Trade marks “®”

A trade mark is a sign capable of distinguishing the goods or services of one trader from those of other traders.  They offer legal protection for any symbol, design, logo, words or combination thereof that represents services or goods.

Trade mark protection offers a number of benefits to the holder of the trade mark. Holders of trade marks can: protect their product or service and initiate legal action against infringers under the Trade Marks Act; license or sell the trade mark thereby monetising it; easily distinguish their goods or services in the marketplace from other competitors; add prestige and brand recognition to the product or service by the use of the “®” after the trade mark.

While there are multiple types of trade marks. There are five main categories of trademarks for products: generic marks, descriptive marks, suggestive marks, fanciful marks and arbitrary marks. For services, there are services marks.

There are also more specific types of Trade Marks such as Trade Dress, Sound Mark, Logotype, Motion Mark, Multimedia Mark, Pattern Mark, House Mark, Hologram Mark, Trade Name, Collection Mark, Position Mark and Family of Marks.

For the purposes of this blog entry I will provide a simple break down of the main categories mentioned.

TYPE OF TRADE MARK	Meaning/Description
Generic Marks	These describe everyday words used to describe sellers or their products. To qualify, a generic mark for a trademark, needs to be more specific and to describe qualities, characteristics, or ingredients of the business or the good sold that would distinguish it from other products on the market.
Descriptive Marks	This only serves to describe the product. Descriptive marks have to achieve secondary meaning to qualify for protection. This means that the brand is recognised as coming from a particular source, it moves from ‘what’ it represents, to ‘who’ it represents. eg. McDonald’s.
Suggestive Marks	To qualify, a suggestive mark should cause a customer to use their imagination to figure out what services or goods the company offers. Here the product’s qualities are implied or hinted at without necessarily relating to it in a literal sense or providing a clear description. eg. NETFLIX. These marks are not descriptive but distinctive.
Fanciful Marks	This is a mark, name or logo that is different from anything else that exists and would usually include words that do not hold any meaning in ordinary or common language .eg. Nike.
Arbitrary Marks	This refers to the use of a regular word but in an unconventional way. In this case the word would be unrelated to the product it applies to or signifies .eg. Apple.

A Service Mark is the same as a trade mark, it is used to differentiate an organisation’s class of services from other similar providers, it signifies that a company provides a unique service .eg. American Airlines.

Protection given

Trade Marks registered in Trinidad and Tobago are given the exclusive right to be used for the goods and services they cover in Trinidad and Tobago.

Trade Marks are valid for 10 years from the filing date and are eligible for renewal for successive ten year periods upon filing the prescribed renewal application form and the payment of the appropriate fees. 

For protection outside of Trinidad and Tobago, applicants are required to utilise the Madrid system. To utilise the Madrid system applicants have to complete additional forms and pay additional fees.

Registration

In order to apply for a Trade Mark in Trinidad and Tobago, an application must be submitted the The Trinidad and Tobago Intellectual Property Office (TT IPO) which is the only office assigned with the responsibility for the registration of trade marks in Trinidad and Tobago. Trade Marks registered in Trinidad and Tobago are only valid in Trinidad and Tobago. Applicants must possess an address for service within Trinidad and Tobago, applicants outside of Trinidad and Tobago must have a local agent.

Application

Applicants are required to,

“complete the Application Form (TM-No. 2) in duplicate on size A4 paper and submit the form at the Receiving Office of the Intellectual Property Office together with the application fee. Seven additional copies of the trade mark are also required where the mark is stylized or includes a logo. Where the application is being filed by an agent on behalf of the applicant a Form TM No. 1 must also be completed.” (TT IPO website)

The application form is available online and each application costs TT$1400 for each class of goods or services selected and TT$150 for each additional class in the same application. Applications may be filed electronically or via facsimile.

One should always perform a search for any similar or identical marks that may be in use by others before applying to register a trade mark. 

The procedure for searching for a trade mark by accessing the Intellectual Property Office’s (IPO) website, www.ipo.gov.tt .

In Trinidad and Tobago persons may search the Trade Mark Index Books at no cost. Requests may be made for the Trade Marks Register (for registered marks) or the pending Register (for pending applications) at a cost of TT$50.00 per trade mark.

To apply for a Trade Mark one should have (at the very least) the name and address and nationality of the applicant (the same goes for companies), a copy of the trade mark and the list of services or goods in relation to which the mark will be registered (.ie. the Trade mark’s classification). This classification should be in accordance with the 11th Edition of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. 

The process of obtaining a trade mark is not a simple one, so be prepared to invest some time, money and energy in the process.