BILL
ANACTto repeal and replace the Trade Marks Act,
Chap. 82:81 and to provide for the law relating to
trade marks and related matters
[Assented to 12th June, 2015]
WHEREAS it is enacted by section 13(1) of the
Constitution of the Republic of Trinidad and Tobago
(“the Constitution”) that an Act of Parliament to which
that section applies may expressly declare that it shall
have effect even though inconsistent with sections 4 and5 of the Constitution and, if any Act does so declare, itshall have effect accordingly:PreambleFifth Session Tenth Parliament Republic of 
Trinidad  and  Tobago
REPUBLIC  OF  TRINIDAD  AND  TOBAGO
Act No. 8 of 2015
[L.S.]
Legal Supplement Part A to the “Trinidad and Tobago Gazette”, Vol. 54,
No. 64, 16th June, 2015And whereas it is provided in section 13(2) of the
Constitution that an Act of Parliament to which that
section applies is one the Bill for which has been passed
by both Houses of Parliament and at the final vote
thereon in each House has been supported by the votesof not less than three-fifths of all the members of thatHouse:
And whereas it is necessary and expedient that the
provisions of this Act shall have effect even though
inconsistent with sections 4 and 5 of the Constitution:
E
NACTED by the Parliament of Trinidad and Tobago as
follows:
PART  I
PRELIMINARY
1.(1) This Act may be cited as the Trade Marks Act,
2015.
(2) This Act comes into operation on such date as is
fixed by the President by Proclamation.
2.This Act shall have effect even though
inconsistent with sections 4 and 5 of the Constitution. 
3.(1) In this Act, unless the context otherwise
requires—
“business” includes a trade or profession;
“business identifier” means any sign capable of
being represented graphically which is
used to identify any business; 
“certification mark” has the meaning assigned
to it in section 73(2);
“collective mark” has the meaning assigned to
it in section 64(2);
“Controller” means the Controller of the
Intellectual Property Office as referred tounder section 3 of the Patents Act;InterpretationAct inconsistent with
ConstitutionEnactment
Short title andCommencement
Chap. 82:76230 No. 8 Trade Marks 2015“Convention country” means—
(a)a country or territory, other than
Trinidad and Tobago, which is a—
(i) party to the Paris
Convention; or
(ii)member of the World
Trade Organization; and
(b)in any other provision of this Act, acountry or territory which is a—
(i) party to the Paris
Convention; or
(ii)member of the WorldTrade Organization;
“counterfeit goods” and “counterfeit trade
mark” have the meanings assigned to themin section 35;
“Court” means the High Court;
“dilution” in relation to a trade mark, means
the lessening of the capacity of the trade
mark to identify and distinguish goods orservices, regardless of whether there isany—
(a)competition between theproprietor of the trade mark and
any other party; or 
(b)likelihood of confusion on the partof the public; 
“earlier trade mark” means—
(a)a registered trade mark or aninternational trade mark(Trinidad and Tobago), theapplication for registration ofNo. 8 Trade Marks 2015 231which was made earlier than the
trade mark in question, takingaccount, where appropriate, of the
priorities claimed in respect of the
trade marks; or
(b)a trade mark which, at the date of
application for registration of thetrade mark in question or, whereappropriate, of the priority claimedin respect of the application, was awell-known trade mark, andincludes a trade mark in respectof which an application forregistration has been made andwhich, if registered, would be anearlier trade mark by virtue ofparagraph (a)subject to its being
so registered; 
“exclusive licence” means a licence, whether
general or limited, authorising the licenseeto the exclusion of all other persons,including the person granting the licence,to use a registered trade mark in themanner authorised by the licence, and theexpression “exclusive licensee” shall beconstrued accordingly;
“former Act” means the Trade Marks Act
repealed by section 141;
“geographical indication” has the meaning
assigned to it in section 2 of the
Geographical Indications Act;
“infringement proceedings” means proceedings
relating to the infringement of a registeredtrademark;
Chap. 82:81
Chap. 82:78232 No. 8 Trade Marks 2015“infringing goods, materials or articles” has the
meaning assigned to it in section 35;
“Intellectual Property Office” has the meaning
assigned to it in section 2 of the Patents
Act;
“International Classification” means the
classification according to the NiceAgreement Concerning the InternationalClassification of Goods and Services for thePurposes of the Registration of Marks, ofJune 15, 1957, as may be revised from timeto time;
“Minister” means the Minister with
responsibility for intellectual propertyrights;
“National Classification” means the system of
classification of goods utilised prior toOctober 20, 1994;
“Officer” has the meaning assigned under
section 2 of the Customs Act; 
“Paris Convention” means the Paris
Convention for the Protection of IndustrialProperty of March 20, 1883, as may berevised from time to time; 
