General trademark information of Trinidad and Tobago
 

• Registration is not required to establish rights in a trademark; sufficient prior use establishes rights in a trademark; this is a "first-to-use" jurisdiction.

• 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.

There has been some discussion in the industry; however it does not at this point seem to be under active consideration by the Legislature.

B. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is: 10 to 12 months.

C. Advantages of trademark Registration in Trinidad and Tobago

• The benefits of registering a trademark include the following:
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection

(it provides only 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.

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

(the name of a company, individual, or firm represented in a special or particular manner);

• devices;
• certain three-dimensional shapes;
• colors;
• slogans

(Slogans are registrable only as trademarks and must fulfill the criteria for such; there is no separate Register exclusively for slogans.);

• trade dress/get-up.

• The special requirements for the registration of three-dimensional shapes are:  representation of the mark from multiple views; the number of views will depend on the shape.

• 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;
  • 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

(particularly if the mark is shown to be a well-known, popular surname);

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

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

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

 http://ipo.gov.tt/

• The official register can be searched online at the following URL:

 http://ipo.gov.tt/trademark-search/ (on a limited basis). Details of marks are not available 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.

Typically, an action would be brought under the common law tort of passing off; however, there is provision for the protection of unregistered marks under the Protection Against Unfair Competition Act.

• Courts may protect unregistered marks in "first to file" jurisdictions if they have been used in a way that is considered legally sufficient. Please consult a local trademark attorney.

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

The proprietor of a well-known mark whether registered or not, regardless of whether the proprietor carries on business or has goodwill in Trinidad and Tobago, is entitled to restrain by injunction the use of any identical or similar trademark in relation to identical or similar goods/services where the use is likely to cause confusion.

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Singapore Treaty;
  • Madrid Protocol;
  • 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.

• 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;
  • priority claim, where priority of an earlier application is claimed

(No documents are required, simply the date on which the application was filed, the country in which it was filed, and application number if available.).

• The list of goods and services in this jurisdiction may specify:
  • a list of names commonly used in the trade for the specific goods or services of interest.

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

 one (electronically filed).

• In this jurisdiction, the following types of registration are available:
  • national;
  • international.

• This jurisdiction is a party to both the Madrid Protocol and the Madrid Agreement and may 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.

• An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

• Applications can be filed online at the following URL:

 efiling.ipo.gov.tt/efiling/login

• The official file cannot be accessed online.

• Applications are officially searched as to prior 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 covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

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.

• The filing particulars are made available to the public:
  • through publication and online

 (to a limited extent). Manual searches can also be conducted at the IPO.

• 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.

However, a letter of consent from the owner of the prior mark is the only way of overcoming the refusal.

• This jurisdiction does not have 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;
  • 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 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.

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

• The opposition period begins on the following date: the date of publication.

• The opposition period ends on the following date: three months from the date of publication.

• Anyone may initiate an opposition.

• Oppositions can 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 can be made for a portion of the territory covered by the application.

If it results in a complete separation of markets so that likelihood of confusion is non-existent it may be permitted, but an assignment that would result in exclusive rights in the same mark for the same goods being held separately for different parts of Trinidad and Tobago is not permitted. This is subject to the Controller's discretion.

• An assignment of a registration can be made for a portion of the territory covered by the registration.

If it results in a complete separation of markets so that likelihood of confusion is non-existent it may be permitted, but an assignment that would result in exclusive rights in the same mark for the same goods being held separately for different parts of Trinidad and Tobago is not permitted. This is subject to the Controller's discretion.

• An assignment of an application can be for some or all of the goods or services listed in the application, but only with leave of the Controller who must be satisfied that the two resulting registrations do not contain goods or services of the same description.

• An assignment of a registration can be for some or all of the goods or services listed in the registration, but only with leave of the Controller who must be satisfied that the two resulting registrations do not contain goods or services of the same description.

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

If goodwill is not included in the assignment and the mark is in use, the assignment must be published.

