TRADEMARKS
The Trade Marks Act was amended in 1996 and 1997, making it completely TRIPS compliant.
Procedure for Registration
Application is made to the Controller of the Intellectual Property Office. The Controller may, subject to the Act, refuse the application, accept it absolutely or subject to amendments, modifications, conditions or limitations.
Where an application for registration of a trade mark is accepted, the Controller gives written notice of the acceptance of the applicant, and requires the payment of the fees for advertising. Upon payment of the fee, the application is advertised and after the prescribed period, if no opposition is lodged, a certificate of registration is issued.
Scope of Protection
The new amendments extended the scope of protection to include shapes of packages and to provide for the protection of well known trade marks,
Effect of Registration
Registration gives the proprietor the right to institute any proceeding to prevent, or to recover damages for, the infringement of a registered trade mark.
Duration Of Registration
Ten years from the date of registration, with further renewal periods of ten years each.
Priority
Priority may be claimed if a previous application has been filed in a country that is a party to the Paris Convention provided that the application for protection in Trinidad and Tobago is made within six months from the date of the application in the Convention country.
Remedies
Remedies include provisions for seizure and confiscation of counterfeit goods and criminal prosecution for infringement of service marks. Penalties include fines of up to US $8000.00 plus imprisonment. There is also provision for the conviction for offences by corporations.
Border Measures
The registered owner of a trademark registered in Trinidad and Tobago may give notice to the Comptroller of Customs and Excise objecting to the importation of goods which infringe the trademark. A registered user may also give such notice providing that certain requirements are fulfilled
The notice remains in force for a period of two years unless revoked. The registered owner or user may be required to give security in the form of a bond or otherwise against any claims or costs incurred by the Comptroller as a consequence of the seizure of the goods. Please note that administrative framework is not yet in place for border measures, but should be implemented later this year.
PATENTS
The Patents Act, 1996 repeals the Patent and Designs Act and allows for a full examination system. The new Act complies with the requirements of the World Trade Organization Intellectual Property Annex. Important features of the Act are as follows:
- Patents granted under the former Act now have a term of twenty years from filing.
- Applications that are pending under the old law will be dealt with under the former Act but are subject to the new law after grant.
- A patentable invention is one that is new, involves an inventive step, and is capable of industrial application
- Trinidad and Tobago is now an absolute novelty country. A grace period of one year is allowed for acts of applicant, applicant's predecessor in title or acts by a third party in defiance of applicant's rights.
- New medical use for a known substance is patentable.
- The new Act contains provisions for the implementation of the Patent Co-operation Treaty.
- Patent revocation proceedings may be instituted by application to the Court. Very strict guidelines as to the persons entitled to an application and the grounds on which such application may be made are laid down.
TRADE SECRETS
The Protection Against Unfair Competition Act, 1996, introduces several separate torts:
- "Passing off" (s. 5)
- Commercial disparagement (s. 6)
- False advertising (s. 7) (this section is based on article 10 of the Paris Convention)
- Business Slander (s. 8)
- Trade Secret Misappropriation (s.9) this section is based on Article 39 of TRIPS and protects against the acquisition or use of trade secrets without the consent of the owner, in particular that which result from industrial or commercial espionage, breach of contract, breach of confidence, inducement to commit these acts or acquisition by third parties and former employees.
The Unfair Competition Law is comprehensive and conforms with up to date common law standards for these torts. This Act should help encourage foreign business concerns to enter and compete locally.
It aims to provide for protection of commercial reputation, and the development of an orderly market place free from organized crime. It also seeks to encourage open competition.
INDUSTRIAL DESIGNS
The Industrial Designs Act, 1996 provides for the protection of Industrial Designs and fulfils all requirements for this form of protection under the World Trade Organisation Treaty. The designs must relate to physical appearance and aesthetic effect and not to technical results or utilitarian character of the design.
There is an absolute novelty rule in Trinidad and Tobago. A grace period of one year is allowed for disclosure by applicant, applicant's predecessor in title or an abusive third party.
Priority, Disclosure
The application may contain a declaration of priority as provided for in the Paris Convention if one or more earlier national or regional applications or international deposits were filed in any State being a party to the Paris Convention.
