General overview of trademark legislation of Turks and Caicos Islands

The Trademark Ordinance 1981 regulates the Registration of Trademark services in the Turks and Caicos Islands. The Registrar of Trademarks is responsible for all Registrations of marks and services in the Financial Services Commission.

Legal basis is the Trade Marks Ordinance revised Edition showing the law as of December 31, 2014. Trademark protection is obtained by registration. National applications can be filed under the Ordinance. However, a person who has filed an application for a trademark in the UK or a Convention Country (being a country which is a party to the European Union Convention for the Protection of Industrial Property) has a right to priority for the purposes of registering that mark in the Turks and Caicos Islands for a period of 12 months from the date of filing the first application. If the application for registration under this Ordinance within that 12 month period the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first United Kingdom or Convention application and the registrability of the trademark shall not be affected by any use of the mark in the Islands in the period between that date and the date of the application under the Ordinance.

Goodwill acquired in a mark through use is also capable of protection under the common law of passing off. Only if a mark is registered is it entitled to protection under the Trade Marks Ordinance.

Classification
Trademarks are registered in the class of goods or services as described in the International Nice agreement 7th edition. These goods or services are classified in legislation from classes 1-45.

Registrable Trademarks or Services in Turks and Caicos Islands      
A registrable trademark or service must consist of the following particulars:

1. Name of a company, individual services mark of the company or firm represented in a special or particular manner
2. The signature of the applicant for registration or some predecessor in his business
3. An invented word or words
4. A word or words having no direct reference to the character or quality of the goods or services being according to its signification a geographical name or surname
5. Any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in the forgoing paragraphs, shall not be deemed to be a distinctive mark except by order of the court

What is Registrable as a Trademark in Turks and Caicos Islands      
Registrable as a trademark is any sign capable of being represented graphically which is capable of distinguishing goods or services. The mark may consist of words (including personal names), designs, numerals, letters, or the shape of goods or their packaging.          
Trademarks, service marks, certification marks and collective marks can all be registered under the Act.

Trademark registration proceedings in Turks and Caicos Islands      
The application is filed at the trademarks registry in Grand Turk.  
Local applications are for single classes only.         
A signed Authorisation of Agent form is needed. It need not be notarised or legalised.
If claiming priority from an application for a trademark in the UK or a Convention Country, a certified copy of the registration certificate, should accompany the application filed in the Turks and Caicos Islands.      
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.   
After formal examination and acceptance, the mark is published in the weekly Gazette for opposition.
The processing time from first filing to registration is typically six months.

Opposition Period   
An opposition must be filed within one month of the date of publication.

Trademark Duration in Turks and Caicos Islands          
Marks registered prior to October 8th, 2007 were valid for a period of 14 years and that remains unchanged. Marks registered on or after October 8th, 2007 are valid for a period of 10 years from the expiration of the original registration or the last renewal of registration.
All renewals effectuated on or after October 8th, 2007 are for a period of 10 years.
Since 2012, the payment of an annual maintenance fee of USD 100.00 is required for each trademark registration in Turks & Caicos Islands. If a particular mark is registered in more than one class, the official fee of USD 100.00 covers all classes.   
A one month grace period until February 1st is allowed each year for late payment, failing which the trademark rights are deemed to be in abeyance and will remain in suspense unless and until all past due fees have been paid, at which time the rights are then deemed to be fully restored.

Right to Register     
The Proprietor of any Trademark registered in the United Kingdom upon payment of the prescribed fee is entitled to registration of such mark or service in the Islands upon the production of a certificate of registration of such mark or services in the United Kingdom.

Other Countries       
Trademarks registered in other countries may be accepted for registration as long as the Governor is satisfied that suitable procedures exist in the other country for Registration of Trademarks.

Which forms are required for filing a Trademark?         
Forms TM 1 TM2 and TM 3.

How long does it take for the Registration of a Trademark in Turks and Caicos Islands?  
One month after the Official Publication in the Government Gazette.

What class can I use for in registering certain goods and services? 
Classes 1 – 34 are classification of goods (Pursuant to the Trademark Rules 1998).
Classes 35 -45 are classification of services (Pursuant to the Trademark Rules 1998).

What is the cost for filing a Trademark? 
$375.00

Can any person object to the filing of a Trade Mark?    
Yes.

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

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