1. RELEVANT AUTHORITIES AND LEGISLATION
1.1.What is the relevant St. Christopher (Kitts) and Nevis authority?
The relevant St. Kitts and Nevis authority is the St. Kitts & Nevis Intellectual Property Office.
1.2.What is the relevant St. Kitts and Nevis Trade mark Legislation?
The relevant St. Kitts and Nevis Trade mark legislation is called the Marks, Collective Marks and Trade Names Act, Cap. 18.22 of the 2009 Revised Laws of the Federation of St. Christopher & Nevis.
2. APPLICATION FOR A TRADE MARK
2.1.What can be registered as a Trade Mark?
Any visible sign capable of distinguishing the goods or services of an enterprise can be registered as a trade mark in St Kitts and Nevis.
2.2.What cannot be registered as a Trade Mark?
A mark shall not be registrable if it is:
a) incapable of distinguishing the goods or services of one enterprise from those of other enterprises
b) contrary to public order or morality
c) likely to mislead the public or trade circles in particular as regards the geographical origin of goods or services concerned or their nature or characteristics
d) identical to or is an imitation of, or contains as an element an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark, adopted by any state, inter-governmental organization or organization created by an international convention, unless authorized by the competent authority of that state or organization
e) identical to or confusingly similar to, or constitutes a translation of a mark, or trade name which is well known in St. Kitts & Nevis for identical or similar goods or services of another enterprise or if it is well known and registered in St. Kitts & Nevis for goods or services which are not identical or similar to those in respect of which registration is applied for provided in the latter case, that:
i). use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark
ii). the interests of the owner of the well-known mark are likely to be prejudiced by such use
f) identical to a mark belonging to a different owner and already on the register or with an earlier filing or priority date in respect of the same goods or services or closely related goods or services or if it so nearly resembles such a mark as to be likely to deceive or cause confusion
2.3.What information/documentation is/are needed to register a Trade Mark?
The following information is needed to register a trade mark:
a) a statement and declaration
b) a power of attorney
c) a reproduction of the mark
d) in the event that priority is claimed, a declaration claiming the priority
e) a list of the goods or services for which registration of the mark is requested listed under the applicable class or classes of the international classification
f) the prescribed application fee
2.4.What is the general procedure for Trade Mark registration?
The application documents are submitted to the Registrar. Upon submission of the documents, the Registrar examines the application to determine whether it complies with the relevant requirements. The Registrar also examines and determines whether the mark is registrable. Where the Registrar finds that the requirements have been fulfilled, he or she shall forthwith cause the application as accepted to be published in the Gazette in the prescribed manner.
2.5.How can a Trade Mark be adequately graphically represented?
A description of the trade mark shall be given in writing and shall be accompanied when practicable, by a drawing or other representation in duplicate, not less than three (3) inches square on foolscap of the size aforesaid, or by a specimen of the trademark pasted or otherwise fastened on such paper. When a drawing or other representation or specimen cannot be given in the manner aforesaid, a specimen or copy of the trade mark may be sent either a full size or on a reduced scale and in such form as may be thought most convenient.
2.6.How are goods and services described?
The goods and services are described by a list of the goods or services for which registration of the mark is requested as listed under the applicable class or classes of the international classification.
2.7.What territories are or can be covered by a St Kitts and Nevis Mark?
The only territory which can cover a St. Kitts and Nevis mark is the Federation of St. Kitts and Nevis.
2.8.Who can own and St Kitts and Nevis trade mark?
The Act does not impose any restriction on any person, natural and or legal, from owning a St. Kitts and Nevis trade mark.
2.9.Can a trade mark acquire distinctive character through use?
Yes it can.
2.10.How long on average does registration take?
On average registration in respect of a straightforward application in one class takes 2 to 3 years.
2.11.What is the average cost of obtaining a St Kitts and Nevis trade mark?
The average cost of obtaining a St. Kitts and Nevis trade mark in respect of registration of a mark in one (1) class is US$630.00. Additional costs apply for additional classes and marks.
2.12.Is there more than one route to obtaining a registration in St. Kitts and Nevis?
At present, a trade mark may be registered in St. Kitts and Nevis via one route, that is to say, by filing an application for registration with the Registrar at the St. Kitts and Nevis Intellectual Property Office.
2.13.How is priority claimed?
If priority is being claimed, the applicant must file a declaration claiming the priority as provided for in the Paris Convention of an earlier national or regional application filed by the applicant or his or her predecessor in title in or for any state party to the Convention or any member of the World Trade Organization, in which case the Registrar may require that the applicant furnishes within the prescribed time limit a copy of the earlier application certified as correct by the office with which it was filed.
2.14.Does St Kitts and Nevis recognize Collective or Certification marks?
St. Kitts and Nevis recognizes Collective marks. The legislation does not address certification marks.
3. ABSOLUTE GROUNDS OF REFUSAL
3.1.What are the absolute grounds for refusal of registration?
An application for registration may be refused on the ground that the application falls into the category of those matters which cannot be registered as a mark (See section 2.2 above).
4. OPPOSITION
4.1.On what grounds can a trade mark be opposed?
A trade mark may be generally be opposed on grounds as described in section 2.2 and if it does not fulfill the requirements of section 2.1.
4.2.Who can oppose the registration of a trade mark?
The registration of a trade mark may be opposed by any interested person, natural or legal.
4.3.What is the procedure for opposition?
The person wishing to oppose a registration of a trade mark may give notice to the Registrar of the opposition to the registration of the mark in writing.
The Registrar shall send forthwith a copy of the notice of opposition to the applicant who shall within the prescribed period and prescribed manner file with the Registrar a counter statement of the grounds for which he or she relies for his application.
If the applicant does not file the counter statement, he or she shall be deemed to have abandoned his application.
Where the applicant files a counter statement, the Registrar shall forthwith furnish a copy of the statement to the person who gave notice of opposition and after hearing the parties if they wish to be heard and considering the merits of the case shall decide whether the mark shall be registered or not.
5. REGISTRATION
5.1.What happens when a trade mark is granted registration?
Once the trade mark has been granted registration, the Registrar:
i) registers the mark in the register
ii) publishes a reference to the registration in the Gazette
iii) issues to the applicant a certificate of registration
5.2.From which date following the application does an applicant’s trade mark right commence?
The trade mark rights commence from the date of filing of the registration.
5.3.What is the term of a trade mark?
The term of a trade mark is 10 years from the filing date of the application for registration.
5.4.How is a trademark renewed?
It is renewed upon the written request of the registered owner and payment of the prescribed renewal fee for renewal of consecutive periods of 10 years.