“prescribed” means prescribed by the
Regulations; 
“priority date” means the date of the earlier
application that serves as the basis for theright of priority provided for in the ParisConvention;
“proprietor” means—
(a)in relation to a registered trademark, the person in whose namethe trade  mark is registered; orChap. 78:01No. 8 Trade Marks 2015 233(b)in relation to an unregistered
trade mark that is a well-knowntrade mark, the person to whomthe trade mark belongs;
“Register” means the Register referred to
in section 83;
“Regulations” means Regulations made
under section 123;
“sign” includes any letter, word, name,
signature, numeral, device, brand,
heading, label, ticket, shape, colour,aspect of packaging or anycombination thereof;
“trade” includes any business or
profession;
“trade mark” means, except in relation to
a certification trade mark, any sign
capable of being representedgraphically and which is capable ofdistinguishing goods or services dealtwith or provided in the course of tradeby a person, from goods or services sodealt with or provided by any otherperson;
“trade name” means the name or
designation identifying anddistinguishing an enterprise or itsgoodwill;
“TRIPS Agreement” means the Agreement
on Trade Related Aspects ofIntellectual Property Rights, set out inAnnex 1C to the WTO Agreement, asrevised or amended from time to time;
“well-known trade mark” means—
(a)any registered trade mark that iswell known in Trinidad andTobago; or 234 No. 8 Trade Marks 2015(b)any unregistered trade mark that
is well known in Trinidad andTobago and that belongs to aperson who is—
(i) a national of a Convention
country; or
(ii) domiciled in, or has a real
and effective industrial or
commercial establishmentin, a Convention country,
whether or not that person carries on
business, or has any goodwill, in Trinidadand Tobago;
“WTO” means the World Trade Organization;
“WTO Agreement” means the World Trade
Organisation Agreement signed in
Marrakesh in 1994 as revised or amendedfrom time to time. 
(2) References in this Act to a trade mark include
any trade mark which relates to a service that is
ancillary to goods or services dealt with or provided inthe course of trade by a person, whether or not theservice is provided for money or money’s worth. 
(3) References in this Act to a trade mark include,
unless the context otherwise requires, a collective markor a certification mark. 
(4) References in this Act to use, or any particular
description of use, of a trade mark, or of a sign identicalwith, similar to, or likely to be mistaken for a trademark, include use, or that description of use, otherwisethan by means of a graphic representation. 
(5) References in this Act to registration are, unless
the context otherwise requires, to registration in theRegister. No. 8 Trade Marks 2015 235(6) In this Act, a sign is taken to be applied to goods,
material or any other thing if it is woven in, impressed
on, worked into, or affixed or annexed to, the goods,material or thing. 
(7) Subject to subsection (8), in deciding, for the
purposes of this Act, whether a trade mark is well
known in Trinidad and Tobago, it shall be relevant totake into account any matter from which it may beinferred that the trade mark is well known, includingsuch of the following matters as may be relevant: 
(a)the degree to which the trade mark isknown to, or recognised by any relevantsector of the public in Trinidad and
Tobago; 
(b)the duration, extent and geographical area
of any—
(i) use of the trade mark; or 
(ii)promotion of the trade mark,including any advertising of, anypublicity given to, or anypresentation at any fair orexhibition of, the goods or servicesto which the trade mark is applied; 
(c)any registration or application for theregistration of the trade mark in anycountry or territory in which the trade
mark is used or recognised, and theduration of such registration orapplication; 
(d)any successful enforcement of any right inthe trade mark in any country or territory,and the extent to which the trade markwas recognised as well known by thecompetent authorities of that country orterritory; and
(e)any value associated with the trade mark.236 No. 8 Trade Marks 2015(8) Where it is determined that a trade mark is well
known to any relevant sector of the public in Trinidad
and Tobago, the trade mark shall be deemed to be well
known in Trinidad and Tobago. 
(9) In subsections (7) and (8), “relevant sector of the
public in Trinidad and Tobago” includes any of the
following: 
(a)all actual consumers and potential
consumers in Trinidad and Tobago of thegoods or services to which the trade mark isapplied; 
(b)all persons in Trinidad and Tobago involvedin the distribution of the goods or services towhich the trade mark is applied; and
(c)all businesses and companies in Trinidadand Tobago dealing in the goods orservices to which the trade mark is applied. 
PART II
R
EGISTRATION OF TRADE MARKS
4.(1) A registered trade mark is a property right
obtained by the registration of a trade mark under this
Act and the proprietor of a registered trade mark has
the rights and remedies provided by this Act.
