The Law Pertaining to Trademarks

Back

Page: 2

The law pertaining to Trade Marks—is there such a law in The Bahamas?

Yes, there is such a law. In fact, the Trade Marks Act (the "Act") has been around since 1906. This Article provides a brief overview of the provisions of the Act regarding trade marks and the penalties thereunder in respect of forged trade marks.

The Act defines "trade mark" as "a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with or offering for sale". In other words, the owner of a business can identify the products or goods that he sells by a specific mark and this then distinguishes his product from that of anyone else's. If then such owner registers his mark pursuant to the Act, and someone else reproduces or uses it, he can then commence an action for infringement of the registered trade mark and his rights in respect of same.

However, the Act permits for a person other than the owner of the trade mark to be registered (with the owners consent) as a registered user of same; this is a "permitted use" of the trade mark under the Act. A use of the trade mark by such registered user would not provide grounds for an infringement action.

The Act does provide that anyone who forges any mark is guilty of an offence. Any person who forges any trade mark or falsely applies to goods any trade mark or any mark that resembles a trade mark where it can deceive is guilty of an offence; there is a defence if such person can prove that he acted without an intent to defraud.

The Act further provides that any person who sells, or exposes for sale, or has in his possession for sale or any purpose of trade or manufacture, any goods or things to which any forged trade mark is applied is guilty of an offence under the Act UNLESS, inter alia, he can prove that at the time of commission of the alleged offence he had no reason to suspect that the trade mark was not genuine.

A trade mark is considered to be a "forged trade mark" if (i) a person makes a trade mark or a mark so similar to the genuine trade mark so as to deceive others without the consent of the owner having been obtained and (ii) a person falsifies any genuine trade mark either by alteration, addition, effacement or otherwise.

The Act also provides that any person who falsely applies to goods a trade mark or mark without the consent of the owner of the trade mark is guilty of an offence. A person who is found to have committed any of the offences mentioned above in respect of a forged trade mark shall be liable on summary conviction to pay a fine of $200 and to have the forged goods confiscated. Additionally, it is an offence under the Act for someone to represent a trade mark as registered which is not so registered.

How then can a person protect his goods and any unique marks used by him in distinguishing his goods? Such person can register his trade mark under the Act.

In order to register a trade mark the mark must contain or consist of at least one of the particulars prescribed by the Act one of which is the name of the company, individual or firm represented in a special or particular manner. Please also note that the mark cannot contain certain restricted words which are specified in the legislation.

Upon receipt of an application and its acceptance by the Registrar General, the Registrar General will then advertise the mark in the Gazette. From the date of the advertisement any person who has an objection to the use of the mark has one month in which to oppose in writing providing the grounds for the opposition. The Act contains therein the procedure in respect of an opposition.

Upon the expiry of the said one month, if there is no opposition to the use of the trade mark, or following the successful defence of the mark if there was opposition to the same, the mark will be registered by the Registrar General who will issue to the applicant a Certificate of Registration, upon payment of the requisite fee. A registered trade mark is valid for a period of fourteen years and can be renewed at the end of this period.

Generally speaking, the registration of a person as the owner of a trade mark gives to such person the exclusive right to the use of such mark on the owner's goods in respect of which it was registered.

Registration under the Act is not mandatory but a person desirous of protecting his mark is advised to register the mark so as to protect the mark from being used by other persons and to ensure that if such registered mark is used he has recourse under the Act in that he can commence an action for infringement of the mark.

Back

Page: 2