General trademark information in BES Islands

The islands Bonaire, Sint Eustatius and Saba, hereinafter referred to as the “BES islands”, transformed into public entities (similar to a municipality) within the Netherlands. The constituent islands of the former Netherlands Antilles now all have their own distinctive trademark legislation and administration. Aruba already has its own trademark legislation since 1989.

Trademark legislation in the BES islands
National:
On a local level, trademark protection in the BES islands is now governed by the Trademark Act for the BES islands (“Wet Merken BES”), the Regulation Implementing the Trademark Act for the BES islands (“Uitvoeringsbesluit Merken BES”) and the implementing Regulations under the Trademarks Act for the BES islands.

International Registration:
As a result of the dismantling process, international registrations which contained a designation of the former Netherlands Antilles continued to have effect in the three new territorial entities (Curaçao, Sint Maarten and the BES islands). Furthermore, international applications containing a designation of the Netherlands Antilles, which were pending, and which were registered with a date prior to 10 October 2010, were registered with respect to the three new territorial entities. In each case, the applicable legislation will be the corresponding legislation for the territorial entity concerned.
As from October 2010, international applicants and holders of international registrations may individually designate, or subsequently designate, under the Madrid Protocol, the territorial entities of Curaçao, Sint Maarten and/or the BES islands.

International
The relevant trademark conventions where to the BES islands are a party are as follows:
• Paris Convention for the Protection of Industrial Property (International Union);
• the Madrid Protocol concerning the International Registration of Trademarks;
• the Agreement on Trade-Related Aspects of International Property Rights (TRIP’s);
• Nice agreement Concerning the International Classification of Goods and Services for the purpose of the Registration of Marks (10th edition);   
• Trademark Law Treaty; and  
• the Singapore Treaty on the Law of Trademarks.

The BES-Islands are a member of the World Trademark Organisation (“WTO”) and the World Intellectual Property Organisation (“WIPO”).             

Trademark registration
A trademark owner can only claim exclusive rights to a trademark on the BES islands if the concerned trademark is duly registered with the Benelux Office For Intellectual Property (“BOIP”). The BOIP works under the authority of the Department of Caribbean Netherlands (“Rijksdienst Caribisch Nederland”) and is responsible for the implementation of the Trademark Act for the BES islands. Protection of a trademark lasts for ten years following the date of application and is valid on the BES islands. After ten years a trademark registration is renewable for a successive ten-year period.

Under the Trademark Act for the BES islands, the exclusive right to a trademark is obtained by registration, which confers exclusive proprietary rights. Accordingly, without prejudice to priority rights, the proprietary rights to a trademark belong to the party who was the first to file an application for registration of the trademark concerned.

The exclusive rights to a trademark do not include the right to prevent the use in the course of trade of a similar sign which is protected on the basis of a prior right which only has local significance, if such prior right is recognized under the law of the BES islands.

Registrable trademarks
As trademarks may be registered words, including personal names, drawings, prints, seals, letters, numerals, shapes of goods or their packaging and all other signs that may serve to distinguish the goods or services of an enterprise, provided they are not excluded from protection and registration by law.

Shapes determined by the nature of the goods, that influence the actual value of the goods, or that yield a result in the industrial field, cannot be regarded as trademarks.

Trademarks may be registered in relation to goods and services. In principle, the provisions relating to trademarks for goods apply to service marks as well. An application for the registration of a trademark may be both for goods and services. Multiclass applications are accepted.

Non-registrable trademarks

The following trademarks are non-registrable:

1.      trademarks that lack a distinctive character;

2.      trademarks consisting exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the services, or which have become customary in a current language of the BES islands, being Dutch, English, Spanish and Papiamentu, or in the bona fide and established practices of the trade in the BES islands;

3.      trademarks being contrary to morality or to public order irrespective of the use that is made thereof;

4.      trademarks consisting of or containing without authorization by the competent authorities, armorial bearings, flags or any other state emblems of any of the countries which are a party to the Paris Convention, or official signs and hallmarks indicating control and warranty adopted by those countries, provided the trademark is intended to be used for goods or services identical or similar to those in respect of which control and warranty is indicated, or any imitation of these from a heraldic point of view;

5.      trademarks consisting of or containing without authorization by the competent authorities, armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organizations of which one or more countries which are a party to the Paris Convention are members, or any imitation thereof from a heraldic point of view; and;

6.      trademarks of which the registration is applied for in respect of goods or services for which the use thereof of which the lead to deceit of the public.