(2) No proceedings shall lie to prevent or recover
damages for the infringement of an unregistered trade
mark as such and nothing in this Act affects the law
relating to passing off, or rights under the ProtectionAgainst Unfair Competition Act and the GeographicalIndications Act. 
Application for Registration of a Trade Mark
5.(1) An application for registration of a trade mark
shall be made in the prescribed manner to theController.Registered trade
marks
Application forregistrationChap. 82:36No. 8 Trade Marks 2015 237(2) An application under subsection (1) shall—
(a)contain a request for the registration of a
trade mark;
(b)state the name and address of the
applicant;
(c)contain a clear representation of the trademark;
(d)list the goods or services in relation towhich the applicant seeks to register thetrade mark; and
(e)state—
(i) that the trade mark is being used
in the course of trade, by the
applicant or with his consent, in
relation to those goods or services;or
(ii) that the applicant has a bona fide
intention that the trade markshould be so used.
(3) An application under subsection (1) shall be
accompanied by such fees as may be prescribed.
(4) The date of an application under subsection (1)
shall be the earliest date on which—
(a)all the requirements under subsection (2)
have been satisfied; and
(b)all the fees payable under subsection (3)—
(i) have been paid; or
(ii) are treated by the Controller as
paid.
6.(1) Subject to subsection (2) and the Regulations,
an application under section 5 may, at the request of the
applicant, be divided into two or more separateapplications.
Division of
application forregistration238 No. 8 Trade Marks 2015(2) A request under subsection (1) shall be—
(a)made to the Controller—
(i) in the prescribed manner; and
(ii) before the trade mark is registered;
and
(b)accompanied by the prescribed fee.
7.(1) Goods and services shall be classified for the
purposes of the registration of trade marks according to
a prescribed system of classification.
(2) Any question arising as to the class within which any
goods or services fall shall be determined by the Controller,whose decision shall be final.
Grounds for Refusal of Registration
8.(1) Subject to subsection (2), the following shall not
be registered:
(a)a sign which does not satisfy the definition
of a trade mark in section 3;
(b)a trade mark which is devoid of anydistinctive character;
(c)a trade mark which consists exclusively ofsigns or indications which may serve, intrade, to designate the kind, quality,quantity, intended purpose, value,geographical origin, the time of production
of goods or of rendering of services, or other
characteristics of goods or services; or
(d)a trade mark which consists exclusively of
signs or indications which have becomecustomary in the current language or in thebona fide and established practices of the
trade.
(2) A trade mark shall not be refused registration
by virtue of subsection (1) (b), (c)or (d)if, before the date
of application for registration, it has in fact acquired adistinctive character as a result of the use made of it.Classification of
goods and services
Absolute grounds forrefusal ofregistrationNo. 8 Trade Marks 2015 239(3) A sign shall not be registered as a trade mark if
it consists exclusively of—
(a)the shape which results from the nature of
the goods themselves;
(b)the shape of goods which is necessary to
obtain a technical result; or
(c)the shape which gives substantial value to
the goods.
(4) A trade mark shall not be registered if it is—
(a)contrary to public policy or to morality; or
(b)of such a nature as to deceive the public, for
instance as to the nature, quality orgeographical origin of the goods or services.
(5) A trade mark shall not be registered if, or to the
extent that, its use is prohibited in Trinidad and Tobago
by any written law.
(6) A trade mark shall not be registered if, or to the
extent that, the application is made in bad faith.
(7) Notwithstanding subsection (2), a trade mark
shall not be registered if it contains or consists of ageographical indication and the trade mark is used orintended to be used in relation to goods or services notoriginating from the place indicated in the geographicalindication.
(8) Subsection (7) shall apply—
(a)whether or not the trade mark has, or isaccompanied by—
(i) an indication of the true
geographical origin of the goods or
services, as the case may be; or
(ii) an expression such as “kind”,
“type”, “style”, “imitation” or thelike; and
(b)irrespective of the language in which the
geographical indication is expressed in thetrade mark.240 No. 8 Trade Marks 2015(9) A trade mark shall not be refused registration
by virtue of subsection (7) if the application for its
registration had been made in good faith, or if it hadbeen used continuously in good faith in the course oftrade by the applicant for its registration or its
predecessor in title, either—
(a)before the commencement of this Act; or
(b)before the geographical indication inquestion is protected in its country of origin.
(10) A trade mark shall not be refused registration
by virtue of subsection (7) if the geographical indicationin question has—
(a)ceased to be protected; or
(b)fallen into disuse,
in its country of origin.
(11) A trade mark shall not be registered in the
cases specified in sections 60 and 61.
