General trademark information in Antigua and Barbuda

The Trade Marks Act, 2003 and Trade Marks Regulations, 2006 went into force on October 1, 2006.

These laws established an independent trademark registration system. Registration based on an existing UK registration has not been possible since 2006.

Paris Convention priority is available. Antigua & Barbuda has long been a member of the Madrid Protocol, since accession in 1999.

All new registrations are for a term of 10 years, with renewals for further periods of 10 years. Under the old laws, the term of registration was either concurrent with the underlying UK registration (if UK-based) or for a term of 14 years (if local).

Trademark protection is obtained by registration. It can also be acquired by local use within the jurisdiction whereby it is protected only by common law. Only if a mark is registered under the act is it entitled to protection under the Trade Marks Act and Regulations.

The Act confirms that common law "passing off" is still actionable. Also, the doctrine of "honest concurrent user" is still a valid defense to an allegation of trademark infringement.

Classification

Nice classification, 11th edition.

Multi-class applications are possible.

Registration Proceedings

The application is filed at the trademarks registry in St. John's, Antigua.

A signed Authorisation of Agent form is needed. The proprietor’s seal needs to be applied, if available, and the form must be notarized. No witnessing or legalization of this form is needed. The Declaration of use form needs to be signed before a Notary, with no additional formality.

All applications are examined and subject to absolute and relative grounds of refusal.

Prior use in Antigua & Barbuda is unnecessary provided the applicant asserts, on its Declaration filed at the time of application, an intent to use the mark in Antigua & Barbuda.

After formal examination and acceptance, the mark is published for opposition.

The processing time from first filing to registration is typically 3 to 4 years or longer due to delays with the government printery at the publication stage.

Opposition Period

National:

Interested parties may oppose new applications within three months from the date of publication of an application.

Trademark Duration

All new registrations are valid for a term of 10 years, with renewals for further periods of 10 years.

Trademark Checklist

Cover page – State the name of the mark, fee and the name of other documents submitted with the cover letter

The name, nationality and address of the applicant

Form No. 1 and Form No. 2 (if you are not a resident in Antigua and Barbuda represented by an Attorney and/or agent

A clear graphical representation of your trade mark* ( Note: *A description of the mark would be helpful.)

A list of goods and/or services in relation to which you wish to register your trade mark. The list of goods or services must fall under one class as set in the Nice Classification: http://classifications.wipo.int/fulltext/nice

A statutory declaration of the use of your mark, inclusive of the number of years in use. (this document must be notarized by a Notary Public)

Representation of mark – Other than a word mark, three (3) additional and identical reproductions of the mark shall be submitted.

Certified translation – If the mark is in any other language other than English.

Authorized permission from the competent authorities to use a country’s name, state emblems etc

If these requirements are complied with: Your application will proceed to the Examination stage. 

If these requirements are not complied with: You will be notified by the Registrar to provide the necessary information or to amend the application within a stipulated deadline. If you fail to do so, your application will be deemed never to have been made.

A Trade mark:

• Allows you to initiate legal proceedings for the infringement of your trade mark under the Trade Marks Act 2003
• Allows the proprietor of the mark to have documentary proof of its ownership of the mark; • Is personal property, which may be sold, licensed or franchised;
• May prevent unauthorized persons or entities from using your trade mark without your permission and;
• Gives public notice of the registered proprietor of the mark and authorized users of the mark may be recorded in the Trade Marks Register.

Do I have to register my trade mark?

No. Registration is not compulsory, but without registration a trade mark owner cannot bring an action in court for infringement to protect the trade mark. In addition, with an unregistered trade mark, the trade mark holder is required to file a common law action to protect their unregistered mark. Registering your trade mark is strongly advised.

When I file an application at the Intellectual Property Office, what happens next?

• Formality Examination

• Examination of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (11^th Edition)

• Search for Prior Rights

• Determination of Registrability

• Publication/Opposition period

• Registration (if no “opposition”)

How long will it take for a mark to be registered?

It may take about 12 months for a trade mark to be registered (if the application did not contain any deficiency or face any objection/ opposition). Anyone having an objection to the mark as published must file a notice of opposition at the office within three months on which the application was published.

What are Unacceptable trademarks?

