In addition to the general trade mark for goods or services or both goods and services, Saint Lucia also considers the registration of collective marks, certification marks and defensive marks. No clear distinction is made in respect of service marks as they are considered trade marks associated with services and are registered in the same manner as trade marks for goods.
The rights in such trade marks are based on statutory law and are governed by the Trade Marks Act and Trade Marks Regulations of Saint Lucia, Cap 13.30 of the Revised Edition of the Laws of Saint Lucia (together, "the Act").
While a trade mark must be registered in order to be protected, unregistered trade mark rights may be afforded protection under common law.
In Saint Lucia, the Registry of Companies and Intellectual Property (ROCIP) is statutorily charged with the responsibility for administering the registration of trade marks and keeping the Register of Trade Marks, which is publicly available. There is only one standard trade mark register.
Searches at the ROCIP are more commonly conducted to ascertain the status of existing/previous trade marks. This notwithstanding, searches are also conducted prior to registration to ascertain whether there are any similar trade marks already registered and whether there is likely to be any opposition to the registration of the trade mark.
The registration requirements are standard as outlined at 1.4 Registration Requirements, save and except for:
A trade mark may be registered by a person inclusive of a body corporate or unincorporated body. Signs that may be registered as a trade mark in Saint Lucia include letters, words, names, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shapes, colours and any combination thereof.
To obtain registration of a trade mark, a formal application must be made to the ROCIP. The application must include:
An application must be accompanied by an Authorisation of Agent giving the agent the authority to act on the applicant’s behalf. The applicant must provide a representation of the trade mark and, where the mark is in a language other than English or contains characters not in English, a certified translation of the mark or non-English characters must accompany the application. Once the application is made, the ROCIP will examine the application and issue an examination report upon completion. If the examination report indicates that the trade mark is acceptable, the Registrar will publish a notice of application for registration of the trade mark in the Gazette and persons have three months from the date of publication in the Gazette to file an opposition to its registration. If no opposition is filed, the Certificate of Registration is issued approximately six weeks after the expiration of the opposition period.
The registration of a trade mark normally takes between six and eight months from application to the issuance of the Certificate of Registration.
A person may make a single application for the registration of two or more trade marks in respect of similar goods or services within a single class if the trade marks resemble each other in material particulars and differ only in respect of:
An application for the registration of a trade mark may be rejected if:
If the application for registration was rejected on the basis of a clerical error or obvious mistake or related to the specification of goods and services, the applicant may make an application to amend or correct his or her application to satisfy the Registrar that his or her application meets the requirements of the Trade Marks Act. An applicant may also appeal to the High Court against any decision of the Registrar that leads to the subsequent rejection of an application.
In conducting the examination, the ROCIP will assess whether the application infringes any prior rights of a registered trade mark-owner. The ROCIP will assess whether the trade mark is identical to, or resembles, another trade mark so that it is likely to create confusion.
A third party may file a notice of opposition to the registration of a trade mark within three months of the date of publication of its acceptance in the Gazette, unless an extension is granted by the Registrar. The opposition procedure is dealt with extensively in 3 Opposition Procedure.
A written request may be made to amend the application for registration of a trade mark before its registration; however, the permissible amendments are dependent on the stage of the registration process.
If the notice of application for registration has not been published in the Gazette and the request for amendment is made within 14 days of the date of the application for registration of the trade mark, an amendment may be made to correct a clerical error or an obvious mistake.
If the notice of application for registration has been published, an amendment may be made to:
A person may assign or grant a licence for the use of a trade mark. Assignments and Licensing are dealt with extensively in 2 Assignment and Licensing.
See 1.8 Objections Raised Under Question 15 and 3.4 Legal Remedies Against the Decision of the Trade Mark Office.
There is no requirement to show use, use in commerce or intention to use in commerce, in order to apply for registration. What is required is that the applicant must state whether he or she is the owner of the mark and is using or intends to use the trade mark.
A person who has made an application for the registration of a trade mark in respect of certain goods or services or both may make another application:
A divisional application may only be made if the initial application for the registration of the trade mark is pending.