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

If goodwill is not included in the assignment and the mark is in use, the assignment must be published.

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

• 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;
  • details of the trademark 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 an application is not required.

• Legal verification of a written assignment document of a registration is not required.

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

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

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, recordation of a registered trademark user is an alternative means of registering the rights of another to use the mark.

• A license of an application can be made for a portion of the territory covered by the application.

The statutory declaration of the licensor must state any territorial limitations.

• A license of a registration can be made for a portion of the territory covered by the registration.

The statutory declaration of the licensor must state any territorial limitations.

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

 The statutory declaration of the licensor must state which goods/services are being licensed.

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

 The specific goods/services being licensed must be stated in the licensor's statutory declaration.

• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application must be licensed.

• Use by a related company of a registered mark must be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship 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;
  • signature by licensor;
  • express permission to sublicense, if appropriate.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • territory of the license;
  • quality control provisions;
  • simple signature by licensor (see below for execution requirements).

• Legal verification of a written agreement to license an application is not required.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

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

• Legal verification of a written agreement to license a registration is not required.

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.

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

No formal documents are required to record a change of address

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

 filing of the prescribed form setting out the name and address of the grantee, the nature of the interest whether fixed or floating, and the extent of the security and right in or under the trademark secured.

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 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 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.

• The territorial limit of registration is:

Trinidad and Tobago.

C. Term

• The initial term of a registration is:
  • 10 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 that the mark is registered.

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

• The use of ® is not legally recognized.

• The legal consequences of false or misleading marking are:

on summary conviction, a fine of TT $10,000.

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:

  A registered mark is vulnerable to cancellation for non-use once the mark has not been used for a continuous period of five years, prior to one month before the application for removal is filed. The period is calculated from the registration date.

• 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:

it becomes vulnerable to cancellation for non-use at the suit of a third party.

• 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 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 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:
  • 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;
  • 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;
  • 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.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

• Anyone may bring a cancellation action.

• Cancellation actions can be filed online at the following URL:

 https://efiling.ipo.gov.tt/efiling/

C. Renewal

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

(required only if the agent filing the renewal is not already on record).

• The first renewal date of a registration is:
  • 10 years from the application filing 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:

 six 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:
  •  Once the mark has not been deemed abandoned for non-renewal, it can be renewed on payment of a late fee.

• The penalty for late renewal is:
  • a fine.

• Renewal can be effected online at the following URL:

 https://efiling.ipo.gov.tt/efiling/

• 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:

 Trinidad and Tobago Customs & Excise Division.

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

 A Notice of Objection to Importation must be filed with the Customs Authority. A local Attorney-at-Law should be consulted.

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:

the Trinidad and Tobago Network Information Centre (TTNIC).

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

TTNIC

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

.tt

• 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 cannot 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);
  • National Arbitration Forum.

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

 The registration can be restored only within one month after expiry, on the payment of the renewal fee.

• 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 only if the domain name is being used as a trademark in addition to being used as an address.

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

 Please note that there has been no national precedent on this in the courts. Trinidad and Tobago will follow the English common law.

Trinidad and Tobago trademark opposition process

I. Availability

A. Pre- or Post-Grant

• Opposition is available.

• Opposition is conducted pre-grant.

• Opposition is available for either all or part of the goods/services covered by a trademark application or registration.

B. International Registrations

• This jurisdiction is expected to become a member of the Madrid Agreement and/or the Madrid Protocol: However, there is no publicized or expected date for this.

C. Collective Marks and Certification Marks

• Collective marks are registrable.

• Opposition to an application for a collective mark is available.

• Opposition to a registration for a collective mark is not available. While opposition to a registered mark is not allowed, the Trade Marks Act does provide for revocation of the registration on stipulated grounds.

• Certification marks are registrable.

• Opposition to an application for a certification mark is available.

• Opposition to a registration for a certification mark is available.

II. Effect on Registration Rights

A. Effect on Registration Rights

• An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant.

