WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/LCA/T/1 
1 September 2004 
 (04-3622) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
SAINT LUCIA 
   The present document reproduces the text
1 of the Trademarks Act No. 22 of 2001, as notified 
by Saint Lucia under Article 63.2 of the Agreement (see document IP/N/1/LCA/2). 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
  
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
SAINTE-LUCIE 
   Le présent document contient le texte
1 de la Loi n° 22 de 2001 sur les marques de fabrique ou 
de commerce, notifiée par Sainte-Lucie au titre de  l'article 63:2 de l'Accord (voir le document 
IP/N/1/LCA/2).  
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
SANTA LUCÍA 
 
  En el presente documento se reproduce el texto
1 de la Ley de Marcas de Fábrica o de 
Comercio Nº 22 de 2001, que Santa Lucía ha notif icado en virtud del párrafo 2 del artículo 63 del 
Acuerdo (véase el documento IP/N/1/LCA/2). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/LCA/T/1 
Page 2  
 
 Trade Marks Act 
 
SAINT LUCIA 
———— 
No. 22 of 2001 
 
ARRANGEMENT OF SECTIONS 
Section 
PART I 
PRELIMINARY 
 
1. Short title and commencement 
 
PART 2 
INTERPRETATION 
 
2. Interpretation 
 
PART 3 
TRADE MARKS AND TRADE MARK RIGHTS 
 
3. Categories of trade marks 4. Rights given by registration of trade mark 
5. Nature of registered trade mark as property 
6. Power of registered owner to deal with trade marks 7. Limitation on rights for similar trade marks 8. Trade mark as sign describing article 9. Trade mark relating to article et c. formerly manufactured under patent 
10. Powers of authorised user of registered trade mark 
 
PART 4 
APPLICATION FOR REGISTRATION 
 
Division 1 
General 
 
11. Making of application 12. Application by joint owners 13. Claim for priority 
14. Notice of application to be published 
15. Registrar to examine, and report on, application 16. Registrar to decide on disputed classification of goods etc. 17. Application accepted or rejected 18. Notice etc. of decision 
19. Appeal 
20. Deferment of acceptance 21. Lapsing of application 22. Revocation of acceptance 
  IP/N/1/LCA/T/1 
 Page 3 
 
 
 Division 2 
Grounds for rejecting an application 
 
23. Trade mark containing certain signs 24. Trade mark that cannot be represented graphically 
25. Trade mark not distinguishing applicant’s goods or services 
26. Trade mark scandalous or its use contrary to law 27. Trade mark likely to deceive or cause confusion 28. Identical etc. trade mark 
 
Division 3 
Divisional applications 
 
29. Definition of divisional application 30. Divisional application possible onl y if initial application is pending 
31. Divisional application for registration of part of trade mark 
32. Divisional application for registration of trade mark in respect of some of the goods etc. 33. Divisional application for registration of trade mark in respect of goods etc. excluded from the initial application 34. Filing date 
 
Division 4 
Application for registration of series of trade marks 
 
35. Application-series of trade marks 
 
PART 5 
OPPOSITION TO REGISTRATION 
 
Division 1 
General 
 36. Opposition 
37. Proceedings in name of a person ot her than the person who filed the notice 
38. Opposition proceedings 39. Decision 40. Appeal 
 
Division 2 
Grounds for opposing registration 
 
41. Registration may be opposed on same grounds as for rejection 42. Applicant not owner of trade mark 
43. Applicant not intending to use trade mark 
44. Trade mark similar to trade mark that has acquired a reputation 45. Trade mark containing or consisting of a false geographical indication 46. Application etc. defective etc. 
 
PART 6 
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND 
OTHER DOCUMENTS 
 
47. Amendment of application for registration of trade mark IP/N/1/LCA/T/1 
Page 4  
 
 48. Amendment before notice of application is published 
49. Amendment after particulars of application have been published 50. Amendment of other documents 51. Appeal 
 
PART 7 
REGISTRATION OF TRADE MARK 
 
Division 1 
Initial Registration 
 
52. Obligation to register 53. Registration-how effected 54. Colours in registered trade marks 55. Notification of registration 
56. Date and term of registration 
57. Ceasing of registration 58. Disclaimers 
 
Division 2 
Renewal of Registration 
 
59. Request for renewal 60. Notice of renewal date 61. Renewal before registration expires 62. Failure to renew 
63. Renewal within 12 months after registration expires 
64. Status of unrenewed trade mark 
 
PART 8 
AMENDMENT AND CANCELLATION OF REGISTRATION 
 
Division 1 
Action by Registrar 
 
65. Correction of Register 66. Adaptation of classification 
67. Amendment of particulars of trade mark entered in Register 
68. Cancellation of registration 
 
Division 2 
Action by court 
 69. Amendment to correct error or omission 
70. Amendment or cancellation on grounds of contravention of condition etc. 
71. Amendment or cancellation-loss of exclusive rights to use trade mark 
72. Amendment or cancellation - other specified grounds 73. Rectification may not be granted in certain cases if registered owner not at fault etc. 
74. Duties and powers of Registrar. 
  IP/N/1/LCA/T/1 
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 Division 3 
Amendment of certificate of registration 
 
75. Amendment of certificate of registration 
 
PART 9 
REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE 
 
76. Application for removal of trade mark from Register etc. 77. Time for making application 
78. Referral to court 
79. Notification of application 80. Notice of opposition 81. Removal of trade mark from the Register etc. if application unopposed 82. Trade mark restored to Register if notice of opposition filed within extended time 
83. Proceedings before Registrar 
84. Burden on opponent to establish use of trade mark etc. 85. Determination of oppo sed application-general 
86. Determination of opposed application-localised use of trade mark 87. Registrar to comply with order of court 88. Appeal 
89. Certificate-use of trade mark 
 
PART 10 
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS 
 90. Assignment etc. of trade mark 
91. Applications for record to be made of assignmen t etc. of trade mark whose registration is sought 
92. Recording of assignment etc. of tr ade mark whose registration is sought 
93. Application for record of assignment etc. of re gistered trade mark to be entered in Register 
94. Recording of assignment etc. of registered trade mark 95. Notice of application to be given to person r ecorded as claiming interest in trade mark etc. 
 
PART 11 
VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN                                                     
AND RIGHTS IN RESPECT OF TRADE MARKS 
 
Division 1 
Preliminary 
 
96. Object of Part 
 
Division 2 
Interests in, and rights in respect of, registered trade marks 
 
97. Application to have claims to interest etc. recorded 98. Record of claims to interest etc. 99. Amendment and cancellation 
100. Record not proof etc. of existence of right etc. 
 IP/N/1/LCA/T/1 
Page 6  
 
 Division 3 
Interest in, and rights in respect of, unregistered trade marks 
 
101. Application to have claims  to interest etc. recorded 
102. Record of claims to interest etc. 
103. Amendment and cancellation 
 
PART 12 
INFRINGEMENT OF TRADE MARK 
 104. Infringement of trade mark 
105. Infringement of trade mark by breach of certain restrictions 106. Goods etc. to which registered trade mark has been applied by or with consent of registered 
owner 107. Prior use of identical trade mark etc. 
108. What courts may hear action for infringement of registered trade mark 
109. What relief can be obtained from court 110. Special case-plaintiff not entitled to damages etc. 111. Circumstances in which action may not be brought 112. Groundless threats of legal proceedings 113. Counterclaim by defendant in action on groundless threats 
 
PART 13 
IMPORTATION OF GOODS INFRINGING SAINT LUCIAN TRADE MARKS 
 
114. Object of Part 
115. Notice of objection to importation 
116. Comptroller may seize goods infringing trade mark 117. Notice of seizure 118. Forfeiture of goods 119. Release of goods to owner-no action for infringement 120. Action for infringement of trade mark 
121. Action for infringement by authorised user 
122. Disposal of forfeited goods 123. Power of Comptroller to retain control of goods 124. Insufficient security 125. Government not liable for loss etc. suffered because of seizure 
126. Power to require information 
 
PART 14 
OFFENCES 
 
127. Falsifying etc. a registered trade mark 
128. Falsely applying a registered trade mark 
129. Manufacture and possession of die etc. for use in commission of offence 130. Selling etc. goods with false marks 131. Penalty for offence unde r section 127, 128, 129 or 130 
132. False representations regarding trade marks 
133. False entries in Register etc. 
134. Disobeying summons etc. 135. Refusing to give evidence etc. 136. Unauthorised persons not to act in trade mark matters 137. False representation about Registry of Companies and Intellectual Property  IP/N/1/LCA/T/1 
 Page 7 
 
 
 138. Employee not to prepare documents etc. 
139. Conduct of directors, servants and agents 
 
PART 15 
COLLECTIVE TRADE MARKS 
 
140. Object of Part 141. Collective trade mark 142. Application of Act 143. Application for registration 
144. Limitation on rights given by registered collective trade mark 
145. Assignment etc. of collective trade mark 146. Infringement of collective trade mark 
 
PART 16 
CERTIFICATION TRADE MARKS 
 
147. Object of Part 148. Certification trade mark 149. Application of Act 150. Rights given by registration of a certification trade mark 
151. Rights of persons allowed to use certification trade mark 
152. Rules governing the use of certification trade marks 153. Grant of application to register 154. Refusal to register 155. Variation of rules 
156. Rules to be available for inspection 
157. Assignment of registered certification trade mark 158. Rectification of the Register by order of court 159. Variation of rules by order of court 160. Copy of order and rules 
 
PART 17 
DEFENSIVE TRADE MARKS 
 
161. Object of Part 162. Defensive trade mark 
163. Application of Act 
164. Additional grounds for rejecting applica tion for registration or opposing registration 
165. Amendment or cancellation of registration by order of court 
166. Cancellation of registration by Registrar 
 
PART 18 
JURISDICTION AND POWERS OF COURTS 
 
167. Jurisdiction of High Court 168. Transfer of proceedings 169. Appeals 
170. Registrar may appear in appeals 
171. Powers of High Court. 
 IP/N/1/LCA/T/1 
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 PART 19 
ADMINISTRATION 
 
172. Registrar of Companies and Intellectual Property 173. Registrar’s powers 
174. Exercise of power by Registrar 
175. Registrar to act as soon as practicable 176. Deputy Registrar 177. Delegation of Registrar’s powers and functions 
PART 20 
THE REGISTER AND OFFICIAL DOCUMENTS 
 
178. The Register 179. Register may be kept on computer 180. Inspection of Register 
181. Register 
182. Certified copies of documents 
 
PART 21 
MISCELLANEOUS 
 
Division 1 
Applications and other documents 
 
183. Making and signing applications etc. 184. Filing of documents 
185. Withdrawal of application etc. 
186. Address for service 187. Change of name 
 
Division 2 
Proceedings before the Registrar or a court 
 
188. Death of applicant etc. 189. Description of registered trade mark 190. Evidence of trade usage 191. Death of party to proceeding before Registrar 
192. Costs awarded by Registrar 
193. Security for costs 
 
Division 3 
General 
 194. Fees 
195. Extension of time 196. Publication of documents 197. Use of trade mark for export trade 198. Passing off actions 
199. Expenses 
200. Regulations 201. Repeal 202. Transitional   IP/N/1/LCA/T/1 
 Page 9 
 
 
 I A SSENT 
 
[L.S.]          PEARLETTE LOUISY, 
  Governor-General. 
 
26th October, 2001. 
 
SAINT LUCIA 
———— 
 
No. 22 of 2001 
 A
N ACT to provide for the promotion and protection of trade marks and for related matters. 
 
[ 3rd November, 2001 ] 
BE IT ENACTED by the Queen’s Most Excelle nt Majesty, by and with the advice and 
consent of the House of Assembly and the Senate of Saint Lucia, and by the authority of the same, as 
follows: 
 
PART 1 
PRELIMINARY 
 
Short title and commencement 
 
1.— (1) This Act may be cited, as the Trade Marks Act, 2001. 
(2) This Act shall come into force on a day to be prescribed by the Minister by Order 
published in the Gazette.  
 
PART 2 
INTERPRETATION 
 
Interpretation 
2.—(1) In this Act— 
“applicant” in relation to an application, means th e person in whose name the application is for the 
time being proceeding; “applied to” has the meaning given to it in subsection (11); “applied in relation to” has the mean ing given to it in subsection (11); 
“approved form” means a form approved by the Regi strar for the purposes of the provision in which 
the expression appears; “assignment” in relation to a trade mark, means an  assignment by act of the parties concerned; 
“association” does not include a body corporate; “attorney-at-law” means an attorney-at-law as defined by the Legal Professions Act 2000; 
“authorized use of a trade mark” has the meaning given to it by subsection (7); 
“authorized user of a trade mark” has th e meaning given to it by subsection (6) ; 
“certification trade mark” has the meaning given to it by section 148; “collective trade mark” has the meaning given to it by section 141 ; “Companies and Intellectual Property (Registry) Ac t” means the Companies and Intellectual Property 
(Registry) Act 2000, No. 12; 
“Comptroller” means the Comptroller of Customs appointed under the Customs (Control and 
Management Act 1990), No. 23;  “Convention country” means a country which is a pa rty to the Paris Convention for the Protection of 
Industrial Property 1883 ; IP/N/1/LCA/T/1 
Page 10  
 
 “date of registration”, in relation to the registration of a trade mark in respect of particular goods and 
services, means the day from which the registration of a trade mark in respect of those goods or 
services is taken to have had effect under section 56(1) or (2); “deceptively similar” has the meaning given to it by sub-section (13); “defensive trade mark” has the meaning given to it by section 162; 
“Deputy Registrar” means the Deputy Registrar appointed under the Companies and Intellectual 
Property (Registry) Act; “designated owner” in relation to goods imported into Saint Lucia means the person identified as the 
owner of the goods on the entry made pursuant to  the Customs (Control and Management) Act 1990; 
“divisional application” has the meaning given to it by section 29; 
“examine”, in relation to an application for the re gistration of a trade mark, means to carry out an 
examination under section 15 in relation to the application; “existing registered mark” means a mark that w as registered under the repealed Acts and whose 
registration was due to expire after the coming into force of this Act; “file” means to file at the Registry of Companies and Intellectual Property; 
“filing date” means — 
(a) in relation to an application for the registration of a trade mark other than an application referred 
to in paragraph ( b) of this definition, the day on which the application is filed; 
(b) in relation to a divisional application for the registration of a trade mark, the day on which the 
initial application, within the meaning of Division 3 of Part 4 , was filed; 
“geographical indication”, has the meaning given to it in th e Geographical Indications Act 2000,              
No. 4; 
“goods of a person” means goods d ealt with or provided in the course of trade by the person; 
“limitations” means limitations of the exclusive right  to use a trade mark, including limitations of that 
right as to — (a) mode of use; 
(b) use in Saint Lucia; or 
(c) use in relation to goods or services to be exported; 
“Minister” means Minister with responsibility for Intellectual Property; “notified trade mark” means a trade mark in resp ect of which notice under section 115 is in force; 
“objector”, in relation to seized goods, means any person who has given a notice under section 115 
that is in force; 
“old register” means the Register of Patents, Trad emarks and Designs kept under the repealed Acts; 
“opponent” in relation to the registration of a trade mark, means — (a) the person who has filed ,under section 36, a no tice of opposition to the registration of the trade 
mark; or 
(b) if section 37 applies, a person in whose name th e notice of the opposition is taken to have been 
filed; 
“originate” in relation to wine, has the meaning given to it by subsection (19); “pending” in relation to an application for the re gistration of a trade mark under this Act has the 
meaning given to it by subsection (14); “pending” in relation to an application for the regi stration of a trade mark under the repealed Acts has 
the meaning given to it by subsection ( 15); 
“person” includes a body corporate or unincorporated body; 
“predecessor in title” in relation to a person who cl aims to be the owner of a trade mark means — 
(a) if the trade mark was assigned or transmitted to  one or more than one person before it was 
assigned or transmitted to the first mentioned pers on, that other person or anyone of those other 
persons; or 
(b) if paragraph ( a) does not apply, the person who assigned th e trade mark, or from whom the trade 
mark was transmitted, to the first mentioned person; 
“prescribed” means prescribed in Regulations made under this Act; “priority date” has the meaning given to it by subsection (16);  “Register” means the Register of Trade Marks kept under section 178;  IP/N/1/LCA/T/1 
 Page 11 
 
