Registration of TradeMarks

Governing legislation:Trade Marks Act and Regulations, Cap.13.30

What do you need to register a trademark

Trade mark: the trade mark must fall within the definition of "trade mark" under the Trade Marks Act, that is, a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. "Sign" includes a " letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, and any combination thereof".
Agent: you must appoint an agent who must be an attorney-at-law in Saint Lucia who will act on your behalf for the purpose of applying for the trade mark (see list of trade marks below).
Application: the application must contain a representation of the trade mark and must specify the goods and/or services and the class or classes in respect of which the trade mark is sought to be registered in accordance with the Nice Classification.

Forms

Application for Registration (Form 1)

Authorization of Agent (Form 2)

Steps to registering a trademark

- Appoint an agent who will submit the application and Authorization of Agent on your behalf. The minimal fee for lodging an application is $100.00 plus $5.00 for the authorization of agent. Fees will be higher depending on the type of mark and whether the application contains multiple classes.

- The application must include a representation of the trade mark that is sufficient to identify the trade mark. contain a representation of the trademark.

- The applicaiton must contain the class (es) of goods/services for which the trademark is sought to be registered.

- The trademark will contain other information such as the applicant's details, whether colour is claimed, any limitations of disclaimers that need to be applied as a condition to the registration.

- The Registry will examine the application to decide whether the trade mark is capable of distinguishing the goods/services from those of other traders and this eligible for registration.

- The Registrar will issue an examination report as to whether the mark is accepted for registration or whether there are deficiencies in the application that need to be addressed.

- If the trade mark is accepted for registration, the acceptance will be published in the Gazette informing of same and inviting third parties to oppose the registration by filing Notice of Opposition with the Registry.

- At the end of the three-month opposition period, the Registrar will determine whether any oppositions were filed. If there is no opposition, the trade mark will proceed to registration and a certificate or registration will be issued to the applicant through the agent.

- if there is opposition to the registration of the trade mark, the opposition procedure will proceed until the registrar issues a decision or the parties (applicant and opponent) come to an agreement through negotiations.

Additional Information

The above information is a general summary of the trade mark registration process. For further information on the requirements and process please consult with one of our Trade Mark Agents /Attorneys or visit the following link for detailed information about Trade Marks.

https:www.wipo.int/trademarks/en/

List of Trade Mark Attorneys

Gordon, Gordon & Co.

#10 Manoel Street, Castries

Tel: (758) 452-2311

Email: Gordonsol@candw.lc

Nicholas John & Co.

Hewanorra House, Trou Garnier Financial Centre,

Pointe Seraphine, Castries, Saint Lucia

Tel: (758) 451-9237

Chong & Co.

#27 Micoud Street, Castries