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A mark means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of business. The term “trademark” is often used to cover both trademarks and service marks. These marks can consist of words, images, numbers, colours or a combination of any of those elements. The key to consider is if it is a visible way that persons can tell one business from the other, it can be a trademark. Usual examples of trademarks are logos, slogans, unique packaging, business names, etc.
Trademark protection allows the owner of the mark to stop or prevent another person or body from using his/her/their mark in St. Kitts and Nevis, without consent. Such unauthorized use is trademark infringement. In order to legally use another person’s trademark, the user must obtain permission from the owner through a written contract or licence agreement.
It is also an offence to import, sell, possess or offer for sale counterfeit/forged products into St. Kitts and Nevis.
In order to get the protection for a trademark that would enable a person to take action against unauthorized use, the trademark must be registered. Unlike copyright, trademark protection is not automatic and is granted on application.
The exception to that rule is well-known marks. According to s. 4(e) of the Act, an application for trademark registration that is identical or confusingly similar to a mark that is well known in St. Kitts and Nevis would have to be denied if the mark in the application is attached to goods and services that are identical or similar to the business of the well known mark. However, if that well known was registered, not only would prospective trademarks that are attached to identical and similar goods be denied but registration can halt any identical or similar marks regardless of the goods and services to which they are attached.
An application is made to the Registrar of the Intellectual Property Office. The forms and fees are set out in the schedules of the Act. Please see the Guide to Applying for Basic Mark Protection for further details.
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Trademark protection lasts for ten (10) years from the date of application. Protection can be renewed for indefinite, consecutive periods of ten years when the first period elapses.
The rights conferred by trademark protection are territorial in nature i.e. protection is only available within the country that it is registered. So for example, a trademark that is registered in St. Kitts and Nevis is not protected in St. Lucia unless the mark is also registered in St. Lucia.
A collective mark is a type of trademark that distinguishes goods or services of different enterprises on the basis of the origin, quality, mode of manufacture or other common characteristic of the goods and services. The mark is owned usually by a group or organisation whose members must comply with set standards in order to have the collective mark attached to their products. The purpose of collective marks is therefore to show membership in a group that has a specific reputation or special characteristic. An international example of a collective mark is the “CPA” mark used to identify persons in the Society of Chartered Accountants.
Collective marks are often used to promote products which are characteristic of a given region. In such cases, the creation of a collective mark has not only helped to market such products domestically and occasionally internationally, but has also provided a framework for cooperation between local producers.
Therefore, if for example, an agricultural cooperative from ABC community or region makes great pepper sauce, they can design a collective mark that can be placed on all the pepper sauces that are produced by the members of that cooperative. So even though there is Mabel’s Pepper Sauce made by Mabel and Will’s Pepper Sauce from Will, both producers can have the cooperative “ABC Coop” collective mark on their products to indicate their membership in the group. Using collective marks and trademarks together allows companies to differentiate their own products from those of competitors, while at the same time benefiting from the confidence of the consumers in products or services offered under the collective mark.
- Do I need to hire a lawyer to file a trademark application on my behalf?
The law requires that applicants who are resident overseas must have a St. Kitts and Nevis-based lawyer. There is no requirement that applicants in St. Kitts and Nevis need an attorney but it is advised if the application process is unclear.
- I registered my trademark and I saw someone using it without my permission, can the IPOSKN confront that person on my behalf?
The law does not give the IPOSKN any power to enforce your trademark or any other IP rights for you since they are your personal rights. Where there are allegations of infringement, trademark owners are encouraged to seek legal advice.