RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/237/Add.2
11 April 2001
(01-1862)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Saint Lucia to questions posed by Canada,
the European Communities and their member States and the United States
Addendum
By means of a communication from the Permanent Delegation of Saint Lucia dated 2 April
2001, the Secretariat has received the following responses to the questions posed by Canada, the
European Communities and their member States and the United States, as circulated in documents
IP/C/W/245, 244 and 215/Add.1, respectively.
_______________
CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement)
have been implemented.
Article 41:  General Obligations
The Industrial Property legislation makes provision for the appeal against a decision of the
Registrar. Such appeal is to be made to the High Court and must be made within a specified period
stipulated under the relevant piece of legislation.
Section 21 of the Industrial Designs Act 2001 allows for appeal from any decision of the
Registrar within three months from the date of the Registrar's decision.
Section 18 of the Layout-Designs (Topographies) of Integrated Circuits Act 2000 and
Section 11 of the Geographical I ndications Act 2000 allow for appeal from the Registrar's decision
within two months from the date of the decision.
The Trademarks Bill allows for appeal from decisions of the Registrar at various stages of the
registration process and like the other legislation the appeal must be brought within the time specified
in the legislation.
Generally in civil proceedings before the Court in Saint Lucia, decisions rendered by the
Court are normally written and made available to the party’s solicitor as soon as it is available.
Article 42:  Fair and Equitable Procedures
The Civil procedure adopted during a civil case is provided for in the Rules of the Supreme
Court 1970 and as such makes provision for the manner in which a civil case will be dealt with.IP/C/W/237/Add.2
Page 2
Article 43:  Evidence
The Courts have the authority to order the production of documents in court by virtue of the
Rules of the Supreme Court 1970.  A party to litigation has an obligation (either automatically or by
order of the Court) to give "discovery" of such documents which it may have in its possession,
custody or control which relate to the particular court proceeding.  The Court can also make orders(by way of an Anton Pillar injunction) at the beginning of the proceedings for the protection of
evidence and to prevent any possibility of evidence not being available if there is a fear that the
defendant may destroy the evidence.
Article 44:  Injunctions
Under the general jurisdiction of the court and under the various Intellectual Property Laws
the courts may grant relief for infringement in the form of an interlocutory or perpetual injunction.
The courts apply the rule that they may gran t an interlocutory injunction if the court is
satisfied that there is a serious issue to be tried, if the risk of damage to the plaintiff if the injunction is
not granted will not be compensated by an order for damages provided that the plaintiff gives an
undertaking to compensate the defendant if the injunction is late found by the court to be unjustified.
Article 45:  Damages, including recovery of profits and expenses; including attorney's fees
Under the general jurisdiction of the court and under the provision of IP laws the courts have
powers to award damages for infringement or if the plaintiff desires an account for profit.  Under the
Copyright Act 1995 the plaintiff cannot be awarded damages in the case of innocent infringement but
is entitled to an account of profit.  Damages usually include the recovery of commercial lossesassociated with the infringement and flagrancy of  the infringement shall be taken into account in
deciding whether additional damages should be aw arded.  An award of damages would normally be
accompanied by an order for payment of legal cost in curred by the successful party.  With respect to
legal costs the court may order that costs be taxed if not otherwise agreed.
Under such order for costs the successful party will normally recover a sum corresponding to
the reasonable sums which were expended in the litigation.  If these costs cannot be agreed between
the parties such costs are assessed by the Registrar of the Supreme Court.
As an alternative to an award of damages, th e right holder may seek an account of profits
instead of damages.  This requires the court to a ssess the profits which the infringer has made as a
result of his infringing act and to pay this over to the right holder.
Article 46:  Other Remedies - destruction or  other disposal of infringing goods and
material/implements for their production;
The courts have jurisdiction to order defendants to deliver infringing goods and copies as well
as materials or implements used in their production.  Provision of the Copyright Act 1995 and thedrafts Trademarks Act allow for the seizure of infringing goods or copies and in the case of the
Copyright Act the equipment used for making them.  There is also a provision for disposal or
destruction of forfeited goods or copies by the Comptroller of Customs.
The draft Trademarks Act provides for the Comptroller of Customs to direct the disposal of
counterfeit goods which have been seized by the customs authorities.  Under the Copyright Act where
goods have been seize in accordance with the Copyright (Importation Restriction) Regulations, 2000
its disposal is determined by powers granted under the Customs (Control and Management) Act, 1990
For patent infringement the court has the power to make an order for the infringer:IP/C/W/237/Add.2
Page 3
"to deliver up or destroy any patented product in relation to which the patent is infringed or
any article in which that product is inextricably comprises."
Article 47:  Right of Information
The Supreme Court has the inherent power to make such orders.  The  courts may order an
infringer to provide information which identifies those who have supplied to him infringing articles
and also those who have supplied the means by which these articles have been made provided that the
supplier had the knowledge or reasonable belief that the particular instrument would be used to make
infringing copies.
Article 48:  Indemnification of the Defendant
Where the court order an interlocutory injunction it is necessary that the plaintiff give to the
court an undertaking that if the injunction was wrongly granted against the defendant the plaintiff will
pay damages to the defendant.  The court may also require security for such an undertaking to be
given by way of deposit of money into the courts funds or by providing a guarantee.  This will
normally be the case where the plaintiff is residing outside of Saint Lucia.
