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Caribbean Intellectual Property in a Nutshell

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Caribbean Intellectual Property in a Nutshell Caribbean E-Proint Caribbean Caribbean intellectual property in a nutshell By Gabriela Bodden, E-Proint part of the Caribbean Netherlands, while Curacao and St Maarten (the Dutch part) are independent countries under the Netherlands. International filings In the Bahamas and Barbados, the registries Many years ago, an international filing meant are not computerised, therefore conducting filing IP rights before the local industrial searches and processing applications can be an property registry of each country. The current laborious process. In the Bahamas, searches can situation has come a long way from that take between 8 and 12 weeks – or longer in concept; rights holders can file and claim some cases, depending on the backlog at the priority to the Paris Convention for the registry. The granting of a certificate of Protection of Intellectual Property, the Madrid registration can take more than four years, and Protocol and the Patent Cooperation Treaty it seems that nothing can be done to expedite (PCT) in various countries, including the the process. This is an important consideration Caribbean and Central American region. when carrying out filing projects in this Twenty-five countries in the region have country. now signed the Paris Convention. Antigua and Through Practice Direction 1/2009, Belize Cuba are not party to the Madrid System and established that class headings are not accepted. its protocol. There exists much pressure on The British Virgin Islands is a UK- Central America to become operational under dependent territory and, as such, is subject to the Madrid Protocol. the Paris Convention. The British Virgin Sixteen jurisdictions are now signatories to Islands has one of the world’s most widely the PCT, although some parties have not yet used corporate statutes, with over 400,000 ratified the treaty (eg, Aruba). active companies trading globally. These Bermuda, the British Virgin Islands, the companies do business in Asia, Latin America, Cayman Islands, Montserrat and the Turks Europe and North America, with BVI and Caicos Islands are still UK-dependent companies being the largest source of foreign territories, and need to update their local investment in China and one of the top 10 legislation to allow for the registration of local sources in Vietnam. Therefore, it is prudent for trademarks and patents. rights holders to monitor company Antigua lacks patent examiners, therefore registrations that may potentially infringe their local patent applications are not admissible IP rights. The British Virgin Islands is not at present. PCT national phase applications party to any free trade agreements and is not are accepted; however, due to the lack of likely to become party in the near future. trained professionals, the examination Cuba and the Dominican Republic are two process is arduous. of the most up-to-date countries when it comes Following the dissolution of the Dutch to IP legislation; the most recent legislation was Antilles on January 1 2010, three separate enacted in 2000 in both countries. jurisdictions exist: Curacao, the Caribbean In Dominica, the Marks, Collective Netherlands and St Maarten. The three smaller Marks and Trade Names Act (12/1999) was islands (Bonaire, St Eustatius and Saba) are enacted in 2009. 60 Building and enforcing intellectual property value 2013 www.iam-magazine.com E-Proint Caribbean In Jamaica, patent legislation is extremely goods led the Office of the Public Prosecutor to outdated (it dates back to 1897) and, given that conduct a raid in July 2012, confiscating many the registry is not fully automated, the granting of the goods for which complaints had been of letters patents can be lengthy. A Patents Bill filed. However, goods for which complaints had is in the pipeline, but has yet to be enacted. not been filed were not confiscated. The New trademark legislation has been Bahamas has been successful in combating enacted in Montserrat; however, the registry counterfeit products through the courts, as still applies the former legislation as the counterfeit goods are not sold on the streets as necessary regulations have not yet been widely as in other countries within the region. finalised. The new legislation contains intent- According to various studies, the British to-use provisions. Virgin Islands appears to be a leading corporate The legislation of the Turks and Caicos domicile of choice and, as such, many Islands is under review but no significant international companies choose not only to amendments are scheduled in the near future. register, but also to establish their businesses The registry is modest in terms of size and there. Although there are no official statistics resources and, as such, the processing of to prove the counterfeiting problem in this applications can be time consuming. jurisdiction, it is safe to assume that it is a Service marks are not registrable in widespread practice. Many counterfeit goods Suriname or the Bahamas, and the British are imported and there may be insufficient Virgin Islands and the Bahamas have their own checks at ports to prevent this. local classification systems. In Guatemala, the creation of a special A new draft of the Trademark Bill is under prosecutor’s office to prosecute exclusively IP consideration in Trinidad. Trinidad still follows crimes is an important advance. the Seventh Edition of the Nice Classification Cuba is one of the few countries in the and is stringent in its examination, which often region where counterfeiting is not a prevalent leads to specification queries. issue due to strict controls, thus the In August 2012 the Grenada registrar of application of certain measures is not required. companies confirmed that the new Trademark With the enactment of new IP legislation Act (1/2012, as amended) came into force on in Dominica, the need for ongoing IP training the passing of the Trademark Regulations for customs and policing personnel has become (18/2012). This new legislation repeals the imperative, and the country is now focusing registration of the UK Trademarks Act and the on this issue. Merchandise Marks Act, under which Grenada Customs in the Dominican Republic previously operated. This essentially means requires copies of documents evidencing that that UK registrations are no longer required for importers are the authorised distributors of filing a trademark in Grenada – welcome news goods, otherwise the goods are confiscated at for all rights holders. the port and, after an internal procedure, handed over to the legitimate owners or distributors. Counterfeiting In Jamaica, a specific police and customs The counterfeiting of goods is an increasing department that handles counterfeiting matters. problem in the region, with the most Due to Panama’s Colon Free Zone, vulnerable goods being leather commodities copyright infringement is a topic of interest for (eg, bags and belts), DVDs, CDs and electronic companies operating there, and especially for media utilised to distribute music or films, the government. Prosecutors are tenacious on cigarettes, liquor, clothing and luxury goods. this issue as the legislation provides for the In countries where counterfeiting is confiscation of goods at the port of entry. prevalent, what actions are governments taking St Lucia is a small country and to counteract the problem? In Antigua, the counterfeiting is not a widespread practice. government has opted not to grant vendor Customs is proactive in the seizure of licences to merchants that are known to sell counterfeit goods and holds extensive powers counterfeit goods. In Aruba, the heightened under the Trademark Act. Customs has a concentration of merchants selling counterfeit sophisticated computer network connected to www.iam-magazine.com Building and enforcing intellectual property value 2013 61 Caribbean E-Proint the US, UK and EU systems which has proven interest in negotiating a trade agreement with to be a useful tool. CARICOM, but there have been no reported Counterfeiting of goods is a problem advances. The European Union and the Forum currently being tackled by the Surinamese of the Caribbean Group of African, Caribbean government; the Department of Justice is and Pacific States have agreed to: working closely with the World Intellectual • integrate IP rights regulations in the region; Property Organisation and other bodiess to • progress towards regional management and fight this problem. Customs officials receive enforcement of national IP rights; and regular training in the IP field. • create and manage regional IP rights, The Trinidad Trademarks Act allows for the as appropriate. registration of trademarks with Customs and Excise, which scan seize goods bearing particular One clear example of investment marks for 10 working days (extendable by negotiation is the case of Jamaica and China, Customs and Excuse) in order to allow the rights which, according to the Jamaica Trade and holder to file infringement proceedings. Invest President Authority, was pursuing Counterfeiting is also an increasing stronger business partnerships and joint concern in the Turks and Caicos Islands. The venture investment linkages in the areas of registry is the first entity to be informed of an textiles and tourism in 2009. infringement matter, and subsequently the Guyana is one of the strongest CARICOM matter is coordinated with Customs, the police member countries and was the subject of a and the immigration authorities. recent review by the World Trade Organisation which indicated that Guyana had improved its Remedies
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