it is intended from those of others. It may not consist of generic shapes.

• The special requirements for the registration of colors are:

 to file the application using the color codes and/or color names.

• The special requirements for the registration of sounds are:

 The application should include musical notation of the sound.

• The special requirements for the registration of trade dress are:

 The mark must be considered, in its entirety, suitable to distinguish the goods and services for which it is intended from that of others. If an object, depictions of the object from at least three angles are advisable.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • well-known marks,

if registered by the rightful owner;

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as surnames

(If the surname is a generally known mark in terms of Article 6bis of the Paris Convention that is known to belong to another, and it would deceive or mislead the public, the mark is not registrable.);

• marks that function principally as geographic location names (but not geographical indications or appellations of origin).

• Geographical indications (GIs) are not protected in this jurisdiction.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  •  disclose additional potentially conflicting trademarks that have been previously registered. The pre-filing search does not include unregistered marks.

• The national office is accessible online at the following URL:

 http://www.opi-aruba.org/ (although it has not been updated in the last seven years).

• The official register cannot be searched online.

C. Use

• An applicant does not benefit from pre-filing use of a trademark.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.
  •  As Aruba is a first-to-use jurisdiction, use always provides protection.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • a determination by the court resulting from an action for infringement.

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Nice Agreement.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction

provided all applicants are together entitled to the same type of goods and services.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• The list of goods and services in this jurisdiction may specify:
  • the relevant class heading;
  • a list of names commonly used in the trade for the specific goods or services of interest;
  •  use as much as possible of the wording of the alphabetical list and sequence of the Nice Classification of Goods and Services.

• The following number of copies of the trademark must be submitted:

three.

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications cannot be filed online.

• The official file cannot be accessed online.

• Applications are officially searched as to prior trademarks.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

C. Classification

• This jurisdiction uses the Nice Classification System.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes:

 three.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, but only if a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public,

but only registrations and renewals. Recordals of changes are not published.

• The filing particulars are made available to the public:
  • through publication.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information;
  • representation of trademark;
  •  
    • validity period of the mark;
    • registration number and date;
    • date and hour of application's entry.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  •  conflict with prior registration or prior-filed application.

• This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • examination, registration, publication.

C. Prosecution

• Accelerated examination may be requested.

• A reason for acceleration is not required.

• A fee for acceleration is required.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark.

D. Opposition

• Opposition is not available.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application cannot be assigned.

• A registration can be assigned.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of a registration must be for all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of a registration need not be recorded to be effective.

B. Licensing

• Use of a mark that is the subject of an application cannot be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of a registration must be for the entire territory covered by the registration.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• The following requirements relate to the use by a related company of a registered mark:

 Use by a related company of a registered mark can only be raised against a third party if the use is licensed and recorded.

• A license of a registration must be made with a time limitation (i.e., it cannot be perpetual).

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • territory of the license;
  • simple signature by licensor (see below for execution requirements);
  • simple signature by licensee (see below for execution requirements).

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration must be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  •  original or authenticated/certified written licensing agreement.

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, without further formalities;
  • deed of assignment, without further formalities;
  • certificate of proof of change of name, without further formalities;
  • certificate of merger, without further formalities.
  •  All documents above are to be in original form or certified. No legalization or notarization is required.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

submission of document that proves change of address or name and power of attorney to file the recordal.

• Recording a lien against trademark records is not possible.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration.

The fee for registrations includes the fee for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark

(Aruba is a first-to-use jurisdiction; thus, the exclusive right to a mark is not established by registration. However, registration does provide prima facie proof of first use.);

• the right to bring a cancellation action against a subsequent conflicting registration

(Aruba is a first-to-use jurisdiction; thus, the right to bring a cancellation action against a subsequent conflicting registration is not established by registration. However, registration does provide prima facie proof of ownership.);

• the right to sue for infringement against confusingly similar third-party trademark use

(Aruba is a first-to-use jurisdiction; thus, the right to sue for infringement against confusingly similar third-party trademark use is not established by registration. However, registration does provide prima facie proof of ownership.);

• the right to license third parties to use the trademark;
• the right to obtain damages for infringement

(Aruba is a first-to-use jurisdiction; thus, the right to obtain damages for infringement is not established by registration. However, registration does provide prima facie proof of ownership.);

•  
  • the right to oppose a subsequent confusingly identical or similar third-party trademark registration within six months after publication of the new trademark and request the courts to nullify the registration;
  • the right to request the court to cancel a confusingly identical or similar third-party trademark (newer) registration, after the expiration of the aforementioned six-month period, in a proceeding on the merits.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • never.

• The territorial limit of registration is:

the island of Aruba.

C. Term

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the application date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 third parties are informed and warned of the mark's registration.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®;
  •  any other words or markings that make it clear to the public that the trademark is registered, such as "registered mark."

• The use of ® is not legally recognized, but it is recognized in practice.

• The legal consequences of false or misleading marking are:

none.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is not available.

As Aruba is a first-to-use jurisdiction, it is only during the pre-filing period or if a previously registered trademark has not been renewed that an attack on the ground of non-use of three years is available.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication

(when it is misleading to the public. On grounds of geographical indication alone it cannot be cancelled.);

• the mark is against public policy or principles of morality.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

If the cancellation action is brought within six months after publication of the infringing trademark, opposition proceedings (a simple court procedure) may be brought before the Court of First Instance. However, after the six-month period a cancellation action in regular proceedings on the merits must be brought before the Court of First Instance.

• The following parties may bring a cancellation action:
  • the owner of an earlier right;
  •  the Public Prosecutor, in certain cases.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:
  • power of attorney;
  •  
    • a filled-in application by an agent if the applicant is not a citizen of or is not domiciled in Aruba;
    • copies of the mark if it concerns a design mark.

• The first renewal date of a registration is:
  • 10 years from the application filing date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • at any time.

No costs are incurred when filing a renewal six months prior to the expiration date of a trademark. The registration date remains the same.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 3 months.

• The penalty for late renewal is:
  • a fine.

• Renewal cannot be effected online.

• At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

• There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority,

although it is possible on an individual basis. Customs does provide a possibility for recording the name and address of contacts for their marks.

IX. Domain Names

A. Domain Names

• A domain name may not be protected as a trademark.

• The following approved registrars can register a domain name in this jurisdiction:

Setar N.V., Aruba's telecom company.

• Availability of domain names in this jurisdiction can be searched through the following website(s):

There is no website to search.

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.aw

• To obtain a domain name under the ccTLD in this jurisdiction, the following is required:
  • a local address.

• Domain name registrations can be assigned.

The new owner of the domain name is required to register with the approved Registrar and must submit the assignment documents as proof of assignment. The domain name will then be registered to the new owner.

• Domain name registrations can be licensed.

This is solely between parties. The approved Registrar does not file or otherwise keep track of licensees.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO).

• If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 After expiration, the domain name is stored in quarantine for 60 days. During this period, the concerned domain name is not available for anyone other than the original registrant. After this period, the domain name can be registered by others.

• The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

Aruba has a first-user system. Use as a trademark implies symbolic use. It is therefore not necessary that the use should be commercially suitable to gain or maintain market share in order to comply with the requirement of use.

• In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes.

If you would like to know the trademark registration process of Bahamas ? Click on here!

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