Trademark legislation in Sint Maarten

National

On a local level, trademark protection in Sint Maarten is now governed by the Trademark Act 1995, the Trademark Decree 1995 and the Regulation of the Bureau for Intellectual Property of Sint Maarten (“BIP”).

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 (Sint Maarten, Curaçao 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 Sint Maarten, Curaçao and/or the BES islands.

Requirements for filing a trademark application in Sint Maarten:
Application must be filed on prescribed form, in English, 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 the agent who is authorized thereto.

 Letters and evidence originating from abroad may be written in another language. Evidence or documents written in another language must be submitted along with a translation into English.

 An trademark application must comprise in Sint Maarten:
1. state 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, please state the name under the articles of incorporation, including the corporate structure, and also the street address and the principal place of business; \

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;

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:

a. the image must be sufficient quality to allow for electronic processing (scanning);

b. the image must be a photo (graphic) image of professional quality on matte paper with a rectangular or square format; and

c. the height and width of the image should not be larger than 8 cm and no smaller than 1.5 cm. Maximum printing format8 x 8 cm.

5. when priority based on the Paris Convention is claimed, a certified copy of the basic application needs to be filed (at the latest within one month after the filing date);

6. 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). Please note that the 11th edition of the Nice Classification applies in Sint Maarten;

7. 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;

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

Trademark registration in Sint Maarten
The relevant trademark conventions of which Sint Maarten is party of, 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;
• Trademark Law Treaty; and • the Singapore Treaty on the Law of Trademarks. Sint Maarten is a member of the World Trade Organization (“WTO”) and the World Intellectual Property Organization (“WIPO”). A trademark owner can only claim exclusive rights to a trademark in Sint Maarten if the concerned trademark is duly registered with the BIP. Protection of a trademark lasts for ten years following the date of application and is valid in the country Sint Maarten (Dutch side). A registration is renewable for a successive ten-year period. Under Sint Maarten law, 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 mark 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 Sint Maarten. trademarks lacking a distinctive character; 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 Sint Maarten or in the bona fide and established practices of the trade in Sint Maarten; trademarks being contrary to morality or to public order irrespective of the use that is made thereof.

Registrable Trademarks in Sint Maarten
As trademarks may be registered words, including personal names, drawings, prints, seals, letters, numerals, the shape 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

Non registrable trademarks in Sint Maarten
The following trademarks are non registrable:

- trademarks lacking a distinctive character;

- 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 Sint Maarten or in the bona fide and established practices of the trade in Sint Maarten;

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

-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 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 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 could lead to deceit of the public. 

Furthermore, the law provides that, notwithstanding registration in the Trademark Register of Sint Maarten, no protective rights will be acquired in respect of the following trademarks:
-trademarks similar to a collective trademark deposited for similar goods or services, in respect of which proprietary rights existed which lapsed less than three years ago, (this does not apply for the former owner of an identical or similar collective trademark or his/her successor in title);

-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;

-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;

-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

-trademarks of which the 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, a third party has used, in good faith and in a normal manner, within Sint Maarten, 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 Sint Maarten 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 Sint Maarten.

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 Sint Maarten.

Filing authority
Applications for registration of a trademark are to be filed with and to be dealt with by the BIP Sint Maarten, under the authority of the Ministry of Justice. 

Classification
The classification of goods and services, applied in Sint Maarten 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 Purposes of the Registration of Marks (10th 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
The carrying out of an availability search is not required. Nevertheless, it is recommended that the applicant, before filing an application for registration should carry out an availability search among prior registrations in Sint Maarten as a preliminary search on a voluntary basis, in order to evaluate the possibility of conflicts with prior rights. Carrying out of an availability search may be requested on payment of the required fee by any party. Carrying out of a search will normally take at least one month or longer. It is possible to request an accelerated availability search which will take approximately two weeks after payment of the required extra fee.

Examination
A. Formal examination
The BIP will first examine whether the requirements for obtaining a filing date have been complied with. Within two months from filing, 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, it will be examined whether the other formal requirements have been met. If the application doesn’t comply with one or more of those requirements, the applicant will be informed thereof with indication of the requirements concerned, and will be given three months to comply with these 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 complied with within the prescribed term, the application will lapse.

B. Examination as to registrability per se / examination on formal grounds
Applications for registration are also examined as to registrability per se. The BIP shall examine whether:               

1. the trademark applied for is eligible for registration;

2. the trademark has a distinctive character and is not exclusively descriptive;

3. the trademark is contrary to morality or to public order;

4. the trademark is a trademark of which registration is allowed in view of Article 6ter of the Paris Convention;

5. the registration of the trademark is applied for goods or services in respect of which use of the trademark may not lead to deceit of the public; and

6. the trademark is not a trademark for wines or spirits containing or consisting of geographical indications, for wines or spirits not originating from the geographical area so indicated. Registration of such trademark may be allowed if applied for in good faith before 1 January 2001, or if applied for in good faith before the geographical indication concerned is protected in the country of origin.

In case it is established by the BIP that the trademark is not registrable per se, registration will be provisionally refused. Before final refusal of the registration, the BIP will inform the applicant within two months from the filing of the application of its intention to refuse the registration. The applicant will be given the opportunity to file a reply in order to overcome the refusal within three months, which period may be extended on request or ex officio, provided that it cannot be extended beyond six months from the date of the first notification on the intention of refusal. If no reply is filed within said term, or if the reply is not sufficient, registration will be totally or partially refused and the applicant shall be notified thereof. The notification shall contain the grounds for refusal. The refusal must relate to the entire trademark, but may be limited to one or some of the goods or services for which registration is applied for.

If the decision to either entirely or partially refuse registration has become definitive, the deposit of the trademark will be null in so far as registration is refused.

Term
If during the last day of any term, the BIP is closed, the relative term is automatically extended until the end of the first day on which the Bureau is open for business again. 

Registration
Registration of a trademark in the Trademark Register of Sint Maarten cannot be refused based on anticipations. If the application meets the formal requirements, and the trademark is not found non registrable per se, the registration of the trademark will be effected. The legal date of registration of a trademark in the Trademark Register of Sint Maarten shall be the same as the official date of filing, irrespective of the actual date on which the registration is accepted. Registration will take place in the language of the application. 

Appeal
Within two months from the notification of final refusal, the applicant may lodge an appeal against the decision of the BIP. The appeal is to be lodged with the Joint Court of Justice of Aruba, Curaçao, Sint Maarten and/of Bonaire, St. Eustatius and Saba, and may be lodged on applicant’s behalf by the authorized trademark agent in Sint Maarten.

Opposition
Ex parte opposition proceedings are not provided in Sint Maarten. After registration, the cancellation of a trademark on both relative and absolute grounds may be demanded in proceedings on the merits before the Court of First Instance. In these proceedings you can also ask for an injunction and/or damages. 

Alteration after registration
The 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 effected a certificate of registration will be provided to the applicant.

Publication
Upon registration, all particulars thereof are published in the Trademarks Register 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 Sint Maarten including renewal, amendment, assignment, grant or cancellation of licenses, pledge or seizure, nullity are published.

Renewal of Trademarks in Sint Maarten
If a trademark owner wishes to renew his registration after the previous registration period of ten years has expired or will soon expire, 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
The requirements for renewal are:

1. an application on a prescribed form, signed by the applicant or agent, containing:

-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 International Classification;

-and the number and date of the last registration.

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

When application documents for the renewal of the registration of a trademark appear to be incomplete, the applicant will be informed thereof as soon as possible and will be given an opportunity to comply with the requirements within six months after 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 English. After renewal, a certificate of renewal will be sent to the owner of the registration.

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

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