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Revised Laws of Saint Lucia (2021)

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107. Prior use of identical trade mark etc.

(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to—
1. (a) goods similar to registered goods;
1. (b) services closely related to registered goods;
1. (c) services similar to registered services;
1. (d) goods closely related to registered services,

if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before the date of registration of the registered trade mark, or the date the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Acts, first used the trade mark, whichever is earlier.

(2) If the unregistered trade mark has continuously been used only in a particular area of Saint Lucia, subsection (1) applies only to the use of the trade mark by the person in that area.

107. Prior use of identical trade mark etc.

2. Interpretation

3. Categories of trade marks

4. Rights given by registration of trade marks

5. Nature of registered trade mark as property

6. Power of registered owner to deal with trade mark

7. Limitation on rights for similar trade marks

8. Trade mark as sign describing article

9. Trade mark relating to article etc. formerly manufactured under patent

10. Powers of authorised user of registered trade mark

12. Application by joint owners

13. Claim for priority

14. Notice of application to be published

15. Registrar to examine, and report on, application

16. Registrar to decide on disputed classification of goods etc.

18. Notice etc. of decision

20. Deferment of acceptance

21. Lapsing of application

22. Revocation of acceptance

23. Trade mark containing certain signs

24. Trade mark that cannot be represented graphically

25. Trade mark not distinguishing applicant's goods or services

26. Trade mark scandalous or its use contrary to law

27. Trade mark likely to deceive or cause confusion

28. Identical etc. trade marks

29. Definition of divisional application

30. Divisional application possible only if initial application is pending

31. Divisional application for registration of part of trade mark

32. Divisional application for registration of trade mark in respect of some of goods etc.

33. Divisional application for registration of trade mark in respect of goods etc. excluded from the initial application

34. Filing date

35. Application—series of trade marks

37. Proceedings in name of a person other than the person who filed the notice

38. Opposition proceedings

41. Registration may be opposed on same grounds as for rejection

42. Applicant not owner of trade mark

43. Applicant not intending to use trade mark

44. Trade mark similar to trade mark that has acquired a reputation

45. Trade mark containing or consisting of a false geographical indication

46. Application etc. defective etc.

47. Amendment of application for registration of trade mark

48. Amendment before notice of application is published

49. Amendment after notice of application has been published

50. Amendment of other documents

52. Obligation to register

53. Registration—how effected

54. Colours in registered trade marks

55. Notification of registration

56. Date and term of registration

57. Ceasing of registration

58. Disclaimers

59. Request for renewal

60. Notice of renewal date

61. Renewal before registration expires

62. Failure to renew

63. Renewal within 12 months after registration expires

64. Status of un-renewed trade mark

65. Correction of register

66. Adaptation of classification

67. Amendment of particulars of trade mark entered in Register

68. Cancellation of registration

69. Amendment to correct error or omission

70. Amendment or cancellation on ground of contravention of condition etc.

71. Amendment or cancellation—loss or exclusive rights to use trade mark

72. Amendment or cancellation—other specified grounds

73. Rectification may not be granted in certain cases if registered owner not at fault etc.

74. Duties and powers of Registrar

75. Amendment of certificate of registration

76. Application for removal of trade mark from Register etc.

77. Time for making application

78. Referral to court

79. Notification of application

80. Notice of opposition

81. Removal of trade mark from the Register etc. if application unopposed

82. Trade mark restored to Register if notice of opposition filed within extended time

83. Proceedings before Registrar

84. Burden on opponent to establish use of trade mark etc.

85. Determination of opposed application-general

86. Determination of opposed application-localised use of trade mark

87. Registrar to comply with order of court

89. Certificate—use of trade mark

90. Assignment etc. of trade mark

91. Applications for record to be made of assignment etc. of trade mark whose registration is sought

92. Recording of assignment etc. of trade mark whose registration is sought

93. Application for record of assignment etc. of registered trade mark to be entered in Register

94. Recording of assignment etc. of registered trade mark

95. Notice of application to be given to person recorded as claiming interest in trade mark etc.

96. Object of Part

97. Application to have claims to interest etc. recorded

98. Record of claims to interest etc.

99. Amendment and cancellation

100. Record not proof etc. of existence of right etc.

101. Application to have claims to interest etc. recorded

102. Record of claims to interest etc.

103. Amendment and cancellation

104. Infringement of trade mark

105. Infringement of trade mark by breach of certain restrictions

106. Goods etc. to which registered trade mark has been applied by or with consent of registered owner

108. What courts may hear action for infringement of registered trade mark

109. What relief can be obtained from court

110. Special case—plaintiff not entitled to damages etc.

111. Circumstances in which action may not be brought

112. Groundless threats of legal proceedings

113. Counterclaim by defendant in action on groundless threats

114. Object of Part

115. Notice of objection to importation

116. Comptroller may seize goods infringing trade mark

117. Notice of seizure

118. Forfeiture of goods

119. Release of goods to owner-no action for infringement

120. Action for infringement of trade mark

121. Action for infringement by authorised user

122. Disposal of forfeited goods

123. Power of Comptroller to retain control of goods

124. Insufficient security

125. Government not liable for loss etc. suffered because of seizure

126. Power to require information

127. Falsifying etc. a registered trade mark

128. Falsely applying a registered trade mark

130. Selling etc. goods with false marks

131. Penalty for offence under section 127, 128, 129 or 130

132. False representations regarding trade marks

133. False entries in Register etc.

134. Disobeying summons etc.

135. Refusing to give evidence etc.

136. Unauthorised persons not to act in trade mark matters

137. False representation about Registry of Companies and Intellectual Property

138. Employee not to prepare documents etc.

139. Conduct of directors, servants and agents

140. Object of Part

141. Collective trade mark

142. Application of Act

143. Application for registration

144. Limitation on rights given by registered collective trade mark

145. Assignment etc. of collective trade mark

146. Infringement of collective trade mark

147. Object of Part

148. Certification trade mark

149. Application of Act

150. Rights given by registration of a certification trade mark

151. Rights of persons allowed to use certification trade mark

152. Rules governing the use of certification trade marks

154. Refusal to register

155. Variation of rules

156. Rules to be available for inspection

157. Assignment of registered certification trade mark

158. Rectification of the Register by order of court

159. Variation of rules by order of court

160. Copy of order and rules

161. Object of Part

162. Defensive trade mark

163. Application of Act

164. Additional grounds for rejecting application for registration or opposing registration

165. Amendment or cancellation of registration by order of court

166. Cancellation of registration by Registrar

167. Jurisdiction of the High Court

168. Transfer of proceedings

170. Registrar may appear in appeals

171. Powers of High Court

172. Registrar of Companies and Intellectual Property

173. Registrar's powers

174. Exercise of power by Registrar

175. Registrar to act as soon as practicable

176. Deputy Registrar

177. Delegation of Registrar's powers and functions

178. The Register

179. Register may be kept on computer

180. Inspection of Register

182. Certified copies of documents

183. Making and signing applications etc.

184. Filing of documents

185. Withdrawal of application etc.

186. Address for service

187. Change of name

188. Death of applicant etc.

189. Description of registered trade mark

190. Evidence of trade usage

191. Death of party to proceeding before Registrar

192. Costs awarded by Registrar

193. Security for costs

195. Extension of time

196. Publication of documents

197. Use of trade mark for export trade

198. Passing off actions

200. Regulations

11. Making of application

17. Application accepted or rejected

129. Manufacture and possession of die etc. for use in commission of offence

153. Grant of application to register

201. Transitional

Trade Marks Regulations – Section 200