9.(1) A trade mark shall not be registered if it is
identical to an earlier trade mark and the goods or
services for which the trade mark is sought to beregistered are identical to the goods or services forwhich the earlier trade mark is protected.
(2) A trade mark shall not be registered if there
exists a likelihood of confusion on the part of the publicbecause the trade mark is—
(a)identical to an earlier trade mark and is tobe registered for goods or services similar tothose for which the earlier trade mark isprotected; or
(b)similar to an earlier trade mark and is to beregistered for goods or services identical to,or similar to those for which the earliertrade mark is protected.
(3) Where an application for registration of a trade
mark is made and the trade mark is—
(a)identical to, or similar to an earlier trademark; andRelative grounds for
refusal ofregistrationNo. 8 Trade Marks 2015 241(b)to be registered for goods or services which
are not similar to those for which theearlier trade mark is protected,
the trade mark shall not be registered if—
(c)the earlier trade mark is well-known in
Trinidad and Tobago and—
(i) use of the trade mark in relation to
the goods or services for which the
trade mark is sought to beregistered would indicate aconnection between those goods orservices and the proprietor of theearlier trade mark;
(ii)there exists a likelihood ofconfusion on the part of the publicbecause of such use; and
(iii) the interests of the proprietor of
the earlier trade mark are likely tobe damaged by such use; or
(d)the earlier trade mark is well-known in
Trinidad and Tobago and would—
(i) cause dilution in an unfair manner
of the distinctive character of the
earlier trade mark; or
(ii)take unfair advantage of the
distinctive character of the earliertrade mark.
(4) A trade mark shall not be refused registration
by virtue of subsection (3) if the application for the
registration of the trade mark was filed before theearlier trade mark became well-known in Trinidad andTobago, unless it is shown that the application wasmade in bad faith.
(5) In deciding whether any such application was
made in bad faith, it shall be relevant to consider242 No. 8 Trade Marks 2015whether the applicant had, at the time the application
was made, knowledge of, or reason to know of, theearlier trade mark.
(6) A trade mark shall not be registered if, or to the
extent that, its use in Trinidad and Tobago is liable to
be prevented by virtue of –
(a)any rule of law, in particular the law of
passing off, protecting an unregistered
trade mark or other sign used in the courseof trade; or
(b)an earlier right other than those referredto in subsections (1), (2) and (3) orparagraph (a), in particular by virtue of the
law of copyright or any law with regard tothe protection of design.
(7) A person entitled under subsection (6) to
prevent the registration of a trade mark is referred to in
this Act as the proprietor of an earlier right in relationto the trade mark.
(8) Notwithstanding subsections (1) to (4), the
Controller shall register a trade mark where theproprietor of the earlier trade mark, or of an earlierright in relation to the trade mark, consents to theregistration.
(9) The Controller may, in his discretion, register
any trade mark referred to in subsection (3) or (6) wherethe proprietor of the earlier trade mark or other earlierright fails to give to the Controller notice of oppositionto the registration in accordance with section 14.
(10) A trade mark which is an earlier trade mark by
virtue of paragraph (a) of the definition of “earlier trade
mark” in section 3 and whose registration expires, shallcontinue to be taken into account in determining theregistrability of a trade mark for a period of one yearafter its expiration, unless the Controller is satisfiedthat there was no bona fide use of the trade mark
during the two years immediately preceding theexpiration.No. 8 Trade Marks 2015 243(11) Where separate applications are made by
different persons to be registered as proprietors
respectively, of trade marks that are identical or nearlyresemble each other in respect of the same, similar orrelated goods or services or description of goods or
services, the Controller may refuse to register any ofthem until their rights have been determined by theCourt.
10.(1) Where, on an application for the registration
of a trade mark, it appears to the Controller—
(a)that there is an earlier trade mark inrelation to which the conditions set out insection 9(1), (2) or (3) apply; or
(b)that there is an earlier right in relation towhich the conditions set out in section 9(6)
is satisfied,
but the applicant shows to the satisfaction of theController that there has been honest concurrent use inthe course of trade in Trinidad and Tobago of the trademark for which registration is sought, the Controllershall not refuse the application by reason of the earliertrade mark or other earlier right unless objection onthat ground is raised in opposition proceedings by theproprietor of that earlier trade mark or other earlierright.
(2) Nothing in this section shall affect the—
(a)refusal of registration on the groundsmentioned in section 8; or
(b)making of an application for a declaration ofinvalidity under section 24(3).