 
 “registered owner” in relation to a registered tr ade mark, means the person in whose name the trade 
mark is registered; “registered trade mark” means a trad e mark whose particulars are regist ered in the Register under this 
Act; “Registrar” means the Registrar of Companies and Intellectual Property appointed pursuant to the 
Companies and Intellectual Property (Registry) Act 2000; 
“registration number” , in relation to a register ed trade mark, means the number given to it Under 
section 52 (2); “Registry of Companies and Intellectual Property” means the Registry of Companies and Intellectual 
Property established under Companies and Intellectual Property (Registry) Act; 
“Regulations” means Regulations made pursuant to section 200; 
“remove from the Register”, in relation to a trad e mark, has the meaning given to it by subsection 
(17); “repealed Acts” means the Acts repealed pursuant to section 201; 
“represented graphically” has the mean ing given to it in subsection (3); 
“seized goods” means goods seized under section 116; 
“services of a person” means services dealt with or  provided in the course of trade by the person; 
“sign” includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of 
packaging, shape, color, an d any combination thereof; 
“similar goods” has the meaning given to it by subsection (18)( a); 
“similar services" has the meaning given to it by subsection (18)( b); 
“trade mark” means 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 good s or services so dealt with or provided by any 
other person; “transmission” means — (a) transmission by operation of law; 
(b) devolution on the personal represen tative of a deceased person; or 
(c) any other kind of transfer except assignment; 
 “use of trade mark” has the meaning effect ed by subsections (2), (3), and (4); 
“use of trade mark in relation to goods” has the meaning given to it pursuant to subsection (5)( a); 
“use of trade mark in relation to services” has th e meaning given to it pursuant to subsection (5)( b); 
“word” includes an abbreviation of a word. 
(2) If the Registrar or the High Court, having rega rd to the circumstances of a particular case, 
thinks fit, the Registrar or the High Court may decide that a person has used a trade mark if it is established that the person has used the trade ma rk with additions or alterations th at do not substantially affect the 
identity of the trade mark. 
(3) A trade mark is capable of being represente d graphically if it can be represented on paper. 
(4) An authorised use of a trade mark by a person is taken, for the purposes of this Act, to be a 
use of the trade mark by the owner of the trade mark. 
(5) In this Act — 
“use of a trade mark in relation to goods” means use of the trade mark upon, or in physical or other 
relation to, the goods, in cluding second-hand goods; 
“use of a trade mark in relation to services” means use of the trade mark in physical or other relation 
to the services. 
(6) A person is an authorised user of a trade ma rk if the person uses the trade mark in relation 
to goods or services Under the control of the owner of the trade mark. 
(7) The use of a trade mark by an  authorised user of the trade ma rk is an authorised use of the 
trade mark to the extent only that the user uses th e trade mark under the control of the owner of the 
trade mark. 
(8) If the owner of a trade mark exerci ses quality control over goods or services — 
(a) dealt with or provided in the course of trade by another person; and — 
(b) in relation to which the trade mark is used; IP/N/1/LCA/T/1 
Page 12  
 
 the other person is taken, for the pur poses of subsections (6) and (7), to 
use the trade mark in relation to th e goods or services under the control 
of the owner. 
(9) If — 
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a 
trade mark is used; and 
(b) the owner of the trade mark exercises financial control over the other person's relevant trading 
activities; 
the other person is taken, for the purposes of subsecti on (6) and (7), to use the trade mark in relation 
to the goods or services under the control of the owner. 
(10) Subsections (8) and (9) do not limit the m eaning of the expression “under the control of” 
in subsections (6) and (7). 
(11) For the purposes of this Act — 
(a) a trade mark is taken to be applied to any goods , material or thing if it is woven in, impressed on, 
worked into, or affixed or annexed to, the goods, material or thing; and 
(b) a trade mark is taken to be applied in  relation to goods or services if it is — 
(i) applied to any covering, document, label, reel or thing in or with which the goods are, or are 
intended to be, dealt with or provided in the course of trade; or 
(ii) used in a manner likely to lead persons to be lieve that it refers to, describes or designates the 
goods or services; and 
(c) in addition to paragraphs ( a) and ( b), a trade mark is taken to be applied in relation to goods or 
services if it is used — 
(i)  on a signboard or in an advertisemen t, including a televised advertisement; or 
(ii) in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial 
document; 
and goods are delivered, or services provided, as th e case may be, to a person following a request or 
order made by referring to the trade mark as so used. 
(12) In subsection (11) ( b)(i) — 
“covering” includes packaging, frame, wra pper, container, stopper, lid or cap; 
“label” includes a band or ticket. 
(13) For the purposes of this Act, a trade mark is taken to be deceptively similar to another 
trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause 
confusion. 
(14) An application for the registration of a trade mark under this Act is pending from the 
time it is filed until — (a) it lapses pursuant to section 21, is withdrawn pur suant to section 185 or is rejected under section 
17; 
(b) if the Registrar refuses, under section 39, to regist er the trade mark and there is no appeal against 
the decision, the end of the period allowed for the appeal; 
(c) if the Registrar refuses, under section 39, to register the trade mark and — 
(i) there is an appeal against the decision; and (ii) the decision is confirmed on appeal; the day on which the decision is confirmed on appeal; or 
(d) the trade mark is registered under section 52; 
(15) An application for the registration of a trade mark under the repealed Acts was pending 
immediately before the commencement date of this Act if, before that date — 
(a) the application had not lapsed, been withdrawn, or refused; or 
(b) had been refused but — 
(i) the period allowed for appealing against the decision to refuse had not yet ended; or 
(ii) an appeal had been made against the decision but had not been decided; 
under the repealed Acts. 
(16) The priority date of the registration of a trade mark in respect of particular goods or 
services is —  IP/N/1/LCA/T/1 
 Page 13 
 
 
 (a) if the trade mark is registered, the date of the registration of trade mark in respect of those goods 
or services; 
 (b) if the registration of the trade mark is being sought, the day that would be the date of the 
registration of the trade mark in respect of those goods or services if the trade mark was registered. 
(17) A trade mark is taken to have been rem oved from the Register if the Registrar makes an 
entry in the Register to the effect that all entries in  the Register relating to the trade mark are taken to 
have been removed from the Register. 
(18) For the purposes of this Act — 
(a) goods are similar to other goods if — 
(i) they are the same as the other goods; or 
(ii) they are of the same description as that of the other goods; or 
(b) services are similar to other services if — 
(i) if they are the same as the other services; or (ii) if they are of the same description as that of the other services. 
(19) For the purposes of this Act — 
(a) a wine is taken to have originated in a forei gn country or Saint Lucia only if the wine is made 
within the territory of that country or of Saint Lucia, as the case may be; and 
(b) a wine is taken to have originated in a particular  region or locality of a foreign country or of Saint 
Lucia only if the wine is made from grapes grown in that region or locality. 
 
PART 3 
T
RADE MARKS AND TRADE MARK RIGHTS 
 
Categories of trade marks 
3.— (1) A trade mark may be registered in accordance with this Act in respect of — 
(a) goods; 
(b) services; or 
(c) both goods and services. 
(2) The registration of a trade mark may be in respect of goods or services of more than one 
class. 
 
Rights given by registration of trade marks 
4.— (1) If a trade mark is registered, the registered  owner of the trade mark has, subject to this 
Act, the exclusive rights — (a) to use the trade mark; 
(b) to authorise other persons to use the trade mark in relation to goods or services or both in respect 
of which the trade mark is registered; and 
(c) to obtain relief under this Act if the trade mark has been infringed. 
(2) The rights pursuant to subsection (I) are deem ed to have accrued to the registered owner 
as from the date of the registration of the trade mark. 
(3) If a trade mark is registered under this Ac t subject to conditions or limitations, the rights 
of the registered owner are restricted by those conditions or limitations. 
(4) If a trade mark is registered in the name of two or more persons as joint owners of the 
trade mark, the rights granted to those persons under th is section are to be exercised by them as if they 
were the rights of a single person. 
 
Nature of registered trade mark as property 
5.— (1) A registered trade mark is personal property. 
(2) A right in respect of a registered trade ma rk is enforceable in the same way as rights in 
respect of any other personal property. 
 
Power of registered owner to deal with trade mark 
6.— (1) The registered owner of a trade mark may,  subject only to any rights vested in another 
person, deal with the trade mark as its IP/N/1/LCA/T/1 
Page 14  
 
 absolute owner and give in good faith dischar ges for any consideration for that dealing. 
(2) This section does not protect a person who deal s with the registered owner otherwise than  
(a) as a purchaser in good faith for value; and 
(b) without notice of any fraud on the part of the owner. 
 
Limitation on rights for similar trade marks 
7. If trade marks that are substantially identical or deceptively similar have been registered by more 
than one person whether in respect of the same or different goods or services, the registered owner of 
anyone of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first mentioned owner is 
authorised to do so under the registration of his or her trade mark. 
 
Trade mark as sign describing article 
8.— (1) This section applies if a registered trade mark  consists of, or contains, a sign that, after the 
date of registration of the trade mark, becomes ge nerally accepted within the relevant trade as the sign 
that describes or is the name of an article, substance or service. 
(2) If a trade mark consists of the sign referred to in subsection (1), the registered owner — 
(a) does not have any exclusive rights to use, or au thorise other persons to use, the trade mark in 
relation to — 
(i) the article or substance or other goods of the same description; or 
(ii) the service or other services of the same description; and 
(b) is taken to have ceased to have those exclusiv e rights from and including the day determined by 
the High Court under subsection (4). 
(3) If a trade mark contains the sign referred to  in subsection (1), the registered owner — 
(a) does not have any exclusive rights to use, or author ise other persons to use, the sign in relation to  
(i) the article or substance or other goods of the same description; or 
(ii) the service or other services of the same description; and 
(b) is taken to have ceased to have those exclusiv e rights from the day determined by the High Court 
under subsection (4). 
(4) For the purposes of subsections (2) and (3 ), the High Court may determine the day on 
which a sign first became generally accepted within th e relevant trade as the sign that describes or is 
the name of the article, substance or service. 
 
Trade mark relating to article etc. formerly manufactured under patent 
9.— (1) This section applies if — 
(a) a registered trade mark consists of, or contains, a sign that describes or is the name of — 
(i) an article or substance that was formerly exploited under a patent; or 
(ii) a service that was formerly provided as a patented process; and 
(b) it is at least two years since the patent has expired or ceased; and 
(c) the sign is the only commonly known way to describ e or identify the article, substance or service. 
(2) If a trade mark consists of the sign referred to in subsection (1), the registered owner — 
(a) does not have any exclusive rights to use, or au thorise other persons to use, the trade mark in 
relation to — 
(i) the article or substance or other goods of the same description; or 
(ii) the service or other services of the same description; and 
(b) is taken to have ceased to have those exclusive rights from the end of the period of two years after 
the patent expired or ceased. 
(3) If a trade mark contains the sign referred to  in subsection (1), the registered owner — 
(a) does not have any exclusive rights to use, or author ise other persons to use, the sign in relation to  
(i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and 
(b) is taken to have ceased to have those exclusive rights from the end of the period of two years after 
the patent expired or ceased. 
  IP/N/1/LCA/T/1 
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 Powers of authorised user of registered trade mark 
10.— (1) Subject to any agreement between the regist ered owner of a registered trade mark and an 
authorised user of the trade ma rk, the authorised user may — 
(a) use the trade mark in relation to the goods or servi ces or both, in respect of which the trade mark is 
registered, subject to any condition or limitation subject to which the trade mark is registered; 
(b) subject to subsection (2), bring an action for infri ngement of the trade mark if the registered owner 
refuses or neglects to do so within the prescribed period; 
(c) cause to be displayed on goods in respect of wh ich the trade mark is registered, or on their 
package, or on the container in which they are offered to the public, a notice prohibiting any act 
that is under section 105(2) a prohibited act in relation to the goods; 
(d) either — 
(i) give to the Comptroller a notice under secti on 115 objecting to the importation of goods that 
infringe the trade mark; or 
(ii) revoke a notice given under subparagraph (i); 
(e) give permission to any person — 
(ii) to make any addition to; or (iii) to remove, erase or obliterate, wholly or partly ; a registered trade mark that is applied to any 
goods, or in relation to any goods or services, in respect of which the trade mark is registered; 
(f) give permission to any person to apply the trade ma rk to goods, or in relation to goods or services, 
in respect of which the trade mark is registered. 
(2) Subject to subsection (3), if the authorised  user of a trade mark brings an action for 
infringement of the trade mark, the authorised user shall make the registered owner of the trade mark 
a defendant in the action. 
(3) The registered owner is not liable for cost s if he or she does not take part in the 
proceedings for an action brought pursuant to subsection (2).  
PART 4 
A
PPLICATION FOR REGISTRATION 
 
Division 1 
General 
 
Making of application 
11.— (1) A person may apply, in the prescribed form, for the registration of a trade mark in respect 
of goods or services or both if — (a) the person claims to be the owner of the trade mark; and 
(b) one of the following applies — 
(i) the person is using or intends to use the trad e mark in relation to the goods or services or both; 
(ii) the person has authorised or intends to aut horise another person to use the trade mark in 
relation to the goods or services or both; 
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted 
with a view to the use by the body corporate of the trade mark in relation to the goods or 
services or both. 
(2) Without limiting the particulars that may be included in an application made under 
subsection (1), the application shall — (a) include six (6) representations of the trade mark; and 
(b) specify, in accordance with the Regulations, the goods  or services or both, in respect of which it is 
sought to register the trade mark. 
(3) An application, other than an application under section 35 for the registration of two or 
more trade marks as a series, may be made in respect of goods and services of one or more of the classes prescribed in the Regulations. 
 
 
 IP/N/1/LCA/T/1 
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 Application by joint owners 
12. If the relations between two or more persons interest ed in a trade mark are such that none of them 
is entitled to use the trade mark except — 
(a) on behalf of all of them; or 
(b) in relation to goods or services or both with which all of them are connected in the course of trade; 
the persons may together apply for its registration under section 11 (1). 
 
Claim for priority 
13.—(1) If — 
(a) a person has made an application for the registra tion of a trade mark in one or more than one 
Convention country; and 
(b) within six months after the day on which that a pplication, or the first of those applications, was 
made, that person or that person's predecessor in title applies to the Registrar for the registration 
of the trade mark in respect of some or all of the goods or services or both in respect of which registration was sought in that country or those countries; 
that person or that person's successor in title may, when  filing the application, or within the prescribed 
period after filing the application but before the app lication is accepted, claim a right of priority for 
the registration of the trade mark in respect of any or all of those goods or services or both in 
accordance with the Regulations. 
(2) The priority claimed pursuant to subsection (1 ) is for the registration of the trade mark in 
respect of the goods or services — 
(a) if an application to register the trade mark was made in only one Convention country from and 
including the day on which the application was made in that country; or 
(b) if applications to register the trade mark were  made in more than one Convention country from 
and including the day on which the earliest of those applications was made. 
 
Notice of application to be published 
14. The Registrar shall publish notice, in the prescribed form , of an application to register a trade 
mark. 
 
Registrar to examine, and report on, application 
15. The Registrar shall, in accordance with the Regulations, examine and report on — 
(a) whether an application made pursuant to section 11 has been made in accordance with this Act; 
and 
(b) whether there are grounds under Division 2 for rejecting it. 
 
Registrar to decide on disputed  classification of goods etc. 
16. If a question arises as to the class in which goods or services are comprised — 
(a) that question is to be decided by the Registrar; and . 
(b) the decision of the Registrar is not subject to appeal and may not be called into question in an 
appeal or other proceedings under this Act. 
 
Application accepted or rejected 
17.— (1) The Registrar shall, after the examin ation made pursuant to section 15, accept an 
application made pursuant to section 11 unless he or she is satisfied that — 
(a) the application has not been made  in accordance with this Act; or 
(b) there are grounds for rejecting it. 
(2) The Registrar may accept an application made  pursuant to section 11 subject to conditions 
or limitations. 
(3) If the Registrar is satisfied that — 
(a) an application has not been made  in accordance with this Act; or 
(b) there are grounds for rejecting it; the Registrar shall, subject to subsection (4), reject an 
application. 
(4) The Registrar may not reject an application made pursuant to section 11 without giving 
the applicant an opportunity of being heard.  IP/N/1/LCA/T/1 
 Page 17 
 
 
 Notice etc. of decision 
18. The Registrar shall — 
(a) notify an applicant in writing of his or her deci sion to accept or reject an application under section 
17; and 
(b) publish notice of the decision in the Gazette. 
 
Appeal 
19. An applicant may appeal to the High Court against a decision of the Registrar — 
(a) to accept an application subject to conditions or limitations; or 
(b) to reject an application. 
 
Deferment of acceptance 
20. The Registrar may defer the acceptance of an a pplication made pursuant to section 11 in the 
circumstances provided for, and for the period prescribed in the Regulations. 
 
Lapsing of application 
21.— (1) Subject to subsection (2), an application lapses if — 
(a) it is not accepted; or 
(b) no further action is taken on the application by the applicant; 
(c) the applicant fails to submit information requested by the Registrar; 
within the prescribed period or within the peri od as extended by the Registrar in accordance with 
section 195. 
(2) If, after the prescribed period or the pr escribed period as extended has expired, the 
Registrar extends under section 195 the period with in which an application may be accepted, the 
application — 
(a) is taken not to have lapsed when  the prescribed period expired; and 
(b) lapses if it is not accepted within the extended period. 
 
Revocation of acceptance 
22.— (1) If, before a trade mark is registered, the Registrar is satisfied — 
(a) that an application for registration of the trad e mark was accepted because of an error or omission 
in the course of the examination; or 
(b) that, in the special circumstance s of the case, the trade mark should not be registered, or should be 
registered subject to conditions or limitations, or to additional or different conditions or 
limitations; 
the Registrar may revoke the acceptance of the application- 
(2) If the Registrar revokes the acceptance of an application — 
(a) the application is taken to have never been accepted; and 
(b) the Registrar shall examine, and report on, the application as necessary under section 15; and 
(c) sections 17 and 18 again apply in relation to the application. 
 
Division 2 
Grounds for rejecting an application 
 
Trade mark containing certain signs 
23.— (1) An application for the registration of a tr ade mark shall be rejected if the trade mark 
contains or consists of a sign that is prescribed not to be used as a trade mark. 
(2) An application for the registration of a tr ade mark may be rejected if the trade mark 
contains or consists of — (a) a sign that is prescribed for the purposes of subsection (1); or 
(b) a sign so nearly resembling — 
(i) a sign referred to in paragraph ( a) ; or 
(ii) a sign referred to in subsection (1) ; as to be likely to be taken for it. 
 
 IP/N/1/LCA/T/1 
Page 18  
 
 Trade mark that cannot be represented graphically 
24. An application for the registration of a trade mark  shall be rejected if the trade mark cannot be 
represented graphically. 
 