III. Grounds

A. Absolute, Relative and Other Grounds

• The following grounds are admissible for opposition:

• relative grounds (based on conflicting prior application(s)/registration(s) or based on conflicting prior rights in unregistered marks);

• absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, non-distinctiveness, descriptiveness or deceptiveness);

• bad faith issues (e.g., wrongful claim to ownership or lack of intention to use);

• conflicting copyright or design rights;

• rights under Article 6bis of the Paris Convention or the equivalent thereto (notorious or well-known marks);

• rights under Article 6septies of the Paris Convention or the equivalent thereto (registration in the name of an agent or other representative of the proprietor of the mark);

• rights in a locally registered company name;

• rights in the name of a local citizen or resident;

• rights under Article 6ter of the Paris Convention or the equivalent thereto (prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations);

• offenses against public policy or principles of morality.

B. First to Use or First to File

• In an opposition involving conflicting trademark registrations or applications, an earlier use date prevails over a later filing date (i.e., this is a first-to-use jurisdiction).

• Circumstances under which earlier use is considered sufficient to prevail over a later filing date are: It would require evidence of goodwill and reputation in the mark locally, which could be established through continuous use of the mark in Trinidad and Tobago for at least five to eight years prior to the filing of the application.

IV. Forum

A. Forum

• The opposition authority is part of the Trademarks Registry/Office.

V. Costs and Fees

A. To Initiate

• The government/official fees for filing an opposition based on a single prior registration are: TTD 1,400 (approximately USD 215).

• The approximate range of attorney fees for filing an opposition based on a single prior registration is: TTD 3,000-4,500 (approximately USD 443-665).

• A listing of government/official fees for oppositions is not available online.

B. Monetary Bonds or Surety from Foreign Opponent

• Provisions requiring monetary bonds or other surety from a foreign opponent are as follows: if the opponent/applicant neither resides nor carries on business in Trinidad and Tobago. The decision by the Controller of the Intellectual Property Office (Controller) to require such security will be only following an application by the other party.

VI. Burden of Proof

A. Burden of Proof

• The burden of proof is on the applicant to justify registration in the face of grounds of opposition raised by the opponent.

VII. Substantive Examination

A. Substantive Examination

• The trademark registration process includes an official, substantive examination.

• This system includes an official, substantive examination of an application on:

• both absolute and relative grounds.

• The official, substantive examination of an application is conducted before publication for opposition.

• Examination of an application on relative grounds includes an official search for conflicting prior applications and registrations, and the examiner has the right of objection and refusal based on cited marks.

• Any official, substantive examination report is not open to public inspection before the end of the official opposition term, or at any other time.

• Opposition is not considered part of the official, substantive examination and is decided in a separate proceeding.

• An official, substantive examination will not be conducted after an opposition proceeding has been concluded or after an opposition has been withdrawn.

VIII. Standing and Other Opponent Issues

A. Valid Opponent/"Person" and/or "Interested Person" Defined

• Standing to oppose extends to:

• any interested person. Legal interest is required. For the definition of "interested person," see below.

• For purposes of standing, "person" is defined as:

• both natural and juridical persons.

• For purposes of standing, "interested person" is defined as:

• someone who believes he will be damaged by the registration;

• someone who owns an earlier pending application to register a conflicting trademark;

• someone who owns an earlier conflicting trademark registration;

• someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;

• someone who owns rights in a conflicting trademark that were acquired through use;

• someone who is a licensee of any conflicting trademark or other intellectual property right;

• someone who owns a company name that conflicts with the mark that is the subject of the trademark application;

• someone who is of the opinion that the mark is not registrable.

B. On Basis of Grounds

• Where opposition is based on relative grounds (i.e., a prior registered or unregistered right), then:

• the owner or a licensee of the prior right can use that right as a ground of opposition.

• Relevant prior rights must be locally established rights (e.g., local national registration rights, applicable regional rights or relevant International Registration extensions, or local rights in unregistered marks).

