General trademark information in Bahamas

However, in practice, this is both a "first to file" and "first to use" jurisdiction. Whoever uses/files first is the party with the trademark rights.

• 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:

24 to 30 months.

B. Advantages of Registration

• The benefits of registering a trademark include the following:

  • it is the sole means of obtaining rights in or title to the trademark;

  • it provides prima facie evidence of ownership and validity;

  • it provides regional, national, and/or local protection;

  • it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;

  • it allows the registrant access to bring actions in particular courts;

  • it helps to deter others from unlawfully using the trademark;

  • it provides a defense to infringement;

  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;

  • it confers the ability to recover maximum monetary damages for infringement;

  • it encourages licensees and provides the opportunity to generate royalties through licensing;

  •  if the mark is not registered, only a common law action for passing off is available. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in the Commonwealth of the Bahamas.

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;

  • trade dress/get-up.

• There are no special requirements for the registration of three-dimensional shapes.

 The law doesn't directly address three-dimensional shapes.

• There are no special requirements for the registration of colors.

• There are no special requirements for the registration of trade dress.

• 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:

  • collective marks;

  • certification marks;

  • well-known marks.

• 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;

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

  •  symbols or representations of the British Royal Crowns or the British national flags.

• Geographical indications (GIs) are protected in this jurisdiction.

GIs are not registrable if their ordinary signification is that of a geographical name.

• GIs are protected by way of:

  • trademark laws, in the form of collective marks or certification marks;

  •  the Geographical Indications Act, 2015 (Act No. 44 of 2015), was enacted by the Parliament and received the assent of the President on October 10, 2015. The Act was published in the Official Gazette on October 13, 2015, but has not yet come into force. In addition, there are pending specific laws or decrees that recognize individual GIs.

• The following products or categories are subject to GI protection in this jurisdiction:

Until the Geographical Indications Act, 2015, comes into force, the list of products or categories suitable for GI protection is not available.

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.

• The national office is not accessible online.

C. Use

• An applicant benefits from pre-filing use of a trademark.

• The benefits of pre-filing use are:

  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

• When a mark is not registered, use of that mark may provide the following benefits:

  • Courts may protect unregistered trademarks in some exceptional cases.

  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

  • Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

 Based on prior use, the proprietor of an unregistered mark may challenge a subsequent unauthorized registration of his mark by a third party.

• Famous and/or well-known marks are protected via the following mechanism(s):

  • an administrative process;

  • a determination by the court resulting from an action for infringement;

  •  Where a trademark has become well-known any goods in respect of which it is registered and in relation to which it has been used, the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade then the proprietor of the well-known mark shall be entitled to register the mark in respect of other goods as a defensive mark.

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:

  • Paris Convention.

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.

• Either actual use or intent to use is required for application.

• The following information is required to COMPLETE an application:

  • name and address of applicant;

  • representation of trademark (a depiction of the mark an applicant seeks to register);

  • list of goods/services;

  • power of attorney

(For trademark practice, an authorization form is used rather than a power of attorney. This form solely authorizes the agent to act on behalf of the applicant.);

• official filing fee.

• 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;

  • representation of trademark (a depiction of the mark an applicant seeks to register);

  • list of goods/services;

  • power of attorney

(For trademark practice, an authorization form is used rather than a power of attorney. This form solely authorizes the agent to act on behalf of the applicant.);

• official filing fee.

• The list of goods and services in this jurisdiction may specify:

  • the relevant local subclass and/or subgroup;

  • a list of names commonly used in the trade for the specific goods or services of interest;

  • the relevant entire (long) alphabetical class listing.

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:

  • goods only.

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

Four.

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

  • national

(Local registration is advisable. Otherwise, international protection would be available only to the extent of the protection afforded by international conventions, e.g., Lisbon, Stockholm, Berne, and Hague.).

• 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.

 This takes approximately one to two months.

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 does not use the Nice Classification System; it has its own classification system.

• If a trademark is or will be used in more than one class of goods and/or services, it is necessary to file a separate application for each class of goods and/or services.

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

 once the application is published in the Gazette.

• 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.

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, prior-filed application, or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

• This jurisdiction has 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, publication, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:

  • the filing date of the application establishes a home filing date for purposes of priority.

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:

  • 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 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;

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

  •  unauthorized use of specially protected emblems or national insignia.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

the date of the Gazette that publishes the application.

• The opposition period ends on the following date:

one month after the date of the Gazette. The one-month opposition period may be extended by application to the Registrar.

• The following parties may initiate an opposition:

  • any interested party;

  • the owner of an earlier right;

  •  any person aggrieved.

• Oppositions cannot be filed online.