Trade mark not distinguishing applicant's goods or services 
25.— (1) For the purposes of this section, the use of a trade mark by a predecessor in title of an 
applicant for the registration of the trade mark is take n to be a use of the trade mark by the applicant. 
(2) An application for the registration of a trade ma rk shall be rejected if the trade mark is not 
capable of distinguishing the applicant's goods or ser vices in respect of which the trade mark is sought 
to be registered from the goods or services of other persons. 
(3) In deciding the question whether or not a trade mark is capable of distinguishing the 
designated goods or services from the goods or services of other persons, the Registrar shall first take 
into account the extent to which the trade mark is inherently adapted to distinguish the designated 
goods or services from the goods or services of other persons. 
(4) If the Registrar finds that the trade mark is to some extent inherently adapted to 
distinguish the designated goods or services from the goods or services of other persons but is unable 
to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods 
or services —  (a) the Registrar is to consider whether, becau se of the combined effect of the following — 
(i) the extent to which the trade mark is inherent ly adapted to distinguish the designated goods or 
services; 
(ii) the use, or intended use, of the trade mark by the applicant; and 
(iii) any other circumstances; 
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) If — 
(i) the Registrar is then satisfied that the trad e mark does or will so distinguish the designated 
goods or services the trade mark is taken to be capable of distinguishing the applicant's goods 
or services from the goods or services of other persons; or 
(ii) the Registrar is not satisfied that the trad e mark does or will so distinguish the designated 
goods or services, the trade mark is taken not to  be capable of distinguishing the applicant's 
goods or services from the goods or services of other persons. 
(5) If the Registrar finds that the trade mark is not inherently adapted to distinguish the 
designated goods or services from the goods or servi ces of other persons, the following provisions 
apply — (a) if the applicant establishes that, because of the extent to which the app licant has used the trade 
mark before the filing date in respect of the app lication, it does distinguish the designated goods or 
services as being those of the applicant, the trade ma rk is taken to be capable of distinguishing the 
designated goods or services from the goods or services of other persons; 
(b) in a case other than in paragraph ( a), the trade mark is taken not to be capable of distinguishing the 
designated goods or services from the goods or services of other persons. 
 
Trade mark scandalous or its use contrary to law 
26. An application for the registration of a trade mark shall be rejected if — 
(a) the trade mark contains or c onsists of scandalous matter; or 
(b) its use would be contrary to law. 
 
Trade mark likely to deceive or cause confusion 
27. An application for the registration of a trade mark in respect of particular goods or services shall 
be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to tho se goods or services would be, likely to deceive or 
cause confusion. 
 
  IP/N/1/LCA/T/1 
 Page 19 
 
 
 Identical etc. trade marks 
28.— (1) Subject to subsections (3) and (4), an app lication for the registration of a trade mark in 
respect of goods shall be rejected if — 
(a) the applicant's trade mark is substantially  identical with, or deceptively similar to — 
(i) a trade mark registered by another person in respect of similar goods or closely related services; 
or 
(ii) a trade mark whose registration in respect of  similar goods or closely related services is being 
sought by another person; and 
(b) the priority date for the registration of the appli cant's trade mark in respect of the applicant's goods 
is not earlier than the priority date for the regist ration of the other trade mark in respect of the 
similar goods or closely related services. 
(2) Subject to subsections (3) and ( 4), an application for the registration of a trade mark in 
respect of services shall be rejected if — (a) it is substantially identical w ith, or deceptively similar to — 
(i) a trade mark registered by another person in r espect of similar services or closely related goods; 
or 
(ii) a trade mark whose registration in respect of  similar services or closely related goods is being 
sought by another person; and 
(b) the priority date for the registration of the app licant's trade mark in respect of the applicant's 
services is not earlier than the priority date for the registration of the other trade mark in respect of 
the similar services or closely related goods. 
(3) If the Registrar, in either case mentioned in subsection (1) or (2), is satisfied — 
(a) that there has been honest concurre nt use of the two trade marks; or 
(b) that, because of other circumstances, it is proper to do so; 
the Registrar may accept the application for the regist ration of the applicant's trade mark subject to 
any conditions or limitations that the Registrar thinks  fit to impose and if the applicant's trade mark 
has been used only in a particular area, the limitations  may include that the use of the trade mark is to 
be restricted to that particular area. 
(4) If the Registrar in either case mentioned in subsection (1) or (2) is satisfied that the 
applicant, or the applicant and the predecessor in title of the applicant, have continuously used the 
applicant's trade mark for a period — 
(a) beginning before the priority date for the registration of the other trade mark in respect of — 
(i) the similar goods or closely related services; or (ii) the similar services or closely related goods; and 
(b) ending on the priority date for the re gistration of the applicant's trade mark; 
the Registrar may not reject the application b ecause of the existence of the other trade mark. 
 
Division 3 
Divisional applications 
 
Definition of divisional application 
29.— (1) A person who has made an application for the registration of a trade mark in respect of 
certain goods or services or both may, in accordance with this Division, make another application — 
(a) for the registration of a part only of the trade mark in respect of any or all those goods or services 
or both; 
(b) for the registration of the trade mark in respect of some only of the goods or services or both in 
respect of which registration is sought  under the initial application; or 
(c) if the initial application has been amended to  exclude some of the goods and services or both in 
respect of which registration was sought in the first place or the registration of the trade mark in 
respect of any or all of the goods or services or both that have been so excluded. 
(2) For the purposes of this Division — 
(a) the initial application is taken to be the appli cation for which notice has been published by the 
Registrar under section 14; and IP/N/1/LCA/T/1 
Page 20  
 
 (b) a divisional application is an application made under this Division. 
 
Divisional application po ssible only if initial application is pending 
30. A divisional application for the registration of a trade mark or a part of a trade mark may be made 
only if the initial application for the re gistration of the trade mark is pending. 
 
Divisional application for registration of part of trade mark 
31.— (1) This section provides for the making of a divisional application for the registration of a 
part only of the trade mark that is the subject of the initial application. 
(2) If a part of a trade mark, by itself, may be registered as a trade mark, the applicant for the 
registration of the trade mark may, within the prescr ibed period but subject to subsection (3), make a 
divisional application for the registration of that part  as a trade mark in respect of any or all of the 
goods or services or both specified in the initial application. 
(3) If the initial application has been accepted, no tice of the divisional application shall not be 
made after the acceptance is published in the Gazette pursuant to section 18. 
 
Divisional application for registration of trade mark in  respect of some of goods etc. 
32.— (1) This section provides for the making of a divisional application for the registration of a 
trade mark in respect of some of the goods or services or both in respect of which registration of the trade mark is being sought by the initial application. 
(2) The applicant for the registration of a trade mark may, subject to subsection (3), make a 
divisional application for the registration of the trade mark in respect of any, but not all, of — 
(a) the goods or services or both specified in the initial application; or — 
(b) if the initial application has been amended to exclude some of the goods or services or both 
specified in that application before its amen dment the goods or services or both specified in 
the initial application as amended. 
(3) If the initial application has been accepted,  the divisional application may not be made 
after the notice of acceptance is published in the Gazette pursuant to section 18. 
 
Divisional application fo r registration of trade mark in respect of goods etc. excluded from the initial application 
33.— (1) This section — 
(a) applies if the initial application for the registrati on of a trade mark is amended to exclude some of 
the goods or services or both specified in that application before its amendment; and ( b) it provides 
for the making of a divisional application in respect of any or all of the excluded goods or services 
or both. 
(2) If the initial application is amended — 
(a) before a decision is made about it under section 17; or 
(b) if the initial application is accepted, befo re notice of its acceptance is published in the Gazette 
pursuant to section 18; 
the applicant may, within the prescribed period bu t subject to subsection (3), make a divisional 
application for the registration of the trade mark in  respect of any or all of the goods or services or 
both that have been excluded from the initial application. 
(3) If the initial application has been accepted,  the divisional application may not be made 
after the notice of the acceptance is published in the Gazette pursuant to section 18. 
(4) If the initial application, whether it has al ready been amended or not, is amended after 
notice of its acceptance has been in the Gazette  pursuant to section 18, the applicant may, within the 
prescribed period, make a divisional application for th e registration of the trade mark in respect of any 
or all of the goods or services or both have b een excluded from the application whose notice of 
acceptance was so published. 
 
Filing date 
34. A divisional application is taken to have been  filed on the day on which the initial application 
concerned was filed. 
  IP/N/1/LCA/T/1 
 Page 21 
 
 
 Division 4 
Application for registration of series of trade marks 
 
Application—series of trade marks 
35.— (1) A person may make a single application unde r section 11 (1) for the registration of two or 
more trade marks in respect of similar goods or similar services within a single class if the trade 
marks resemble each other in material particulars and differ only in respect of one or more of the 
following matters — (a) statements or representations as to the goods or services in relation to which the trade marks are 
used or are intended to be used; 
(b) statements or representations as to number, price, quality or names of places; 
(c) the colour of any part of the trade mark; 
(d) any matter that is not inherently adapted to  distinguish the goods or services and does not 
substantially affect the identity of the trade marks. 
(2) If — 
(a) the application meets all the requirements of this Act; and 
(b) the Registrar is required, under section 52, to register the trade marks; 
he or she shall register them as a series in one registration. 
 
PART 5 
O
PPOSITION TO REGISTRATION 
 
Division 1 
General 
 
Opposition 
36.— (1) If the Registrar has accepted an applicati on for the registration of a trade mark, a person 
may oppose the registration by filing a notice of opposition. 
(2) A notice of opposition filed pursuant to subsec tion (1) shall be in an approved form and 
shall be filed within the prescribed period or w ithin that period as extended in accordance with the 
Regulations. 
 (3) The opponent shall serve a copy of the notice of opposition filed pursuant to subsection 
(1) on the applicant. 
(4) The registration of a trade mark may be opposed on any of the grounds specified in 
Division 2 and on no other grounds. 
 
Proceedings in name of a person other than the person who filed the notice 
37.— If — 
(a) after a person has filed a notice of opposition, th e right or interest on which the person relied to 
file the notice of opposition becom es vested in another person; and 
(b) the other person — 
(i) notifies the Registrar in writing that the right or interest is vested in him or her; and (ii) does not withdraw the opposition; 
the opposition is to proceed as if the notice of opposit ion had been filed in that other person’s name. 
 
Opposition proceedings 
38.— (1) The Registrar shall give to the opponent and to the applicant an opportunity of being heard 
on the opposition. 
(2) Subject to subsection (1), the proceedings  for dealing with the opposition shall be in 
accordance with the Regulations. 
 
Decision 
39. Unless the proceedings are discontinued or dismissed , the Registrar shall, at the end, decide — 
(a) to refuse to register the trade mark; or IP/N/1/LCA/T/1 
Page 22  
 
 (b) to register the trade mark, with or without co nditions or limitations, in respect of the goods or 
services or both then specified in the application;  
having regard to the extent, if any, to which any ground on which the application was opposed has 
been established. 
 
Appeal 
40. An applicant or opponent may appeal to the High Court against a decision of the Registrar under 
section 39. 
 
Division 2 
Grounds for opposing registration 
 
Registration may be opposed on same grounds as for rejection 
41. The registration of a trade mark may be opposed on any of the grounds on which an application 
for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that 
the trade mark cannot be represented graphically. 
 
Applicant not owner of trade mark 
42. The registration of a trade mark may be opposed on the ground that the applicant is not the owner 
of the trade mark. 
 
Applicant not intending to use trade mark 
43. The registration of a trade mark may be opposed on the ground that the applicant does not intend  
(a) to use, or authorise the use of, the trade mark in Saint Lucia; or 
(b) to assign the trade mark to a body corporate for use by the body corporate in Saint Lucia; 
in relation to the goods or services or both specified in the application. 
 
Trade mark similar to trade mark that has acquired a reputation 
44. The registration of a trade mark in respect of particular goods or services may be opposed on the 
ground that — 
(a) it is substantially identical with, or deceptively si milar to, a trade mark that, before the priority 
date for the registration of the first-mentioned trad e mark in respect of those goods or services, had 
acquired a reputation in Saint Lucia; and 
(b) because of the reputation of that other trade mark , the use of the first-mentioned trade mark would 
be likely to deceive or cause confusion. 
 
Trade mark containing or consisting  of a false geographical indication 
45.— (1) The registration of a trade mark in respect of particular goods may be opposed on the 
ground that the trade mark contains or consists of  a sign that is a geographical indication for other 
goods originating in — (a) a country, or in a region or locality in a country, other than the country in which the relevant goods 
originated; or 
 (b) a region or locality in the country in which the re levant goods originated other than the region or 
locality in which the rele vant goods originated. 
(2) An opposition on a ground referred to in s ubsection (1) fails if th e applicant establishes 
that — (a) the relevant goods originated in the country, region or locality identified by the geographical 
indication; 
(b) the sign has ceased to be used as a geographical indication for the designated goods in the country 
in which the designated goods originated; or 
(c) the applicant, or a predecessor in title of the appli cant, used the sign in good faith in respect of the 
relevant goods, or applied in good faith for the re gistration of the trade mark in respect of the 
relevant goods, before — (i) the commencement of this Act; or  IP/N/1/LCA/T/1 
 Page 23 
 
 
 (ii) the day on which the sign was recognised as a geographical indication for the designated goods 
in their country of origin; whichever is the later; or 
(d) if the registration of the trade mark is being sou ght in respect of wine or spirits and the sign is 
identical with the name that, on the date of comme ncement of this Act, was, in the country in 
which the wine or spirits originated, the custom ary name of a variety of grapes used in the 
production of the other wine or spirits. 
(3) In addition to subsection (2), an oppositi on on a ground referred to in subsection (1) fails 
if the applicant establishes that — (a) although the sign is a geographical indication fo r the designated goods, it is also a geographical 
indication for the relevant goods; and 
(b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant 
goods in a way that is likely to deceive or confu se members of the public as to the origin of the 
relevant goods. 
(4) In this section — 
“relevant goods” means the particular goods for whic h registration is opposed pursuant to subsection 
(1); 
 “designated goods” means the other goods  referred to in subsection (1). 
 
Application etc. defective etc. 
46. The registration of a trade mark may be opposed on any of the following grounds — 
(a) that the application, or a document filed in supp ort of the application, was amended contrary to 
this Act; 
(b) that the Registrar accepted the application for registration on the basis of evidence or 
representations that were false in material particulars. 
 
PART 6 
 
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND 
OTHER DOCUMENTS 
 
Amendment of application for registration of trade mark 
47.— (1) The Registrar may, at the written request of th e applicant or of his or her agent, amend an 
application for the registration of a trade mark in accordance with section 48 or 49. 
(2) If — 
(a) an application for the registration of a tr ade mark may be amended under section 49; and 
(b) the applicant has not asked in writin g that the application be amended; 
the Registrar may, on his or her own initiative but in accordance with the Regulations, amend the 
application as necessary to remove any ground on which the application could be rejected. 
 
Amendment before notice of application are published 
48. If — 
(a) the notice of an application has not yet been published under section 14; and 
(b) the request for the amendment is made within the prescribed period; 
an amendment may be made to correct a clerical error or an obvious mistake. 
 
Amendment after notice of application has been published 
49.— (1) If the notice of an application has been published under section 14, the application may be 
amended as provided in this section. 
(2) An amendment may be made to the represen tation of the trade mark if the amendment 
does not substantially affect the identity of the tr ade mark as at the time when the notice of the 
application was published. 
(3) An amendment may be made to correct a mistak e of fact or an error in the classification of 
any goods or services specified in the application. 
(4) An amendment may be made to change the ty pe of registration sought in the application. IP/N/1/LCA/T/1 
Page 24  
 
 (5) An amendment may be made to any particular  specified in the application other than that 
referred to in subsection (4), unless the amendment woul d have the effect of extending the rights that, 
apart from the amendment, the applicant would ha ve under the registration if it were granted. 
 
Amendment of other documents 
50. The Registrar may, at the written request of the pe rson who has filed an application other than an 
application for the registration of a trade mark, a notice or other document for the purposes of this Act 
,or at the written request of the person's agent,  amend the application, notice or document — 
(a) to correct a clerical error or an obvious mistake; or 
(b) if the Registrar is of the opinion that it is fair  and reasonable in all the circumstances of the case to 
do so. 
 
Appeal 
51. An appeal lies to the High Court from a decision of the Registrar under this Part. 
 
PART 7 
REGISTRATION OF TRADE MARKS 
 
Division 1 
Initial registration 
 
Obligation to register 
52.— (1) The Registrar shall, within the period prescr ibed, register a trade mark that has been 
accepted for registration — (a) if there has been no opposition to the registration; or 
(b) if there has been an opposition, and if the Registrar’s decision, 
or in the case of an appeal against the Registrar's decision, the decision on appeal, is that the trade 
mark should be registered; 
(2) On registering a trade mark pursuant to sub section (1), the Registrar shall give it a number 
by which it may be identified. 
 
Registration—how effected 
53.— (1) The trade mark shall be registered — 
(a) in the name of the applicant for registration; 
(b) in respect of the goods or services or both specified in the application at the time of registration; 
and 
(c) subject to the conditions, if any, and the limitatio ns, if any, imposed by the Registrar in accepting 
the application for registration or deciding to register the trade mark. 
(2) The Registrar shall, in additio n to subsection (1), enter in the 
Register — 
(a) a graphical representation of the trade mark; 
(b) its registration number; and 
(c) any other particulars that are required by this Act to be entered in the Register. 
(3) If two or more persons applied together for the registration of the trade mark, the 
applicants shall be registered as joint owners of the trade mark. 
 
Colours in registered trade marks 
54.— (1) A trade mark may be registered with limitations as to colour. 
(2) The limitations pursuant to subsection (1) may be  in respect of the whole, or a part, of the 
trade mark. 
(3) To the extent that a trade ma rk is registered without limitations  as to colour, it is taken to 
be registered for all colours. 
 
Notification of registration 
55. When a trade mark has been re gistered, the Registrar shall—  IP/N/1/LCA/T/1 
 Page 25 
 
 
 (a) publish notice of the registration in the Gazette ; and 
(b) give to the registered owner of the trade mark a certificate of registration in an prescribed form. 
 
Date and term of registration 
56.— (1) Subject to subsection (2 ), the registration of a trade mark in respect of the goods or 
services or both in respect of which the trade mark is registered is taken to have had effect from and 
including the filing date in respect of the application for registration. 
(2) If — 
(a) an application for registration was in respect of  a trade mark whose registration had also been 
sought in one or more than one Convention country; 
(b) the applicant claimed a right of priority under sect ion 13 for the registration of the trade mark in 
respect of particular goods or services; and 
(c) the trade mark is registered under this Act; 
the registration of the trade mark in respect of those goods or services is taken to  have had effect if, an 
application to register the trade mark was made  in only one Convention country from and including 
the day on which the application was made in that count ry, or if applications to register the trade mark 
were made in more than one Convention country fr om and including the day on which the earliest of 
those applications were made. 
(3) Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, the 
registration of a trade mark expires ten years after th e filing date in respect of the application for its 
registration. 
 