Priority
11.(1) Subject to subsection (6), where—
(a)a person has filed an application for the
registration of a trade mark in aConvention country in respect of certaingoods or services; 
(b)the application is the first application forthe registration of the trade mark to be filedRaising of relative
grounds in case ofhonest concurrent
use
Claim to priority of
Conventionapplication244 No. 8 Trade Marks 2015in any Convention country in respect of
those goods or services (referred to in thissection as “the first Convention
application”); and
(c)within six months after the date on which
the first Convention application is filed, theperson or his successor in title appliesunder this Act for the registration of thetrade mark in respect of all or any of thosegoods or services,
the person or his successor in title may, when filing the
application under this Act, claim a right of priority forthe registration of the trade mark in respect of all or anyof the goods or services for which registration wassought in the first Convention application.
(2) Where any person claims the right of priority
referred to in subsection (1), the person shall havepriority from the date on which the first Conventionapplication was filed.
(3) Where the right of priority referred to in
subsection (1) is claimed in respect of a trade mark, theregistrability of the trade mark in Trinidad and Tobagoshall not be affected by any use of the trade mark inTrinidad and Tobago in the period between—
(a)the date on which the first Convention
application was filed; and
(b)the date on which the application under thisAct was filed.
(4) Any filing which in a Convention country is
equivalent to a regular national filing under its
domestic legislation or an international agreement,shall be treated as giving rise to the right of priority.
(5) For the purposes of subsection (4), “regular
national filing” means a filing which is adequate toestablish the date on which the application was filed inthe Convention country, whatever may be thesubsequent result of the application.No. 8 Trade Marks 2015 245(6) Where a subsequent application concerning
the same subject as an earlier Convention application is
filed in the same or a different Convention country, andthese are the first two applications concerning thatsubject to be filed in any Convention country, and—
(a)the earlier application has been withdrawn,
abandoned or refused, without having been
laid open to public inspection and without
leaving any rights outstanding; and
(b)the earlier application has not yet served asa basis for claiming a right of priority,
the date on which the subsequent application was filed,
rather than the date of the earlier application, shall beconsidered the starting date of the period of priorityunder subsection (2), and the earlier application shallnot thereafter serve as a basis for claiming priority.
(7) A right of priority arising under this section
may be assigned or otherwise transmitted, either withthe application or independently, and the reference insubsection (1) to the applicant’s successor in title shallbe construed accordingly.
12.(1) The Minister may, on the advice of the
Controller, by Order, confer on a person who has filed anapplication for the registration of a trade mark in acountry or territory with which the State has enteredinto a treaty, convention, arrangement, or engagement
for the reciprocal protection of trade marks, a right topriority, for the purpose of registering the same trademark under this Act for some or all of the same goods orservices, for a specified period from the date of filing ofthat application.
(2) An Order under this section may make
provisions corresponding to those set out in section 11 orsuch other provisions as appear to the Minister to beappropriate.
(3) An Order made under this section shall be
subject to negative resolution of Parliament. Claim to priority
from other relevantoverseas application246 No. 8 Trade Marks 2015Registration Procedure
13.(1) The Controller shall examine whether an
application for registration of a trade mark satisfies the
requirements of this Act.
(2) For the purpose of subsection (1), the
Controller shall, to such extent as he considers
necessary, carry out a search of earlier trade marks.
(3) If it appears to the Controller that the
requirements for registration are not met or thatadditional information or evidence is required to meetthose requirements, the Controller shall inform theapplicant and give him an opportunity, within suchperiod as may be prescribed, to make representations, to
amend the application or to furnish additionalinformation or evidence.
(4) If the applicant responds within the period
referred to in subsection (3) but fails to satisfy theController that those requirements are met, or to amendthe application or furnish additional information orevidence so as to meet them, the Controller may refuseto accept the application.
(5) If the applicant fails to respond within the
period referred to in subsection (3), the application shallbe treated as withdrawn.
(6) If it appears to the Controller that the
requirements for registration are met, the Controllershall accept the application.
(7) Where the application is treated as
withdrawn under subsection (5), the Controller mayreinstate the application in such manner and in suchconditions as may be prescribed.
14.(1) Where the Controller accepts an application
under section 13, he shall cause the application, asaccepted, to be published in the prescribed manner.
(2) A person may, within the prescribed time
from the date of the publication of the application, givenotice to the Controller of opposition to the registration.Examination of
application
Publication andoppositionproceedingsNo. 8 Trade Marks 2015 247(3) A notice under subsection (2) shall be given in
writing in the prescribed manner and shall include a
statement of the grounds of opposition and such othermatter as may be prescribed.
(4) Where an application has been published, any
person may, at any time before the registration of the
mark, make observations in writing to the Controller asto whether the mark should be registered and theController shall inform the applicant of any suchobservations.
(5) A person who makes observations does not
thereby become a party to any proceedings in relation tothe application.