Article 50:  Provisional Measures
Under the common law system, the Cour t can exercise the following powers:
(i) The High Court has power to adjudicate on the enforcement of IPRs and can take
provisional measures before the full trial including the grant of interlocutory injunctions;
(ii) The Court may also grant relief of the type known as an Anton Pillar order after the
case has started.  Under this order, the defendant is required to admit onto his premises a
person named in the order to search for and take into custody any document and any thingsspecified in the order to preserve the evidence for the trial;
(iii) An application can also be made to the Court for an interim award of damages.  The
plaintiff must show that it is likely that at full trial a substantial award of damages will be
made by the court and that pending the assessment of the issues at trial, there should be an
interim payment.
In cases of exceptional urgency, the High Court will order an injunction  on an ex parte basis,
that is inaudita altera parte .  However, this will only be done when the court is of the opinion that an
immediate injunction is necessary because otherwise the plaintiff is likely to suffer extreme and
irremediable damage.  Ex parte injunctions are granted to the plaintiff for a matter of days only and
must return to the court at the time when the defenda nt is also present and then seek a renewal of the
injunction.  Some of the other types of provisional relief such as Anton Pillar Order and Mareva
Injunctions are normally made on an ex parte  basis in order to surprise the defendant and thereby
prevent it from taking steps to evade the relief ultimately to be awarded by the court.
Usually the plaintiff is required to institute the action by filing a writ of summons before
applying for provisional measures.  In cases of extreme urgency, an ex parte  injunction may be
granted, upon an undertaking by an intended plaintiff to file the writ of summons at the earliest
possible opportunity.  An ex parte  injunction may issue, upon the mere production to the Judge of the
infringing item, upon Counsel’s undertaking to put the supporting evidence of infringement on oath,
at the earliest possible opportunity.IP/C/W/237/Add.2
Page 4
Strict guidelines will be given by the Judge granting ex parte  injunction for the "return
hearing" when the defendant will be afforded an opportunity to be heard.  On the return hearing the
general principles governing interlocutory injunctions will be applied and also key measures in
affording protection to the defendant against damages that he may incur in the event that the
provisional measure is proved to be unjustified.  These could include undertakings by the plaintiffsupported by bond to secure the payment of damages or less commonly by a payment of money into
court.
Articles 51-60:  Special Requirements Related To Border Measures
Under section 115 of the draft Trademarks Act and section 51 of the Copyright Act 1995, the
competent authority to suspend the release of goods is the Comptroller of Customs.
To initiate the seizure of copies of counterfeited goods the copyright owner, exclusive
licensee or the trademark owner or authorised user must provide written notice of objection to
importation to the Comptroller of Customs together with any prescribed documents.  A notice remains
in force for a specified period not exceeding five years from the day of which the notice is given.  TheComptroller may not seize copies of goods unless the copyright owner exclusive licensee or
trademark owner or authorised user provides a secur ity in respect of any liability or expense which the
Comptroller my incur in consequence of the notice by reason of the detention of an article or anything
done to an article detained.
The draft Trademarks Act provides that the Comptroller may seize goods which are
manufactured outside of Saint Lucia and imported in to Saint Lucia and which are subject to the
control of the Comptroller of Customs under the Customs (Control and Management) Act 1990.  If
goods have a trademark that, in the opinion of the Comptroller, is identical with, or deceptively
similar to, a notified trademark and are foods in a class for which the trademark is registered theComptroller must seize the goods unless satisfied that there are no reasonable grounds for believing
that infringement has occurred.
Once goods or copies have been seized the Comptroller must give notice of a seizure to the
objector and the importer or owner which notice identifies the copies or goods.
Under section 120 of the Draft Trademarks Act the notice must also state that the goods or
copies will be released to the designated owner or importer unless the objector brings an action for
infringement, and gives to the Comptroller notice in writing of the action within one month from the
date of the notice or within the period as extended by the Comptroller.
Under section 126 of the draft Act if goods are seized and the Comptroller is satisfied that the
use of a trademark is fraudulent the Comptroller may ask the importer of the goods or an agent of the
importer to produce any document relating to the good and give information about the name and
address of the person by whom the goods were consigned to Saint Lucia and the name and address of
the person in Saint Lucia to whom the goods were c onsigned.  Failure to comply with this request is
an offence and renders the defaulter liable on conviction to a fine of ten thousand dollars.
If an infringement action has not been started within the stipulated time the Comptroller must
release the seized copies of goods to the importer or designated owner.
Once a person who has given notice to the Comptroller has received the notice of suspension
of release of goods, he must bring an action for infringement in relation to the seized copies or goods,
and give notice of it to the Comptroller within one month from the date of the notice unless an
extension of time has been obtained.  The extension cannot exceed ten working days.  The copyright
owner must bring an action for infringement with the time specified in the notice or the time limited
for bringing an action for infringement whichever is earlier.IP/C/W/237/Add.2
Page 5
Under the Trademarks Act if, three weeks after the action was brought, there is no order of
the court preventing the release of the seized goods, then they must be released by the Comptroller.  If
an infringement action is commenced the Court may order the release of the seized copies or goods at
any time it seems fit.
There is no provision requiring ex officio action by Customs officials.  All actions must be
initiated by the Copyright owner or exclusive licen see or by the owner (or authorised user) of the
industrial property right.  Under the Copyright Act 1995, the Comptroller may only seize copies if the
copyright owner or licensee gives notice of objection to the importation of the copies.  This is the
same situation under the draft Trademarks Act where the goods can only be seized by the Comptroller
if the goods bear a mark identical or similar to a trademark in relation to which a notice of objection
has been given.
