“Why are you using my idea of a design to market your products and services?”
“This design is suspiciously close to mine. I am concerned that my customers will be confused”
“Why do you have exclusive rights over a design that I created?”
“How can I stop you from using my design?”
The answers to these questions and concerns are embedded within the codification of the applicable local and international Trademark Laws.
For our purposes, trademarks in Grenada are governed and filed in accordance with the Trademarks Act No. 1 of 2012 as amended (“the Act”). The Act is regulated by Statutory Rule & Order No. 18 of 2012.
According to the Act, a trademark is “any sign capable of being represented graphically, which is capable of distinguishing goods and/or services of one undertaking from those of other undertakings” (Section 2 (1) of the Act). Simply put, a trademark is any sign or design which identifies a company or business for its goods and/or services that it offers.
It is important to note that the protection of trademarks is jurisdictional, therefore, your protection only extends to the country or jurisdiction where it is registered.
The registration of your brand/logo pursuant to the Act, confers upon you an exclusive right to the use of your brand/logo in accordance with the goods and/or services you offer. You will be protected from infringement and can enforce your rights in Grenada.
When a trademark is not registered, there is always the risk that another business or entity may register the mark and pose significant difficulties for your business, perhaps by attempting to prevent your business from operating or expanding under its current identity or by confusing consumers about the goods and/or services you offer as distinct from the competing business or entity. Consequently, this may force you to rebrand your business’ image. To guard against such an occurrence, the registration of your trademark is essential.
Prior to the Act, trademarks were required to be registered in the United Kingdom before registration could be effected in Grenada. This was in accordance with the Registration of United Kingdom Trademarks Act (1939) Chapter 284 (the Old Act). The Act has since repealed this requirement.
Under the Act, the process for the registration of a trademark is relatively simple provided that the proposed registration meets the following requirements:
1) Is capable of distinguishing the goods and services of one enterprise from those of other enterprises;
2) Is not contrary to public order or morality;
3) Does not mislead the public or trade circles, particularly as it relates to the geographical origin of the goods or services concerned, or their nature or characteristics; and
4) Is not identical or confusingly similar to a mark belonging to another entity.
Once an application for registration is filed, it endures an examination period of approximately two (2) months at the Corporate Affairs and Intellectual Property Office (CAIPO), during which time the Registrar makes a determination as to whether the trademark is registrable and/or available for registration. The Registrar’s decision is then communicated to the applicant by notice in writing. If the decision is favourable, the trademark is published in the Government Gazette.
A period of one (1) month from the date of publication is allowed for any potential contester of the prospective registration to file a Notice of Opposition in accordance with the Act. In the absence of any valid opposition, the Registrar then issues an official Certificate of Registration to the applicant thereby completing the registration process.
Once the trademark is successfully registered, it endures protection for a period of ten (10) consecutive years (“the period of protection”) commencing the date of filing the application for registration. Pursuant to Article 4 of the Paris Convention for the Protection of Industrial Property, which has been codified in section 8 of the Act, an applicant with a trademark previously filed in another jurisdiction can apply in Grenada to claim Priority relative to the previously filed trademark. In such a case, the period of protection is retroactive and commences the date of the previous filing of the application for registration in the other jurisdiction.
During the period of protection, any changes in the particulars of the owner of the trademark are required to be recorded at the CAIPO by filing the applicable notices.
Upon the expiration of the period of protection, all trademarks are required to be renewed in order to maintain protection under the Act. This is done by filing an Application for Renewal at the CAIPO. The time frame to process the renewal of a trademark usually would not exceed one (1) month, provided that all the particulars of the owner are in order.
Trademarks that were previously registered under the Old Act, endures the same process of renewal under the Act and are not required to be re-registered. However, the classification of the mark will be re-examined to ensure that it is in conformity with the most current edition of the International Nice Classification of Good and Services, which is the recognised classification system in Grenada.
A trademark can be in either of the following forms:
1) Word – a word mark generally comprises a single word or phrase written in standard or stylized characters. This word or phrase must not be descriptive or reference any geographical locations.
2) Design/Device Only – this type of trademark is represented by an image or object and does not include written characters. The registrability of such marks extends to three-dimensional shapes and forms.
3) Word & Device or Combined Mark – this type of trademark refers to the combination of a word or phrase together with a design or device. Its representation is generally a distinguishing feature of the goods and/or services to which it relates.
Internationally, trademarks can also take other forms such as sound and smell. However, the Act makes no provision for such registrations, and these are therefore not currently registered in Grenada.
I always advise clients to register their creative marks to avoid confusion and intellectual property litigation. Most recently there was a highly sensationalised issue with a mark registered in Grenada by Party A, and Party B subsequently emerged claiming that it was the true creator of the mark. Regrettably, Party B did not register the mark it claimed to have created and so Party A enjoyed and continues to enjoy exclusive rights to the mark. The lesson to be learnt is, protect your creative marks and/or designs by registering them in accordance with the Act otherwise, expose your mark to the risk of being usurped.
Written and Prepared By:
Ricardo Sylvester
Paralegal