Ceasing of registration 
57. The registration of a trade mark ceases if — 
(a) the trade mark is removed from the Register under section 62 or Part 9; or 
(b) the registration of the trade mark is cancelled. 
 
Disclaimers 
58.— ( 1) An applicant for the registration of a trad e mark, or the registered owner of a registered 
trade mark, may, by notice in writing given to the Re gistrar, disclaim any exclusive right to use, or 
authorise the use of, a specified part of the trade mark. 
(2) A disclaimer under subsection (1) affects only the rights given by this Act to the registered 
owner of the trade mark on registration of the trade mark. 
(3) The Registrar shall, on registering the trad e mark or on receiving notice of the disclaimer 
whichever is later, enter the particul ars of the disclaimer in the Register. 
(4) A disclaimer made in accordance with  subsection (1) shall not be revoked. 
 
Division 2 
 Renewal of registration Request for renewal 
59. Any person may, within the prescribed period befo re the registration of a trade mark expires, 
make a request in the prescribed form to the Registrar for the renewal of the registration. 
 
Notice of renewal date 
60. If, at the beginning of the prescribed period, the Registrar has not received a request for the 
renewal of the registration of the trade mark, the Registrar shall, in accordance with the Regulations, 
notify the registered owner of the trade mark that the renewal is due. 
 
Renewal before registration expires 
61.— (1) If a request for the renewal of the registrati on of a trade mark is made in accordance with 
section 59, the Registrar shall renew the registrati on for a period of ten years from the day on which 
the registration of the trade mark w ould expire if it were not renewed. 
(2) The Registrar shall give notice, in the pr escribed form, of a renewal granted pursuant to 
subsection (1) to the registered owner of the trade mark. 
 IP/N/1/LCA/T/1 
Page 26  
 
 Failure to renew 
62. If the registration of a trade mark is not renewed, then — 
(a) subject to sections 63 and 64, the registrati on ceases to have effect when it expires; and 
(b) unless the registration is renewed under section 63,  
the Registrar shall remove the trade mark from the Register twelve months after the day on which the 
registration expired. 
 
Renewal within 12 months after registration expires 
63. If, within twelve months after the registration of a trade mark has expired, a person makes a 
request to the Registrar, in accordance with section 59 , for the renewal of the registration of the trade 
mark, the Registrar shall renew the registration of the trade mark for ten years from the day on which 
the registration expired. 
 
Status of unrenewed trade mark 
64. If — 
(a) the registration of a trade mark has not been renewed; and 
(b) within twelve months after the registration expire d, an application for the registration of a trade 
mark is made by a person other than the person who was registered as the owner of the unrenewed 
trade mark; 
the unrenewed trade mark is taken to be a register ed trade mark for the purposes of the application. 
 
PART 8 
AMENDMENT AND CANCELLATION OF REGISTRATION 
 
Division 1 
Action by Registrar 
 
Correction of Register 
65. The Registrar may, on his or her own initiative, correct any error or omission made in entering in 
the Register any particular in respect of the registration of a trade mark. 
 
Adaptation of classification 
66. The Registrar may, in accordance with the Regulations, amend the Register, whether by making, 
removing or altering entries, for the purpose of ad apting the designation of the goods or services in 
respect of which trade marks are registered to refl ect any change that has occurred in the classification 
of goods or services for the purposes of this Act. 
 
Amendment of particulars of trade mark entered in Register 
67.— (1) Subject to Part II, the Registrar may, at the written request of the registered owner of a 
registered trade mark — 
(a) amend the representation of the trade mark as ente red in the Register if the amendment does not 
substantially affect the identity of the trade ma rk as at the time when th e notice of the acceptance 
of the application for the registration of the trade mark was published under section 18; 
(b) amend any particulars entered in the Register re lating to any goods or services in respect of which 
the trade mark is registered if the amendment does not have the effect of extending the rights that 
apart from the amendment the owner has under the registration; or 
(c) amend, or enter in the Register, any other partic ular in respect of the trademark if the amendment 
or entry does not have the effect of extending th e rights that, apart from the amendment or entry, 
the owner has under the registration. 
(2) An appeal lies to the High Court from a decision of the Registrar under subsection (1). 
 
Cancellation of registration 
68.— (1) The Registrar shall cancel the registrati on of a trade mark in accordance with the 
Regulations if the registered owner asks in  writing that the registration be cancelled.  IP/N/1/LCA/T/1 
 Page 27 
 
 
 (2) Before cancelling the registration of th e trade mark, the Registrar shall notify in 
accordance with the Regulations — (a) any person recorded under Part 11 as claiming a ri ght in respect of, or an interest in, the trade 
mark; and 
(b) if— 
(i)  an application has been made to the Registra r for a record of the assignment or transmission of 
the trade mark to a person to be ente red in the Register under section 93; and 
(ii) the assignment has not yet been recorded; th e person to whom the trade mark has been assigned 
or transmitted. 
 
Division 2 
Action by court 
 
Amendment to correct error or omission 
69. The High Court may, on the application of an aggrieved person, order that the Register be 
rectified by — (a) entering in the Register particulars that were wrongly omitted from it; or 
(b) correcting any error in an entry in the Register. 
 
Amendment or cancellation on ground of contravention of condition etc. 
70. The High Court may, on the application of an aggrieved person, order that the Register be 
rectified by — (a) cancelling the registration of a trade mark; or 
(b) removing or amending any entry in the Register relating to the trade mark; 
on the ground that a condition or limitation entered in the Register in relation to the trade mark has 
been contravened. 
 
Amendment or cancellation—loss or exclusive rights to use trade mark 
71.— (1) If section 8 or 9 applies in relation to a regi stered trade mark, the High Court may, on the 
application of an aggrieved person, but subject to subsection (2) and section 73, order that the 
Register be rectified by — (a) cancelling the registration of the trade mark; or 
(b) removing or amending any entry in the Register relating to the trademark; 
having regard to the effect of section 8 or 9, on the right of the registered owner of the trade mark to 
use the trade mark, or any sign that is part of the tr ade mark, in relation to particular goods or services. 
(2) If section 8 or 9 applies in relation to a tr ade mark because the trade mark contains a sign 
that — 
(a) has become generally accepted within the relevant trade as the sign that describes or is the name of 
an article, substance or service; or 
(b) describes or is the name of — 
(i) an article or substance that was formerly exploited under a patent; or 
(ii) a service that was formerly provided as a patented process; the High Court may decide not to make an order under subsection (1) and allow the trade mark to 
remain on the Register in respect of the article or  substance or goods of the same description, or the 
service or services of the same description, or subject to any condition or limitation that the High Court may impose. 
 
Amendment or cancellation—Other specified grounds 
72.— (1) Subject to subsection (2) and section 73, the High Court may, on the application of an 
aggrieved person, order that th e Register be rectified by — 
(a) cancelling the registration of a trade mark; 
(b) removing or amending an entry wrongly made or remaining on the Register; or 
(c) entering any condition or limitation affecting the re gistration of a trade mark that ought to be 
entered. IP/N/1/LCA/T/1 
Page 28  
 
 (2) An application, referred to in subsecti on (1), may be made on any of the following 
grounds — (a) any of the grounds on which the registration of  the trade mark could have been opposed under 
Division 2 of Part 5; 
(b) an amendment of the application for the registra tion of the trade mark was obtained as a result of 
fraud, false suggestion or misrepresentation; 
(c) because of the circumstances applying  at the time when the application for rectification is filed, the 
use of the trade mark is likely to deceive or cau se confusion for a reason other than one for which  
(i) the application for the registration of the tr ade mark could have been rejected under section 27 
or 28; or 
(ii) the registration of the trade mark could have been opposed under section 44; 
(d) the following circumstances apply — 
(i) the Registrar accepted the application for the re gistration of the trade mark because he or she 
was satisfied, having regard to the extent to wh ich the trade mark was inherently adapted to 
distinguish the goods or services of the applicant for registration from the goods or services of 
any other person and the intended use of the trad e mark, that the trade mark would distinguish 
those goods or services as being those of the applicant; 
(ii) the application for rectification is made  at least ten years after the filing date; or 
(iii)in the intervening period, the trade mark has not been used to an extent sufficient for it to 
distinguish, in fact, the goods or services of the registered owner from the goods or services of any other person; 
(e) the application is in respect of an entry in the Register and the entry was made, or has been 
previously amended, as a result of fraud, false suggestion or misrepresentation. 
 
Rectification may not be granted in certain ca ses if registered owner not at fault etc. 
73.— (1) The High Court may decide not to grant an application for rectification made — 
(a) under section 71 ; or 
(b) on the ground that the trade mark is liable to deceive or confuse; or 
(c) on the ground referred to in paragraph 72(2)( c); 
if the registered owner of the trade mark satis fies the High Court that the ground relied on by the 
applicant has not arisen through any act or fault of the registered owner. 
(2) In making a decision under subsection (1), the High Court — 
(a) shall also take into account any matter that is prescribed; and 
(b) may take into account any other ma tter that it considers relevant. 
 
Duties and powers of Registrar 
74.— (1) A person applying to the High Court under this Division shall give notice of the 
application to the Registrar. 
(2) Except for cases where the High Court directs the Registrar to appear, the Registrar may 
appear before the High Court and be heard at his or her discretion. 
(3) A person applying under this division shall gi ve to the Registrar a copy of any order made 
by the High Court under this Division and the Registrar shall comply with the order. 
 
Division 3 
Amendment of certificate of registration 
 
Amendment of certificate of registration 
75. If the Registrar amends any particular entered in the Register in respect of a trade mark, the 
Registrar may also amend the certificate of registrati on if he or she thinks it appropriate to do so. 
 
   
  IP/N/1/LCA/T/1 
 Page 29 
 
 
 PART 9 
REMOVAL OF TRADE MARK FROM REGISTER FOR NON -USE 
Application for removal of trad e mark from Register etc. 
 
76.— (1) A person aggrieved by the fact that a trade mark is or may be registered may, subject to 
subsection (3), apply to the Registrar for the trade mark to be removed from the Register. 
(2) An application pursuant to subsection (1) — 
(a) shall be as prescribed in the Regulations; and 
(b) may be made in respect of any or all of the go ods or services or both in respect of which the trade 
mark may be, or is, registered, (3) An application shall not be made to the Re gistrar under subsection (1) if an action concerning 
the trade mark is pending in the High Court, but th e person aggrieved may apply to the High Court for 
an order directing the Registrar to remove the trade mark from the Register. 
(4) An application under subsection (1) or (3) may be made if — 
(a) on the day on which the application for the registration of the trade mark was filed, the applicant 
for registration had no intention in good faith — (i) to use the trade mark in Saint Lucia; (ii) to authorise the use of the trade mark in Saint Lucia; or 
(iii) to assign the trade mark to a body corporate for use by the body corporate in Saint Lucia; 
in relation to the goods or services or both to whic h the application relates and the registered owner 
has not used the trade mark in Saint Lucia or has not  used the trade mark in good faith in Saint Lucia 
in relation to those goods or services or both at any time before the period of one month ending on the 
day on which the application is filed; or (b) the trade mark has remained re gistered for a continuous period of three years ending one month 
before the day on which the non-use application is filed, and, at no time during that period, the 
person who was then the registered owner — 
(i) used the trade mark in Saint Lucia; or (ii) used the trade mark in good faith in Saint Lucia; 
in relation to the goods or services or both to which the application relates. 
(5) If the right or interest on which a person relied to make an application under Subsection 
(1) or (3) to obtain the removal of a trade mark from the Register becomes vested in another person, 
the other person may, on giving notice of the relevant facts to the Registrar or the High Court as the case requires, be substituted for the firs t-mentioned person as the applicant. 
 
Time for making application 
77.— (1) Subject to subsection (2), an application fo r the removal of a trade mark from the Register 
may be made at any time after the filing date in r espect of the application for the registration of the 
trade mark. 
(2) An application on the ground referred to in section 76(4)( b) may not be made before a 
period of five years has passed from the filing date in  respect of the application for the registration of 
the trade mark. 
 
Referral to court 
78. If — 
(a) an application has been made to the Registrar under section 76(1); and 
(b) the Registrar is of the opinion that the matter should be decided by High Court; 
the Registrar may refer the matter to the High Cour t and the High Court may hear and determine the 
matter as if an application had b een made to it under section 76(3), 
 
Notification of application 
79.— (1) If an application has been made to the Re gistrar under section 76, the Registrar shall give 
notice of the application in accordance with the Regulations. 
(2) If the application, referred to in subsection (1), is in respect of a trade mark already 
entered on the Register, the Registrar shall publish a notice of the application in the Gazette.  IP/N/1/LCA/T/1 
Page 30  
 
 (3) If the application, referred to in subsecti on (1), is in respect of a trade mark whose 
registration is being sought, the Registrar is to  publish the notice of the application in the Gazette only 
if the trade mark is registered.  
Notice of opposition 
80.— (1) Any person may oppose an application un der section 76 by filing a notice of opposition 
with the Registrar or the High Court, as the case requires. 
(2) The notice of opposition — 
(a) shall be in a form approved by the Registrar or by the High Court; and 
(b) shall be filed in accordance with the Regula tions or the rules of court as the case may be. 
 
Removal of trade mark from the Register etc. if application unopposed 
81.— (1) If there is no opposition to an applica tion to the Registrar under section 76(1), the 
Registrar shall remove the trade mark from the Regi ster in respect of the goods or services or both 
specified in the application. 
(2) If there is no opposition to an application to the High Court under section 76(3), the High 
Court shall order the Registrar to remove the trade mark from the Register in respect of the goods or 
services or both specified in the application. 
(3) The High Court shall cause a copy of the order made under section (2) to be served on the 
Registrar and the Registrar shall comply with the order. 
 
Trade mark restored to Register if notice of opposition filed within extended time 
82. If — 
(a) the Registrar has removed a trade mark from th e Register under section 81(1) because no notice of 
opposition was filed within the period  provided under the Regulations; and 
(b) the Registrar subsequently extends the pe riod within which the notice may be filed; 
(c) a notice of opposition is filed within the extended period; 
the Registrar shall restore the trade mark to the Regi ster and the trade mark is taken not to have been 
removed from the Register. 
 
Proceedings before Registrar 
83. If an application to the Registrar is opposed, the Registrar shall deal with the matter in accordance 
with the Regulations. 
 
Burden on opponent to establish use of trade mark etc. 
84.— (1) In any proceedings relating to an opposed application, it is for the opponent to rebut — 
(a) any allegation made under section 76 (4)( a) that, on the day on which the application for the 
registration of the trade mark was filed, the appli cant for registration had no intention in good faith 
— (i) to use the trade mark in Saint Lucia; (ii) to authorise the use of the trade mark in Saint Lucia; or . 
(iii) to assign the trade mark to a body corporate for use by the body corporate in Saint Lucia;  
in relation to the goods or services or both to wh ich the opposed application relates (in this section 
referred to as “relevant goods or services or both”); or 
(b) any allegation made under section 76 (4)( a) that the trade mark has not, at any time before the 
period of one month ending on the day on which th e opposed application was filed, been used, or 
been used in good faith, by its registered owner in relation to the relevant goods or services or 
both; or 
(c) any allegation made under section 76 (4)( b) that the trade mark has not, at any time during the 
period of three years ending one month before  the day on which the opposed application was 
filed, been used, or been used in good faith, by  its registered owner in relation to the relevant 
goods or services or both.  IP/N/1/LCA/T/1 
 Page 31 
 
 
 (2) For the purposes of subsection (1)( b), the opponent is taken to have rebutted the allegation 
that the trade mark has not, at any time before the pe riod referred to in that subsection, been used, or 
been used in good faith, by its registered owner in re lation to the relevant goods or services or both if  
(a) the opponent has established that the trade mark or the trade mark with additions or alterations not 
substantially affecting its identity, was used in good faith by its registered owner in relation to 
those goods or services before that period; or 
(b) in a case where the trade mark has been assigned but a record of the assignment has not been 
entered in the Register — (i) the opponent has established that  the trade mark, or the trade mark with additions or alterations 
not substantially affecting its identity, was u sed in good faith by the assignee in relation to 
those goods or services before that period and th at use was in accordance with the terms of the 
assignment; and 
(ii) the Registrar or the High Court is of the opini on that it is reasonable, having regard to all the 
circumstances of the case, to treat the use of th e trade mark by the assignee before that period 
as having been a use of the trade mark in rela tion to those goods or services by the registered 
owner. 
(3) For the purposes of subsection (l)( c), the opponent is taken to have rebutted the allegation 
that the trade mark has not, at any time during the pe riod referred to in that subsection, been used, or 
been used in good faith, by its registered owner in re lation to the relevant goods or services or both if  
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations 
not substantially affecting its identity, was used in  good faith by its registered owner in relation to 
those goods or services during that period; or 
(b) in a case where the trade mark has been assigned but a record of the assignment has not been 
entered in the Register — (i) the opponent has established that  the trade mark, or the trade mark with additions or alterations 
not substantially affecting its identity, was used  in good faith by the assignee of the trade mark 
in relation to those goods or services during that  period and that use was in accordance with the 
terms of the assignment; and 
(ii) the Registrar or the High Court is of the opini on that it is reasonable, having regard to all the 
circumstances of the case, to treat the use of th e trade mark by the assignee during that period 
as having been a use of the trade mark in rela tion to those goods or services by the registered 
owner; or 
(c) the opponent has established that the trade mark was not used by its registered owner in relation to 
those goods or services or both during that period because of circumstances, whether affecting traders generally or only the registered owner of th e trade mark, that were an obstacle to the use of 
the trade mark during that period. 
 