The Customs authority is not empowered to order remedies for infringement.  They can seize
infringing copies of counterfeit goods and dispose of those copies or goods if they are forfeited by the
importer.  All remedies are decided by the courts.
Article 61:  Criminal procedures
With respect to criminal offences the following has been or is intended to be implemented:
- an offence of infringement of copyright is committed under the provisions of
section 52 of the Copyright Act 1995.  Under this provision, an infringement of any right
protected under the Act is committed by a defendant who knows or has reason to believe that
he is infringing copyright;
- under section 16 of the Geographical Indications Act the doing of any of the acts in
section 12 knowingly and with intent to deceive constitutes an offence;
- under section 22 of the Industrial Designs Act the performance intentionally of an act
under section 9 (2) including making, selling, for commercial purposes constitutes an offence;
- under section 15 of the Layout-Designs (Topographies) of Integrated Circuits Act the
performance, knowingly of any act under section 6, making, selling or otherwise distributing
for commercial purposes constitutes an offence; and
- the Plant Varieties Act will make provision for criminal proceedings for wilful non-
compliance or misuse of variety denomination.
2. What protection does your Copyright le gislation afford to "foreign works"?
Section 8 of the Copyright Act 1995 as ame nded by the Copyright (Amendment) Act 2000 in
subsection (9) provides that the provisions of the Act apply also to works that are eligible for
protection in Saint Lucia by virtue of and in accordance with any international convention or other
international agreement to which Saint Lucia is a party.
Section 110A of the Copyri ght (Amendment) Act 2000 provides similar protection for
performers who are eligible for protection by virt ue of and in accordance with any international
convention or other international agreement to which Saint Lucia is a party.
These sections therefore make provision for national treatment as required by the TRIPS
Agreement.  Section 110A also provides that the provisions relating to performers apply to performers
who are not nationals of Saint Lucia but whose performances take place in Saint Lucia, areincorporated in sound recordings that are protected under the Act or have been fixed in soundIP/C/W/237/Add.2
Page 6
recordings but are included in broadcasts which qualify for protection under the Act.  Also
section 8(1)(b) of the Copyright Act 1995 provides that a published work qualifies for protection if
the first publication took place in a country other than Saint Lucia, and therefore makes no distinction
with regard to nationality of the right holder.
In addition, by virtue of sections 8 and 110A the provisions of Article 5 of the Berne
Convention, which speaks to protection for works outside their country of origin, also apply.
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health and
nutrition, and to promote the public interest in se ctors of vital importance to your socio-economic and
technological development as mentioned under Arti cle 8 of the TRIPS Agreement.  If yes, please
explain how such measures are consistent with the provisions of the TRIPS Agreement.
Section 16 of the Layout-Designs (Topographie s) of Integrated Circuits Act 2000 (Act No. 3
of 2000) incorporates Article 8 of the TRIPS Agr eement and allows the Minister responsible for
intellectual property to decide without the authori zation of the right holder, that a Government agency
or a third person designated by the Minister may exploit the layout-design.  This can be done where
the public interest, in particular national security, nutrition, health or the development of other vitalsectors of the national economy requires the exploitation of a protected layout-design for public non-
commercial use.
B. C
OPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of authors
in relation to their literary and artistic works, as  specified in Article 9 of the TRIPS Agreement which
requires Members to comply with Articles 1-21 of the Berne Convention and the Appendix to the
Berne Convention (1971)).
In relation to literary and artistic works, the following protection is granted to the author of
such a work.  He/she has the right to do, authorize or prohibit the following acts granted by section 9
as amended by section 4 of the Copyright (Amendment) Act:
• reproduction of the work;
• translation of the work;
• adaptation, arrangement or other transformation of the work;
• the first public distribution of the original and each copy of the work by sale, rental or
otherwise;
• rental or public lending of the original or a copy of an audiovisual work, a work
embodied in the form of notation, irrespective of the ownership of the original or copyconcerned;
• importation of copies of the work;IP/C/W/237/Add.2
Page 7
• public display of the work;
• public performance of the work;
• communication to the public of the work.
These rights can be enforced through the invoking of various civil and criminal remedies
provided for in the Copyright Act 1995.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Section7 (10) of the Copyright Act 1995 provides categories of works in which copyright
under the Act can subsist and one of these categories is literary works.  Section 3 defines literary work
as any work other than a dramatic or musical work , which is written, spoken or sung, and includes:
• a written table or compilation; and
• a computer programme.
Section 9 as amended goes on to describe the nature of the economic rights granted to the
owner of the copyright in a work for which protection is granted.  By virtue of this section the owner
of copyright has the exclusive right to do, authorise or prohibit the following acts granted by
Section 9, i.e.
• reproduction of the work;
• translation of the work;
• adaptation, arrangement or other transformation of the work;
• importation of copies of the work;
• public display of the work;
• communication to the public of the work.
The term of protection granted to the above works is fifty years, in the case of computer
generated programmes from the end of the year in which the work is made and in other cases of
literary works, fifty years from the end of the year in which the author dies.
4. Please state whether your legislation provides for a rental right and, if so, the works to which
it applies.
Section 9 of the Copyright Act 1995 as ame nded by the Copyright (Amendment) Act 2000
makes provision for the exclusive rights which the owner of copyright has.  In subsection (e) of
section 9 as amended it provides the exclusive right of "rental or public lending of the original or acopy of an audiovisual work, a work embodied  in a sound recording, a computer programme
, a data
base or a musical work in the form of notation".