Outlined within the table below are the absolute and relative grounds in which trade mark applications can be refused. These grounds can also be referenced in the Trade Marks Act of 2003 of Antigua and Barbuda.

Absolute grounds for refusal of a trade mark application are The relative grounds for refusal of a trade mark applicant are that the mark

Signs which do not satisfy the definition of a trade mark under the Trade Marks Act of 2003 of Antigua and Barbuda.

Is identical to an earlier trade mark and the goods or services are identical with those for which the earlier trade mark is protected.

Trade marks which lack distinctiveness or are incapable of distinguishing the applicant’s goods or services.

Example: An orange seller cannot trade mark the term ‘orange’ as it is a generic word, or ‘juicy’ as it is merely a descriptive term for an orange. However, ‘Apple’ was able to be trade marked in terms of computers, as an apple is not common to computers.

Is identical or similar to an earlier trade mark and the goods or services are identical or similar to those for which the earlier trade mark is protected. As a consequence, there is a likelihood of confusion by the public.

Applications that contain or consist of a geographical indication and the trade mark is used or intended to be used in relation to goods or services not originating from the place indicated in the geographical indication.

Example: An applicant cannot register for a Trade mark under the name “Tequila”, because Tequila is a geographical indication of Mexico.

Is identical or similar to the earlier trade mark that is well-known, and the goods or services are not similar, however the registration of the mark would indicate a connection between those goods or services and the owner of the earlier mark. There also exists a likelihood of confusion on the part of the public as the use and interests of the right holder of the earlier mark are likely to be damaged.

Signs which have become customary in the current language or in the established practices of the trade.

Example: Registering the symbol of the red cross as a trademark of a medicine.

Conflicts with an earlier right, in particular the law of copyright or any law in relation to the trade mark.

Signs which are contrary to public policy or morality.

Example: Applications for trade marks that are racist and offensive to the public or those having clear sexual connotation or profanity.

Conflicts with any rule of law (in particular, the law of passing off) protecting an unregistered mark or other sign used in the course of trade;

Signs which deceive the public as to the nature, quality or geographical origin of the goods or services. The most common cases of deceptive trade mark are related to a false indication of its geographical origin

Example: Registering an alcoholic beverage by the trade mark “Champaign”, with the knowledge that it was not produced in Champaign, France.

Applications filed in bad faith. The is filing a trade mark to undermine third parties or to obtain an exclusive right for purposes other than the functions of a trade mark.

Example : Registering a trade mark without any intention to use it for the goods and services covered.

Signs which consist of or contain a representation of the Coat of Arms, national flag or other national symbols of the country, unless permission is received from the relevant authorities, or the trade mark is disclaimed.

Disclaimers: Where a mark is composed of non-distinctive elements, a disclaimer may be requested by the examiner.

What are the procedures for a Trademark opposition?

Any person may, within three months of the date on which the application was published, give notice to the Registrar of opposition to the registration on Form 3 which shall include a statement of the grounds of opposition.

Where the opposition is based on a mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and –

1. The details of the authority with which the mark is registered;
2. The registration number of that mark;
3. The classes in respect of which that mark is registered; and
4. The goods and services in respect of which-
5. The mark is registered; and
6. The opposition is based; 

Where the opposition is based on a mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in sub-regulation (2) (a) to (d), with references to registration being construed as references to the application for registration. 

The Registrar shall send a copy of Form 3 to the applicant and the date upon which this is done shall, for the purposes of regulation 20, be the “notification date”.

Is the trade mark registration protection valid internationally?

No. Trade mark protection is territorial.  This means that the rights granted by trade mark registration are limited to the territory (a country or a region) in which the mark is registered. A trade mark can be registered through national, regional (e.g., the European Union) or international registration procedures.  In particular, an applicant can choose to either:

File a separate trade mark application with the Intellectual Property Office in each territory (country or region) where protection is being sought; or

Use the Madrid System for the International Registration of Marks, which requires only one application to register a mark in multiple territories (multiple countries, multiple regions, or both).  The Madrid System is governed by the Madrid Protocol and is administered by the World Intellectual Property Organization (WIPO). Antigua and Barbuda has been a member of the Madrid Protocol since 2000.

 Marid System: https://www.wipo.int/madrid/en/how_madrid_works.html

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

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