Furthermore, the law provides that, notwithstanding registration in the trademark register - the Register for Caribbean Dutch Trademarks (“CaribIE register”) - no protective rights will be acquired in respect of the following trademarks:

1.      trademarks similar to a collective trademark registered for similar goods or services, in respect of which proprietary rights existed which lapsed less than three years ago;

2.       trademarks similar to an individual trademark, registered on behalf of a third party for similar goods or services, in respect of which the registration expired less than two years ago, unless such third party gave his/her consent or did not fulfill the use requirement in respect of such trademark;

3.      trademarks liable to be confused with a trademark that is a well-known trademark within the meaning of Article 6bis of the Paris Convention, owned by someone else, unless the owner of such trademark gave his/her consent;

4.      trademarks for wines or spirits consisting of or containing geographical indications for the designation of wines or spirits, with respect to wines or spirits not originating from the geographical place so indicated, or if deposited in good faith before the geographical indication concerned became protected in the country of origin; and

5.      trademarks whose registration was applied for in bad faith. A trademark is deemed to have been applied for in bad faith, in any of the following instances:

a.      if the trademark has been applied for by an applicant who knew or ought to know that, within the preceding three years, that a third party has used, in good faith and in a normal manner, within the BES islands, a similar trademark in respect of similar goods or services, and the said third party has not given his/her consent; or

b.      if the trademark has been applied for by an applicant who, as a result of direct relations with a third party, knew that within the preceding three years the said third party has used, in good faith and in a normal manner, outside the BES islands a similar trademark in respect of similar goods or services, unless such third party has given his/her consent or the said knowledge about the use of the trademark was acquired only after the applicant had started to use the trademark within the BES islands.

Applicant
Any person, either individual or legal entity, may apply for and obtain registration of a trademark. It is not a requirement that the applicant for registration has an enterprise to which the trademark relates, and so it is possible, for instance, that a trademark is registered by a holding company, and is used by its subsidiary. Use of a trademark or even a bona fide intention to use a trademark is not a prerequisite for its registration. However, the right to a trademark may lapse in case of non-use, without valid reasons, during an uninterrupted period of five years. Foreigners may apply for and obtain registration of trademarks to the same extent as parties being a national of or domiciled in the BES islands.

Requirements for filing a trademark in Bes Islands
An application must be filed on prescribed form in English or Dutch, signed by the applicant (if signed on behalf of a corporate body, name and capacity of the signatory must be mentioned below the signature), or signed by an agent who is authorized thereto.

An application must comprise the following:

1.      the last name, given names (in full) and street address of the interested party, if the latter is a natural person. If a corporate body is involved, its legal form must be indicated, as well as the name and address of that body’s agent;

2.      a statement of the categories of goods and services (11th edition, Nice Agreement);

3.      in case a collective trademark or a shape mark is involved, an indication that a collective mark or a shape mark is concerned, and, with respect to the collective trademark, a copy of the regulations concerning the use and control of the trademark are also required to obtain a filing date. The regulations must always be written in Dutch, or English;

4.      the trademark and an indication that the trademark is a verbal mark, a figurative trademark, a semifigurative trademark, a shape mark or any other type of trademark. If you wish to register a verbal mark, specify the trademark in the appropriate space, using block capitals. If you wish to register a figurative mark place an image of the trademark within the appropriate space: the image must be sufficient quality to allow for electronic processing (scanning); the image must be a photo (graphic) image of professional quality on matte paper with a rectangular or square format; and the height and width of the image should not be larger than 8 cm and no smaller than 1.5 cm. Maximum printing format 8 x 8 cm.

5.      an indication of the color or colors in words; where appropriate, accompanied by the corresponding color code;

6.      when priority based on the Paris Convention is claimed, a certified copy of the basic application needs to be filed. Furthermore the country, date, number and holder of the filing on which this right of priority is based must be indicated;

7.      a list of goods and/or services for which registration is desired, namely a description of the goods and/or services, with indication of the international class(es). The 11th edition of the Nice Classification applies in the BES islands;

8.      an application may relate to goods or services of more than one class of the International Classification (Nice, 11th edition), provided that an additional class fee is due for each class over the third. Registration of a trademark for both goods and services may be applied for in one application;

9.      payment of the required fees (and proof thereof in case the payment has been made by means of transfer or deposit), and

10.  if the application is signed on behalf of a legal entity, the signatory’s authorization to sign such document shall be stated on the document.