Section 9 subsection 2 goes on to provide that the rights of rental and lending do not apply to
rental or lending of computer programmes where the programme itself is not the essential object ofIP/C/W/237/Add.2
Page 8
the rental or lending; or to cinematographic works, unless such commercial rental has led to
widespread copying of such works materially impairing the exclusive right of protection.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organisations under your legislation.
A performer enjoys the right to consent to the exploitation of his performance and to be paid
royalties for use of the performance.  Performers also have rights conferred by section 9 as amended
of the 1995 Act, i.e.:
• making a recording of the whole or any substantial part of the performance,
• broadcasting live the whole of any substantial part of a performance,
• showing or playing in public the whole or any substantial part of a performance,
• using an original recording of a performance for the purpose of making an adaptation
of the recording.
In addition, performers and broadcasters enjoy the following rights to do, authorize or
prohibit the following acts granted by section 9 as amended by section 4 of the Copyright
(Amendment) Act:
• reproduction of the work; translation of the work;
• adaptation, arrangement or other transformation of the work;
• the first public distribution of the original and each copy of the work by sale, rental or
otherwise;
• rental or public lending of the original or a copy of an audiovisual work, a work
embodied in the form of notation, irrespective of the ownership of the original or copy
concerned;
• importation of copies of the work;
• public display of the work;
• public performance of the work;
• communication to the public of the work.
Producers of phonograms have the right to be identified as the performer of a performance
and to object to any distortion, mutilation or other modification of his or her performance that would
be prejudicial to his or her reputation.
6. Please state whether your legislation provides for any limitation or exception in relation to
each of the rights described above in accordance with the relevant provisions of the Berne and Rome
Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Limitations and exceptions to copyrights under the Copyright Act 1995:
• for the purpose of research and private study;  (section 56)IP/C/W/237/Add.2
Page 9
• for the purpose of criticism, review and reporting (section 57)
• if accompanied by a sufficient acknowledgement where there is incidental inclusion
of a protected work (section 59)
• where it is not possible to ascertain the identity of the author and it is reasonable to
assume that the copyright has expired or the author died 50 years or more before
(section 60)
• use of notes for recording of spoken words for the purpose of reporting current events
(section 61)
• acts done for the purposes of instruction or examination  (section 62)
• the inclusion of a short passage from a published literary or dramatic work, in a
collection for use in educational institutions (anthologies)  (section 63)
• performing, playing or showing works in the course of educational activities
(section 64)
• recording by or on behalf of an educational establishment for the purposes of that
establishment   (section 65)
• reprographic copies of passages from published literary, dramatic or musical works
made by or on behalf of an educational establishment for the purpose of instructionprovided that not more than 1 % of any work may not be copied in any quarter
(section 66)
• supply by libraries of copies of published works  (section 69)
• recording of works for archival purposes    (section 73 )
• for the purposes of parliamentary or judicial proceedings and for the purpose of
reporting such proceedings  section 74)
• making or supplying copies of public records  (section 75)
• transfer of works in electronic form subject to any express terms prohibiting such
transfer or otherwise   (section 78)
• reading and recitation in public   (section 80)
• representations of artistic works on public display   (section 81)
• anything done for the purposes of reconstructing a building   (section 82)
• recording for the purpose of time shifting  (section 85)
The Act speaks to fair dealing with a work.  Sections 57 and 58 state what factors would be
taken into account to determine whether an act constitutes fair dealing.  One such factor is the effect
of the act upon the potential market for or the commercial value of the work.  Provision is also madefor the overriding of some exceptions where there are express contractual terms to the contrary.IP/C/W/237/Add.2
Page 10
7. Please state the terms of protection of each right described above and the work or subject
matter to which it applies.
The length of protection granted under the Copyright Act 1995 is generally 50 years.  The
following is a detailed synopsis of the categories of works and term of protection.
• In relation to literary, dramatic, musical or artistic work - 50 years from the end of the
year in which the author dies (section 10 (1)).
• In relation to computer generated work – 50 years from the end of the year in which
the work is made.
• In relation to a sound recording or film – 50 years from the end of the year in which it
was made.
• In relation to a broadcast or cable programme – 50 years from the end of the year in
which the broadcast was made or the programme included in a cable programmeservice.
• In relation to typographical arrangements of a published edition – 25 years from the
end of the year in which the edition was first published.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
Section 8 as amended by the Copyright (Amendment) Act 2000 provides in subsection (9)
provides that the Act applies to works which are eligible for protection in Saint Lucia by virtue and in
accordance with any international convention or othe r international agreement to which saint Lucia is
a party.  Saint Lucia is a party to the Berne Convention and so by virtue of Section 8 of the Act,Article 18 applies.
C. T
RADEMARKS
9. Please give the definition of a sign under your national legislation and explain under what
conditions it is protectable.
"Sign" is described in section 2 of the Trademarks Act 2001 as including "letter, word, name,
signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, and
combination of the above".
The conditions under which a trademark would be protected are as follows:
"the person applying for registration claims to be the owner of the trademark and is using or
intends to use the trademark in relation to the goods and services or both; or is authorised or
intends to authorise another person to use the trademark; or intends to assign the trademark
the trademark to a body corporate that is about to  be constituted with a view to the use by the
body corporate of the trademark in relation to the goods and services or both."