C. Assignees and Licensees

• An unregistered assignee of a relevant prior right may not be a valid opponent.

• A registered licensee of a relevant prior right may be a valid opponent.

• An unregistered licensee of a relevant prior right may not be a valid opponent.

D. Concealing Identity of Opponent

• An opposition filed in the name of the legal representative for purposes of concealing the identity of the principal is not considered validly filed even if the opponent meets all the other criteria.

E. Joint Opponents

• Two or more opponents may not jointly file a single opposition.

• A parent company and its trading subsidiary may be indicated together as opponents in a single joint opposition.

• Two otherwise-unrelated companies may not file a single joint opposition.

F. Foreign Opponent

• Oppositions cannot be filed from abroad; they must be filed by a local agent/attorney.

G. Opponent's Prior Rights and Use

• If an opponent relies on a prior registration, the applicant or the opposition authority:

• may require the opponent to provide proof of use of the earlier-registered mark for the goods or services relied upon in opposition.

• If the opponent does not produce satisfactory proof of use of its prior mark for relevant goods/services, the result would be that:

• the opposition would be defeated only in respect of the goods/services relied upon for which satisfactory proof was not provided.

• Additionally, if the opponent does not produce satisfactory proof of use of its prior mark:

• the registration of the prior mark is not affected by the opposition proceeding, but a separate non-use cancellation action can be brought. This type of action is called: a cancellation.

IX. Term and Extension

A. Opposition Term: National Applications/Registrations

• The system provides a fixed initial term within which an opposition may be filed.

• For national applications, the initial opposition term begins:

• on the date that the details of the application are published for opposition in the local official IP bulletin, journal or gazette. This publication is called: The Journal Gazette, available at http://ipo.gov.tt/journals/.

• For national applications, the initial opposition term expires the following number of days or months after the date on which the opposition term begins (as mentioned above): 90 days from online publication. For example, if the application is published on June 26, 2020, the deadline for opposing is September 26, 2020.

C. Deadline Not on Normal Business Day

• An opposition deadline that does not fall on a normal business day or that falls on a local public holiday or other officially excluded days may be met by action on the next business day.

• Normal business days of the week are:

• Monday through Friday.

D. Extensions

• The opposition term is not extendable.

X. Filing Requirements

A. Minimum Filing Requirements

• The minimum filing requirements to initiate an opposition (i.e., to obtain a filing date) are:

• power of attorney (if not the attorney on record; no notarization or legalization required);

• opposition form indicating the following information: the grounds of opposition;

• official fee (TTD 1,400 (approximately USD 215)).

• The following additional actions or documentation is required to complete the required filing formalities (i.e., to shift the burden of action to the registration applicant) and will be accepted after the opposition deadline has expired:

• No additional documents are required other than those stated immediately above.

B. Payment of Official Fees

• Opposition fees can be paid using the following payment modes:

• credit card (online only);

• check payable to the Controller of the Intellectual Property Office.

C. Public Inspection of Documents

• Documentation submitted in an opposition is not open to public inspection.

D. Additional Grounds

• Additional opposition grounds may be introduced after the opposition period has expired under the following circumstances: An application will have to be made to the Controller for leave to amend the grounds of opposition. A hearing may be held.

• The deadline for introducing additional grounds is: While there is no fixed deadline, practice would dictate that any additional ground should be introduced before the applicant files its counterstatement.

E. Representation

• The opponent is required to act through a locally authorized representative during the entire proceeding.

F. Language and Translations

• Opposition documents must be submitted in the following local official language(s): English.

• Opposition documents may not be submitted in a language (or languages) other than the one(s) listed above.

XI. Post-Filing Stages and Procedures

A. Sequence and General Considerations

• Depending on the jurisdiction, opposition proceedings generally involve a number of stages between the filing of the opposition and the official decision or judgment. Typically, the post-filing stages will require either that alternating actions be taken by one party after the other in consecutive steps or that actions be taken concurrently by both parties.

