The law applicable to Trade Marks in Saint Vincent and The Grenadines:

Trademark Law

Legal basis is the Trade Marks Act No. 46 of 2003, as amended by Act No. 50 of 2004, and the Trade Marks Regulations, 2004.     Is not a member of the Madrid Agreement, the Madrid Protocol and the European Union. Trademark protection is obtained by registration, although there is some recognition of the first user of a mark.

Classification
Nice classification, 11th Edition.       
Member of TMclass since June 21, 2021 and accepts terms from the harmonized database of goods and services (HDB).

Trademark registration proceedings in Saint Vincent and The Grenadines
The application is filed at the Commerce and Intellectual Property Office (CIPO).
Multiple-class applications are possible.      
An application can include goods in any number of classes, but with additional charges for each additional class.  
A signed power of attorney is necessary.    
Foreign applicants do not need a domestic registration.     
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.   
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.           
Trademark applications accepted by the Registrar are published in the official gazette prior to registration.
The approximate time frame for completing the registration process of a trademark in Saint Vincent and the Grenadines is from 12-18 months.

Opposition Period
National:
The opposition period is three months from the publication date of the application.

Trademark Duration
Protection begins with the date of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.

General information about trademark registration in Saint Vincent and The Grenadines:
At the Commerce and Intellectual Property Office (CIPO) in Saint Vincent and The Grenadines
The laws that regulate the trademarks in Saint Vincent and The Grenadines is the Trade Marks Act, CAP. 315 which entered into force on 18th May 2004.  

National protection:
Registration of a trade mark in St. Vincent and the Grenadines only gives it protection within the jurisdiction of St. Vincent and the Grenadines. Local registration would nonetheless be useful abroad as evidence of your mark's reputation in support of an action for passing off. Ideally, however, you should register your mark in every country where you will be using it. 

Use of designations:
While trade mark registration is certainly a wise course of action it is not compulsory. It is however important to note, that although the designation "TM" can also be used with an unregistered trade mark, the designation ® may only be used in relation to a mark registered in St. Vincent and the Grenadines. Where an unregistered trade mark is represented to be locally registered, the person who has applied that mark is liable to a fine of $10,000.00.

Saint Vincent and the Grenadines join TMclass:
On the 21st June 2021, the Commerce and Intellectual Property Office of Saint Vincent and the Grenadines (CIPO-VC) joined TMclass. CIPO-VC will use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass.        

Following CIPO-VC’s decision to use the HDB there are now 15 IP offices outside the EU, which use and accept terms from this database.     

The inclusion CIPO-VC in TMclass brings the total number of participating national and regional IP Offices, including ARIPO, OAPI, WIPO and EUIPO, to 84. 

TMclass offers users the opportunity to search for and translate goods and services to and from any of the 44 languages available as well as verifying the terms’ correct classification under the Nice classification.  

The incorporation in TMclass and the adoption of the HDB by CIPO-VC are concrete results of the CARIFORUM Intellectual Property and Innovation Project funded under the 11th European Development Fund and implemented by the European Union Intellectual Property Office (EUIPO). 

Requirements for application for registration of a trademark in Saint Vincent and The Grenadines:
• Representation of the trademark: An electronic copy of the representation of the trademark is required to allow for resizing.
• Classes: List the classes in which you wish to register the trademark and the goods or services appropriate to that class. The list of classes and descriptions are available at: http://www.wipo.int/classifications/nivilo/nice/index.htm?lang=EN  (Registration of the trademark can only protect the use of the trademark in the classes registered).
• If the mark consists of colour, please indicate the colours you wish to claim.
• Full Name of the Applicant.
• Full Address of the Applicant.
• Executed Authorisation of Agent (AoA).
• If the applicant wishes to claim priority on an earlier application, please provide the priority details with your instructions. N.B: An application for registration of a trademark where priority is claimed must be filed within six months of the date of the first application. A priority claim must be based on an earlier application in one of the Convention Country which is a party to the Paris Convention for the Protection of Industrial Property 1883. Community trademarks (CTM) or OHIM documents are not accepted, as they are not parties to the Paris convention. The list of Convention Countries are available at: http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=2
• The priority document must be provided from the country of the first application with in six months of the date of the local application for registration.
• A certified translation of any information on Priority document which is not English must accompany the priority document.

