Overview of Trademark Registration in Sat Kitts and Nevis
St. Kitts – Nevis, more formally known as "St. Christopher Nevis". The law governing trademark registration in this destination is The Marks, Collective Marks and Trade Names Act 2000, w.e.f the date of application. Trade and service marks can be registered as per the Nice Classification system. The applicant can also claim priority. Registration based on UK registration isn't possible any longer. Current UK-based registrations and local registrations shall continue for their unexpired terms, whereas the new registrations are for a term of 10 years, with renewals for like periods of 10 years.
No local use or intent of using is necessary before filing the application, but failure to use a mark within a period of 3 years following registration may subject the mark to an action for cancellation.
Eligible Marks for Trademark Registration in St Kits and Nevis
A mark shall not be registrable if it is
- Not capable of distinguishing the goods or services of one enterprise from other enterprises;
- is in contravention of the public order or morality;
- have the tendency of misleading the public or trade circles, particularly regarding the geographical origin of goods or services or their nature or characteristics;
- identical to, or imitates, or containing an element, an armorial bearing, flag or other emblems, an abbreviation, or official sign, name or initials of the name of or hallmark adopted by any State, inter-governmental Organisation or Organisation that has been created by an international convention, until and unless it is authorised by the competent authority of that State or Organisation;
identical to, or have similarity with is c a translation of, a trade name or mark or which is well known in St. Kitts and Nevis for identical or similar services or good of another enterprise, or if it is well-known and registered in this destination for goods or services which aren't identical, or have similarity with those for which registration is applied for, provided, in the latter case, that
- Usage of the mark in for those goods or services indicating a relation b/w those services or goods and the owner of the well-known mark; and
- The interests of the owner having the well-known smark are likely to be prejudiced by such use; or
- f) identical to a mark which belongs to another owner and already on the Register, or priority date, with an earlier filing regarding the same services or goods or closely related goods or services, or if it so, it is a near resemblance of such a mark as can deceive or cause confusion
Details and Documents required for Trademark Registration in St Kitts and Nevis
The application for trademark registration shall be filed with the Registrar in the prescribed format and shall contain the following:
- a request that the mark be registered;
- a reproduction of the mark;
- a list of the goods or services for the requested trademark listed under the applicable class or classes of the International Classification
Procedure for Trademark Registration in St Kitts and Nevis
The procedure for Trademark Registration in St Kitts and Nevis is elaborated below –
Filling the Application
ontaining The applicant must file the application with the competent authority along with attaching the requisite documents as discussed above.
Examination of application
The application shall be examined by the Registrar to determine whether it complies with the requirements prescribed and the Regulations.
The Registrar shall also examine and determine whether the mark is a mark per the trademark's definition in St Kitts and Nevis and complies with the prescribed requirements.
If the Registrar opines that all the prescribed documents are fulfilled, he or she shall accept the application, followed by publishing it in the Gazette in the prescribed manner.
Opposition to registration
Any interested person may serve a notice to the Registrar within the prescribed period and in the prescribed manner regarding the opposition to the registration of the mark on the ground of non-fulfilment of the prescribed requirements as per the Act or the mark not being defined in section 2 of this Act.
The Registrar must supply a copy of the notice immediately to the applicant, who must file, with the Registrar, within the requisite period and in the manner prescribed, a counter-statement of the grounds of reliance of the application.
The applicants shall be considered to abandon their application if they fail to adhere to the prescribed provisions.
Upon the counter statement being filed by the applicant, the Registrar shall immediately furnish a copy of the statement to the person who gave notice of opposition and, after hearing the parties, if the parties intend it to be heard and due consideration of the merits of the case, shall decide regarding the registerability of the mark.
Subsequent to the publication of the application and until the registration of the mark, the applicant shall have the same privileges and rights as they would have if the mark had been registered, except that it shall be a valid defence to an action brought regarding an act done after the application was published if the defendant establishes that the mark couldn’t validly have been registered at the time the act was done.
Grant of the Registration Certificate
Where the Registrar opines about the fulfilment of the prescribed requirements, and the registration not being within the specified time limit, or the registration of the mark is opposed but is decided in the applicant's favour, they shall be
(a) Registering the mark in the Register;
(b) Publishing a reference to the registration in the Gazette; and
(c) Issuing, to the applicant, a certificate of registration.
In the event of the Registrar not being satisfied with the fulfilment of the requirements or an application is successfully opposed, the Registrar shall refuse the application.
The application may contain a declaration for claiming the priority, as prescribed in the Paris Convention, of an earlier national or regional application filed by the entrepreneur or their predecessor in title in or for any State being a party to the Convention or any member of the WTO, in which case the Registrar may require the applicant for furnishing, a copy of the earlier application, which should be certified as correct by the required Office with which it was filed within the prescribed time limit,
The effect of the declaration shall be as provided in the Paris Convention.
Where the prescribed requirements have not been satisfied, the declaration shall be considered not to have been made.
Duration and renewal of registration
The registration of a mark shall expire within 10 years from the filing date of the application for registration but might, be renewed for consecutive periods of 10 years upon the written request of the registered owner and payment of the prescribed renewal fee.
In the event of expiration of the prescribed time for the payment of the renewal fee resulting in the non-payment of the renewal fees, the Registrar shall give the registered owner of the mark a grace period not exceeding 6 months within which the registered owner pays the renewal fee.
The registered owner of the mark shall, when paying the renewal fee in accordance with the provisions mentioned above, pay the surcharge prescribed for late payment to the Registrar.