15.(1) An applicant may at any time withdraw his
application or restrict the goods or services covered by
the application.
(2) If an application has been published, the
withdrawal or restriction shall also be published.
(3) Subject to subsection (1), an application may
only be amended at the request of the applicant, bycorrecting—
(a)the name or address of the applicant; 
(b)errors of wording or of copying; or 
(c)obvious mistakes,
where the correction does not substantially affect the
identity of the mark or extend the goods or services
covered by the application. 
16.(1) Where an application has been accepted
and—
(a)no notice of opposition is given within the
period referred to in section 14(2); or
(b)all opposition proceedings are withdrawn ordecided in favour of the applicant, 
the Controller shall register the trade mark.
(2) A trade mark, when registered, shall be
registered as of the date of the application forWithdrawal,
restriction oramendment of
application
Registration of trade
mark248 No. 8 Trade Marks 2015registration, and that date is deemed, for the purposes
of this Act, to be the date of registration.
(3) On the registration of a trade mark, the
Controller shall issue to the applicant a certificate of
registration.
17.(1) Notwithstanding section 16(1) if, before a
trade mark is registered, the Controller is satisfied—
(a)that the application for registration of the
trade mark was accepted because of anerror or omission in the course of theexamination; or
(b)that, in the special circumstances of thecase, the trade mark should not beregistered,
the Controller may revoke the acceptance of the
application.
(2) If the Controller revokes the acceptance of an
application—
(a)the application shall be taken to have never
been accepted; and 
(b)section 13 shall apply in relation to theapplication.
Series of Trade Marks
18.(1) A person may make a single application under
section 5 for the registration of a series of trade marks
in respect of the same goods or services, or of similargoods or services which fall within a single class inaccordance with the system of classification referred toin section 7.
(2) For the purposes of this Act, “series of trade
marks” means a number of trade marks which resembleeach other as to their material particulars and whichdiffer only as to matters of a non-distinctive characternot substantially affecting the identity of the trademark.Revocation of
acceptance
Registration of aseries of trade marksNo. 8 Trade Marks 2015 249(3) If the application meets all the requirements
under this Act, the Controller shall register the trade
marks as a series in one registration.
Duration, Renewal and Alteration of Registered
Trade Mark
19.(1) A trade mark shall be registered for a period
of ten years from the date of registration.
(2) Registration may be renewed in accordance
with section 20 for further periods of ten years.
20.(1) The registration of a trade mark may be
renewed at the request of the proprietor, subject to
payment of the fee referred to in subsection (3) or thefees referred to in subsection (4), as the case may be.
(2) A request for renewal shall be made not later
than six months after the date of expiration of the
registration.
(3) Where the request for renewal is made on or
before the date of expiration of the registration, the fee
payable shall be the prescribed renewal fee.
(4) Where the request for renewal is made within
the period of six months after the date or expiration ofthe registration, the fees payable shall be the prescribedrenewal fee and the prescribed late renewal fee.
(5) Renewal shall take effect from the expiration
of the previous registration.
(6) If the registration is not renewed in
accordance with this section and the Regulations, theController shall remove the trade mark from theRegister.
(7) Upon the filing of a renewal application, if the
goods in respect of such application to be renewed wereclassified under the National Classification, therenewal application shall be accompanied by anamendment to reclassify the goods from the NationalClassification to the International Classification.
21.(1) Subject to subsection (2), a registered trade
mark shall not be altered in the Register, either during
the period of registration or on renewal.Duration
Renewal of
registration
Alteration ofregistered trademark250 No. 8 Trade Marks 2015(2) The Controller may, at the request of the
proprietor, allow the alteration of a registered trade
mark where the trade mark includes the proprietor’sname or address and the alteration is limited toalteration of that name or address and does not
substantially affect the identity of the trade mark.
Cancellation, Revocation and Invalidity
22.A registered trade mark may be cancelled by the
proprietor in respect of some or all of the goods orservices for which it is registered.
23.(1) The registration of a trade mark may be
revoked on any of the following grounds:
(a)that, within the period of five years
following the date of completion of theregistration procedure, it has not been putto bona fide use in the course of trade in
Trinidad and Tobago, by the proprietor orwith his consent, in relation to the goods orservices for which it is registered, and thereare no proper reasons for non-use;
(b)that its use has been suspended for acontinuous period of five years, and thereare no proper reasons for non-use; 
(c)that, in consequence of acts or inactivity ofthe proprietor, it has become the commonname in the trade for the product or servicefor which it is registered; or
(d)that, in consequence of the use made of it bythe proprietor or with his consent inrelation to the goods or services for which itis registered, it is likely to mislead thepublic, particularly as to the nature, qualityor geographical origin of those goods orservices. 
