Trademarks

A trade mark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.The Trade Marks Act of 2003 and its regulation of 2006 are two principal legal instruments governing the registration of trade marks in Antigua and Barbuda.

Collective Marks

A collective mark is a mark that distinguishes the goods or services of members of an organization from those of other organizations. A collective mark is usually owned by an association or any other entity, such as a public institution or a cooperative.

A Certificate Marks 

A certification mark is a mark that indicates the goods or services in connection with which it is used or certified by a proprietor of the trade mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

Word Marks

A word mark is a trade mark that consists of words only, without any accompanying design or graphics.

Design/Device Mark

A design/device mark is a mark which consists of images/pictures and graphics without any accompanying words.

Word and Design/ Device

Word and design/device marks, otherwise known as combination marks or mixed marks, are marks which are comprised of words and images/pictures.

Colour Marks

Colour marks are marks which are filed in colour, have some or all of the elements identified in:

1. Word mark
2. Design/device marks 
3. Word and design/device mark.

Or the mark for registration may be a particular colour, that is used or proposed to be used to identify the goods and/or services of the trader.

A trade mark adds value to your business as an intangible asset. In today’s economy this is being more recognized and used in commercial transactions. In addition, by distinguishing your goods or services from those of other traders, a trade mark is one of the single most valuable marketing tools that most traders can have.

A Trademark: 

• Allows you to initiate legal proceedings for the infringement of your trade mark under the Trade Marks Act 2003
• Allows the proprietor of the mark to have documentary proof of its ownership of the mark;
• Is personal property, which may be sold, licensed or franchised;
• May prevent unauthorized persons or entities from using your trade mark without your permission;
• Gives public notice of the registered proprietor of the mark and authorized users of the mark may be recorded in the Trade Marks Register.

No. Registration is not compulsory, but without registration a trade mark owner cannot bring an action in court for infringement to protect the trade mark. In addition, with an unregistered trade mark, the trade mark holder is required to file a common law action to protect their unregistered mark. Registering your trade mark is strongly advised.

Applicants located and resident in Antigua and Barbuda can apply for a trade mark themselves or through an agent. 

However, applicants located outside of Antigua and Barbuda will be required to obtain a local agent as an address for service in Antigua and Barbuda is necessary.

A marketing strategy should establish a clear link between your products or services and you, as the producer or provider of such products or services. Customers should be able to distinguish, at a glance, between your products or services and those of your competitors and associate them with certain desired qualities. Trade marks are protected only in connection with specific goods and services. When registering a trade mark, you must indicate the goods and services for which you want to register it.

Classification of trademarks is done using the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The Nice Classification is available on the World Intellectual Property Organization’s website at: https://www.wipo.int/classifications/nice/nclpub/en/fr/.The European Union Intellectual Property Office Network of Databases is also a great resource for trademark classification. This network is available on the European Union Intellectual Property Office website at: :https://euipo.europa.eu/ohimportal/en/databases 

• Applicant’s name and address (Form 1)
• Applicant’s nationality or state of establishment and the legal nature of the legal entity (if a company);
• Authorization of Agent (Form 2) (If you are not a resident in Antigua and Barbuda represented by an Attorney and/or agent)
• List of the goods and/or services in relation to which the mark will be registered in accordance with the International Classification of Goods and Services (International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement);
• Copy of the trade mark
  • The application must contain a clear reproduction of the sign filed for registration, including any colours, forms, or three-dimensional features. Representation of mark 
  • Other than a word mark, three (3) additional and identical reproductions of the mark shall be submitted. 
• Certified translation – If the mark is in any other language other than English.
• Authorized permission from the competent authorities to use a country’s name.

The requirements for filing a collective mark are similar to those seen in the filing of an individual mark. However, there are a few additional requirements which warrant the applicant’s attention.

The following particulars are necessary when filling a Collective Mark:-

• The application of registration must be designated as a collective mark. 
• The regulations governing the use of the mark must be filed. This should provide the following information:-
  • define common characteristics or qualities of the goods or services
  • designate the conditions under which and the persons by whom it may be used

provide for the exercise of effective control of the use of the mark

• determine adequate sanctions for any use contrary to the regulations

• The regulations governing the use of the mark must be certified by the applicant. No legalization of the certification is required. Section 25 of the Trade Marks Regulations 2006

For more information on the registration of trademarks, particularly collective marks, click here: https://www.wipo.int/edocs/mdocs/sct/en/wipo_webinar_atg_2023_1/wipo_webinar_atg_2023_presentation.pdf 

When a trade mark application is filed, it goes through the following process: –

• Formality Examination
• Examination of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (11th Edition)
• Search for Prior Rights
• Determination of Registrability
• Publication/Opposition period
• Registration (if no “opposition”)

You may contact the Office to determine the status of your application.