Determination of opposed application-general 
85.— (1) Subject to subsection (3) and to section 86, if — 
(a) the proceedings relating to an opposed applica tion have not been discontinued or dismissed; and 
(b) the Registrar is satisfied that the grounds on which the application was made have been 
established; the Registrar may decide to remove the trade mark fr om the Register in respect of any or all of the 
goods or services or both to which the application relates. 
(2) Subject to subsection (3) and to section 86, if , at the end of the proceedings relating to an 
opposed application, the High Court is satisfied th at the grounds on which the application was made 
have been established, the High Court may order th e Registrar to remove the trade mark from the 
Register in respect of any or all of the goods or  services or both to which the application relates. 
(3) If satisfied that it is reasonable to do so, the Registrar or the High Court may decide that 
the trade mark should not be removed from the Regi ster even if the grounds on which the application 
was made have been established. 
 
 IP/N/1/LCA/T/1 
Page 32  
 
 Determination of opposed application-localised use of trade mark 
86.— (1) This section applies if an application for the removal of a trade mark from the Register is 
made on the ground referred to in section 76(4)( b) and — 
(a) the applicant is the registered owner of a trad e mark that is substantially identical with, or 
deceptively similar to, the challenged trade mark and is registered in respect of the goods or 
services or both specified in the application subject to the condition or limitation that the use of the 
trade mark is to be restricted to — (i) goods or services or both to be dealt with or provided in a particular place in Saint Lucia, 
otherwise than for export from Saint Lucia; or 
(ii) goods or services or both to be exported to a particular market; or 
(b) the Registrar or the High Court is of the opinion that such a trade mark may properly be registered 
in the name of the applicant with that condition or limitation. 
  (2) If the Registrar or the High Court is satisfied — (a) that the challenged trade mark has remained registered for the period referred to in section 
76(4)( b); and 
(b) that during that period there has been no use, or  no use in good faith, of the challenged trade mark 
in relation to — (i) goods or services dealt with or provided in the particular place referred to in subsection (1) ; or 
(ii) goods or services to be exported to the par ticular market referred to in subsection (1); 
the Registrar may decide, or the High Court may orde r, that the challenged trade mark should not be 
removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the High Court considers necessary to ensure that the 
registration does not extend to the use of the trade mark in relation to — 
(c) goods or services dealt with or provided in the specified place; or 
(d) goods or services to be exported to the specified market. 
(3) In this section — 
“challenged trade mark” means the trad e mark in relation to which an application for removal is made 
pursuant to subsection (1). 
 
Registrar to comply with order of court 
87. If the High Court makes an order under section 85 or 86 the High Court shall cause a copy of the 
order to be served on the Registrar and the Registrar shall comply with the order. 
 
Appeal 
88. An appeal lies to the High Court from a decision of the Registrar under section 85 or 86. 
 
Certificate—use of trade mark 
89. — (1) If in any proceedings relating to an oppo sed application the Registrar or the High Court 
has found that — (a) a trade mark has been used in good faith during a particular period; or 
(b) a trade mark has not been used during a partic ular period solely because of circumstances that 
were an obstacle to its use; 
the Registrar or the High Court shall, if so requested by the registered owner of the trade mark, give to 
the registered owner a certificate of those findings. 
(2) In any subsequent proceedings in whic h non-use of the trade mark is alleged — 
(a) the certificate is, on being produced, ev idence of the facts stated in it; and 
(b) if the proceedings are determined in favour of the opponent and, on or before filing the notice of 
opposition, the opponent notified the applicant of the contents of the certificate, the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent’s full costs paid 
by the applicant. 
 
 
 
  IP/N/1/LCA/T/1 
 Page 33 
 
 
 PART 10 
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS 
Assignment etc. of trade mark 
 
90.— (1) A registered trade mark, or a trade mark whose registration is being sought, may be 
assigned or transmitted in accordance with this section. 
(2) An assignment or transmission pursuant to s ubsection (1) may be partial, that is, it may 
apply to some only of the goods or services or both in respect of which registration is sought or the 
trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular 
area. 
(3) An assignment or transmission pursuant to subsection (1) may be with or without the 
goodwill of the business concerned in the relevant goods or services or both. 
 
Applications for record to be made of assignment  etc. of trade mark whose registration is sought 
91. If a trade mark whose registration is being sought is assigned or transmitted — 
(a) the applicant for the registration of the trade mark; or 
(b) the person to whom it has been assigned or transmitted; 
shall apply, in the prescribed form, to the Registra r for the assignment or transmission to be recorded. 
 
Recording of assignment etc. of trade mark whose registration is sought 
92.— (1) If an application made pursuant to section 91 complies with this Act the Registrar shall — 
(a) at or within, the time provided for in the Regul ations, record in the manner that the Registrar 
thinks fit, but not in the Register, the par ticulars of the assignment or transmission; and 
(b) publish notice in the prescribed form of the assi gnment or transmission in accordance with the 
Regulations. 
(2) On and after the day on which the Registra r records the particulars of the assignment or 
transmission, the person to whom the trade mark h as been assigned or transmitted is taken, for the 
purposes of this Act, to be the applican t for the registration of the trade mark. 
 
Application for record of assignment etc. of registered trade mark to be entered in Register 
93. If a registered trade mark is assigned or transmitted — 
(a) the person registered as the owner of the trade mark; or 
(b) the person to whom the trade mark has been assigned or transmitted; 
shall apply in the prescribed form to the Registrar fo r a record of the assignment or transmission to be 
entered in the Register. 
 
Recording of assignment etc. of registered trade mark 
94.— (1) If an application made pursuant to section 93 complies with this Act, the Registrar shall, 
at, or within, the time provided for in the Regulations — (a) enter the particulars of the assignment or transmission in the Register; and 
(b) register the person to whom the trade mark h as been assigned or transmitted as the owner of the 
trade mark in relation to the goods or services or both in respect of which the assignment or transmission has effect. 
(2) The particulars pursuant to subsection (1) ( a) are taken to have been entered in the 
Register on the day on which the application was file d, and the registration of the beneficiary as the 
owner of the trade mark pursuant to subsection (1) ( b) is taken to have had effect from and including 
that day, 
(3) The Registrar shall publish notice of — 
(a) the recording of the assignment or transmission; and 
(b) the registration of the beneficiary as the owner of the trade mark in the Gazette.  
(4) In this section “beneficiary” means the pers on to whom a trade mark has been assigned or 
transmitted. 
 
 
 IP/N/1/LCA/T/1 
Page 34  
 
 Notice of application to be given to person recorded as claiming interest in trade mark etc. 
95. If an application made under section 91 or 93 in re lation to the assignment or transmission of a 
trade mark complies with this Act, the Registrar shall notify in accordance w ith the Regulations any 
person recorded under Part 11 as claiming an interest  in, or a right in respect of, the trade mark. 
 
PART 11 
VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN 
RESPECT OF TRADE MARKS 
 
Division 1 
Preliminary 
 
Object of Part 
96. This Part makes provision — 
(a) for recording in the Register claims to interests in, and rights in respect of, registered trade marks 
that may not be so recorded under another Part; and 
(b) for the Registrar to keep a record of claims to interests in, and rights in respect of, trade marks for 
which registration is sought. 
 
Division 2 
Interests in, and rights in respect of, registered trade marks 
 
Application to have claims to interest etc. recorded 
97. If — 
(a) a person, other than the registered owner of the trad e mark, claims to have an interest in, or a right 
in respect of, a registered trade mark; and 
(b) this interest or right may not be recorded in the Register under Part 10; 
the person and the registered owner of the trade mark  may together apply in the prescribed form to the 
Registrar to have particulars of th e claim recorded in the Register. 
 
Record of claims to interest etc. 
98.— (1) If an application has been made in accord ance with section 97, the Registrar shall enter in 
the Register the particulars of the claim set out in the application. 
(2) If — 
(a) a trade mark is registered; and 
(b) immediately before the registration, particulars of a claim to an interest in, or right in respect of, 
the trade mark were recorded under Division 3; 
the Registrar shall enter those particulars in the Register. 
 
Amendment and cancellation 
99. The Regulations may provide for the amendment and cancellation of particulars entered in the 
Register under this Division. 
 
Record not proof etc. of existence of right etc. 
100. The fact that a record has been made in the Re gister under this Part that a person claims an 
interest in, or a right in respect of, a registered tr ade mark is not proof or evidence that the person has 
that right or interest. 
 
Division 3 
Interests in, and rights in respect of unregistered trade marks 
 
Application to have claims to interest etc. recorded 
101. If — 
(a) a person has applied for the registration of a trade mark; and 
(b) another person claims to have an interest in, or a right in respect of, the trade mark;  IP/N/1/LCA/T/1 
 Page 35 
 
 
 they may together apply in the prescribed form to th e Registrar for a record to be kept of the other 
person’s claim. 
 
Record of claims to interest etc. 
102. If an application has been made in accordance wi th section 101, the Registrar shall record in the 
manner that the Registrar thinks fit, but not in the Register, the particulars of the claim set out in the 
application. 
 
Amendment and cancellation 
103. The Regulations may provide for the amendment and cancellation of particulars recorded under 
this Division. 
 
PART 12 
INFRINGEMENT OF TRADE MARKS 
 
Infringement of trade mark 
104.— (1) A person infringes a registered trade mark if  the person uses as a trade mark a sign that is 
substantially identical with, or deceptively similar to , the trade mark in relation to goods or services in 
respect of which the trade mark is registered. 
(2) Subject to subsection (3) a person infringes a registered trade mark if the person uses as a 
trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in 
relation to — 
(a) goods of the same description as that of registered goods; 
(b) services that are closely related to registered goods; or 
(c) services of the same description as that of registered services; or 
(d) goods that are closely related to registered services. 
(3) A person is not taken to have infringed the tr ade mark if the person establishes that his or 
her use of the sign as in paragraphs ( a), (b), (c) or ( d) of subsection (2) is not likely to deceive or 
cause confusion. 
(4) A person infringes a registered trade mark if — 
(a) the trade mark is well known in Saint Lucia; and 
(b) the person uses as a trade mark a sign that is s ubstantially identical with, or deceptively similar to, 
the trade mark in relation to — 
(i)  unrelated goods; (ii) unrelated services; and 
(c) because the trade mark is well known, the sign would be likely to be taken as indicating a 
connection between the unrelated goods or services and the registered owner of the trade mark; 
and 
(d) for that reason, the interests of the register ed owner are likely to be adversely affected. 
(4) In deciding, for the purposes of paragraph (3)( a), whether a trade mark is well known in 
Saint Lucia, one shall take account of the extent to which the trade mark is known within the relevant 
sector of the public, whether as a result of the promo tion of the trade mark or for any other reason. 
(5) In this section — 
“registered goods” means goods in respect of which a trade mark is registered; 
“registered services” means services in respect  of which a trade mark is registered; 
“unrelated goods” means goods that are not of the same description as that of the registered goods or that are not so closely related to the registered services; “unrelated services” means services that are not of the same description as that of the registered 
service or that are not so closely related to the registered goods. 
 
Infringement of trade mark by breach of certain restrictions 
105.— (1) This section applies to a registered trade mark  if the registered owner, or an authorised 
user of the trade mark having power to do so, has caused to be displa yed on goods in respect of which 
the trade mark is registered, or on their package, or  on the container in which they are offered to the IP/N/1/LCA/T/1 
Page 36  
 
 public, a notice of prohibition, prohibiting any act that is under subsection (2) a prohibited act in 
relation to the goods. 
(2) Each of the following is a prohibited act — 
(a) applying the trade mark to registered goods, or using the trade mark in physical relation to them 
after the state condition get-up or packaging in which they were originally offered to the public has 
been altered; 
(b) altering or partially rem oving or obliterating, any representation of the mark applied to registered 
goods or used in physical relation to them; 
(c) if the trade mark has been applied to register ed goods, or used in physical relation to them, 
together with other matter indicating that the regist ered owner or authorised user has dealt with the 
goods, removing or obliterating, totally or in part , any representation of the trade mark without 
totally removing or obliterating the other matter; 
(d) applying another trade mark to registered goods or using another trade mark in physical relation to 
them; 
(e) if the trade mark has been applied to registered  goods or used in physical relation to them, using 
on the goods, or on the packaging or container of the goods, any matter that is likely to injure the 
reputation of the trade mark. 
(3) Subject to subsection (4) a person infringes a trade mark to which this section applies if 
the person — (a) is the owner of registered goods; and 
(b) is the course of trade, or with a view to dealing with the goods in the course of trade — 
(i) does an act that is prohibited under the notice of prohibition; or 
(ii) authorises that act to be done. 
(4) The trade mark is not infringed if the owner of the goods: 
(a) acquired them in good faith and without be ing aware of the notice of prohibition; or 
(b) became the owner of the goods by virtue of a title derived from a person who had so acquired 
them. 
(5) Notwithstanding section 104, a person does not infringe a registered trade mark when: 
(a) the person uses in good faith: 
(i) the person's name or the name of  the person's place of business; or 
(ii) the name of a predecessor in business of th e person of the name of the processor's place of 
business; or 
(b) the person uses a sign in good faith to indicate: 
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other 
characteristic, of goods or services; or 
(ii) the time of production of goods or of the rendering of services; or 
(c) the person uses the trade mark in good faith to indicate the intended purpose of goods or services; 
or 
(d) the person uses the trade mark for the purposes of comparative advertising; or 
(e) the person exercises a right to use a trade mark given to the person under this Act; or 
(f) the court is of the opinion that the person would ob tain registration of the trade mark in his or her 
name if the person were to apply for it; or 
(g) the person, in using a sign referred to in section 10 4(1), (2) or (3) in a manner referred to in that 
section, does not, because of a condition or limitation s ubject to which the trade mark is registered, 
infringe the exclusive right of the regi stered owner to use the trade mark. 
(6) Notwithstanding section 104, if a disclaimer has been registered in respect of a part of a 
registered trade mark, a person does not infringe the tr ade mark by using that part of the trade mark. 
 
Goods etc. to which registered trade mark has been applied by or with consent of registered owner 
106.— (1) Notwithstanding section 104, a person who u ses a registered trade mark in relation to 
goods that are similar to registered goods does not infr inge the trade mark if the trade mark has been 
applied to, or in relation to, the goods by, or with  the consent of, the registered owner of the trade 
mark.  IP/N/1/LCA/T/1 
 Page 37 
 
 
 (2) Notwithstanding section 104, a person who uses a registered trade mark in relation to 
services that are similar to registered services does not  infringe the trade mark if the trade mark has 
been applied in relation to the services by, or with the consent of, the registered owner of the trade 
mark. 
 
Prior use of identical trade mark etc. 
107.— (1) A person does not infringe a registered trade mark by using an unregistered trade mark 
that is substantially identical with, or deceptively si milar to, the registered trade mark in relation to — 
(a) goods similar to registered goods ; 
(b) services closely related to registered goods; 
(c) services similar to registered services; 
(d) goods closely related to registered services; 
if the person, or the person and the person’s pred ecessor in title, have continuously used in the course 
of trade the unregistered trade mark in relation to those goods or services from a time before the 
date of registration of the registered trade mark, or  the date the registered owner of the registered 
trade mark, or a predecessor in title, or a person w ho was a registered user of the trade mark under 
the repealed Acts, first used the trade mark, whichever is earlier. 
(2) If the unregistered trade mark has continuously been used only in a particular area of Saint 
Lucia, subsection (1) applies only to the use of  the trade mark by the person in that area. 
 
What courts may hear action for infr ingement of registered trade mark 
108.— (1) An action for an infringement of a registered trade mark may be brought in High Court. 
(2) Subsection (1) does not prevent an action for infringement of a registered trade mark from 
being brought in any other court that has jurisdiction to hear the action. 
 
What relief can be obtained from court 
109. The relief that a court may grant in an action for an infringement of a registered trademark 
includes — (a) an injunction, which may be granted subject to any condition that the court thinks fit; and 
(b) at the option of the plaintiff but subject to  section 110, damages or an account of profits. 
 
Special case—plaintiff not entitled to damages etc. 
110. If — 
(a) in an action for the infringement of a trade mark  registered in respect of particular goods or 
services, the court finds that the defe ndant has infringed the trade mark; 
(b) the defendant has applied under section 76(3) for an  order directing the Registrar to remove the 
trade mark from the Register in respect of those goods or services; and 
(c) the court finds that, because the trade mark has not during a particular period been used in good 
faith by its registered owner in relation to t hose goods or services, there are grounds under section 
76(4) for so removing the trade mark from the Register; 
the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the particular period. 
 
Circumstances in which action may not be brought 
111. If the registration of a trade mark is renewed, under section 63, within twelve months after it has 
expired, an action may not be brought in respect of an act that — 
(a) infringed the trade mark; and 
(b) was done after the registration had expired and before it was renewed. 
 
Groundless threats of legal proceedings 
112.— (1) If a person threatens to bring an action against another person on the ground that the 
threatened person has infringed — (a) a registered trade mark; or 
(b) a trade mark alleged by the person to be registered; IP/N/1/LCA/T/1 
Page 38  
 
 any person aggrieved by the threat may bring an actio n, either in the High Court or in any other court 
having jurisdiction, against the person making the threat. 
(2) The purpose of an action pursuant to subsection (1) is to — 
(a) obtain from the court a declaration that the defendant has no grounds for making the threat; 
(b) obtain from the court an injunction restraining the defendant from continuing to make the threat; 
or 
(c) recover any damages that the defendant has sustained because of the defendant’s conduct. 
(3) An action may be brought whether or not th e defendant is the registered owner, or an 
authorised user, of the trade mark alleged to have been infringed. 
(4) The court may not find in favour of the plaintiff if the defendant satisfies the court that — 
(a) the trade mark is registered; and 
(b) the acts of the threatened person in respect of which the defendant threatened to bring an action 
constitute an infringement of the trade mark. 
(5) An action may not be brought, or if brought  may not proceed, under this section if the 
registered owner of the trade mark, or an authorised  user of the trade mark having power to bring an 
action for infringement of the trade mark, with due diligence, begins and pursues an action against the 
threatened person for infringement of the trade mark. 
(6) In this Part — 
“plaintiff’ means the person bringing an  action pursuant to subsection (1) ; 
“defendant” means the person making a threat and against whom the action is brought pursuant to 
subsection (1); 
“threatened person” means the person against whom  an action has been threatened pursuant to 
subsection (1); 
 
Counterclaim by defendant in action on groundless threats 
113. If the defendant in an action brought under secti on 112 would be entitled to bring against the 
plaintiff an action for infringement of the registered trade mark — 
(a) the defendant may file in the court a counterclai m against the plaintiff for any relief to which the 
defendant would be entitled in the action for infringement; and 
(b) the provisions of this Act applicable to ac tions for infringement apply in relation to the 
counterclaim as if it were an infringement action brought by the defendant against the plaintiff. 
 