Power of Attorney
It is not required to attach a power of attorney with the application if the applicant decides to designate an agent or an attorney to assist him with the registration of a trademark. Any agent or an attorney shall be presumed to have a power of attorney to do so. If the BOIP has reason to doubt the correctness of a representative’s authorization it may require a power of attorney within one month. This period may be extended upon request with one month. The failure to respond within the original or extended period shall result in the application being disregarded.

Filing authority
Applications for registration of a trademark are to be filed and dealt with by the BOIP, under the authority of the Minister of Economic Affairs, Agriculture and Innovation (“Minister van Economische Zaken, Landbouw en Innovatie”).

Classification
The classification of goods and services, applied in the BES islands in respect of the registration of trademarks, is the International Classification established under the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (11th edition). The goods and/or services for which registration is desired must be described precisely and in accordance with the International Classification of Nice.

Availability search
It is recommended that the applicant, before filing an application for registration should consult the Register for Caribbean Dutch Trademarks (“CaribIEregister”) in order to evaluate the possibility of conflicts with prior rights. The BOIP does not conduct an availability search.

Examination for registration
Formal examination The BOIP will examine whether the requirements for obtaining a filing date have been complied with. As soon as possible after filing the application form the applicant will be notified of the filing date or of the grounds explaining why a filing date could not be established. After a filing date has been accorded, the trademark will be examined whether the other formal requirements have been met. If the application does not comply with one or more of those requirements, the applicant will be informed thereof with indication of the requirements concerned, and will be given one month to comply with those requirements. This term may be extended on request or ex officio, provided that it cannot be extended beyond six months from the date of dispatch of the first notification. If the requirements are not met within the prescribed term, the application will lapse.

For the BES-Islands there is no examination on formal grounds.

Registration
Registration of a trademark in the Register for Caribbean Dutch Trademarks (“CaribIEregister”) cannot be refused based on anticipations (nor on absolute or relative grounds). If an application meets the formal requirements the registration of the trademark will be effected. The legal date of registration of a trademark shall be the same as the official date of filing, irrespective of the actual date on which the registration is affected. Registration will take place in the language of the application.

Opposition
Ex parte opposition proceedings are not provided for the BES islands. After registration, the cancellation on both relative and absolute grounds of a trademark may be demanded in proceedings on the merits before the Court of First Instance. In these proceedings it is possible to request for an injunction and/or damages.

Alteration after registration
The picture, sign or figure of which a registered trademark consists may not be modified, nor during its registration, nor at the occasion of the renewal thereof.

Certificate of registration
As soon as the registration has been affected a certificate of registration will be provided to the applicant.

Publication
Upon registration, all particulars thereof are published in the Register for Caribbean Dutch Trademarks (“CaribIEregister”). Publication will be done in the language of the registration. At present, there is no publication of the application prior to registration. All particulars regarding registrations of trademarks in the BES islands - including renewal, amendment, assignment, grant or cancellation of licenses, pledge or seizure, nullity - are published.

Renewal of trademarks
If a trademark owner wishes to renew his registration, after the previous registration period has been expired or will expire soon, the owner has to apply for renewal and pay the renewal fee(s) within a period of six months prior to the expiration of the running period of protection. Renewal may still be applied for and the required renewal fee(s) be paid during a grace period of six months after expiration of the registration period, provided that an extra fee is due for payment of the renewal fee(s) during the grace period. The renewal period runs from six months before until six months after the date of expiration.

Requirements of trademarks renewals in Bes Islands
The requirements for renewal are:

1.      an application on a prescribed form, signed by the applicant or agent, shall contain: the full name and address of the owner of the registration; the name and address of the agent; if the list of goods and services has been limited since the last publication, mentioning the goods and/or services for which the registration must be renewed, as far as possible, in the terms of the alphabetical list appertaining to the Nice International Classification and, at all events, grouped according to the classes and in the order of sequence of the classes of the Nice International Classification; and the number and date of the last registration.

2.      renewal representations of the trademark, in principle, are to be filed only if deemed necessary by the BOIP; and

3.      evidence of payment of the renewal fee and of the additional class (above the third class) fees due (if any).