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 must be included in an assignment of a registration.

• An assignment document for a registration requires:

  • name of assignor;

  • address of assignor;

  • citizenship of assignor;

  • name of assignee;

  • address of assignee;

  • citizenship of assignee;

  • goods and services being assigned;

  • territory being assigned;

  • effective date of the assignment;

  • signature by assignor;

  • signature by assignee;

  • consideration (either actual or nominal).

• Legal verification of a written assignment document of a registration is required by:

  • notarization;

  • witnesses.

• An assignment of a registration need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

If an assignment is not recorded, then use of the mark is for the benefit of the existing registrant.

B. Licensing

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

• Use of a registered mark cannot be licensed.

However, Bahamian law allows the registration of persons other than the proprietor as users of the trademark, and where this is done the mark is treated as still used by the proprietor. Recording a registered user is not compulsory, but it may be desirable taking into account the relationship about to be entered into with an entity that is not the proprietor of the mark. There is no statutory or prescribed time limit to record a registered user agreement; however, good practices would dictate an early recordal.

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 must be original. The certificates of proof of change of name and of merger must be certified copies issued by the relevant government authority. Certain Bahamian Forms must be filed along with the certified copies of the Certificates of Change of Name, Merger, and for the deed of Assignment.

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

power of attorney, without further formalities and certificate of change of address issued by the authorized representative of the trademark proprietor.

• Recording a lien against trademark records is not possible.

VI. Registration

A. Requirements

• A fee is required for issuance of the registration.

• The following documentation is required for issuance of the registration:

  •  an application filed to pay the registration fee.

B. Rights

• The following rights are established by registration:

  • the exclusive right to use the registered trademark;

  • the right to oppose subsequent conflicting applications;

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

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

  • the right to obtain damages for infringement.

• 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:

  • counting from the date of registration of the mark:

 seven years from the date of registration, unless such original registration was obtained by fraud, is deceptive, is otherwise disentitled to protection in a court, is contrary to law or morality, or consists of a scandalous design.

• The territorial limit of registration is:

the Commonwealth of the Bahamas.

C. Term

• The initial term of a registration is:

  • 14 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:

 it gives notice of registration.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

  •  Registered Trademark.

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

• The legal consequences of false or misleading marking are:

a fine.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 five years prior to the filing date of the cancellation application.

• To satisfy the use requirement, the amount of use:

  • must be on a commercial scale.

• Use of the trademark must occur in:

  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

The registration will become vulnerable to cancellation for non-use.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:

  • any interested third party.

• Non-use can be excused under the following circumstances:

  • import restrictions;

  • other government policies.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

  • filed an application to register an identical or similar trademark;

  • registered an identical or similar trademark;

  • used an identical or similar trademark;

  • filed an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is possible. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:

  • 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;

  • 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

(if the ordinary significance of the mark is that of a geographical name);

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

• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;

• the mark is used in a misleading manner;

• the mark is prohibited in this jurisdiction;

• the application for or registration of the mark was made in bad faith.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

After the expiration of seven years from the date of the original registration, any mark is taken to be valid, so the action should be brought before that time. However, for the following grounds, the action to remove from the Register may be brought at any time: the mark is misleading, deceptive, or disparaging; the mark is against public policy or principles of morality; the mark is prohibited in this jurisdiction; the application for or registration of the mark was made in bad faith. For non-use actions, the non-use must have occurred during the five-year period before the cancellation is brought.

• The following parties may bring a cancellation action:

  • any interested party;

  • the owner of an earlier right.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:

  •  Authorization of Agent form.

• The first renewal date of a registration is:

  •  14 years from the application filing date.

• Subsequent renewals last for the following period of time:

  • 14 years from the renewal date of the registration.

• The renewal pre-payment period is:

  • no more than the following number of months before the renewal date:

 three months.

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

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

  •  for a length of time dependent upon the Registry's providing notice of renewal.

• The penalty for late renewal is:

  • the registration lapses;

  •  a fee of $40.

• Renewal cannot be effected online.

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

VIII. Customs Recordation

A. Customs Recordation

• Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

 the Comptroller of Customs.

• Recordation with the customs authority cannot be accomplished online. The following process must be followed:

 A notice in writing must be delivered to the Comptroller of Customs.

IX. Domain Names

A. Domain Names

• A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

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

http://www.register.bs/index.html.

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

http://www.register.bs/

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

.bs

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned.

• Domain name registrations can be licensed.

• 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:

 payment of the pertinent fees.

• 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.

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

 As long as the domain name has been applied for as a trademark, the courts will apply the same principles. Domain names per se are not regulated by the Registry.

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

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