A registered trade mark is protected for a period of ten years from the filing date of the application for its registration. An application for renewal of the registration of a trade mark may be made at any time within the ten-year period. Where the registration of a trade mark lapses, the owner of the trade mark may still make an application for renewal within 12 months after its registration expires, failing which the Registrar will remove the trade mark from the register upon the expiry of 12 months after its registration lapses.
This is not applicable in our jurisdiction.
Saint Lucia does not participate in the Madrid System.
The consequence of providing incorrect information to the Trade Mark Office is that the trade mark application or other filing may not be accepted by the Trade Mark Office or the Trade Mark Office may request an amendment of the application or filing.
The registered owner of a registered trade mark may:
Markings are not mandatory in Saint Lucia and the Trade Marks Act does not prescribe words or symbols to be used to indicate trade mark use or signify registration.
An application may be made to assign a registered trade mark or a trade mark whose registration is being sought. The application must be accompanied by written evidence of the assignment signed by both the assignor and assignee. A trade mark may be assigned with or without the goodwill of the business concerned in the relevant goods or services or both and there is no requirement for there to be consideration for the assignment. An assignment may be partial in that it may apply to some of the goods and services of the trade mark but not partial in relation to the use of the trade mark in a particular area.
The application for assignment is filed at the ROCIP together with the original or a certified copy of written evidence of the assignment and the Authorisation of Agent. The ROCIP will review the application and, if acceptable, it will make the amendments to the Register and publish notice of the recording of the assignment and the registration of the beneficiary as the owner of the trade mark in the Gazette.
The assignment of a trade mark must be registered at the ROCIP as the assignee will only have rights against third parties once registered. If the assignment is not recorded, the assignee will not be able to enforce his or her rights against third parties in relation to the trade mark.
A registered trade mark is personal property and a right in respect of a registered trade mark is enforceable in the same way as rights in respect of any other personal property.
Saint Lucia’s legislation does not expressly provide for the licensing of trade marks; however, licences would be considered as an interest in or a right, or both, in respect of a trade mark. Interests or rights in a trade mark may be voluntarily recorded at the ROCIP. Therefore, a licence may be recorded at the ROCIP by making a joint application by the licensor and licensee.
A joint application is made to the ROCIP by the parties to the licensing agreement. This is usually accompanied by a document setting out the terms of the licence and an Authorisation of Agent. The Registrar will then record the particulars of the licence in the Register.
Since the recordal of a licence is a voluntary procedure there is no requirement for there to be any registration. However, unless and until a licence is recorded, the licensee cannot realise the benefits afforded to him or her under the Act. For example, issuing a notice of objection to importation of goods that infringe the trade mark to the Comptroller of Customs where the licensor fails to do so.
As the licensor and licensee are free to dictate the terms of any licensing agreement, there is no issue with a perpetual licence being granted. However, the licence would only subsist so long as the trade mark remains registered and, therefore, renewal of the registration at ten year intervals will be necessary.
There are no other requirements than those outlined at 2.2 Procedure for Assigning a Trade Mark and 2.6 Licensing Procedure.
The registration of a trade mark may be opposed if:
A third party may file a notice of opposition to the registration of a trade mark within three months of the date of publication of its acceptance in the Gazette, unless an extension is granted by the Registrar.
While representation is not mandatory, it is highly recommended that the opponent seeks legal representation. The official fee for filing a notice of opposition and supporting evidence is USD260 and an additional USD35 for the filing of the Authorisation of Agent. Professional fees vary and will depend on, amongst other things, the issues and complexity of the case and the experience or seniority of Counsel.
A third party who wishes to oppose the registration of a trade mark (the "opponent") must file a notice of opposition within three months of the date of publication of its acceptance in the Gazette, unless an extension is granted by the Registrar.
If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence in support on the applicant within three months from the day on which the notice of opposition is filed. Within two days after the opponent serves a copy of the evidence in support on the applicant, the opponent must file with the Registrar the original evidence and a statement setting out the date, place and manner of service of the copy of the evidence on the applicant. If the opponent does not intend to rely on evidence in support of the opposition, the opponent must, within three months from the day on which the notice of opposition is filed, serve on the applicant a copy of a notice stating that the opponent does not intend to rely on evidence in support of the opposition. The opponent must file with the Registrar the original notice and a statement setting out the date, place and manner of service of the copy of the notice on the applicant as soon as practicable after serving the applicant. If the opponent does not file evidence in support or the notice or apply for an extension to do so, the opponent shall be deemed to have abandoned his or her opposition.