The applicant has the right to defer publication of design application for a period of one year from effective filing date.
Remedies
Recourse available for infringement includes specific relief, injunction, damages. A person who intentionally performs an act of infringement is liable to fine and imprisonment.
Transitional
The previous Patent and Designs Act as it relates to industrial designs is repealed, but industrial designs registered thereunder remain in force for the unexpired period of protection, subject to renewal under the new Act.
There is a special United Kingdom transitional provision. Industrial designs registered in the United Kingdom for a period of less than three years or designs that have been filed in the United Kingdom may, until twelve months of entry into force of the Industrial Designs Act, file an application for registration in Trinidad and Tobago and be accorded the filing or priority date accorded in the United Kingdom.
Duration
Protection is for an initial period of five years with two additional renewal periods of five years each subject to payment of a renewal fee.
GEOGRAPHICAL INDICATIONS
Definition
The Geographical Indications Act, 1996, seeks to protect geographical indications (appellations of origin) as defined along the lines of Article 22.1 of the ( TRIPS Agreement). A geographical indication is defined as an indication which " identifies a good as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or characteristic of the good is essentially attributable to its geographical origin".
Remedies for Infringement
The Act provides for civil proceedings to be instituted to prevent unlawful use of geographical indications and criminal sanctions for the intentional wrongful use of geographical indications. The Court is empowered to issue injunctions, award damages and grant any other remedy. Anyone who knowingly and intentionally uses a geographical indication in a wrongful manner is liable on conviction to fine and imprisonment.
Protection
Registration is not a requirement for protection in Trinidad and Tobago, but registration raises a presumption that the indication is a geographical indication within the meaning of the Act. Protection is available against geographical indications which, though literally true as to the origin of the goods in question, falsely represent to the public that the goods originate in another territory.
Registration
The Act creates a registration system and prescribes procedures for application, examination, opposition, right of use, cancellation and rectification. Categories of persons who would be interested in registration are, namely, those who carry on a professional activity in the geographical region concerned with regard to the products covered by the indication, groups of consumers and any competent authority (which could be a semi-official body such as a Chamber of Commerce).
Overlap with trademarks
The Act takes into account the possible overlap with the protection of trademarks by making provisions in line with the obligations under the TRIPS Agreement. It also allows for interested parties to apply to have misleading trademarks or trademarks for wines or spirits which contain or consists of a geographical indication of wines or spirits to be refused or invalidated. The new law does recognise the rights of prior users provided that the provisions of the TRIPS Agreement are met.
Cost
The cost of protection was kept deliberately low to encourage the registration of Geographical Indications from other countries (The one time official government fee is approximately U.S. $500.00).
LAYOUT DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS
The Layout Designs (Topographies) of Integrated Circuits Act, 1996 seeks to protect the layout-designs of integrated circuits against reproduction, importing, selling or other distribution. Where the layout-design has not been commercially exploited, protection commences from the filing date of the application for protection. The law is therefore less strict that the law in the U.S. and Europe which requires that, where there is no prior commercial exploitation, protection commences with the registration of the layout-design.
Applications are not to be examined as to substance prior to registration. Integrated circuits containing unlawfully reproduced layout-designs which were acquired innocently may be sold and distributed subject to two provisions:
(1) upon receiving sufficient notice that the layout-design was unlawfully reproduced, only the stock in hand or ordered before may be imported, sold or distributed.
(2) the person performing such acts after receiving such notice is liable to pay to the right holder a sum equivalent to a reasonable royalty.
In the case of commercial exploitation preceding the filing of an application of protection, protection may only be in force upon the filing of such an application. The right holder seeking an injunction therefore, must first file an application for registration.
Other features of the new law are as follows:
- The definition of layout-design corresponds with the provisions of the Washington Treaty and the TRIPS Agreement.
- Protection may be obtained for layout-designs of integrated circuits that are original. Two conditions are to be fulfilled to satisfy the condition of originality: (1) the layout-design must be the result of the creators own intellectual effort. (2) it must not be commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
- Where the layout-design has already been commercially exploited any where in the world, the application for its registration must be filed within two years.