PART 13 
IMPORTATION OF GOODS INFRINGING SAINT LUCIAN TRADE MARKS 
 
Object of Part 
114. The object of this Part is to protect registered trade marks by making provision allowing the 
Comptroller to seize and deal with goods that are imported into Saint Lucia if the importation infringes, or appears to infringe, a registered trade mark. . 
 
Notice of objection to importation 
115.— (1) The registered owner of a registered trade mark may give to the Comptroller a notice in 
the form prescribed objecting to the importation afte r the date of the notice of goods that infringe the 
trade mark. 
(2) If — 
(a) the registered owner of the registered trade mark has not given a notice under subsection (1); or 
(b) any notice given under subsection (1) is no longer in force ;  
an authorised user of the trade mark having powe r to give a notice under subsection (1) may ask the 
registered owner to give such a notice in respect of the trade mark. 
(3) If the registered owner does not comply with  the request within the prescribed period, the 
authorised user may give the notice to the Comptroller together with — (a) any document prescribed for the purposes of subsection (1); and 
(b) any other prescribed document.  IP/N/1/LCA/T/1 
 Page 39 
 
 
 (4) A notice given by the registered owner of a trade mark remains in force for two years 
from the day on which the notice is given unless it is revoked, before the end of that period, by notice in writing given to the Comptroller by the person who is then the registered owner of the trade mark  
(5) A notice given by an authorised user of the trade mark remains in force for two years 
unless it is revoked, before the end of that period, by notice in writing given to the Comptroller — 
(a) if the authorised user has power to revoke  the notice, by the authorised user; or 
(b) in any other case, by the person who is th en the registered owner of the trade mark. 
 
Comptroller may seize goods infringing trade mark 
116.— (1) This section applies to goods manufactured outside Saint Lucia that — 
(a) are imported into Saint Lucia; and 
(b) are subject to the control of Customs under the Customs (Control and Management) Act 2000,  
No. 23. 
(2) If goods to which this section applies — 
(a) have applied to them or in relation to them a sign that, in the opinion of the Comptroller, is 
substantially identical with, or deceptivel y similar to, a notified trade mark; and 
(b) are goods in respect of which the notified trade mark is registered; 
the Comptroller shall seize the goods unless he or she is satisfied that there are no reasonable grounds 
for believing that the notified trade mark is infringed by the importation of the goods. 
(3) The Comptroller may decide not to seize the goods if he or she has not been given by the 
objector, or by one or more of the objectors, security  in an amount that he or she considers sufficient 
to repay to the Government the expense that may be incurred by the Government if the goods were 
seized. 
(4) Goods seized under this section shall be kept in a secure place as directed by the 
Comptroller. 
 
Notice of seizure 
117. The Comptroller shall, as soon as practicable - 
(a) give, either personally or by post, to the d esignated owner of any seized goods a notice in writing 
identifying the goods and stating that th ey have been seized under section 116; and 
(b) give, either personally or by post, to the objector, or to each objector, a notice in writing— 
(i)  identifying the goods and stating that they have been seized under section 116; (ii) giving the full name and address of the desi gnated owner of the goods and any information that 
the Comptroller has and that he or she believes,  on reasonable grounds, to be likely to help the 
objector to identify the importer of the goods; and 
(iii) stating that the goods will be released to th e designated owner unless the objector or one of the 
objectors, as the case requires, intends to bring an  action for infringement of the notified trade 
mark in respect of the goods, and gives to the Comptroller notice in writing of the intended action, within the period of ten working days afte r he or she has been given the notice or, if the 
Comptroller extends that period under secti on 120 (1), within the extended period. 
 
Forfeiture of goods 
118.— (1) The designated owner of any seized goods may, at any time before an objector starts an 
action for infringement of a notified trade mark in  respect of the goods, consent to the goods being 
forfeited to the Government by giving notice in  writing to that effect to the Comptroller. 
(2) If the designated owner gives such a notice,  the goods are forfeited to the Government. 
 
Release of goods to owner-no action for infringement 
119.— (1) The Comptroller shall releas e the seized goods to their designated owner if, within the 
action period, the objector has not, or none of the objectors has — 
(a) brought an action for infringement of the notified trade mark in respect of the goods; and 
(b) given to the Comptroller notice in writing of the action. 
(2) The Comptroller shall also  release the seized goods to their designated owner if — IP/N/1/LCA/T/1 
Page 40  
 
 (a) before the end of the action period, the objector or each of the objectors has, by notice in writing 
to the Comptroller, consented to the release of the goods; and 
(b) at that time — 
(i) the objector has not, or none of the objectors has, brought an action for infringement of the 
notified trade mark in respect of the goods; or 
(ii) any action brought by an objector has been withdrawn. 
(3) The Comptroller may rel ease the seized goods to their designated owner at any time 
before the end of the action period if — (a) the Comptroller, having regard to information that has come to his or her knowledge after the 
goods were seized, is satisfied that there are no reasonable grounds for believing that the notified 
trade mark has been infringed by the importation of the goods; and 
(b) the objector has not, or none of the objectors has, brought an action for infringement of the 
notified trade mark in respect of the goods. 
(4) In this section — 
“action period”, in relation to seized goods, means — 
(a) if there is only one objector to the importation of the goods, the period within which the objector 
may bring an action for infringement of the registered trade mark in respect of goods under section 120(1); or 
(b) if there is more than one objector to the importation of the goods-the period beginning on the 
earliest day on which an objector may bring an ac tion for infringement of th e registered trade mark 
in respect of the goods under section 120 (1) and en ding at the end of the last day on which an 
objector may bring such an action under section 120 (1). 
 
Action for infringement of trade mark 
120.— (1) An objector may bring an action for infringement of a notified trade mark in respect of 
seized goods and give notice of it to the Comptroller — (a) if paragraph ( b) does not apply within the period of one month from the date of the notice given to 
the objector in respect of the goods under section 117; or 
(b) if— 
(i) the objector has, before the end of the period specified in paragraph (a), applied in writing to 
the Comptroller for an extension of that period; and 
(ii) the Comptroller, being satisfied that in the circumstances of the case it is fair and reasonable to 
do so, has extended that period for a number of working days not exceeding ten; 
within the period as so extended by the Comptroller. 
(2) The court hearing an action brought pursuant to subsection (1)— 
(a) may, on the application of a person, allow the pe rson to be joined as a defendant to the action; and 
(b) shall allow the Comptroller to appear and be heard. 
(3) In addition to any relief that the court ma y grant apart from this section, the court may — 
(a) at any time, if it thinks it just, order that th e seized goods be released to their designated owner 
subject to the conditions, if any, that the court considers fit to impose; or 
(b) order that the seized goods be forfeited to the Government. 
(4) If — 
(a) the court decides that the trade mark was not infringed by the importation of the goods; and 
(b) the designated owner of the goods, or any other defendant, satisfies the court that he or she has 
suffered loss or damage because the goods were seized; 
the court may order the objector to pay to the desi gnated owner or other defe ndant compensation, in 
the amount determined by the court, for any part of that loss or damage that is attributable to any 
period beginning on or after the day on which the action was brought. 
(5) If, after three months from the day on which the action was brought, there is not in force at 
any time an order of the court preventing the goods from being released, the Comptroller shall release 
the goods to their designated owner. 
(6) If the court orders that the goods be released , the Comptroller shall, subject to section 123, 
comply with the order.  IP/N/1/LCA/T/1 
 Page 41 
 
 
 Action for infringement  by authorised user 
121. If an authorised user of a notified trade mark is an objector in relation to any seized goods, the 
authorised user may start an action for the infringe ment of the trade mark in respect of the goods 
within the required period without first ascertaining whether the registered owner is willing to bring 
the action. 
 
Disposal of forfeited goods 
122. If — 
(a) goods are forfeited to the G overnment under section 118; or 
(b) the court orders under section 120 that goods be forfeited to the Government; 
the goods are to be disposed of as the Comptroller directs. 
 
Power of Comptroller to retain control of goods 
123. Notwithstanding this Part, the Comptroller — 
(a) shall not release, or dispose of, any seized goods; or 
(b) shall not take any action in relation to the goods to give effect to any order of a court under section 
120; 
if the Comptroller is required or allowed to retain control of the goods under any other law in force in 
Saint Lucia. 
 
Insufficient security 
124. If security given under section 116(3) by the objector or objectors who gave notice under section 
115 in respect of a trade mark is not sufficient to  meet the expenses incurred by the Government as a 
result of the action taken by the Comptroller under th is Part because of the notice, the amount of the 
difference between those expenses and the amount of security — 
(a) is a debt due by the objector, or by the object ors jointly or each of them separately, to the 
Government; and 
(b) may be recovered by an action taken in a court of competent jurisdiction. 
 
Government not liable for loss etc. suffered because of seizure 
125. The Government is not liable for any loss or damage suffered by a person — 
(a) because the Comptroller seized, or failed to seize, goods under this Part; or 
(b) because of the release of any seized goods. 
 
Power to require information 
126.— (1) If goods that may be seized under this Part are imported into Saint Lucia, and the 
Comptroller, relying on information received, is sa tisfied on reasonable grounds that the use of a trade 
mark applied to or in relation to those goods is fraudulent, the Comptroller may ask the importer of 
the goods or an agent of the importer — 
(a) to produce any document in his or her possession relating to the goods; and 
(b) to give information about— 
(i) the name and address of the person by whom the goods were consigned to Saint Lucia; and 
(ii) the name and address of the person in Sa int Lucia to whom the goods were consigned. 
(2) If the importer or his or her agent intenti onally or recklessly fails to comply with the 
request within the prescribed period, the importer or agent commits an offence and is liable on 
conviction to a fine of ten thousand dollars. 
 
PART 14 
OFFENCES 
 
Falsifying etc. a registered trade mark 
127.— (1) A person shall not, intentionally or recklessl y, falsify or unlawfully remove a trade mark 
that has been applied — 
(a) to any goods that are being, or are to be, dealt with or provided in the course of trade; or IP/N/1/LCA/T/1 
Page 42  
 
 (b) in relation to any goods or services that are being, or are to be, dealt with or provided in the course 
of trade; 
knowing that the trade mark is registered or reckl ess of whether or not the trade mark is registered. 
(2) A person falsifies a registered trade mark if the person — 
(a) alters or defaces it; 
(b) makes any addition to it; or 
(c) partly removes, erases or obliterates it; without the permission of the registered owner, or an authorised user, of the trade mark and without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court. 
(3) A person unlawfully removes a registered trad e mark if the person wholly removes, erases 
or obliterates it — 
(a) without the permission of the registered owner, or an authorised user, of the trade mark; and 
(b) without being required or authorised to do so by this  Act, a direction of the Registrar or an order of 
a court. 
 
Falsely applying a re gistered trade mark 
128.— (1) A person shall not, intentionally or reckl essly falsely apply a registered trade mark — 
(a) to goods that are being, or are to be, dealt with or provided in the course of trade; or 
(b) in relation to goods or services that are being, or are to be, dealt with or provided in the course of 
trade; knowing that the trade mark is registered or reckl ess of whether or not the trade mark is registered. 
(2) A person falsely applies a registered trade mark to goods, or in relation to goods or 
services if the person applies the trade mark or a sign substantially identical with it to the goods or in 
relation to the goods or services without — 
(a) the permission of the registered owner, or of  an authorised user, of the trade mark; and 
(b) being required or authorised to do so by this Act,  a direction of the Registrar or an order of a court. 
 
Manufacture and possession of die etc. for use in commission of offence 
129.— (1) A person shall not make a die, block, machine or instrument— 
(a) knowing that it is likely to be used for, or in  the course of, committing an offence against section 
127 or 128; or 
(b) reckless of whether or not it is likely to be u sed for, or in the course of, committing an offence 
against section 127 or 128. 
(2) A person shall not draw, or program a computer or other device to draw, a registered trade 
mark or part of a registered trade mark — 
(a) knowing that the trade mark or part of the trade ma rk is likely to be used for, or in the course of, 
committing an offence against section 127 or 128; or 
(b) reckless of whether or not the trade mark or part of  a trade mark is likely to be used for, or in the 
course of, committing an offence against section 127 or 128. 
(3) A person shall not intentionally have in his or her possession, or dispose of — 
(a) a die, block, machine or instrument; 
(b) a computer, or other device, programmed to draw a registered trade mark or part of a registered 
trade mark; or 
(c) a representation of a registered trade mark or of part of a registered trade mark knowing that, or 
reckless of whether or not, the die, block, machine, instrument, computer, device or representation is likely to be used for, or in the course of , committing an offence against section 127 or 128. 
 
Selling etc. goods with false marks 
130. A person shall not intentionally — 
(a) sell goods; or 
(b) expose goods for sale; or 
(c) have goods in his or her possession for the purpose of trade or manufacture; or 
(d) import goods into Saint Lucia for the purpose of trade or manufacture;  IP/N/1/LCA/T/1 
 Page 43 
 
 
 knowing that, or reckless of whether or not a falsified registered trade mark is applied to them or in 
relation to them, or a registered trade mark has b een unlawfully removed from them, or a registered 
trade mark is falsely applied to them or in relation to them. 
 
Penalty for offence under section 127, l28, 129 or 130 
131. A person who contravenes section 127, 128, 129 or 130 commits an offence and is liable upon 
conviction to a fine not exceeding two hundred and fifty thousand dollars. 
 
False representations regarding trade marks 
132.— (1) A person shall not intentionally or recklessl y make a representation to the effect that a 
trade mark is a registered trade mark unless the pe rson knows, or has reas onable grounds to believe, 
that the trade mark is registered in Saint Lucia. 
(2) A person shall not intentionally or recklessly make a representation to the effect that a part 
of a registered trade mark is registered as a trade mark unless the person knows, or has reasonable 
grounds to believe, that the part is registered as a trade mark in Saint Lucia. 
(3) A person shall not intentionally or recklessl y make a representation to the effect that a 
trade mark is registered in respect of goods or services unless the person knows, or has reasonable 
grounds to believe, that the trade mark is regist ered in Saint Lucia in respect of those goods or 
services. 
(4) A person shall not intentionally or recklessl y make a representation to the effect that the 
registration of a trade mark gives, exclusive rights to use the trade mark in  circumstances in which, 
having regard to conditions or limita tions entered in the Register, the registration does not give those 
rights unless the person has reasonable grounds to be lieve that the registration does give those 
exclusive rights. 
(5) For the purposes of this section, the use in Sa int Lucia in relation to a trade mark of the 
word registered, or of any other word or any symbol  referring, either expressly or by implication, to 
registration is taken to be a representation that the trad e mark is registered in Saint Lucia in respect of 
the goods or services in relation to which it is used ex cept if the trade mark is registered in a country 
other than Saint Lucia in respect of those goods or services and — (a) the word or symbol by itself indicates that the trad e mark is registered in that other country or in a 
country outside Saint Lucia; or 
(b) the word or symbol is used, together with other words or symbols of the same or a bigger size, to 
indicate that the trade mark is registered in that other country or in a country outside Saint Lucia; or 
(c) the word or symbol is used in relation to goods that are to be exported to that country. 
(6) A person who contravenes a provision of  this section commits an offence and upon 
conviction is liable to a fine of ten thousand dollars. 
 
False entries in Register etc. 
133.— (1) A person shall not intentionally — 
(a) make a false entry in the Register; 
(b) cause a false entry to be made in the Register; or 
(c) tender in evidence a document that falsely purports to  be a copy of, or an extract from, an entry in 
the Register or a document in the Registry of Companies and Intellectual Property. 
(2) A person who contravenes subsection (1 ) commits an offence and upon summary 
conviction is liable to a fine of one thousand dollars. 
 
Disobeying summons etc. 
134.— (1) A person — 
(a) who has been summoned to appear as a witness before the Registrar; and 
(b) to whom a reasonable sum has been tendered in payment for expenses; 
shall not, without reasonable excuse, fail to appear in answer to the summons. 
(2) A person — 
(a) who has been required by the Registrar to produce a document or any other thing; and IP/N/1/LCA/T/1 
Page 44  
 
 (b) to whom a reasonable sum has been tendered in payment for expenses; 
shall not, without reasonable excuse, fail  to produce the document or thing. 
(3) A person who contravenes subsection (1) or (2) commits an offence and upon summary 
conviction is liable to a fine of two hundred and fifty dollars. 
 
Refusing to give evidence etc. 
135.— (1) A person appearing before the Registrar as a witness shall not, without reasonable excuse  
(a) refuse to be sworn or to make an affirmation; or 
(b) refuse to answer questions that he or she is lawfully required to answer; or 
(c) fail to produce any document or thing that he or she is lawfully required to produce. 
(2) A person who contravenes subsection (1 ) commits an offence and upon summary 
conviction is liable to a fine of two hundred and fifty dollars 
 
Unauthorised persons not to act in trade mark matters 
136.— (1) A person shall not — 
(a) apply for, or obtain, on behalf of another person — 
(i) the registration of a trade mark; (ii) the making of any entry in the Register; or (iii) the amendment, cancellation, removal or restoration of any entry in the Register; or 
(b) prepare, or cause to be filed in accordance with this Act, a document necessary for another person 
to obtain or oppose — (i) the registration of a trade mark; (ii) the making of an entry in the Register; (iii) the amendment, cancellation, removal or restoration of any entry in the Register; or 
(c) give advice to another person about the validit y of the registration of a trade mark or the 
infringement of a trade mark, unless the person is an attorney-at-law. 
(2) A person who contravenes subsection (1 ) commits an offence and upon summary 
conviction is liable to a fine of ten thousand dollars. 
 