The trademark which is sought to be register ed must not contain certain signs which are
prescribed in the Regulations (regulations still being drafted) or must not be scandalous or its use
contrary to law.  It must be capable of being represented graphically and must not be likely to deceive
or cause confusion or be identical to a trademark already registered by another person.IP/C/W/237/Add.2
Page 11
A trademark is protected for a term of 10 years.
10. Please confirm whether or not services are a protectable subject matter in your trademark
law.  Please confirm if signs, such as trade names, are protectable.  Please describe if elements such
as sound, perfumes and containers are protectable.
Under the Trademarks Act 2001, services are protectable subject-matter.  The Act does not
provide for the protection of trade names as these are protected under the Registration of Business
Names Ordinance in Saint Lucia.  The Trademarks Act does not provision for the protection of smell
and sound as trademarks  but provides for the protection of shape and aspect of packaging as
trademarks containers are therefore protectable under the Act.
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
In order for a person to apply for registration of a trademark, the applicant must claim to be
the owner of the trademark and that he is using or intends to use the trademark in relation to the goods
and services or both.
Section 2 subsection 5 of the Trademarks Act 2001 defines use in relation to goods as "use of
the trademark upon, or in physical or other relation to, the goods, including second-hand goods".  Use
in relation to services is defined as "use of the trademark in physical or other relation to the services".
A trademark may be removed from the register if its use is not maintained and there has been
no use of the trademark in Saint Lucia or use in good faith of the trademark in Saint Lucia for a
continuous period of three years ending one m onth before the day on which the application for
removal is made.
12. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Yes, the Trademarks Act 2001 does make provision for the renewal of trademarks
indefinitely.  The initial term of protection is ten years and upon expiration of that period application
can be made for renewal.
13. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
There are no special requirements prescribed by the Trademarks Act concerning use of a
trademark.
D. GEOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
Under the provisions of Section 17 of the Ge ographical Indications Act 2000 (Act No. 4 of
2000) the Registrar of Companies and Intellectual property shall on his or her own motion or at the
request of an interested party, refuse or invalidate the registration of a trademark which contains or
consists of a geographical indication with respect to goods not originating in the territory indicated, ifuse of the indication in the trademark for such goods in Saint Lucia is of a nature as to mislead the
public as to the true place of origin.  Under Sectioin18 the Registrar is also authorised to refuse orIP/C/W/237/Add.2
Page 12
invalidate the registration of a trademark for wines which contains or consists of a geographical
indication identifying wines or a trademark for spirits which consists or contains a geographical
indication identifying spirits with respect to wines or spirits not having this origin.
15. Please give the definition of a geographical indication in your legislation.
Geographical indication is defined as "an indication which identifies a good as originating in
the territory of a country, or a region or locality in this territory, where a given quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin".
16. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
There are no such provisions establishing such a link.
17. Please describe how additional protection is granted by your legislation to wines and spirits.
Please mention other types of products, if any, covered by this additional protection.
Section 12 of the Geographical Indications Ac t 2000 (Act No. 4 of 2000) provides a means
whereby an interested person or group of producers or consumers can institute proceedings in Court toprevent "the use of a geographical indication identifying wines for wines not originating in the place
indicated by the geographical indication in question or identifying spirits for spirits not originating in
the place indicated by the geographical indication in question, even where the true origin of the goods
is indicated or the geographical indication is used in translation or accompanied by expressions such
as 'kind', 'type', 'style', 'imitation' or the like".
Sections 17 and 18 of the Act allow the Registrar of Companies and Intellectual Property to
refuse or invalidate the registration of a trademark where the mark consists of a geographical
indication and is misleading as to the true place of origin or the trademark conflicts with a
geographical indication for wines and spirits.
Section 14 of the Act makes provision for protection of each indication in the case of
homonymous geographical indications.
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
Section 19 of the Geographical Indications Act 2000 (Act No. 4 of 2000) makes provision for
the exceptions contained in Article 24 of the TRIPS Agreement.
With respect to the use of these exceptions, it must be pointed out that the Geographical
Indications Act is relatively new and therefore there has been little use of these provisions and
examples are not available at this time.
E. I
NDUSTRIAL DESIGNS
19. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
The Industrial Designs Act 2001 (Act No. 2 of 2001) does not extend protection to designs
where its sole purpose is to obtain a technical result. (Section 3 (1))IP/C/W/237/Add.2
Page 13
Section 3 of the Act defines industrial designs as any composition of lines or colours or any
there dimensional form, or any material or not associated with lines or colours where such
composition, form or material gives a special appearance to a product of industry or handicraft, can
serve as a pattern for a product of industry or handicraft, or appeals to and is judged by the eye.
Although the Act does not explicitly mention textile designs, the above definition is wide
enough to encompass textile designs.
The protection afforded is that the industrial design cannot be exploited by anyone without
the agreement of the registered owner and the re gistered owner has the right to institute court
proceedings against ant person who infringes the registration of the industrial design by doing
making, selling, importing or otherwise distributing for commercial purposes, articles bearing orembodying a design which is a copy, or substantially a copy, of the industrial design without his prior
consent.
20. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
In Section 9 as indicated above, the right holder has the option to institute proceedings against
the importing among other things of articles bearing or embodying a design which is a copy or
substantially a copy of the industrial design.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
The Industrial Designs Act 2001 in section 14 makes provision for the owner of a registered
industrial design to grant licences in respect of the design.