• In this jurisdiction, opposition proceedings require alternating action by one party after the other.

• A full discussion of the opposition stages is beyond the scope of this publication. Please consult a local attorney for specifics about the sequence of stages and the duration of and requirements for each. The following is a non-exhaustive list of issues to consider when consulting your local counsel:

• The general sequence of stages from the filing of the opposition until the official judgment or decision.

• When each party must submit documentation/evidence.

• What documentation/evidence is required.

• The approximate duration of particular phases as well as the approximate length of the entire proceeding.

• Whether either party can request extensions.

• If extensions can be requested, when, for what reasons and for what length of time.

• If and when the parties (or their representatives) are required to appear in person before the opposition authority, or whether written statements may be submitted.

• The consequences of either party's not performing its responsibilities during any stage of the opposition.

• The official fees or other expenses, including local attorney fees, that will apply to an opposition procedure.

B. Length of Opposition Procedure

• The approximate length of time from the filing of an opposition to an official decision concluding the opposition procedure is: two years.

C. Monetary Awards

• The opposition authority has the power to make a formal monetary award to the successful party. The award includes the following specific costs, official or attorney fees, or other compensation: The Controller is guided by a set statutory schedule of fees in awarding costs.

• To receive a formal monetary award, the successful party in an opposition does not need to file a separate application. However, the request is typically included in the Notice of Opposition/Counterstatement.

• The amount or basis for calculating a typical monetary award is: based on a set statutory schedule of fees.

D. Withdrawal of Oppositions or Applications

• Withdrawal of an opposition with or without the agreement of the applicant/registrant to the terms of the withdrawal automatically terminates the proceedings.

• Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal can have the following consequences with regard to the award of costs: The applicant can seek an award of costs; however, this is rarely done.

• Withdrawal of an opposed application with or without the agreement of the opponent to the terms of the withdrawal automatically terminates the proceedings.

• Withdrawal of an opposed application without the agreement of the opponent to the terms of the withdrawal can have the following consequences with regard to the award of costs: The opponent can seek an award of costs; however, this is rarely done.

• Withdrawal of an opposition or of an opposed application outside this jurisdiction (with or without the agreement of the other party to the terms of the withdrawal) has no effect on opposition or other proceedings in this jurisdiction.

• If the opponent has withdrawn an opposition, the opposition authority cannot reject the opposed application on any of the opposition grounds.

• A formal basis is not required for withdrawal of an opposition.

• The limitation or restriction of the applicant's goods/services, with or without a written settlement agreement, is commonly a basis for withdrawal of the opposition. Typically, however, the attorney for the opponent will want proof that an amendment to the goods/services has been filed before withdrawing the opposition.

• The terms of a settlement agreement need not be disclosed to the opposition authority.

• The opposition authority need not approve any settlement reached and/or formal withdrawal of the opposition; however, it must formally withdraw the opposition.

XII. Appeals

A. Availability/Deadline

• An opposition decision may be appealed.

• The following party or parties may file an appeal: usually the unsuccessful party.

• The deadline for filing an appeal is: 28 days from the date of notification of the decision.

B. Forum

• There is a single appeal authority, the name of which is: the Supreme Court of Judicature.

• The following appeal authority/authorities is/are independent of the Trademarks Registry/Office: the Supreme Court of Judicature.

C. Cost/Monetary Bonds or Surety

• The government/official fees for filing an appeal are: typically, TTD 100 (approximately USD 15).

• The approximate range of attorney fees for filing an appeal is: TTD 9,000-12,000 (approximately USD 1,330-1,773).

• The government/official fees for prosecuting an appeal to conclusion are: dependent on the number of documents being filed. A very rough estimate would be TTD 200-250 (approximately USD 30-37).

• The approximate range of attorney fees for prosecuting an appeal to conclusion is: TTD 15,000-30,000 (approximately USD 2,216-4,432).

• Monetary bonds or other surety may be required of foreign appellants.

