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.

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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

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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 economic performance since its last review in Trade agreements expand trade opportunities, 2003, and rated it as favourable for foreign strengthen and open up markets between investment. The Guyanese authorities are participating countries, act as an important tool committed to upholding international in the promotion of fair competition, promote commitments pertaining to IP rights, particularly the enactment of adequate legislation and in light of the fact that their legislation dates regulations and, backed by a transparent back to the colonial period. To date, Guyana has rulemaking procedure, attract foreign investment. adopted new legislation on geographical One trade forum is the Caribbean indications, and there may be further IP Community (CARICOM), an organisation of 15 legislative developments in the near future. Caribbean nations and dependencies. CARICOM Another example of a trade bloc is the has signed free trade agreements with: Central America-Dominican Republic Free • Cuba (July 5 2000); Trade Agreement to which Costa Rica, El • the Dominican Republic (December 2001); Salvador, Guatemala, Honduras, Nicaragua and • Costa Rica (March 9 2004); and the Dominican Republic are members. The • the European Union (in the form of agreement provides new market access for US economic partnership agreements). consumers in the areas of industrial and agricultural products. It also covers customs CARICOM countries are increasingly facilitation, provides benefits to small and focusing on updating IP legislation and medium-sized exporters and provides for the frequently hold workshops in this field. For improvement of IP rights legislation and example, in June 2009 Jamaica hosted a public regulations as a priority. forum where representatives from the Jamaican The countries which are party to the Intellectual Property Office and several of its agreement have taken measures to honour their counterparts from across the region discussed commitments under the agreement (ie, reforms the best method of protecting traditional in the domestic legal environment), thus knowledge that is passed down through advancing in regional integration. The generations and is specific to Jamaica and agreement reinforces national efforts to other Caribbean countries. strengthen IP laws and enforcement and The United States has demonstrated a clear supports the growth of trade in valuable digital

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and other IP-based products, which is occasional audits of local stores in order to consistent with US standards of protection and determine whether their goods are being sold enforcement and with emerging international in that particular jurisdiction. standards. Such improvements include: In tax havens such as the British Virgin • state-of-the-art protection for digital Islands and the Cayman Islands, it is highly products, such as US software, music, text recommended that IP rights be transferred to and videos; holding companies in order to ensure proper • stronger protection for US patents and management and to prevent problems in case trademarks, including an electronic system of a future insolvency. The holding company for the registration and maintenance of usually licenses the trademarks back to its trademarks; and subsidiary companies. • further deterrence of piracy and Trademark owners should prioritise the counterfeiting. filing of IP rights in countries where their goods and services will be introduced onto the The agreement also requires protection of market. It is essential to determine the most undisclosed test data submitted for the purpose important potential markets or that filing be of product marketing approval of pharmaceutical carried out in those countries where: and agricultural chemical products against • there are active distributors; disclosure and unfair commercial use. • the goods or services are widely sold; or Enforcement remains a concern in the • the product is a victim of counterfeiting agreement countries. As the economies of the or piracy. member countries strengthen, governments will have additional resources to face the Filing should be prioritised in countries challenges arising from the lack of personnel where Paris Convention, Madrid Protocol or and expertise necessary to fund an effective PCT filing is not in force, as this will serve to campaign against copyright and other IP ensure adequate protection in a timely manner. violations. With the enactment of trade agreements in Trademark owners must be vigilant to the region, it is natural that the flow of ensure that they are in good standing, especially commerce will increase, therefore it is vital that: in those jurisdictions party to trade agreements • countries enact adequate and up-to-date such as the United States, Europe, China and IP legislation; Latin America. It is important to ensure that • customs officials and police receive training corporate owners do not register their in the IP arena, so as to ensure that they companies under well-known trademark names can identify counterfeit and pirated as this can induce consumers to assume that merchandise; and there is some sort of affiliation between the • countries implement an IP registry system manufacturing company and the corporate with Customs, as this will serve to ensure registered body (corporate squatting). It is highly that counterfeit products are stopped at recommended that trademark owners maintain the border and the rights holder is notified a watchful eye on the registrar of companies and by Customs. should particularly ensure that when applying for the registration of a mark, searches be Preliminary injunctions are also an carried out regionally in the local language and important tool when dealing with infringement in other variations of the mark for identical cases. products or services and in similar classes on a Companies that adequately manage their IP country-by-country basis; this will serve to portfolios will benefit by saving on filing costs ensure the non-existence of similar or identical and organising the management of their trademark applications and registrations. portfolios, and will ultimately strengthen their The negative publicity that counterfeit position in comparison to companies that offer goods can have on a particular brand must be or sell similar goods or services. IP rights are a considered. A recommended strategy for key intangible property and they should be manufacturing companies is to carry out aggressively protected.

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Gabriela Bodden IP attorney [email protected]

Gabriela Bodden is a recognised expert in international trademark law. She focuses primarily on trademark, copyright and patent matters, as well as advertising and legal disputes. Ms Bodden also counsels clients on the selection and registration process of IP rights and their enforcement, adding a significant competitive advantage to clients’ portfolios. She has extensive experience in handling complex international IP portfolios throughout the Latin American and Caribbean region, covering matters such as clearance searches, trademark filings, the prosecution and maintenance of trademarks, licence and franchising contracts, cautionary notices and piracy issues. She initiates and completes opposition actions, lawsuits and office actions before the registries and courts of various countries. Ms Bodden has written and co- written chapters on trademark practice and procedure for various IP publications.

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