False representation about Registry of  Companies and Intellectual Property 
137.— (1) A person— 
(a) shall not — 
(i) place, or allow to be placed, on the build ing in which his or her office is situated; 
(ii) use when advertising his or her office or business; or (ii) place on a document, as a description of his or her office or business; 
the words “Registry of Companies and Intellectual Property” or words of similar import, whether 
alone or together with other words; or 
(b) shall not use in any other way, in connection w ith his or her business, words that would reasonably 
lead other persons to believe that his or he r office is, or is officially connected with, 
the Registry of Companies and Intellectual Property. 
(2) A person who contravenes subsection ( 1) commits an offence and upon summary 
conviction is liable to a fine of ten thousand dollars. 
 
Employee not to prepare documents etc. 
138.— (1) A public officer employed in an office of the Registry of Companies and Intellectual 
Property shall not prepare, or help prepare, a doc ument to be filed under this Act unless required or 
authorised to do so by this Act, or any other Ac t, including the Regulations under that Act, a written 
direction of the Registrar or an order of a court. 
(2) A public officer who contravenes subsection (1) is liable to disciplinary action by service 
commission which appointed him or her. 
 
Conduct of directors, servants and agents 
139.— (1) This section applies for the purposes of a prosecution for an offence under this Act.  IP/N/1/LCA/T/1 
 Page 45 
 
 
  (2) If it is necessary to prove the state of mind of a body corporate in relation to particular 
conduct, it is enough to show — (a) that the conduct was engaged in by a director, servant or agent of the body corporate within the 
scope of his or her actual or apparent authority; and 
(b) that the director, servant or agent had the state of mind. 
(3) Any conduct engaged in on behalf of a body corporate by a director, servant or agent of 
the body corporate within the scope of his or her act ual or apparent authority is taken to have been 
engaged in also by the body corporate, unless it proves that it took reasonable precautions and 
exercised due diligence to avoid the conduct. 
(4) If it is necessary to prove the state of mind of  an individual in relation to particular 
conduct, it is enough to show — 
(a) that the conduct was engaged in by a servant or ag ent of the individual within the scope of his or 
her actual or apparent authority; and 
(b) that the servant or agent had the state of mind. 
(5) Any conduct engaged in on behalf of an indi vidual by a servant or agent of the individual 
within the scope of his or her actual or apparent aut hority is taken to have been engaged in also by the 
individual, unless the individual establishes that he  or she took reasonable precautions and exercised 
due diligence to avoid the conduct. 
(6) In this section — 
“director”, in relation to a statutory body that is constituted by one or more members means the 
member, or any of the members, constituting the body; 
“engage in conduct” includes fail or refuse to engage in conduct; 
“state of mind”, in relation to a person, includes— (a) the person’s knowledge, intentio n, opinion, belief or purpose; and 
(b) the person’s reasons for the intention, opinion, belief or purpose. 
 
PART 15 
C
OLLECTIVE TRADE MARKS 
 
Object of Part 
140. This Part — 
(a) defines a collective trade mark; and 
(b) provides to what extent, and subject to what modi fications or additions, the provisions of this Act 
relating to trade marks apply to collective trade marks. 
 
Collective trade mark 
141. A collective trade mark is a sign used, or intend ed to be used, in relation to goods or services 
dealt with or provided in the course of trade by me mbers of an association to distinguish those goods 
or services from goods or services so dealt with or provided by persons who are not members of the association. 
 
Application of Act 
142.— (1) Subject to this Part, the provisions of this Act relating to trade marks, other than Part 10, 
apply to collective trade marks and so apply as if — 
(a) a reference to a trade mark included a reference to a collective trade mark; 
(b) a reference to a person doing something for the re gistration of a trade mark included a reference to 
an association doing that thing for the regi stration of the collective trade mark; and 
(c) a reference to a trade mark registered by a pe rson included a reference to a collective trade mark 
registered by an association. 
(2) For the purposes of this Act — 
(a) the use of a collective trade mark by a member of the association that is the applicant for the 
registration of the collective trade mark is taken to be a use of the collective trade mark by the 
applicant; and IP/N/1/LCA/T/1 
Page 46  
 
 (b) the use of a registered collective trade mark by a member of the association that is the registered 
owner of the collective trade mark is taken to be a use of the collective trade mark by the registered 
owner. 
(3) Section 25, applies in relation to a collectiv e trade mark as if a reference to the applicant 
were a reference to the members of the association th at applied for registration of the collective trade 
mark. 
 
Application for registration 
143. An application for the registration of a collectiv e trade mark shall be made by the association to 
which the mark belongs — 
 
Limitation on rights given by registered collective trade mark 
144. A member of an association in whose name a coll ective trade mark is registered does not have 
the right to prevent another member of the asso ciation from using the collective trade mark in 
accordance with the rules of the association, if any. 
 
Assignment etc. of collective trade mark 
145. A collective trade mark may not be assigned or transmitted. 
 
Infringement of collective trade mark 
146. In an action by an association in whose name a collective trade mark is registered seeking relief 
for infringement of the collective trade mark, th e association may take into account, in claiming 
damages, any damage or loss of profits sustained or incurred by the members of the association as a 
result of the infringement. 
 
PART 16 
CERTIFICATION TRADE MARKS 
 
Object of Part 
147. This Part — 
(a) defines a certification trade mark; 
(b) provides to what extent, and subject to what modi fications or additions, the provisions of this Act 
relating to trade marks apply to certification trade marks; and 
(c) outlines the role of the Registrar in the regulation of certification trade marks. 
 
Certification trade mark 
148. A certification trade mark is a sign used, or intende d to be used, to distinguish goods or services  
(a) dealt with or provided in the course of trade; and 
(b) certified by a person the owner of the certification trade mark, or by another person approved by 
that owner, in relation to quality, accuracy or so me other characteristic, including, in the case of 
goods, the origin, material or mode of manufacture; 
from other goods or services dealt with or provided in the course of trade but not so certified. 
 
Application of Act 
149. Subject to this Part, the provisions of this Act re lating to trade marks, other than subsections (6), 
(7), (8), (9) and (10) of section 2, sections 10, 11 (1) ( b), 17, 18, 25, 72 (2) ( d), 105 and 110, and Part 
9 and Part 17 apply to certificati on trade marks and so apply as if a reference to a trade mark included 
a reference to a certification trade mark. 
 
Rights given by registration of  a certification trade mark 
150. Section 4 applies in relation to a certification tr ade mark as if subsection (1) were omitted and the 
following subsection were substituted — 
“(1) If a certification trade mark is registered, the registered owner has, subject to this Part, the 
exclusive rights to use, and to allow other persons to  use, the certification trad e mark, in relation to the 
goods or services or both in respect of which the certif ication trade mark is registered. The registered  IP/N/1/LCA/T/1 
 Page 47 
 
 
 owner may, however, use the certification trade ma rk only in accordance with the rules governing the 
use of the certification trade mark.”. 
 
Rights of persons allowed to use certification trade mark 
151.— (1) Where the registered owner of a register ed certification trade mark allows another person 
to use the certification trade mark in relation to goo ds or services in respect of which it is registered, 
the approved user has a right to use the certificati on trade mark in relation to those goods or services 
in accordance with the ru les governing the use of certification trade mark. 
(2) In this Part — 
“approved user” means the person allowed to use a registered certification trade mark pursuant to 
subsection (1). 
 
Rules governing the use of certification trade marks 
152.— (1) A person who has filed an application for the registration of a certification trade mark 
shall file, in accordance with the Regulations, a copy of the rules governing the use of the certification 
trade mark, and any document prescribed under section 11(2) . 
(2) The rules shall include provisions regarding — 
(a) the person’s approved certifiers who may be approved for the purpose of certifying goods or 
services or both; 
(b) the cases in which goods or services are to be certified; 
(c) the conditions under which an approved user is to  be allowed to use the certification trade mark in 
relation to goods or services; 
(d) the use of the certification trade mark by the owner,  if he or she intends to use it, and any approved 
user; and 
(e) the settlement of any dispute arising from a refusal — 
(i) to certify goods or services; or 
(ii) to allow the use of the certification trade mark; and any other provision that the Registrar 
requires or permits to be inserted. 
(3) In this Part — 
“approved certifier” means a person approved for th e purpose of certifying goods or services or both 
pursuant to subsection (2). 
 
Grant of application to register 
153.— (1) If after examining an application made pursuant to this Part , the Registrar is satisfied that 
— (a) the application has been made  in accordance with this Act; 
(b) subject to subsection (2), the rules referred to in section 152 — 
(i) would not be detrimental to the public; and 
(ii) are satisfactory having regard to the criteria prescribed under section 152(2); 
(c) the applicant or the approved certifiers are comp etent to certify the goods or services or both in 
respect of which the certification trade mark is to be registered; 
(d) the trade mark is capable of distinguishing g oods or services certified by the applicant or an 
approved certifier from the goods or services not so certified; 
(e) there are no other grounds for rejecting the appli cation; the Registrar shall register the certification 
trade mark and issue a certificate to that effect  to the applicant and shall publish notice of the 
registration in the prescribed form in the Gazette. 
(2) In deciding, pursuant to subsection (1) ( d), whether or not a certification trade mark is 
capable of distinguishing goods or services certifie d by the applicant or an approved certifier, the 
Registrar shall take into account the extent to which — 
(a) the certification trade mark is inherently adapte d so to distinguish those goods or services; or 
(b) because of its use or of any other circumstance s the certification trade mark has become adapted 
so to distinguish those goods or services; 
(3) The Registrar may require the applicant to make amendments to any of the rules referred 
to in section 152 as the Registrar considers necessary. IP/N/1/LCA/T/1 
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 Refusal to register 
154.— (1) The Registrar may, subject to subsection (2),  reject an application made pursuant to this 
Part if he or she is not satisfied as to a ny of the grounds referred to in section 153(1). 
(2) The Registrar may not reject an application made pursuant to this Part without giving the 
applicant an opportunity to be heard. 
 
Variation of rules 
155.— (1) Subject to subsection (2), the rules govern ing the use of a registered certification trade 
mark may be varied in accordance with the Regulations. 
(2) The rules governing the use of a certification trade mark shall not be varied without the 
approval of the Registrar. 
(3) Before deciding to approve a variation in the rules governing the use of a certification 
trade mark the Registrar shall be satisfied that the rules as varied — (a) would not be detrimental to the public; 
(b) are satisfactory having regard to the cr iteria prescribed pursuant to section 152 (2)( b). 
(4) The Registrar shall — 
(a) notify the registered owner of the certification tr ade mark in, writing, of his or her decision to 
approve or not to approve the variation of the rules governing the use of a certification and trade mark; and 
(b) cause notice, if applicable, of any variati on in the rules, to be published in the Gazette.  
 
Rules to be available for inspection 
156. Rules governing the use of a registered certificati on trade mark must be available for inspection 
at the same time and in the same manner as the Register. 
 
Assignment of registered certification trade mark 
157.— (1) A registered certification trade mark shall not be assigned unless with the consent of the 
Registrar. 
(2) An application to the Registrar for his or  her consent to the assignment of a registered 
certification trade mark shall be in the prescribed form. 
(3) The Registrar may, having regard to the ma tters provided for under the Regulations, grant 
or refuse consent . 
(4) Appeal against a decision of the Registrar pursuant to this section lies to the High Court. 
 
Rectification of the Register by order of court 
158.— (1) Section 72 applies in relation to a certif ication trade mark as if the words “or on the 
ground that the trade mark is capable of distinguishing goods or services certified by the applicant or 
an approved certifier from goods or services not so certified” was added at the end of subsection 
(2)(a).  
(2) In addition to its powers under Division 2 of Part 8 as affected by subsection (1) in 
relation to certification trade marks, High Court ma y, on the application of a person aggrieved, order 
that the Register be rectified by cancelling the registration of a certification trade mark, or removing or amending an entry in the Register relating to the certification trade mark, on the ground that — 
(a) the registered owner or an approved certifier is no longer competent to certify any of the goods or 
services or both in respect of which the mark is registered; 
(b) the rules governing the use of the certificati on trade mark are detrimental to the public; or 
(c) the registered owner or an approved user has failed to comply with a provision of the rules 
governing the use of the certification trade mark. 
(3) Notice of an application to the High Court pur suant to subsection (1), shall be given to the 
Registrar. 
(4) Except for cases in which the High Court dir ects the Registrar to appear, the Registrar 
may appear before the High Court and be heard at his or her discretion. 
(5) A copy of any order made by the High C ourt under this section shall be given to the 
Registrar and the Registrar shall comply with the order.  IP/N/1/LCA/T/1 
 Page 49 
 
 
 Variation of rules by order of court 
159.— (1) The High Court may, on the application of  a person aggrieved, make such orders as it 
thinks fit for varying the rules governing the use of a certification trade mark. 
(2) Notice of an application to the High Court shall be given to the Registrar. 
 
Copy of order and rules 
160.— (1) A copy of an order made by the High Court under section 159 shall be given to the 
Registrar. 
(2) If the High Court orders that the rules ar e to be varied, the registered owner of the 
certification trade mark shall give to the Registrar a copy of the rules as varied to be certified by the 
Registrar as a true copy . 
 
PART 17 
DEFENSIVE TRADE MARKS 
 
Object of Part 
161. This Part — 
(a) provides for the registration of certain trade marks as defensive trade marks; and 
(b) provides to what extent, and subject to what modi fications or additions, the provisions of this Act 
relating to trade marks apply to defensive trade marks. 
 
Defensive trade mark 
162.— (1) If, because of the extent to which a registered trade mark has been used in relation to all or 
any of the goods or services in respect of which it is registered, it is likely that its use in relation to 
other goods or services will be taken to indicate th at there is a connection between those other goods 
or services and the registered owner of the trade ma rk, the trade mark may, on the application of the 
registered owner, be registered as a defensive trade mark in respect of any or all of those other goods 
or services. 
(2) A trade mark may be registered as a defensiv e trade mark in respect of particular goods or 
services even if the registered owner does not use or intend to use the trade mark in relation to those 
goods or services. 
(3) A trade mark may be registered as a defensiv e trade mark in respect of particular goods or 
services even if it is already registered otherwise th an as a defensive trade mark in the name of the 
applicant in respect of those goods or services. 
(4) A trade mark that is registered as a defensiv e trade mark in respect of particular goods or 
services may be subsequently registered otherwise th an as a defensive trade mark in the name of the 
registered owner in respect of the same goods or services. 
 
Application of Act 
163. Subject to this Part, the provisions of this Act, other than section 4(1), 11(1)( b), 25, 43, 72(2)( d), 
105 and 110, Part 9 and Part 16 apply to defensive tr ade marks and so apply as if a reference to a trade 
mark included a reference to a defensive trade mark. 
 
Additional grounds for rejecting application for registration or opposing registration 
164. In addition to any other ground on which — 
(a) an application for the registration of a trade mark  as a defensive trade mark may be rejected; or 
(b) the registration of a trade mark as a defensive tr ade mark may be opposed; the application shall be 
rejected or the registration may be opposed; 
(c) if the trade mark is not registered as a tr ade mark in the name of the applicant; or 
(d) in the case of a registered trade mark, if it is not li kely that the use of the trade mark in relation to 
the goods or services in respect of which its regist ration as a defensive trade mark is sought will be 
taken to indicate that there is a connection be tween those goods or services and the registered 
owner. 
 
 IP/N/1/LCA/T/1 
Page 50  
 
 Amendment or cancellation of registration by order of court 
165. Section 72 applies in relation to a defensive tr ade mark as if “or under section 164” were added 
at the end of subsection (2)( a). 
 
Cancellation of registration by Registrar 
166. The Registrar may cancel the registration of a tr ade mark as a defensive trade mark if the trade 
mark is not otherwise registered in the name of the registered owner of the defensive trade mark. 
 
PART 18 
JURISDICTION AND POWERS OF COURTS 
Jurisdiction of the High Court 
 
167.— (1) The High Court has jurisdiction with respect to matters arising under this Act. 
(2) The jurisdiction of the High Court to hear and determine appeals against decisions, 
directions or orders of the Registrar is excl usive of the jurisdiction of any other court . 
(3) A prosecution for an offence against this Act may not be started in the High Court. 
 
Transfer of proceedings 
168.— ( 1) A court in which an action or proceedi ng under this Act has been started may, on the 
application of a party made at any stage, by an order, transfer the action or proceeding to another 
court having jurisdiction to hear and determine the action or proceeding. 
(2) When a court transfers an action or proceeding to another court— 
(a) all relevant documents of record filed in the tr ansferring court shall be sent to the other court by 
the Registrar or other appropriate o fficer of the transferring court; and 
(b) the action or proceeding shall continue in the other court as if— 
(i) it had been started there; and 
(ii) all steps taken in the transferring c ourt had been taken in the other court. 
 
Appeals 
169.— (1) An appeal lies to the High Court against a judgment or order of lower court exercising 
jurisdiction under this Act. 
(2) Except with the leave of the Court of App eal, an appeal does not lie to the Court of 
Appeal against a judgment or order of a single judge of the High Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Registrar. 
(3) With the special leave of the High Court,  an appeal lies to the High Court against a 
judgment or order referred to in subsection (1). 
(4) Except as otherwise provided by this section, an appeal does not lie against a judgment or 
order referred to in subsection ( 1 ). 
 
Registrar may appear in appeals 
170. The Registrar may appear and be heard at the h earing of an appeal to the High Court against a 
decision or direction of the Registrar. 
 
Powers of High Court 
171. On hearing an appeal against a decision or direction of the Registrar, the High Court may do 
anyone or more of the following— (a) admit further evidence orally, or on affidavit or otherwise; 
(b) permit the examination and cross-examinati on of witnesses, including witnesses who gave 
evidence before the Registrar; 
(c) order an issue of fact to be tried as it directs; 
(d) affirm, reverse or vary the Registrar’s decision or direction; 
(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; 
(f) order a party to pay costs to another party. 
 