If the applicant intends to rely on evidence in answer to the opposition, the applicant must serve a copy of the evidence in answer on the opponent within three months from the day on which the opponent serves him with the evidence in support or notice. The applicant must file with the Registrar the original evidence and a statement setting out the date, place and manner of service of the copy of the evidence on the opponent within two days of service. If the applicant does not intend to rely on evidence in answer to the opposition, the applicant must serve on the opponent, within the period for service of a copy of the evidence in answer, a copy of a notice stating that the applicant does not intend to rely on evidence in answer to the opposition. Within two days after the applicant serves a copy of the notice on the opponent, the applicant must file with the Registrar the original notice and a statement setting out the date, place and manner of service of the copy of the notice on the opponent. If the applicant does not file evidence in answer to the notice or apply for an extension of time to do so, he or she shall be deemed to have abandoned his or her application.
If an opponent intends to rely on evidence in reply to the opposition, the opponent must serve a copy of the evidence in reply to the applicant within three months after the service on the opponent of a copy of the evidence in answer. Within two days after the opponent serves a copy of the evidence in reply on the applicant, the opponent must file with the Registrar the original evidence and a statement setting out the date, place and manner of service of the copy of the evidence on the applicant. If an opponent does not intend to rely on evidence in reply to the evidence in answer to the opposition, the opponent must serve on the applicant, within three months after the service on the opponent of a copy of the evidence in answer, a copy of a notice stating that the opponent does not intend to rely on evidence in reply to the evidence in answer to the opposition. Within two days after the opponent serves a copy of the notice on the applicant, the opponent must file with the Registrar the original notice and a statement setting out the date, place and manner of service of the copy of the notice on the applicant. If the opponent does not file evidence in reply to the evidence in answer to the notice or apply for extension of time to do so, the evidence shall be deemed closed and opposition proceedings follow the normal course.
Upon completion of the evidence, the applicant or opponent may ask the Registrar to hear the parties to the opposition proceedings, or the Registrar may, on his or her own initiative, give an opportunity to the parties to be heard. The Registrar must give notice to the parties of a date when he or she will hear arguments in the opposition proceedings which must be a date at least 14 days after the date of the notice unless the parties consent to a shorter notice. Within seven days from the receipt of the notice any party who intends to appear must so notify the Registrar. The Registrar will then hear the proceedings and issue a ruling at the end of the proceedings.
An applicant can appeal to the High Court from decisions of the Registrar. Where the High Court hears an appeal from the decision of the Registrar an appeal does not lie with the Court of Appeal except with that court’s leave.
The appeal will follow the normal course of civil litigation matters in the High Court or Court of Appeal and may take approximately one to two years.
An action for an infringement of registered or unregistered trade marks may be brought in the High Court. There are no specialised courts or tribunals for trade mark matters in Saint Lucia.
In respect of registered marks, the Act additionally provides that the Comptroller of Customs may effect seizure and deal with goods that are imported into Saint Lucia if the importation infringes or appears to infringe the registered trade mark. The registered owner of a trade mark may give to the Comptroller a notice in the prescribed form objecting to the importation after the date of notice of goods that infringe the trade mark.
See 4.1 Actions Available to a Trade Mark Owner.
Infringement proceedings are brought before the High Court and not before the Trade Mark Office.
If a person threatens to bring an action against another person on the grounds that the threatened person has infringed a registered trade mark or a trade mark alleged by the person to be registered, any person aggrieved by the threat may bring an action in the High Court against the person making the threat.
The alleged infringer may:
Trade mark-infringement proceedings are heard in the High Court in the first instance. With leave of the Court of Appeal an appeal lies to the Court of Appeal against a judgment of the High Court. Prosecution for criminal offences committed under the Act is commenced in the District Court and an appeal lies to the High Court.
There are no prerequisites to filing a claim. However, pre-action "cease-and-desist" letters are typically issued to alleged infringers as a matter of practice.
There is no mandatory requirement that the parties to trade mark litigation matters must be represented by a lawyer; however, as trade mark litigation matters are treated as any other civil proceedings in the High Court, it is highly recommended that the parties obtain legal representation.