(2) For the purposes of subsection (1)—
(a)“use of a trade mark” includes use in a formdiffering in elements which do not alter thedistinctive character of the trade mark inthe form in which it was registered; andCancellation of
registered trademark
Revocation ofregistrationNo. 8 Trade Marks 2015 251(b)“use of a trade mark in Trinidad and
Tobago” includes applying the trade markto goods or to materials for the labelling or
packaging of goods in Trinidad and Tobago
solely for export purposes.
(3) The registration of a trade mark shall not be
revoked on the grounds mentioned in paragraph (a)or
(b)of subsection (1) if such use as is referred to in that
paragraph is commenced or resumed after the
expiration of the five-year period and prior to theapplication for revocation.
(4) Any commencement or resumption of use
referred to in subsection (3) after the expiration of thefive-year period but within the period of three months
before the making of the application for revocation shallbe disregarded unless preparations for thecommencement or resumption began before theproprietor became aware that the application may bemade.
(5) An application for revocation may be made by
any person to the Controller or to the Court, exceptthat—
(a)if proceedings concerning the trade mark in
question are pending in the Court, theapplication shall be made to the Court; or
(b)if, in any circumstances other than thosereferred to in paragraph (a), the application
is made to the Controller, the Controllermay at any stage of the proceedings referthe application to the Court.
(6) Where grounds for revocation exist in respect
of only some of the goods or services for which the trade
mark is registered, revocation shall relate to those goodsor services only.
(7) Where the registration of a trade mark is
revoked to any extent, the rights of the proprietor aredeemed to have ceased to that extent from—
(a)the date of the application for revocation; or252 No. 8 Trade Marks 2015(b)an earlier date, if the Controller or the
Court is satisfied that the grounds forrevocation existed at an earlier date.
24.(1) The registration of a trade mark may be
declared invalid on the grounds that the trade mark was
registered in breach of section 8. 
(2) Where the registered trade mark was
registered in breach of section 8 in that it is a trademark referred to in subsection (1) (b), (c)or(d)of that
section, it shall not be declared invalid if, inconsequence of the use which has been made of it, it has,after registration, acquired a distinctive character inrelation to the goods or services for which it isregistered. 
(3) The registration of a trade mark may be
declared invalid on the ground—
(a)that there is an earlier trade mark in
relation to which the conditions set out insection 9(1), (2) or (3) apply; or
(b)that there is an earlier right in relation towhich the condition set out in section 9(6) issatisfied,
unless the proprietor of that earlier trade mark or other
earlier right has consented to the registration.
(4) The registration of a trade mark may be
declared invalid on the ground of fraud in theregistration or on the ground that the registration wasobtained by misrepresentation.
(5) An application for a declaration of invalidity
may be made by any person to the Controller or to theCourt, except that—
(a)if proceedings concerning the trade mark in
question are pending in the Court, theapplication shall be made to the Court; or
(b)if, in any circumstances other than thosereferred to in paragraph (a), the application
is made to the Controller, the Controllermay at any stage of the proceedings referthe application to the Court.Grounds for invalidity
of registrationNo. 8 Trade Marks 2015 253(6) An application for a declaration of invalidity
of the registration of a trade mark on the ground that it
was in breach of section 8(7) shall not be made after theexpiration of five years from—
(a)the date of registration of the trade mark; or
(b)the date on which use of the trade mark bythe person who applied for its registrationor his predecessor in title became generally
known in Trinidad and Tobago, 
whichever is the earlier, unless the applicant shows to
the satisfaction of the Controller or the Court that theregistration of the trade mark was applied for in badfaith. 
(7) An application for a declaration of invalidity
of the registration of a trade mark on the ground thatthere is an earlier trade mark in relation to which theconditions set out in section 9(3) apply—
(a)shall not be made after the expiration of fiveyears from the commencement of this Act orthe date of completion of the registrationprocedure, whichever is the later, unlessthe applicant for the declaration showsthat—
(i) the registration of the later trade
mark was applied for in bad faith;
or
(ii) the later trade mark was never
used; and
(b)shall not be granted if the registration ofthe later trade mark was applied for beforethe earlier trade mark became well-knownin Trinidad and Tobago, unless theapplicant for the declaration shows that theregistration of the later trade mark wasapplied for in bad faith.254 No. 8 Trade Marks 2015(8) In deciding whether the registration of the
later trade mark was applied for in bad faith, it shall be
relevant to consider whether the applicant for theregistration of the later trade mark had, at the time hisapplication was made, knowledge of, or reason to know
of, the earlier trade mark.