22. Please indicate for what period of time your  legislation grants protection for industrial
designs.
The registration of an industrial design is granted for a period of five years from the filing
date of the application for registration with the option to renew for two consecutive periods of five
years.
F. P
ATENTS
23-38. Answers to these questions will be provided later.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects Topographies.
The Layout-Designs (Topographies) of Integrated Circuits Act 2000 (Act No. 3 of 2000)
provides protection for layout-designs if and to the extent that they are original i.e. it is a result of its
creator’s own intellectual effort and is not common place among creators of layout-designs andmanufacturers of integrated circuits at the time of its creation.  Protection under the Act is not
dependant on whether or not the integrated circuit which incorporates the protected layout-design is
itself incorporated in an article.
The protection afforded by the Act makes the following acts unlawful if performed without
the authorization of the right holder, i.e.:IP/C/W/237/Add.2
Page 14
• reproducing, whether by incorporation in an  integrated circuit or otherwise, the
protected layout-design in its entirety or any part thereof, except the act ofreproducing any part that does not comply  with the requirement of originality;
• importing, selling or otherwise distributing for commercial purposes the protected
layout-design, an integrated circuit in which the protected layout-design is
incorporated or an article incorporating su ch an integrated circuit in so far as it
continues to contain an unlawfully reproduced layout-design.
40. Please explain what protection your national legislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies including
integrated circuits or other articles in which a topography is incorporated in accordance with
Article 36 of the TRIPS Agreement.
Section 6 of the Layout-Designs (Topographies) of Integrated Circuits Act 2000 makes the
above acts unlawful if done without the authorizati on of the right holder. Section 14 of the Act makes
provision for the right holder to institute proceedings in Court where the Court may grant an
injunction to prevent infringement or an imminent  infringement, award damages or grant any other
remedy provided for in the general law.
Section 15 provides criminal sanctions for such infringement described above and renders the
guilty person liable on summary conviction to a fine of five thousand dollars or to imprisonment for
two years.  The Court may also order the seizure, forfeiture and destruction of the layout-designs,
integrated circuits or articles concerned and of any materials or implements, the predominant use of
which has been in the commission of the offence.
41. Please explain how your legislation provides for the derogation from Article 36 as specified
in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to
know when acquiring an integrated circuit or an article incorporating such an integrated circuit that
it contains an unlawful topography.
Section 6 incorporates Article 37 of the TRIPS Agreement.
Section 6 (3) of the Act provides that the protection afforded under the Act does not extend to
• the reproduction of the protected layout-design for private purposes or for the sole
purpose of evaluation, analysis, research or teaching;
• the incorporation in an integrated circuit of a layout-design created on the basis of
such analysis or evaluation and which is itself original or the performance of any acts
deemed unlawful in respect of that layout-design;
• the importation, selling or otherwise distributing for commercial purposes where it is
done in respect of an integrated circuit in which such a layout-design is incorporated,that has been put on the market by or with the consent of the right holder;
• the performance of the acts referred to above where the act is performed in respect of
an identical layout-design which is original and has been created independently by athird party; or
• the performance of any of the above acts in respect of an integrated circuit
incorporating an unlawfully reproduced layout-design or any article incorporating
such an integrated circuit where the person performing or ordering such an act did notIP/C/W/237/Add.2
Page 15
know and had no reasonable ground to know,  when acquiring the integrated circuit or
the article incorporating such an integrated circuit, that it incorporated an unlawfully
reproduced layout-design.
42. Please state the term of protection granted by your legislation to topographies.
The term of protection granted to topographies is ten years. (Section 7 (2))
H. UNDISCLOSED INFORMATION
43. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
Please see the reply to question 45.
44. Please explain how your legislation defines "undisclosed information".
Please see the reply to question 45.
45. Please explain how your legislation defines data submitted to governments or governmental
agencies.
In relation to the above questions there are no provisions on the above subject area as yet.
I. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
The Intellectual Property legislation makes provision for effective action against infringement
of intellectual property rights by making available to the right holder various remedies.  These
include:
• injunctions;
• damages, including recovery of profits and expenses; including attorney's fees;
• destruction or other disposal of infringing  goods and material/implements for their
production;
• any other remedies.
Injunctions
Under the general jurisdiction of the court and under the various Intellectual Property Laws
the courts may grant relief for infringement in the form of an interlocutory or perpetual injunction.
The courts apply the rule that they may gran t an interlocutory injunction if the court is
satisfied that there is a serious issue to be tried, if the risk of damage to the plaintiff if the injunction is
not granted will not be compensated by an order for damages provided that the plaintiff gives an
undertaking to compensate the defendant if the injunction is later found by the court to be unjustified.IP/C/W/237/Add.2
Page 16
Damages, including recovery of profits and expenses; including attorney's fees
Under the general jurisdiction of the court and under the provision of IP laws the courts have
powers to award damages for infringement or if the plaintiff desires an account for profit.  Under the
Copyright Act 1995 the plaintiff cannot be awarded damages in the case of innocent infringement butis entitled to an account of profit.  Damages usually include the recovery of commercial losses
associated with the infringement and flagrancy of  the infringement shall be taken into account in
deciding whether additional damages should be aw arded.  An award of damages would normally be
accompanied by an order for payment of legal costs in curred by the successful party.  With respect to
legal costs the court may order that costs be taxed if not otherwise agreed.