D. Higher Appeals: Availability/Monetary Bonds or Surety

• An appeal decision is not final; higher appeals are possible and can be made to: the Court of Appeal. The final appellate court is the Judicial Committee of the Privy Council.

• On higher appeal, there are provisions requiring monetary bonds or other surety from a foreign appellant, as follows: Security for costs may be ordered by the court.

E. Other Circumstances

• Important circumstances of appeal that are not mentioned above include: None.

XIII. Other Issues

A. Subsequent Infringement Proceedings

• In subsequent equivalent infringement proceedings, an opposition decision is not binding on the court.

B. Local Requirements/Perspectives

• Particular local requirements that are not covered above and that are not common in other jurisdictions or familiar to foreign practitioners include: None.

C. Anticipated Revisions of the Law

• Important changes in relevant law are not anticipated in the near future. The Trade Marks Act 2015 and its accompanying regulations became law on June 25, 2020, repealing the old Act.

XIV. Alternatives

A. Cancellation

• There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed).

• These procedures are known (or translate into English) as:

• rectification.

• The grounds to initiate a cancellation are:
  • the mark is descriptive;
  • the mark is misleading and/or deceptive;
  • the mark lacks distinctiveness;
  • the mark is generic;
  • the mark consists of a geographical indication;
  • the mark is functional;
  • 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 and/or deceptive manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith;
  • there is an earlier application or registered mark;
  • there are earlier use-based rights in an unregistered mark;
  • the mark is covered by a copyright;
  • the mark is a company name;
  • the mark is notorious or well known (Article 6bis of the Paris Convention);
  • the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);
  • the mark is a trade or business name;
  • the mark is a domain name;
  • other: The language of the Act gives the Controller the power to rectify the Register in respect of any entry made "without sufficient cause or by any entry wrongly remaining on the Register or by any error or defect in any entry." Consequently, any of the above can be grounds for an application for rectification.

• The grounds to initiate a rectification are:

• non-use of the mark for a continuous period of five years from the date of registration;

• the mark was registered without a genuine intention to use, and there has in fact been no use;

• the non-insertion in or omission from the Register of any entry;

• an entry made in the Register without sufficient cause;

• any entry wrongfully remaining on the Register;

• any error or defect in any entry on the Register;

• any contravention of or failure to observe a condition entered on the Register in relation to the registered mark.

• To compare the grounds for the above procedures to the grounds for opposition, please see Section III. Grounds: A. Absolute, Relative and Other Grounds

• The burden of proof is on the applicant for cancellation to prove the grounds for cancellation.

• The burden of proof in an opposition is the same as it is for a cancellation.

• Cancellation or equivalent proceedings can in some circumstances be preferable to or pursued instead of opposition proceedings because:

• the opposition term has lapsed.

B. Observations and Letters of Protest

• There are procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.), but these cannot be relied upon to be reviewed and result in official objection even if well based. The Controller is under no obligation to consider these letters.

• The deadline for raising such objections is: anytime before the registration of the mark.

• Such objections must be made to the Trademarks Registry/Office.

• The legal representative need not identify his client in such objections.

• The following grounds may be raised in such objections:

• the same as those for opposition;

• only absolute and relative grounds.

I. Membership to Madrid Protocol

A. Adherence

• Trinidad and Tobago is a party to the Madrid Protocol only.

B. Madrid Protocol

• This jurisdiction ratified or acceded to the Protocol on the following date:

October 12, 2020.

• The Protocol came into force in this jurisdiction on the following date:

January 12, 2021.

D. Declarations/Notifications

• This jurisdiction has made the following declarations/notifications under the Protocol:
  • The time limit to notify a refusal of protection shall be 18 months, and where a refusal of protection results from an opposition to the granting of protection, such refusal may be notified after the expiry of the 18-month time limit.
  • In connection with each request for territorial extension to it and the renewal of any such International Registration, this jurisdiction wants to receive, instead of a share in the revenue produced by the supplementary and complementary fee, an individual fee.

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