Yes. Applicants may search the Trade Mark Index Books free of charge and request the Trade Marks Register (for registered marks) or the pending Register (for pending applications) at a cost per trade mark. All fees are quoted in Eastern Caribbean Dollars.

The Antigua and Barbuda Intellectual property and Commerce Office principally employs an automated database known as the Industrial Property Automated System (IPAS) to conduct international and local trade mark searches. Also, in use however supplementarily is the TM View automated database.

Advanced Search Modalities identify all marks that were either registered prior to the applicant’s mark or marks that possess an earlier filing date, which may be pending registration. This may be identical or confusingly similar to the applicant’s mark. The search for protected emblems under Article 6ter of the Paris Convention should also be conducted and any similar or identical protected emblems identified in the search report.

Outlined within the table below are the absolute and relative grounds in which trade mark applications can be refused. These grounds can also be referenced in the Trade Marks Act of 2003 of Antigua and Barbuda.

It may take about 12 months for a trade mark to be registered (if the application did not contain any deficiency or face any objection/opposition). Anyone having an objection to the mark as published must file a notice of opposition at the office within three months on which the application was published.

A trade mark is valid for ten years from the filing date of the application and may be renewed for successive ten year periods upon the filing of the prescribed renewal application form and the payment of the prescribed fee.

The right of priority is an applicant’s right under the Paris Convention for the Protection of Industrial Property to benefit from an earlier filing date, if the application in Antigua and Barbuda, is filed within six months of the date of the first filing of the application in another Paris Convention country.

No. Trade mark protection is territorial.  This means that the rights granted by trade mark registration are limited to the territory (a country or a region) in which the mark is registered. A trade mark can be registered through national, regional (e.g., the European Union) or international registration procedures.  In particular, an applicant can choose to either:

• File a separate trade mark application with the Intellectual Property Office in each territory (country or region) where protection is being sought; or

• Use the Madrid System for the International Registration of Marks, which requires only one application to register a mark in multiple territories (multiple countries, multiple regions, or both).  The Madrid System is governed by the Madrid Protocol and is administered by the World Intellectual Property Organization (WIPO). Antigua and Barbuda has been a member of the Madrid Protocol since 2000.

  Marid System: https://www.wipo.int/madrid/en/how_madrid_works.html 

The Antigua and Barbuda Intellectual Property and Commerce office facilitates payment by cash, cheque, debit, or credit card.

A Trade mark must be renewed. If renewal does not occur, the trade mark will no longer exist.

If, upon examination, in accordance with section 5 of the Act, the Registrar objects to the application for registration of a mark, he/she shall notify the applicant in writing of his objections with all the relevant details and invite the applicant to amend the application, to submit his observations in writing or to apply for a hearing within two months from the date of the notification; if the applicant does not comply with the invitation within the set period, he shall be deemed to have withdrawn his application. (Section 16 of the Trade marks Regulation).

The Registrar of the Antigua and Barbuda Intellectual and Commerce Office is the competent authority. Any decision taken by the Registrar in particular, the registration of a mark, collective mark, or the refusal of an application may be the subject of an appeal by any interested party before the Court. Such appeal shall be filed within two months of the date of the decision. The High Court of Antigua and Barbuda shall have jurisdiction in cases of these under the Trade mark Act 2003.

Any person may, within three months of the date on which the application was published, give notice to the Registrar of opposition to the registration on Form 3 which shall include a statement of the grounds of opposition.

Where the opposition is based on a mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and –

1. The details of the authority with which the mark is registered;
2. The registration number of that mark;
3. The classes in respect of which that mark is registered; and
4. The goods and services in respect of which-

1. • The mark is registered; and
   • The opposition is based; 

Where the opposition is based on a mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in sub-regulation (2) (a) to (d), with references to registration being construed as references to the application for registration. 

The Registrar shall send a copy of Form 3 to the applicant and the date upon which this is done shall, for the purposes of regulation 20, be the “notification date”.

The Philip Morris Products S.A vs British American Tobacco (Brands) Limited and the Caribbean Idol (Antigua and Barbuda Idol) INC. vs IDOLS (FreMantleMedia Ltd.) are noted cases which reference registered Trade marks. The decisions may be found here: Caribbean Idol (Antigua and Barbuda Idol) INC. vs IDOLS (FreMantleMedia Ltd.) and here: Philip Morris Products S.A vs British American Tobacco (Brands) Limited.