General trademark information in Barbados

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

However, protection for a mark that is not registered may lie in the common law of passing off or where there is an action under the Protection Against Unfair Competition legislation.

• 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:

This is dependent on whether there is a backlog at the IPO. At this time (due to the backlog) the average time is a minimum of 30–36 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

(This is, however, subject to any common law rights that may be obtained in the reputation or goodwill of the mark.);

• it provides prima facie evidence of ownership and validity

(even in other countries where it may not be protected);

• 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

(This is arguable and subject to the distinctiveness or reputation of the relevant mark.);

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

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;
  •  a mark can consist of arbitrary or fanciful designations, names, pseudonyms, geographical names, slogans, devices, reliefs, letters, numbers, labels, envelopes, emblems, prints, stamps, seals, vignettes, borders and edgings, combinations or arrangement of colors, and shapes of goods or containers.

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

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

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

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

• GIs are protected by way of:
  • special laws for the protection of geographical indications or appellations of origin.

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

"geographical indication" means an indication that identifies goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the goods is essentially attributable to its geographical origin.

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, e.g., prior unregistered rights such as those gained at common law.

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

 http://caipo.gov.bb.

• The official register cannot be searched 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.

 Prior use will ease the evidential burden in proving ownership of the trademark and will also be useful in a passing-off action.

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

 Prior use will ease the evidential burden in proving ownership of the trademark and will also be useful in a passing-off action.

•  Use of an unregistered mark may also give rise to common law rights.

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

• 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.
  •  colors must be provided if the application is in color; if the application contains any word that is not in English and can be translated into English, the translation is to be included in the application.

• 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;
  • power of attorney;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• The list of goods and services in this jurisdiction may specify:
  •  A clear and complete list of the goods or services is to be used. Class headings are currently not allowed.

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

There is no statutory requirement, but it is recommended that six to eight copies of the mark are submitted to the Intellectual Property Office.

• 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 (formerly a Community 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.

The Intellectual Property Office conducts a substantive examination as to both substance and form of the application, including a search of prior identical or similar 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 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:
  • a trademark representative/attorney/agent, even if not a citizen of or domiciled in the jurisdiction,

but must be duly authorized to act in Barbados.

IV. Application

A. Publication

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

• 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 will be accepted as evidence permitting registration of the application.

• 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;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

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;
  • the mark is functional;
  • breach of copyright;
  • 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 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;
  •  
    • rights in a company name (The Act specifically states that a mark may not be registered where it resembles, in such a way as to be likely to mislead the public, a business name registered under the Registration of Business Names Act.);
    • 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 opposition period is 90 days from the date of the Official Gazette in which it was advertised.

• The opposition period ends on the following date:

The opposition period ends on day 90 after the publication date.

• Anyone may initiate an opposition.

• 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 can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

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

• An assignment of an application can be for some or all of the goods or services listed in the application.

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

• Goodwill need not be included in an assignment of an application.

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

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal)

(There is a stamp duty payable to the Government of Barbados that is calculated based on the consideration at 1.6% of the value of the consideration, subject to any legislative amendments to this taxable percentage.)

• 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;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  • consideration (either actual or nominal)

(There is a charge of 1.6% payable based on the value of the consideration. This percentage can be changed legislatively by the Government. At this time a nominal consideration is allowed by the Intellectual Property Office in Barbados.)

• Legal verification of a written assignment document of an application is required by:
  • notarization.

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

• An assignment of an application must be recorded to be effective.

A recorded assignment is valid against any third party once recorded. If it is not recorded, it is void against any person other than the parties thereto.

• An assignment of a registration must be recorded to be effective.

A recorded assignment is valid against the entire world once recorded. If it is not recorded, it is void against any person other than the parties thereto.

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.

Barbados does not have a register for recording trademark users.

• A license of a registration can be made for a portion of the 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 exclusive (only one licensee, with the owner excluded)

(The license contract must contain a quality control clause.);

• A license of a registration can be sole (only one licensee and the owner);
• A license of a registration can be non-exclusive (multiple licensees and the owner)

(The license contract must contain a quality control clause.)

• Use by a related company of a registered mark need not be licensed.

 This has not been judicially tested.

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

This has not been judicially tested. However, if perpetual, it might be treated as an assignment.

• 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;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • quality control provisions;
  •  the license contract must be notarially executed by both the licensee and the licensor (The license contract must also include a clause that governs quality control by the licensor.)

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization.

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, legalized by the respective consulate/apostille

(Notarizing of the deed of assignment or merger or other change will suffice.);

• certificate of proof of change of name, legalized by the respective consulate/apostille

(The document evidencing the change of name must be notarially certified/notarized.);

• certificate of merger, legalized by the respective consulate/apostille

(The certificate of merger must be notarially certified/notarized.).

