Trade and Service Marks
– National Ordinance providing for some new rules with regard to trademark law – Trademark Act (Merkenlandsverordening, AB 2013, GT No. 622 of May 2, 2013).
– National Ordinance providing for the creation, organization, responsibilities and authority of the Bureau for Intellectual Property (Landsverordening Bureau Intellectuele Eigendom, AB 2014, No. 83 of December 18, 2014).
– National Decree providing for the date of the coming into force and publication of the National Ordinance of December 18, 2014, being October 1, 2015 (Landsbesluit, AB 2015, No. 25 of September 23, 2015).
– National Decree providing for the rules for the deposit and renewal of trademarks and the government fees for this (Merkenlandsbesluit, AB 2015, No. 25 of August 25, 2015).
– National Decree providing the date of the coming into force of the National Decree of August 25, 2015, AB 2016 No. 5, being February 12, 2016.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act of 1967.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 1, 1986.
– WTO’s TRIPS Agreement (1994), since January 1, 1995.
– Madrid Protocol, since April 28, 2003.
– Singapore Treaty, since January 2, 2010.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since May 21, 2012.
– Trademark Law Treaty, since August 11, 2012.
Notes: St. Maarten has its own jurisdiction for intellectual property rights. The Bureau for Intellectual Property St. Maarten (“BIP SXM”) has become operational on October 1, 2015. From that date BIP SXM is responsible for all trademark registrations in the St. Maarten Register of Marks. Internet address: www.bip.sx
All requests for renewals, assignments, changes of address, etc., concerning marks formerly registered in the Netherlands Antilles (NA) Register of Marks are accepted without need for filing a confirmative application or the payment of extra charges. All trademarks formerly registered with BIP NA in the NA Register of Marks are thus by operation of law, and at no extra charge, assumed registered in the St. Maarten Register of Marks for the remaining duration of their former Netherlands Antilles term of registration.
Once a change takes place in the St. Maarten Register of Marks to a mark formerly registered in the NA Register of Marks, the mark concerned is assigned a “new” St. Maarten registration number. The (digital) St. Maarten Trademark Gazette only contains these “newly” numbered marks.
The Benelux Bureau for Intellectual Property (BOIP) in The Hague, The Netherlands, has extended its services to BIP SXM by setting up and maintaining the online digital register of marks and the online digital highway to maintain the trademarks registered in the St. Maarten Register of Marks. During the start-up phase of BIP SXM, BOIP gathered all the relevant available data concerning trademark rights valid in St. Maarten. An online Register was created based on the official publications by the Bureau for Intellectual Property Curaçao (BIP CW) between January 2001 and October 2015. The assumptions that were made and the decisions that were made with regard to all trademark rights valid in St. Maarten taken have been published on the BIP SXM website www.bip.sx under “Legal” followed by “Updates”. Additional comments and/or corrections are still welcomed by the Bureau and by BOIP.
Applicant: any natural person or legal entity claiming the right to a trademark.
Foreigners: non-residents must be represented by a registered trademark attorney in St. Maarten.
Service marks and collective marks: may be registered.
Colors and family names: may be registered.
Definition of trademark: all designs, prints, seals, letters, figures, shapes of goods or packaging and all other symbols that serve to distinguish the products of an enterprise.
Not registrable: (1) shapes, determined by the nature of the goods, that influence the actual value of the goods, or that yield a result in the industrial field, cannot be registered as marks; (2) signs that may deceive or mislead the public; (3) marks that infringe upon the public order.
Priority: based upon Article 4 of the Paris Convention or on the TRIPS Agreement, priority may be claimed within six months of the filing date in any Convention country.
Multi-class applications: possible.
Territory covered: St. Maarten (Dutch part).
1. Filled in application form with the name, address and signature of the applicant;
2. Electrotype (max. 8 x 8 cm), not required for ordinary word marks;
3. Specification of the word mark, figurative mark or combination, and/or its picture; when applicable: the specification of the colors and/or color codes;
4. A statement that it concerns a collective mark, when applicable;
5. For logos, the number of prints as indicated by BIP SXM;
6. The classes and specification of goods and/or services, in English, in accordance with the Nice Classification list;
7. Priority/preference document; a copy of the documents that prove this right;
8. Payment of the filing fee.
Note: all of the above must be in the English language. Unless specifically asked for, the submission of a valid power of attorney is not required.
Electronic filing: available.
Examination and Protection
Examination: as to formality of the documents, registrability of the mark, existence of prior registrations or applications or marks known in St. Maarten.
Disclaimers: not available.
Letters of consent: are not accepted.
Publication: in the St. Maarten Trademark Gazette (“Merkenblad”) (digital).
Delivery of document: provided that no complications occur, a typical application takes between one and two months from filing to registration.
Effect of registration: there is a presumption of exclusive rights to use the mark.
Use: compulsory; non-use for a period of more than five years may be claimed as defense by an infringer. Use by a licensee is deemed use by the proprietor.
Tolerated use: after five years of tolerated use of a mark subsequently registered, the holder of the exclusive right to a mark can no longer invoke the nullity of the subsequent registration.
Nullification/cancellation: on the grounds mentioned in Article 25 of the National Trade Mark Act 2013, any interested party may request the Court of First Instance (“Gerecht in Eerste Aanleg”) to nullify and cancel the registration of a mark.
Appeal: may be filed at the Common Court of Justice (“Gemeenschappelijk Hof van Justitie”) and at the Supreme Court of Justice (“Hoge Raad”).
Refusal of registration: within six weeks after the notice of the refusal of registration, the applicant may appeal this decision before the Common Court of Justice (Article 12 National Trademark Act 2013).
Marking: no provision.
Duration: ten years as of the date the application was filed.
Renewal: for periods of ten years. An application for renewal must be filed within six months prior to expiration.
Late renewal: renewal within six months after expiration is possible against additional duties to be paid.
Documents for renewal: same as for original application.
Assignment: possible, with or without the business. It must be recorded.
License: registration is not compulsory.
Infringement/opposition: based on the exclusive right of first registration, the mark holder can oppose against: (a) any use, made in economic traffic, of the mark for the goods or services for which the mark has been registered; (b) any use of similar goods or services, if the possibility exists for the public to make an association between the marks; (c) any use, made without valid reason, of goods or services not similar, if the use of the mark can cause unjustified benefit or can harm the reputation of the mark.
Penalties: the mark holder may claim damages for any loss and can institute a suit for payment of any profit earned in consequence of the unjustified use.