When the documents for renewal of the registration appear to be incomplete, the applicant will be informed thereof as soon as possible and be given an opportunity to comply with the requirements within one month after filing the application for renewal. This period may be extended on request or ex officio, provided that it cannot be extended beyond six months from the date of filing the application for renewal. When the application for renewal is not brought in order within that period, renewal shall not be affected.

Renewal takes place in the same language as the original registration, except if the BOIP, pursuant to a request thereto, decides otherwise. After renewal, a certificate of renewal will be sent to the owner of the registration.

Use requirement
A registered trademark should be normally used in order to prevent the lapse of the exclusive rights to the trademark. The exclusive rights to a trademark could be declared null and void by the Court if, without a valid reason, the trademark is not used in a normal manner for the goods and/or service for which the trademark has been registered during any uninterrupted period of five years. However, it is possible to avert revocation by (timely) resumption of use.

In a lawsuit, the Court may place the burden of proof as to use, wholly or partly upon the owner of the trademark.

The question whether the use of a trademark can be classified as ‘normal use’ shall be determined by considering all the circumstances of the case. Generally, the use of a trademark constitutes normal use if it was performed for the purpose of acquiring a sale of the products concerned. A more nominal use, for instance by ’token sales’, will not be sufficient.

The use of a registered trademark by another person with the consent of the owner will accrue to the owner. Use of a trademark in a form differing in elements which do not alter the distinctive character of the trademark in the form in which it was registered may be considered sufficient use. Affixing in the BES islands, a trademark on goods destined solely for export out of the BES islands or on the packaging of such goods is considered relevant use.

Loss of trademark rights

Nullity of a trademark in Bes Islands
The nullity of the registration of a trademark may be invoked, either in an action for nullification before the competent Court, or as a defense against any action taken by the registered owner of the trademark, by any of the following:

1.      by any interested party, including the Public Prosecutor, and at any time, if the registered trademark:

a.      consists of a sign which, according to its nature, cannot be considered to constitute a trademark in the sense of the law; or

b.      falls under any of the categories mentioned above, under ‘non-registrable trademarks’, items 3, 4, 5, 6, 7 or 10.

2.      by any interested party, including the Public Prosecutor, during five years from the date of application; in case the filing of a trademark corresponds to a collective trademark, filed for similar goods or services to which a right that lapsed in the course of the three years preceding that filing, was attached;

3.      by the owner of the older trademark concerned, or by any interested third party jointly with the owner:

a.      at any time (but see provision on forfeiture of rights in case of acquiescence), if the registered trademark is:

i.                    Identical to a trademark, filed by a third party at an earlier date and for the same goods or services and to which rights existed at the time of filing of the later trademark are still in force;

ii.                   identical or similar to a trademark, filed by a third party at an earlier date for the same or similar goods or services to which rights existed at the time of filing of the later trademark which are still in force, where there exists in the public mind a likelihood of association of the trademarks; or

iii.                 similar to another trademark registered for non-similar goods or services which has a reputation in the territory of the BES islands to which rights existed at the time of filing of the later trademark which are still in force, where use without due cause of the younger trademark takes unfair advantage of, or is detrimental to, the distinctive character of the repute of the older trademark.

b. during three years from the date of lapse of an earlier registration, if the registered trademark is similar to an individual trademark, filed by a third party at an earlier date for similar goods or services; which registration of the trademark has lapsed by expiration of its term of protection less than two years before filing of the later trademark, except if the third party has given his/her consent or the use requirement for the earlier trademark has not been complied with;

c. during five years from the date of the application for registration, if the registered trademark is confusingly similar to a trademark being well-known in the sense of article 6bis of the Paris Convention and belongs to a third party who has not given his/her consent, even if the trademark is not registered in the BES islands; or

d. during five years from the date of the application for registration if the registered trademark has been filed in bad faith.

The nullification of the registration of a trademark in any of the above cases has a retrospective effect from the date of filing of the trademark. Nullification must, if the grounds for the lapse relate only to a part of the goods or services, be restricted to the part of the goods or services concerned. However, it shall always relate to the entire sign constituting the trademark.

The Public Prosecutor may invoke the nullity of the registration of a collective trademark if the regulations for use and control of the trademark are contrary to public order, or do not contain the provisions prescribed by law. Furthermore, the Public Prosecutor may invoke the nullity of any amendments to the regulations for the use and control of a collective trademark, if these are contrary to public order or the provisions of the law, or if these would lead to a weakening of the guarantees offered to the public by the regulations.

The Court shall ex officio declare the registration null in deciding nullification cases.

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