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

The Barbados Trade Marks Act states that any changes must be recorded on the Register. This includes changes of address.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 It is not possible to record liens / security interests over intellectual property in the Intellectual Property Office in Barbados.

VI. Registration

A. Requirements

• A fee is required 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;
  • 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 license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement;
  • the right to sue for infringement if a transliterated version of the owner's mark is later used by a third party;
  • the right to oppose and/or cancel subsequent applications for transliterated versions of the registered trademark by third parties.

• 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.

A trademark can be removed from the Register at any time upon an application to the High Court by any interested party where it has become generic or fallen into disuse for a period of five years immediately preceding the application for the removal of the trademark. Additionally, proceedings requesting that the registration of a mark be declared invalid may be made to the High Court by any interested party claiming that the mark ought not to have been registered under the Act.

• The territorial limit of registration is:

Barbados.

C. Term

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

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

D. Marking Requirements

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

 It provides notice of registration to the public.

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

• The use of ® is legally recognized.

The symbol for registration is recognized, but it is not mandatory to affix same.

• The legal consequences of false or misleading marking are:

The Act makes it an offense to affix a false or misleading mark.

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 from the registration date.

• To satisfy the use requirement, the amount of use:
  •  has not been judicially tested. However, the use must be bona fide. In addition, a mark may not be removed from the register where it is has not been used with good reason. For the purposes of determining whether a mark has fallen into disuse, the Court may consider the following: circumstances beyond the control of the registered owner; the use of a mark in connection with one or more of the goods or services belonging to any given class in respect of which the mark is registered. Insufficient financial resources will not suffice as a valid reason for non-use.

• Use of the trademark must occur in:
  • this jurisdiction.

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

If an action is brought in the High Court for non-use, the consequence is that the High Court may remove the mark from the Register.

• 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:
  •  Only circumstances beyond the control of the registered owner ought to be considered a good reason for failing to use a trademark. Insufficient financial resources ought not to be considered a good reason.

• Resumption of use of a trademark prior to the filing of an action to revoke or cancel that trademark may cure non-use if preparation for the resumption of use began before the registrant was aware that an action had been or was about to be filed.

 The issue of use has not been judicially tested in Barbados.

• 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.

 Using a variation of the trademark is allowable if the variation does not cause the mark to lose its significance.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. 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

 (or the mark is used in a misleading manner);

• the mark is functional;
• 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);
• 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;
• 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 prohibited in this jurisdiction; the application for or registration of the mark was made in bad faith.

• the mark is used in a misleading manner;
• the mark is prohibited in this jurisdiction.

• There is a deadline for bringing a cancellation action.

An application for a declaration invalidating a mark may be brought within five years from the date of registration of the mark if the mark should not have been registered because the mark resembles—in such a way as to mislead the public—a mark registered or pending in Barbados. An application for a declaration invalidating a mark may be brought within 12 years from the date of registration of the mark if the mark ought not to have been registered under the Act.

• The deadline for bringing a cancellation action is:

The starting point varies between 5 years and 12 years from when the mark was registered depending on the basis of the cancellation. Please contact a local agent.

• Anyone may bring a cancellation action.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:
  • power of attorney.

• The first renewal date of a registration is:
  • 10 years from the registration grant 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:
  • no more than the following number of months before the renewal date:

 A mark may be renewed within the 12-month period immediately preceding the date the renewal is due.

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

• The grace period after the renewal date has expired is:
  • 6 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.

IX. Domain Names

A. Domain Names

• Any domain name may be protected as a trademark.

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

N/A.

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

N/A.

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

.bb

• 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 domain names can be assigned, but this is on request to the said minister, who will advise accordingly.

• Domain name registrations can be licensed.

The domain names can be assigned, but this is on request to the said minister, who will advise accordingly.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  •  on application to the High Court of Barbados.

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

 within a three-year period.

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

There are two separate registries: the Trademarks Registry, where it will be necessary to disclaim the .com, and the Domain Name Registry, which will check the domain name with respect to other filed domain names.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another.

 An earlier-filed domain name registration will always create an obstacle to a later-filed trademark registration application filed by another. While this has not been judicially tested, it is arguable that a domain name that is duly registered will be an obstacle where such a name is confusingly similar to the trademark application. Please note that while the Act is silent on this particular point, where the use of the domain name is such as to infringe the Protection against Unfair Competition Act, or the trading practices offenses section in the Trade Marks Act, this will further strengthen the argument that the earlier-filed domain name will create an obstacle.

• In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

 The courts will consider the general principles governing the law of passing off and the laws dealing with unfair trading practices.

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

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