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www.caribbeantrademarks.com

ANGUILLA ADOPTS SWEEPING NEW TRADEMARKS ACT

Anguilla has adopted and on August 12, 2002 put into force a sweeping revision of its trademark laws. The Trademarks Act, 2002 establishes a TRIPS compliant system which incorporates the latest version of the Nice international classification system, permits multi-class applications and registration of service marks and, at the same time, retains continuing recognition of a UK registered mark as an alternative basis for registration, alongside the now modernized local application system.

The new act is novel in providing for recognition and enforcement of Community Trade Mark (CTM) registrations if and when a reciprocal arrangement is established with the European Union.

A British dependent territory located in the Caribbean area, Anguilla is an English common law jurisdiction which, like other common law jurisdictions, accords priority to first use over the first to file. Replacing a system which mirrored the 1938 U.K. trademarks act and relied upon the old British classification system which made no provision for service marks, Anguilla at the same time enacted other modern intellectual property laws to protect patents, copyright, industrial and layout designs and trade names.

Another major change is abandonment of the previous fee schedule which required official fees which totaled more than $400 for registration of a mark in one local class. The official fee is now $250 for a single or multi-class application, or $200 for a UK based application. Also dispensed with are Statement "A" and Declaration forms which, in addition to a power of attorney, required the proprietor's signature. Now, the applicant need only sign an authorization - with no witnessing, notarization of legalization.

The new act provides for Paris Convention priority and recognition of well-known marks, as defined in the Paris Convention. At the same time, the common law of "passing off" has been retained. All applications are subject to absolute and relative grounds of refusal. Prior use in Anguilla is unnecessary provided the applicant asserts intent to use; revocation for non-use cannot be sought until elapse of three years of non-use following registration. The period of opposition is one month from the date of publication.

Anguilla has established an efficient, highly computerized registry, having launched in 1999 the world's first online company formation facility with authorized representatives located both within Anguilla and abroad.

A UK-based registration in Anguilla will continue to require the filing of a local application in Anguilla and the duration of the resulting registration will continue to be coterminous with the underlying UK registration, that is, ten years initially and ten years for each renewal. Local registrations will likewise extend for a ten year period with renewals for further ten year periods. Existing registrations, which under the local system were granted a term of 14 years, are reduced under the new act to ten years. Late renewal may be applied for within the grace period of six months from the date of expiration.

Consistent with TRIPS, the proprietor of a registered trademark may give notice to Customs in Anguilla to restrict importation of infringing goods, and the Court may order the police to search for, seize and destroy infringing goods. Strong penalties are provided for offenders, both individuals and legal entities, for infringement, trademark-related misrepresentation, and groundless threats of infringement proceedings.

The new act also provides for registration of collective and certification marks, as well as distinctive shapes of products and packaging. An application to record a license must provide for quality control.

Applications can now be filed by fax or electronic mail, and the date of application will be the date of transmission, provided that the original documentation is filed within two months.