Under such order for costs the successful party will normally recover a sum corresponding to
the reasonable sums which were expended in the litigation.  If these costs cannot be agreed between
the parties such costs are assessed by the Registrar of the Supreme Court.
Destruction or other disposal of infringing goods and material/implements for their production
The courts have jurisdiction to order defendants to deliver infringing goods and copies as well
as materials or implements used in their production.  Provisions of the Copyright Act 1995 and the
Trademarks Act 2001 allow for the seizure of infringing goods or copies and in the case of the
Copyright Act the equipment used for making them.  There is also a provision for disposal or
destruction of forfeited goods or copies by the Comptroller of Customs.
The Trademarks Act 2001 provides for the Comptroller of Customs to direct the disposal of
counterfeit goods which have been seized by the customs authorities.  Under the Copyright Act where
goods have been seized in accordance with the Copyright (Importation Restriction) Regulations, 2000
their disposal is determined by powers granted under the Customs (Control and Management) Act,
1990
For Patent infringement the court has the power to make an order for the infringer:"to deliver up or destroy any patented product In relation to which the patent is infringed or
any article in which that product is inextricably comprises."
Any other remedies
As alternative to an award of damages the right holder may seek an account of profits instead
of damages.  This requires the court to assess the profits which the infringer has made as a result of
his infringing act and to pay this over to the right holder.
47. Please explain whether or not your legislation provides for a mechanism to appeal to judicial
bodies of final administrative decisions.
Yes, the legislation provides for appeal to the High Court from decisions of the Registrar of
Companies and Intellectual Property within prescribed time periods.
48. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
The Courts have the authority to order the production of documents in court by virtue of the
Rules of the Supreme Court 1970.  A party to litigation has an obligation either automatically or uponorder of the Court to give discovery of any documen ts which it may have in its custody, possession or
control which relates to the issues in the proceedings before the Court.IP/C/W/237/Add.2
Page 17
The Court also has the power to make orders  at the commencement of proceedings for the
protection of evidence in those proceedings if there is a legitimate fear of such evidence being
destroyed by granting an Anton Pillar Order.
There are no statutory requirements or directives regarding confidentiality and it is entirely in
the court’s discretion as to how they will deal with confidential information brought forward as
evidence.  The onus lies on the party claiming confidentiality of information to apply to the court for
the direction as to confidentiality.  If the court dete rmines that there is need for the confidentiality of
information to be protected it will so order.
Normally, court proceedings in civil matters are opened to members of the public.  However,
some of the preliminary proceedings may be held "in chambers" i.e. closed to the public.  The courtalso has the power to sit "in camera" i.e. in closed session where it considers it necessary to protect
information.
49. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
All of the existing intellectual property legislation in Saint Lucia make provision for the
granting of injunctions for infringement of intellectual property rights.  An injunction can be granted
to compel the defendant to do something or to refrain from doing an act.  Therefore where there has
been an infringement, the judge may order that the defendant refrain from doing the infringing act and
any other matters which is deemed necessary in the circumstances.
50. Please quote what provisions of your legislation authorize judges to order the payment to the
right holder of adequate damages to compensate the injury he suffered.
Under the general jurisdiction of the Court, the judge can award damages for infringement of
IPRs.  Damages usually include recovery of commercial losses associated with the infringement and
flagrancy of the infringement shall be taken into account in deciding whether additional damagesshould be awarded.
In addition, the Court can order an account of profits if requested by the plaintiff.  This
requires that the court assess the profits which the infringer has made as a result of his infringing act
and to pay this over to the right holder.
51. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
Under the general jurisdiction of the Court and under Section 171 Trademarks Act 2001,
Section 88 of the Patents Act 2001, Section 14 of  the Layout-Designs (Topographies) of Integrated
Circuits Act 2000, Section 9 of the Protection Agains t Unfair Competition Act 2001, Section 22 of the
Industrial Designs Act 2001, Section 12 of the Ge ographical Indications Act 2000, the Court has
power to award damages for infringement of intell ectual property rights.  An award of damages will
normally be accompanied by an order for payment of legal costs incurred by the successful party.
With respect to legal costs the court may order that costs be taxed if not otherwise agreed.
Under such order for costs the successful party will normally recover a sum corresponding to
the reasonable sums which were expended in the litigation.  If these costs cannot be agreed betweenthe parties such costs are assessed by the Registrar of the Supreme Court.
52. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.IP/C/W/237/Add.2
Page 18
The Supreme Court has the inherent power to  make such orders on application by the
plaintiff.  In fact, the Trademarks Act 2001 provides  that the High Court may make any order, that in
the circumstances it thinks fit.
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
Where the court orders an interlocutory injunction it is necessary that the plaintiff give the
court an undertaking that if the injunction was wrongly granted against the defendant, the plaintiff
will pay damages to the defendant.  The Court may also require security for such an undertaking to be
given by way of deposit of money into the court’s funds or by providing a guarantee.  This will
normally be the case where the plaintiff is residing outside of Saint Lucia.
54. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
Under the common law system, the Cour t can exercise the following powers:
(i) The High Court has power to adjudicate on the enforcement of IPRs and can take
provisional measures before the full trial including the grant of interlocutory injunctions.
(ii) The Court may also grant relief of the type known as an Anton Pillar order after the
case has started.  Under this order, the defendant is required to admit onto his premises a
person named in the order to search for and take into custody any document and any things
specified in the order to preserve the evidence for the trial.