- There is an exception to the right of the right holder in the case of "reverse engineering", where a person other than a right holder evaluates and analyses a protected layout design, and creates a new layout-design (which may contain the whole or a part of the protected layout design). This exception is made only where the new layout-design satisfies the requirement of originality as laid down in the Act. This provision is considered justified, in accordance with Article 6(2)(b) of the Washington Treaty and the provisions of the TRIPS Agreement, in keeping with the desire to encourage creativity through the improvement of existing layout-designs.
- The period of protection is five years with two successive renewal periods of five years each.
- Remedies available under the Act include specific relief, injunction and the award of damages. A person who deliberately and wrongfully reproduces, imports, sells or distributes a protected layout-design is liable on conviction to fine and imprisonment. Exceptions are made for private use, research, teaching etcetera.
NEW PLANT VARIETIES
The Protection of New Plant Varieties Act, 1997 Act seeks to establish plant breeders' right in accordance with the UPOV Convention. The following are the main features of the Trinidad and Tobago legislation, which conforms with the UPOV 1978 Act.
Conditions
A variety is protectable if it is new, distinct, homogeneous (or uniform) and stable, and if it has been given a denomination. With respect to the requirement of novelty there is a one-year "period of grace" for commercial acts in the country of application four-year "period of grace" for commercial acts abroad.
Rights granted
The authorization of the holder of the right shall be required for the propagation for purposes of commercial marketing, the offering for sale or the marketing of the reproductive or vegetative propagating material of the variety.
Duration of Rights
In respect of vines, forest trees, fruit trees, ornamental trees, the right expires at the end of the eighteenth calendar year following the grant. Protection for all other genera or species expires at the end of fifteenth calendar year following the grant. Annual fees are payable for the whole period of protection.
Application Procedure
An application must be filed together with fees and the technical questionnaire in the prescribed form. Propagating material must be supplied as requested by the Intellectual Property Office. Priority may be claimed within a period of twelve months from the date of filing of the earliest application in a contracting party.
The right to apply for protection belongs to the breeder or successor in title. The applicant must be a national or resident of Trinidad and Tobago, a contracting party to the UPOV Convention or any state, not being a contracting party, which grants reciprocity of treatment to Trinidad and Tobago.
Please note that the administrative framework is to be put in place later this year to allow for the acceptance of applications.
COPYRIGHT
The Copyright Act, 1997 replaces and updates the copyright legislation, making it more consistent with modern copyright laws and principles.
Protection
In the new Act copyright is described as a property right which subsists in literary and artistic works that are the original intellectual creations in the literary and artistic domain. There is no registration system, protection accrues from the moment of creation. Protection is now available for matters that were not expressly covered in the former legislation, such as computer programs. Protection do not extend to ideas, the official text of legislation and political speeches.
Rights vested in the owner of the copyright
The owner of copyright has the exclusive right to do authorize, or prohibit the following acts in relation to the work:
the reproduction, translation , adaptation, arrangement or other transformation of the work; the first public distribution and each copy of the work; the rental or public lending of the work or copy; importation of copies of the work; public display of the work or copy; the public performance, broadcasting, or communication to the public of the work. The Act also recognizes and provides for the moral rights of the author.
Duration
The term endures for the author's life plus an additional 50 years after the author's death. In the case of a joint work prepared by two or more authors, the term lasts for 50 years after the death of the last surviving author's death. For anonymous works, the duration of copyright will be 75 years from publication.
In the case of a collaborative work other than a work of applied art and in the case of audio-visual works
75 years from publication or;
75 years from the date work first made available to the public if it has not been published before 25 years after its making or;
100 years from the making of the work the work has been available to the public or published
before 25 years after its making
In the case of a work of applied art 25 years from the making of the work.
Remedies
Remedies for infringement include injunctions, impounding and forfeiture of infringing goods and equipment used in the manufacture thereof, damages, fines and imprisonment.
Border measures
Border Measures to prevent the importation of pirated and infringing goods are to be introduced in a few weeks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