Please note the following features of the Authorisation of Agent form in St. Vincent:

• must have the country of incorporation for the proprietor company (or when applicable, the State of incorporation in the United States of America).
• must bear the date, signature, printed name, address and office held by person authorized to execute documents on behalf of the company.
• the signatures thereon must be notarised.
• all foreign language content must be accompanied by a certified translation.
• must also bear the company seal of the applicant (if applicable).
• We advise that you check Item 4 giving general power.

There is two types of legal protection are available for trade marks in Saint Vincent and The Grenadines:
The first is a statutory right arising from the registration of the mark, which entitles the registered owner to bring an action to stop infringement.

The second type of protection is applicable to all trade marks, whether registered or unregistered, and is the common law right to bring an action for “passing off” against the unauthorised user of a mark. This second option can however be time consuming and costly as the trade mark owner is called upon to prove that he has developed a reputation in trade using the mark and that the contrary use of it by others will confuse or deceive members of the public.

What is the reason for making statutory protection available for trade marks?
Underlying the statutory protection of trade marks is acceptance of the fact that an enterprise should have the right to prevent others from benefiting from or undermining their hard work in building a good reputation for their products. It is also important that consumers be protected from being misled as to the true source of the goods or deceived into purchasing inferior products.

What are the benefits of registering a trade mark in Saint Vincent and The Grenadines?
A trade mark is a valuable marketing tool which over time becomes integral to the competitiveness of a business. Registration helps to ensure that the business retains its integrity relative to the placement of its mark, by giving a trade mark owner an exclusive right to use his mark in relation to the goods and services specified in the registration. This puts the owner in a position to stop other people from using his mark or a confusingly similar one. Also, because a registered mark is the personal property of the registered owner it can be assigned or licensed by the owner for financial gain.  

How much does trade mark protection cost?
The government fees payable on a successful application to register a word mark in relation to one class of goods, in circumstances where there is no opposition, would be $305.00 made up as follows:

· Authorisation of Agent - $5.00 stamp duty
· Application for registration - $100.00
· Publication of mark on acceptance - $100.00
· Certificate of Registration - $100.00 The cost of trade mark protection however varies according to:
· the number of classes of goods or services on which the mark is to be used;
· the type of mark - whether a word only, a logo or a word and symbol combined;
· Whether there is a need to defend the application in the event of opposition by a third party.  

What does registration entail in Saint Vincent and The Grenadines?
Individuals and companies who wish register a trade mark are required to submit an application for registration in the prescribed form (Form 1), along with the required filing fee to the Commerce & Intellectual Property Office (CIPO).

CIPO is located on the First Floor of the Brewster’s Building on Mc Coy Street, Kingstown.

Apart from basic information such as the name and address of the applicant and that of the filing attorney, an application is required to contain a clear representation of the mark for which protection is sought, including any colours or three-dimensional features and a list of the goods and/or services to which the mark is intended to apply, classified in accordance with the Nice International Classification System (http://classifications.wipo.int/fulltext/nice).

The applicant may also seek assistance from TMclass for classification of goods. Unless your mark consists of a word that is not in any special format, your application must also be accompanied by 6 additional representations of the mark to facilitate various stages of the application’s processing.  

Are there any requirements that a mark must meet to qualify for statutory protection?

In order to qualify for protection, a trade mark:
· must be capable of being graphically represented.
· must be distinctive and therefore capable of distinguishing the goods and services of the applicant for the trade mark from those of another.
· must not be such as would deceive or cause confusion among consumers; · must not be scandalous in nature or its use contrary to law;
· must not be the same as or similar to a registered trade mark;
· must not consists of or contain a sign that is prescribed not to be used as a trade mark. Each mark is examined to determine whether it conforms to the above mentioned requirements and all other requirements of the Act. Every effort should be made to ensure the uniqueness of your trade mark as marked similarity to a registered mark may result in the refusal of registration. It should be noted that marks which are words or symbols that other enterprises in the same field of business should be free to use will not be registered, e.g. the word “Lawyer” would be refused as a trade mark in relation to the provision of legal services. Where a mark meets the statutory criteria, it will be accepted for registration and its acceptance advertised on payment of a publication fee. Other persons will then have a period of 3 months from the date of advertisement to file a notice of opposition to the registration of the mark. Where there is no opposition or where opposition proceedings are determined in favour of the applicant, a further fee will be payable for the preparation of a Certificate of Registration.  

How long does statutory protection last?
On the issue of a Certificate of Registration, a trade mark is protected for a period of 10 years from the date of filing.

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