An injunction may be granted by the High Court subject to any conditions it deems fit. In deciding whether to grant an injunction, the High Court will consider the standard requirements for the granting of injunctions in civil cases.
Prior to the commencement of legal proceedings, an alleged infringer may apply to the court for the remedies outlined in 4.4 Declaratory Judgment Proceedings. Where legal proceedings have commenced, the defendant may file a defence and any counterclaim, if applicable, to the claim brought against him or her.
Disclosure of documents is always pursuant to an order of the court. The judge typically orders standard disclosure at the case management stage of court proceedings. A party may also make an application to the court for specific disclosure.
There are no special provisions for pleadings in trade mark proceedings, as opposed to non-intellectual property civil proceedings. The claimant is required to clearly set out all the relevant facts that give rise to the claim and to prove his or her case "on a balance of probabilities".
Pleadings may be supplemented by filing an amended statement of claim prior to case management or otherwise with leave of the court.
There are no specific rules for representative or class actions in trade mark proceedings. The rules of court in civil proceedings provide that on the application of an appropriate person, the court may appoint a body having a sufficient interest in the proceedings or one or more persons, to represent all or more or some of the persons with the same or similar interest.
See 4.4 Declaratory Judgment Proceedings.
A registered owner of a trade mark has the exclusive right to obtain relief if the trade mark has been infringed. If a trade mark is registered in the name of two or more persons as joint owners of the trade mark, the rights granted to those persons are to be exercised by them as if they were the rights of a single person.
Subject to the terms of the governing licence agreement, an authorised user of a registered trade mark may also bring an action for infringement of the trade mark.
Where the alleged infringer has used a sign as a trade mark, the factors taken into consideration in assessing whether the trade mark has been infringed include:
In an action for infringement it is necessary to establish that the defendant has used, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered.
Defences to a claim of infringement of a registered trade mark include:
Litigants are entitled to rely on expert evidence in infringement proceedings. However, the rules of court prescribe that permission must be obtained from the court by a litigant who wishes to call an expert witness. Additionally, an expert witness’ function is to assist the court and as such, although engaged by a litigant, the expert witness is considered the court’s witness.
Trade mark infringements are enforced either through civil proceedings as outlined in 4.1 Actions Available to a Trade Mark Owner or criminal proceedings. Under the Act, criminal offences are prosecuted by the Director of Public Prosecutions and would, in the first instance, be heard in the District Court. These decisions may be appealed to the High Court.
The Act makes provision for the Comptroller of Customs to effect seizure and deal with goods that are imported into Saint Lucia if the importation infringes or appears to infringe a trade mark registered in Saint Lucia. The registered owner of the trade mark may give to the Comptroller a notice in the form prescribed objecting to the importation after the date of notice, of goods that infringe the trade mark.
The acceptance of an application for registration of a trade mark may be revoked if, before a trade mark is registered, the Registrar is satisfied that the application was accepted because of an error or omission in the course of examination or that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations. If the Registrar revokes the acceptance of an application the application is taken to have never been accepted. The Registrar’s decision may be appealed to the High Court.
The registered owner may request the cancellation of a trade mark by making a request in writing to the Registrar.
Where a third party seeks the cancellation of a registered trade mark, an application must be made to the High Court. An application made to the High Court in challenge of a registered trade mark can be made if:
Revocation actions are at the instance of the Registrar, however, an appeal lies with the High Court. Where a third party seeks the cancellation of a registered trade mark, an application must be made to the High Court.
Cancellation actions before the High Court are prescribed within 30 years.
The revocation of a trade mark is at the instance of the Registrar acting on his or her own volition. An application for the cancellation of a trade mark by the owner is made to the ROCIP. However, a third-party application for the cancellation of a trade mark is made to the High Court.
Partial revocations or cancellations are not permissible in our jurisdiction.
Amendments are not possible in revocation proceedings. Where an application is made to the court by an aggrieved person, the court may order that the trade mark be cancelled or amended on grounds which include the contravention of a condition or limitation which was entered in the Register, or the registered owner has lost the exclusive right to use the trade mark.