(iii) An application can also be made to the Court for an interim award of damages.  The
plaintiff must show that it is likely that at full trial a substantial award of damages will bemade by the court and that pending the assessment of the issues at trial, there should be an
interim payment.
In cases of exceptional urgency, the High Court will order an injunction  on an ex parte  basis.
However, this will only be done when the court is of the opinion that an immediate injunction is
necessary because otherwise the plaintiff is likely to suffer extreme and irremediable damage.Ex parte  injunctions are granted to the plaintiff for a matter of days only and must return to the court
at the time when the defendant is also present and then seek a renewal of the injunction.  Some of the
other types of provisional relief such as Anton Pillar Orders and Mareva Injunctions are normally
made on an ex parte  basis in order to surprise the defendant and thereby prevent it from taking steps
to evade the relief ultimately to be awarded by the court.
Usually the plaintiff is required to institute the action by filing a writ of summons before
applying for provisional measures.  In cases of extreme urgency, an ex parte  injunction may be
granted, upon an undertaking by an intended plaintiff to file the writ of summons at the earliest
possible opportunity.  An ex parte  injunction may issue, upon the mere production to the Judge of the
infringing item, upon Counsel’s undertaking to put the supporting evidence of infringement on oath,
at the earliest possible opportunity.
Strict guidelines will be given by the Judge granting an ex parte  injunction for the "return
hearing" when the defendant will be afforded an opportunity to be heard.  On the return hearing the
general principles governing interlocutory injunctions will be applied and also key measures in
affording protection to the defendant against dama ges that he may incur in the event that the
provisional measure is proved to be unjustified.  These could include undertakings by the plaintiff
supported by bond to secure the payment of damages or less commonly by a payment of money into
court.IP/C/W/237/Add.2
Page 19
In addition, most of the intellectual property legislation provide for the granting of injunctions
by the Court where there has been an infringement of intellectual property rights.
55. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
The competent authority is the Comptroller of Customs in Saint Lucia.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
No there are no procedures available to suspend the exporting of counterfeit goods under the
present legislation.
57. Please quote what provisions of your legislation authorize the competent authorities to order
the destruction or disposal of infringing goods.
Where goods have been seized in accordance with section 51 of the Copyright Act 1995 and
the Copyright (Importation Restriction) Regulati ons Statutory Instrument 113 of 2000, their disposal
is determined by powers granted under the Customs (Control and Management) Act, 1990.
Section 139 A of the Copyright Act 1995 provides that the court may order the seizure of theequipment used for making the infringing goods.
The Trademarks Act 2001 in Section 122 provides for the Comptroller of Customs to direct
the disposal or destruction of counterfeit goods which have been seized by the Customs authorities.
Under the Patents Act 2001, the court has the pow er to make an order for the infringer to
deliver up or destroy any patented product in relation to which the patent is infringed or any article in
which the product is inextricably comprised.
58. Please indicate whether or not your legislation provides for a de minimis imports exception.
No provision is made in the Saint Lucian legislation for a de mimimis  imports exception.
59. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
An offence of infringement of copyright is committed under the provisions of section 52 of
the Copyright Act 1995.  Under this provision, an in fringement of any right protected under the Act is
committed by a defendant who knows or has reason to believe that he is infringing copyright.
Under section 16 of the Geographical Indications Act the doing of any of the acts in
section 12 knowingly and with intent to deceive constitutes an offence.
Under section 22 of the Industrial Designs Act the performance intentionally of an act under
section 9 (2) including making, selling, for commercial purposes constitutes an offence.
Under section 15 of the Layout-Designs (Topographies) of Integrated Circuits Act the
performance, knowingly of any act under section6, making , selling or otherwise distributing for
commercial purposes constitutes an offence.
The Plant Varieties Act will make provision for criminal proceedings for wilful non-
compliance or misuse of variety denomination.IP/C/W/237/Add.2
Page 20
UNITED STATES1
8. (Question 7, IP/C/W/215/Add.1)  Article 18 of the Berne Convention, as incorporated into the
TRIPS Agreement by Article 9.1 of the TRIPS Agr eement requires that copyright be restored for
works that are still protected under copyright in their country of origin and have not had a full term
or protection in Saint Lucia.  Please describe  in detail how Saint Lucia has implemented this
obligation and cite to the relevant provisions of law.
Section 8 as amended by the Copyright (Amendment) Act 2000 provides in subsection (9)
provides that the Act applies to works which are eligible for protection in Saint Lucia by virtue and in
accordance with any international convention or othe r international agreement to which saint Lucia is
a party.  Saint Lucia is a party to the Berne Convention and so by virtue of Section 8 of the Act,
Article 18 applies.
9. (Question 8, IP/C/W/215/Add.1)  Article 1 4.6 of the TRIPS Agreement requires that
protection be restored for phonograms that are st ill under protection of copyright or neighbouring
rights law in their country of origin and that have not had a full term of protection in Saint Lucia.
Please describe in detail how Saint Lucia has implemented this obligation and cite to the relevant
provisions of law.
Section 8 as amended by the Copyright (Amendment) Act 2000 provides in subsection (9)
provides that the Act applies to works which are eligible for protection in Saint Lucia by virtue and in
accordance with any international convention or othe r international agreement to which saint Lucia is
a party.  Saint Lucia is a party to the TRIPS Agreement and so by virtue of Section 8 of the Act,
Article 14.6 applies.
__________
                                                     
1 These responses supplement Saint Lucia's response s to the United States circulated in document
IP/C/W/237/Add.1.