Trade and Service Marks
– Trade Marks Act No. 46 of 2003, in force since May 18, 2004.
– Trade Marks (Amendment) Act No. 50 of 2004.
– Trade Marks Regulations, S.R.O. No. 13 of 2004 (repeals and replaces the previous Registration of United Kingdom Trade Marks Act (Cap. 113) of the 1990 Revised Laws of Saint Vincent and the Grenadines), in force since May 18,2004.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), in effect since April 25, 1965.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 29, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 29, 1995.
Note: under the new Trade Marks Act, it is no longer necessary for a trademark to be registered in the United Kingdom in order for it to be registered in Saint Vincent and the Grenadines.
Applicant: individuals and legal entities.
Exclusive rights: belong to the owner of the trademark who is either using the trademark or who intends to use it or assign it for use.
Service marks: registrable.
Types of protection: word marks, logos, three-dimensional marks, sound marks, marks in color.
Registrable: a trademark must be distinctive and therefore capable of distinguishing the goods and services of the applicant for the trademark from those of another. In an application for the registration of a trademark that consists of a three-dimensional shape, the representation of the mark shall be illustrated or include such views of the mark that are necessary to show each feature of the mark.
Not registrable: (1) marks that are not capable of being graphically represented; (2) marks which are not distinctive; (3) marks such as would deceive or cause confusion among customers; (4) marks which are scandalous in nature or its use contrary to law; (5) marks which are the same as or similar to a registered mark; (6) marks which contain or consist of a sign that is prescribed not to be used, such as: (a) a representation of the Royal Crown – words, letters or devices likely to lead persons to think that the applicant has or recently has had Royal patronage or authorization; (b) the words “To counterfeit this is a forgery” or words to the same effect; (c) a representation of the coat of arms, or of the flag or seal of Saint Vincent and the Grenadines; (d) the words “Patent”, “Patented”, “By Royal Letters Patent”, “Registered Design”, “Copyright”, “Plant Breeder’s Rights” or words or symbols to the same effect; (e) a representation of the logo or emblem of a public authority or public institution in Saint Vincent and the Grenadines except on the application of such public authority or public institution; (7) a representation of a mark notified by the Paris Convention as not entitled to registration under international agreements.
Classification: Nice International Classification of Goods and Services.
Multi-class applications: possible.
Priority: available. If more than one priority date applies, the applicant is to specify the goods or services or both to which each priority date relates.
Territory covered: the jurisdiction of St. Vincent and the Grenadines.
Filing requirements for an application (to be sent to registered resident agent):
1. Certified authorization of agent form, which must state the name and address of the agent and of the owner of the mark (the agent must be an attorney-at-law and entitled to practice at the local bar); if the Notary’s certificate is in a foreign language, a signed and dated translation into English must accompany the form;
2. A completed application for registration form, including the classes of goods or services to be protected and whether a priority date is claimed;
3. 6 representations of the mark (that can clearly identify it and show all its features, including any colors or three-dimensional features), size 8 x 8 cm (additional fee applicable if the representation exceeds this size); not required for word marks;
4. Payment of the prescribed fees.
Examination: each mark is examined to determine whether it conforms to the statutory requirements under the new Act.
Publication: advertised in the Official Gazette upon payment of a publication fee.
Opposition: possible, by any third parties who wish to oppose the registration of the mark, within three months from the date of advertisement, under the following ground: that the applicant does not intend to use, or authorize the use of the mark in Saint Vincent and the Grenadines or to assign the mark to a body corporate for use by the body corporate in Saint Vincent and the Grenadines in relation to the goods or services or both specified in the application. In the event that there is no opposition or where opposition proceedings are determined in favor of the applicant, a further fee is to be paid and a certificate of registration issued.
Duration: ten years from the filing date.
Renewal: indefinitely. From six months before the expiry of the ten-year period, the mark can be renewed on payment of a further fee for a further ten-year term. There is a twelve-month grace period with fine.
Assignment: possible; may be with or without the goodwill of the business concerned. A notice is published in the Official Journal. An assignment or transmission may be partial (it may apply to only some of the goods or services or both of which registration is sought or the trademark is registered) but may not be partial in relation to the use of a trademark in a particular area.
Amendment of application/registration: modification after registration is not possible, though an amendment may be made after particulars of an application have been published, in relation to: (1) the representation of a trademark if the amendment does not substantially affect the identity of the trademark as at the time when the particulars were published; (2) correct a mistake of fact or an error in the classification of any goods or services specified in the application; (3) change the type of registration that is sought in the application; (4) any other particulars specified in the application, unless the amendment would have the effect of extending the rights that, apart from the amendment, the applicant would have under the registration if it were granted.
Marking: registration is not compulsory, however, the symbol “®” may only be used in relation to a mark registered in St. Vincent and the Grenadines.
Use: not compulsory, but if a mark is not used for a period of three years after registration, an action for cancellation can be requested by any third party.
Infringement and penalties: an action for infringement of a registered trademark may be brought to the Court. The relief that a Magistrate Court may grant includes an injunction, damages or an account of profit. The Comptroller of Customs may also seize goods infringing a registered trademark.