  IP/N/1/LCA/T/1 
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 PART 19 
ADMINISTRATION 
 
Registrar of Companies and Intellectual Property 
172. The Registrar has the powers and functions that ar e given to him or her under this Act or any 
other Act and shall be responsible fo r the administration of this Act. 
 
Registrar’s powers 
173. The Registrar may, for the purposes of this Act — 
(a) summon witnesses; 
(b) receive written or oral evidence on oath or affirmation; 
(c) require the production of documents or articles; and 
(d) award costs against a party to proceedi ngs brought before the Registrar; and 
(e) notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be 
brought to the person’s notice. 
 
Exercise of power by Registrar 
174. The Registrar may not exercise a power Under this Act in any way that adversely affects a 
person applying for the exercise of that power without first giving that person a reasonable 
opportunity of being heard. 
 
Registrar to act as soon as practicable 
175. If — 
(a) the Registrar is required Under this Act to do any act or thing; and 
(b) no time or period is provided within which the act or thing is to be done; 
the Registrar is to do the act or thing as soon as practicable. 
 
Deputy Registrar 
176.— (1) Subject to any direction by the Registra r, a Deputy Registrar has all the powers and 
functions of the Registrar, except the powers of delegation Under section 177. 
(2) A power or function of the Registrar, when  exercised by a Deputy Registrar, is taken to 
have been exercised by the Registrar. 
(3) The exercise of a power or function of the Registrar by a Deputy Registrar does not 
prevent the exercise of the power or function by the Registrar. 
(4) If the exercise of a power or function by th e Registrar is dependent on the opinion, belief 
or state of mind of the Registrar in relation to a ma tter, that power or function may be exercised by a 
Deputy Registrar on his or her opinion, belief or  state of mind in relation to that matter. 
(5) If the operation of a provision of this Act or another Act is dependent on the opinion, 
belief or state of mind of the Registrar in rela tion to a matter, that provision may operate on the 
opinion, belief or state of mind of a Deputy Registrar in relation to that matter. 
 
Delegation of Registrar’s powers and functions 
177.— (1) The Registrar may by signed instrument delegate all or any of his other powers or 
functions to -. 
(a) a prescribed person, or persons included in a pr escribed class, holding or performing the duties of 
an office in the Registry of Companies and Intellectual Property; or 
(b) a prescribed public officer, or public officer in cluded in a prescribed class, employed in the 
Registry of Companies and Intellectual Property. 
(2) A delegate shall, if so required by the in strument of delegation, exercise or perform a 
delegated power or function under the direction or supervision of— 
(a) the Registrar; or 
(b) a person specified in the instrument, bei ng a person referred to in subsection (1) ( a) or ( b). 
 
 
 IP/N/1/LCA/T/1 
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 PART 20 
T
HE REGISTER AND OFFICIAL DOCUMENTS 
 
The Register 
178.— (1) A Register of Trade Marks is to be kept  at the Registry of Companies and Intellectual 
Property. 
(2) The Registrar shall enter in the Re gister in accordance with this Act — 
(a) all particulars of registered trade marks, and a ll other matters that were on the old register when 
the repealed Acts were repealed; and 
(b) particulars of trade marks, certification trade marks, collective trade marks and defensive trade 
marks, and all other matters, that are requi red to be registered under this Act; and 
(c) other prescribed matters. 
(3) If two or more trade marks were entered as associated trade marks in the old register, no 
equivalent entry designating them as associated trade marks is to be made in the Register. 
(4) All particulars entered in the Register under subsection (2)( a) are taken to have been so 
entered at the commencement of this Act. 
 
Register may be kept on computer 
179.— (1) The Register may be kept in whole or in part by using a computer. 
(2) Any record of a particular or other matter made by using a computer for the purpose of 
keeping the Register is taken to be an entry in the Register. 
 
Inspection of Register 
180.— (1) The Register shall be available at the Re gistry of Companies and Intellectual Property for 
inspection by any person during the hours  when the Office is open for business. 
(2) If the Register, or any part of the Register, is kept by using a computer, subsection (1) is 
satisfied if a person who wants to inspect the Register  or that part of the Register is given access to a 
computer terminal from which he or she can read on a screen, or obtain a printed copy of, the particulars or other matters recorded in the Register or that part of the Register. 
 
Register 
181.— (1) The Register is prima facie evidence of any particular or other matter entered in it. 
(2) A copy of, or an extract from, the Register that is certified by the Registrar to be a true 
record or extract is admissible in any proceedings as if it were the original. 
(3) If the Register or a part of the Register is kept by using a computer, a document certified 
by the Registrar as reproducing in writing a computer r ecord of all or any of the particulars comprised 
in the Register or in that part of the Register is admissible in any pro ceedings as evidence of those 
particulars. 
 
Certified copies of documents 
182.— (1) A certificate signed by the Registrar and stating that — 
(a) anything required or permitted to be done by the Act or the Repealed Act was done or not done on, 
or had been done or not been done by, a specified date; 
(b) anything prohibited by the Act or the repealed Ac t was done or not done on, or had been done or 
not been done by, a specified date; or 
(c) a document was available for public inspection at the Registry of Companies and Intellectual 
Property on a specified date or during a specified pe riod; is prima facie evidence of the matters so 
stated. 
(2) A copy of, or an extract from, a documen t held in the Registry of Companies and 
Intellectual Property that is certified by the Registrar to  be a true copy or extract is admissible in any 
proceedings as if it were the original. 
 
 
  IP/N/1/LCA/T/1 
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 PART 21 
MISCELLANEOUS 
 
Division 1 
Applications and other documents 
 
Making and signing applications etc. 
183. An application, notice or request required or pe rmitted under this Act to be made or signed by a 
person shall be made or signed, on behalf of that person, by an attorney-at- law in accordance with the 
Regulations. 
 
Filing of documents 
184.— (1) A document is taken to be filed at the Regist ry of Companies and Intellectual property if it 
is filed at a sub-office of the Registry of Companies and Intellectual Property. 
(2) A document may be filed at the Registry of  Companies and Intellectual Property or any of 
its sub-offices by being delivered there — (a) personally; 
(b) by post; or 
(c) by any prescribed means. 
 
Withdrawal of application etc. 
185.— (1) A person who has filed an application, noti ce or request may withdraw it, in accordance 
with the Regulations, at any time while it is  still being considered by the Registrar. 
(2) If — (a) the right or interest on which the person relied to f ile the application, notice or request has become 
vested in another person; and 
(b) the other person notifies the Registrar in writing that the right or interest is vested in him or her; 
the other person may withdraw the application, notice or request as provided in subsection (1). 
 
Address for service 
186.— (1) The address for service of a person who has f iled an application, notice or request is — 
(a) the address for service stated in the application, notice or request; or 
(b) if the person subsequently notif ies in writing another address to th e Registrar, that other address. 
(2) Where a trade mark is registered, or a claim to  an interest in, or to a right in respect of, a 
registered trade mark that a person has is recorded  in the Register, the Registrar shall enter in the 
Register as the address for service of the registered owner or of the person — (a) if paragraph ( b) does not apply, the address given, or last given, by the registered owner or the 
person to the Registrar under subsection (1); or 
(b) if, before the Registrar registers the trade mark or records the claim to the interest or right, the 
registered owner or person gives in writing to the Registrar another address as his or her address 
for service, that other address. 
(3) The registered owner of a registered trade mark, or any person whose claim to an interest 
in, or to a right in respect of, a trade mark is r ecorded in the Register, sh all notify the Registrar in 
writing of any change in his or her address fo r service and the Registrar shall amend the 
Register accordingly. 
(4) The address for service of — 
(a) the registered owner of a registered trade mark; or 
(b) a person whose claim to an interest in, or to a ri ght in respect of, a trade mark is recorded in the 
Register; is the address set out from time to time in the Register as being the address for service of the 
registered owner or of the person. 
(5) An address for service shall be  an address in Saint Lucia. 
(6) If this Act provides that a document is to be served on, or given or sent to, a person — 
(a) the document may be left at, or sent by post to, the address for service of the person; or IP/N/1/LCA/T/1 
Page 54  
 
 (b) if the person does not have an address for servi ce, the document may be served on an agent of the 
person in Saint Lucia or may be sent by post to any address of the person in Saint Lucia that is 
known to the Registrar. 
(7) Subsection (6) does not affect the operation of section 23 of the Interpretation Act 1968, 
No. 18. 
 
Change of name 
187.— (1) If there is a change in the name of a pers on who has filed an application, notice or request, 
the person shall notify the Registrar in writing of the change. 
(2) If there is a change in the name of — 
(a) the registered owner of a registered trade mark; or 
(b) a person whose claim to an interest in, or to a ri ght in respect of, a trade mark is recorded in the 
Register; 
the registered owner or the person shall notify the Re gistrar in writing of the change and the Registrar 
shall amend the Register accordingly. 
 
Death of applicant etc. 
188.— (1) If an applicant for the registration of a trad e mark dies before registration is granted on the 
application, his or her legal representative may proceed with the application. 
(2) If, at any time after a trade mark is register ed, the Registrar is satisfied that the person in 
whose name the trade mark is registered had died , or, in the case of a body corporate, had ceased to 
exist, before registration was granted, the Regist rar may amend the Register by substituting for the 
name entered in the Register the name of the pers on who should be the registered owner of the trade 
mark. 
 
Division 2 
Proceedings before the Registrar or a court 
 
Description of registered trade mark 
189. In an indictment, information, pleading or pro ceeding relating to a registered trade mark, the 
trade mark may be identified by its registrati on number and it is not necessary to reproduce or 
describe the trade mark. 
 
Evidence of trade usage 
190. In an action or proceeding relating to a trade ma rk, evidence is admissible of the usage of the 
trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other 
persons. 
 
Death of party to proceeding before Registrar 
191. If a person who is party to a proceeding pending before the Registrar dies, the Registrar may — 
(a) on being so asked, substitute in the proceeding a nother person in the place of the deceased party if 
the Registrar is satisfied that the interest of th e deceased party has been tr ansmitted to that other 
person; or 
(b) allow the proceeding to continue without any subs titution if the Registrar is of the opinion that the 
interest of the deceased party is sufficien tly represented by the surviving parties. 
 
Costs awarded by Registrar 
192.— (1) The Registrar may award costs in respect of  the matters, and in the amounts, provided for 
in the Regulations against any party to proceedings brought before him or her. 
(2) A party desiring to obtain costs shall a pply to the Registrar in accordance with the 
Regulations. 
(3) If a party is ordered to pay the costs of anot her party, the costs may be recovered in a court 
of competent jurisdiction as a debt due by the first party to the other party. 
 
  IP/N/1/LCA/T/1 
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 Security for costs 
193. If a person who neither resides nor carries on business in Saint Lucia — 
(a) gives notice of opposition under this Act; or 
(b) applies to the Registrar under Part 9 for a trade mark to be removed from the Register; 
the Registrar may require the person to give secur ity for the costs of the proceeding and may, if 
security is not given, dismiss the proceeding. 
 
Division 3 
General 
 
Fees 
194.— (1) The Regulations may prescribe the fees to be  paid for the purposes of this Act and may 
prescribe different fees in respect of the doing of an act according to the time when the act is done. 
(2) prescribed fees are payable in  accordance with the Regulations. 
(3) If a fee is payable in respect of the doing of an act by the Registrar or Comptroller, he or 
she shall not do the act until the fee has been paid. 
(4) Subject to subsection (5), if — 
(a) a fee is payable in respect of the doing of an  act by a person other than the Registrar or the 
Comptroller; or 
(b) a fee is payable in respect of the filing of a document; 
the act is taken to have been done, or the document is  taken to have been filed, in spite of the failure 
to pay the fee. 
(5) If the Registrar or the Comptroller notifies the person concerned or his or her agent, in 
accordance with the Regulations, that the fee has not b een paid, the act is not taken to have been done, 
or the document is not taken to have been f iled, before the day on which the fee is paid. 
 
Extension of time 
195.— (1) If, because of an error or omission by a Registry of Companies and Intellectual Property, a 
relevant act that is required by this Act to be do ne within a certain time is not, or cannot be, done 
within that time, the Registrar sh all extend the time for doing the act. 
(2) If, because of — 
(a) an error or omission by the person concerned or by his or her agent; or 
(b) circumstances beyond the control of the person concerned; 
a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done 
within that time, the Registrar may, on applicati on made by the person concerned in accordance with 
the Regulations, extend the time for doing the act. 
(3) If — 
(a) a relevant act that a person is required by this Ac t to do within a certain time is not, or cannot be, 
done within that time; and 
(b) on application made by that person in accordance with the Regulations, the Registrar is of the 
opinion that special circumstances exist th at justify an extension of that time; 
the Registrar may extend the time for doing the act. 
(4) The time allowed for doing a relevant act ma y be extended, whether before or after that 
time has expired. 
(5) If an application is made under subsection (2) or (3) for an extension of time for more than 
three months, the Registrar shall publish no tice of the application in the Gazette. 
(6) A person may, as prescribed, oppose the granting of the application. (7) An appeal against the decision of the Regist rar not to extend the time for the doing of an 
act, lies to the High Court. 
(8) In this section — 
“relevant act” means — 
(a) any act, other than a prescribed act, done in relation to a trade mark; 
(b) the filing of any document, other than a prescribed document; or IP/N/1/LCA/T/1 
Page 56  
 
 (c) any proceedings, other than court proceedings. 
 
Publication of documents 
196. The Registrar may prepare, publish and sell docum ents relating to trade marks as the Registrar 
thinks fit. 
 
Use of trade mark for export trade 
197.— (1) If — 
(a) a trade mark is applied in Saint Lucia — 
(i) to, or in relation to goods that are to be exported from Saint Lucia; (ii) in relation to services that are to be exported from Saint Lucia.; or 
(b) any other act is done in Saint Lucia to goods to be exported from Saint Lucia or services to be 
exported from Saint Lucia which, if done in rela tion to goods or services to be dealt with or 
provided in the course of trade in Saint Lucia, w ould constitute a use of the trade mark in Saint 
Lucia; 
the application of the trade mark or the other act is  taken, for the purposes of this Act, to constitute 
use of the trade mark in relation to the goods to be exported from Saint Lucia or services to be 
exported from Saint Lucia. 
(2) Subsection (1) applies to an act done before  the commencement of this Act as it applies to 
an act done on or after that day, but it does not affect — 
(a) a decision of a court made before that day; or 
(b) the determination of an appeal from such a decision. 
 
Passing off actions 
198.— (1) Except as provided in subsection (2), this Act does not affect the law relating to passing 
off. 
(2) In an action for passing off arising out of th e use by the defendant of a registered trade 
mark of which he or she is the registered owner or an  authorised user and that is substantially identical 
with or deceptively similar to, the trade mark of th e plaintiff, damages may not be awarded against the 
defendant if the defendant satisfies the court- (a) that, at the time when the defendant began to use the trade mark, he or she was unaware, and had 
no reasonable means of finding out, that the trade mark of the plaintiff was in use; and 
(b) that, when the defendant became aware of the exis tence and nature of the plaintiff’s trade mark, he 
or she immediately ceased to use th e trade mark in relation to the goods or services in relation to 
which it was used by the plaintiff. 
 
Expenses 
199. Any expenses incurred pursuant to this Act sh all be a charge on the Consolidated Fund. 
 
Regulations 
200.— (1) The Minister may after consultation w ith the Registrar, make Regulations — 
(a) prescribing matters required or permitted by this Act to be prescribed; 
(b) prescribing matters necessary or convenient to be  prescribed for carrying out or giving effect to 
this Act; 
(c) prescribing matters necessary or convenient to  be prescribed for the conduct of any business 
relating to the Registry of Companies and Intellectual Property or a sub-office of the Registry of 
Companies and Intellectual Property. 
(2) Without limiting the generality of subsection (1), the Regulations may— 
(a) provide for appeals against decisions of the Registrar made Wider the Regulations; 
(b) require persons to make statutory declarations in  support of any application, notice or request filed 
under this Act; 
(c) provide for the making of a declaration, or the doi ng of an act, under this Act on behalf of a person 
who, because of infancy or physical or mental di sability, is unable to make the declaration or do 
the act;  IP/N/1/LCA/T/1 
 Page 57 
 
 
 (d) provide for the refund, in specific circumstances, of the whole or part of a fee paid under this Act; 
(e) provide for the remission of, or the exemption of  specified classes of persons from the payment of, 
the whole or part of a fee; 
(f) provide for the expenses and allowances to be paid to witnesses or persons attending at 
proceedings before the Registrar; 
(g) give power to the Registrar — 
(i) to require, in specified circumstances, a pe rson applying under Part 9 for a trade mark to be 
removed from the Register to give security for any costs that may arise from the proceedings; 
(ii) not to proceed with the application if security is not given; (iii) to refund to the applicant any amount given as security and not applied in settling costs 
awarded against the applicant; 
(h) provide for the destruction of documents relati ng to a trade mark at least ten years after the 
registration of the trade mark has ceased; 
(i) prescribe as penalties for offences against the Regulations fines not exceeding two hundred and 
fifty dollars; 
(j) make transitional or consequential provision as necessary or convenient because of the repeal of 
the repealed Acts and the enactment of this Act. 
 
Repeal 
201. The Merchandise Marks Ordinance Cap.193 and Title  X of the Commercial Code Cap. 244 are 
repealed. 
 
Transitional 
202.— (1) A trade mark that, immediately before the date of commencement of this Act, was 
registered under the repealed Acts are register ed trade marks for the purposes of this Act. 
(2) The registration of an existing trade mark  expires on the day on which it would have 
expired under the repealed Act if these Acts had not been repealed. 
(3) Division 2 of Part 7 applies in relation to the renewal of the registration of an existing 
trade mark. 
(4) If an application for registration, other a pplication, notice or request was pending under 
the repealed Acts, that application is to be dealt w ith in accordance with this Act and is taken to have 
been filed in accordance with this Act.  
Passed in the House of Assembly this 27th day of March, 2001. 
MATTHEW ROBERTS, 
Speaker of the House of Assembly. 
 
Passed in the Senate this 23rd day of March, 2001. 
HILFORD DETERVILLE, 
President of the Senate. 
 
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