As revocation proceedings are dealt with by the Registrar and cancellation and infringement proceedings are dealt with by the High Court, all three proceedings are not heard together. However, a litigant may wish to combine cancellation and infringement proceedings in one claim before the High Court.
There are no special procedural provisions for trade mark proceedings before the court as they are conducted as any normal civil proceeding and are governed by the rules of court. Special procedural provisions apply to opposition proceedings, which are highlighted in 3.2 Ability to File an Opposition.
Cases are determined by legal judges and the parties do not have any influence as to who the judge will be.
In the course of legal proceedings, the parties may, by consent, have the opportunity to have the matter settled by formal court-connected mediation. Aside therefrom, the parties are at liberty to settle the dispute at any time on their own volition.
Multiple court proceedings concerning the same subject matter or issues may be considered as an abuse of process.
The remedies available to a successful trade mark owner in an action for infringement include, amongst others, an injunction, which may be granted subject to any condition the court deems fit, damages or an account of profits at the option of the claimant and payment of legal costs.
A successful defendant may obtain, amongst other remedies, a declaration of non-infringement from the court, an injunction restraining the registered owner from making groundless threats and payment of legal costs.
See 8.2 Rights and Remedies for the Prevailing Defendant.
There are no special provisions concerning the appellate procedure for trade mark proceedings. The appellate procedure for trade mark proceedings is provided by the relevant rules of court.
Only in very limited circumstances will a court exercising an appellate jurisdiction interfere with findings of fact. Accordingly, appeals are predominantly limited to a review of points of law.
The time period for filing an appeal is prescribed by the Eastern Caribbean Civil Procedure Rules, 2000 (as amended).
Dilution is not one of the grounds for opposition as outlined in 3.1 Legal Grounds and Timeframes for Filing an Opposition. However, an application may be made to remove a trade mark from the Register if the trade mark has remained registered for a continuous period of three years, ending one month before the day on which the non-use application is filed, and at no time during that period has the person who was then the registered owner: used the trade mark in Saint Lucia or used the trade mark in good faith in Saint Lucia in relation to the goods or services, or both, to which the application relates.
If the famous trade mark is not used or registered in Saint Lucia, the owner may, nonetheless, be able to pursue an infringement action under the common law tort of passing off. The owner will need to prove that the famous trade mark is known to the Saint Lucia public and that there was an intention to deceive or confuse and that he or she has suffered damage as a result of the deception or confusion.
Geographic Indicators are dealt with by the Geographical Indications Act.
In addition to the standard requirements for the registration of a standard trade mark, an applicant must also submit a copy of the rules governing the use of the certification mark. The rules must include provisions regarding the applicant’s approved certifiers who may be approved for the purpose of certifying goods or services or both; the cases in which goods or services are to be certified; the conditions under which an approved user is to be allowed to use the certification mark; the use of the certification mark by the owner, if he or she intends to use it, and any approved user; and the settlement of disputes arising from a refusal to certify goods or services or to allow the use of the certification mark.
The definition of a sign includes names and, therefore, a surname may be registered as a trade mark.
Costs are typically determined by agreement between the party and its chosen legal representative.
The cost of litigation is assessed pursuant to the Eastern Caribbean Supreme Court Civil Procedure Rules 2000. Part 65 of the Rules, as amended, deals with the ways in which costs are to be quantified and specifies a scale of fixed and prescribed costs and outlines percentages to be allowed at various stages of any claim, from filing to trial. The legal fees are calculated based on a prescribed tariff and will vary for each matter depending on the value of the claim.
Generally, the losing party is required to pay the successful party’s litigation costs.
Mediation and arbitration (to a lesser extent) are both available to aggrieved parties to attempt resolution of their disputes by assisted negotiations outside of the more formal setting of the court. Arbitration becomes operational in the event of a dispute if, by agreement, the parties have decided previously to pursue this medium.
The courts in Saint Lucia favour settlement of disputes by mediation and there is a court-connected mediation programme in place to assist in this regard. Mediation is usually recommended in the first instance by the court. A matter may, however, be referred to mediation only with the consent of the parties. In Saint Lucia an agreement reached by mediation may be duly filed in the High Court, which is made by an order (by consent) of the court, thereby binding the parties.
A trade mark may also be protected by copyright once it is able to fulfil the applicable criteria for a copyright.