(9) Where the ground of invalidity exists in
respect of only some of the goods or services for whichthe trade mark is registered, the trade mark shall bedeclared invalid as regards those goods or services only.
(10) Where the registration of a trade mark is
declared invalid to any extent, the registration shall to
that extent be deemed never to have been made.
(11) Subsection (10) shall not affect transactions
past and closed.
(12) The use of a trade mark by the proprietor in a
form differing in elements which do not alter the 
distinctive character of the trade mark in the form inwhich it was registered in Trinidad and Tobago shallnot entail invalidation of the registration and shall notdiminish the protection granted to the trade mark.
25.(1) Where the proprietor of an earlier trade mark
or other earlier right has acquiesced for a continuous
period of five years in the use in the course of trade or aregistered trade in Trinidad and Tobago being aware ofthat use, there shall cease to be any entitlement, on thebasis of that earlier trade mark or other right—
(a)to apply for a declaration that the
registration of the later trade mark isinvalid; or
(b)to oppose the use of the later trade mark inrelation to the goods or services in relationto which it has been used,
unless the registration of the later trade mark was
applied for in bad faith. Effect of acquiescenceNo. 8 Trade Marks 2015 255(2) Where subsection (1) applies, the proprietor of
the later trade mark is not entitled to oppose the use of
the earlier trade mark or, as the case may be, theexploitation of the earlier right, notwithstanding thatthe earlier trade mark or right may no longer be invoked
against his later trade mark.
(3) For the purposes of subsection (1), in deciding
whether the registration of the later trade mark wasapplied for in bad faith, it shall be relevant to considerwhether the applicant for the registration of the latertrade mark had, at the time his application was made,knowledge of, or reason to know of, the earlier trademark or the right.
Miscellaneous
26.(1) At the written request of a person, or an agent
of a person, who has—
(a)made an application, other than an
application for the registration of a trademark; or
(b)filed a notice or other document for thepurposes of this Act, 
the Controller may amend the application, notice ordocument in accordance with subsection (2).
(2) The Controller may amend an application,
notice or document under subsection (1)—
(a)to correct a clerical error or an obvious
mistake; or
(b)if the Controller is of the opinion that it is
fair and reasonable in all the circumstancesof the case to do so.
Rights and Remedies of Proprietor of Registered 
Trade Mark
27.(1) The proprietor of a registered trade mark has
the exclusive rights to—
(a)use the trade mark; and
(b)authorise other persons to use the trade
mark, Amendment of other
documents
Rights conferred byregistered trade mark256 No. 8 Trade Marks 2015in relation to the goods or services for which the trade
mark is registered. 
(2) The proprietor has the right to obtain relief
under this Act for infringement of his trade mark.
(3) The acts amounting to infringement of a
registered trade mark are set out in section 28, and
references in this Act to the infringement of a registeredtrade mark shall be construed accordingly. 
(4) The rights under subsections (1) and (2) shall
accrue to the proprietor as from the date of registrationof the trade mark, except that—
(a)no infringement proceedings may be begunbefore the date on which the trade mark is
in fact registered; and
(b)no offence under section 49, 50, 51 or 52 iscommitted by anything done before the dateon which the trade mark is in factregistered.
(5) If the trade mark is registered subject to any
disclaimer or limitation, the rights of the proprietor arerestricted by the disclaimer or limitation.
28.(1) A person infringes a registered trade mark if,
without the consent of the proprietor of the trade mark,he uses in the course of trade, a sign which is identicalto the trade mark in relation to goods or services whichare identical to those for which it is registered.
(2) A person infringes a registered trade mark if,
without the consent of the proprietor of the trade mark,he uses in the course of trade a sign which—
(a)is identical to the trade mark and is used inrelation to goods or services similar to thosefor which the trade mark is registered; or
(b)is similar to the trade mark and is used inrelation to goods or services identical to orsimilar to those for which the trade mark isregistered,
and if, as a result of such use of the sign, there exists alikelihood of confusion on the part of the public.Acts constituting
infringement of aregistered trade markNo. 8 Trade Marks 2015 257(3) A person infringes a registered trade mark
which is well-known in Trinidad and Tobago if—
(a)without the consent of the proprietor of the
trade mark, he uses in the course of trade, asign which is identical to, or similar to thetrade mark in relation to goods or serviceswhich are not similar to those for which the
trade mark is registered;
(b)the use of the trade mark in relation to
those goods or services would indicate aconnection between those goods or servicesand the proprietor;
(c)there exists a likelihood of confusion on thepart of the public because of such use; and
(d)the interests of the proprietor are likely tobe damaged by such use. 
(4) For the purposes of this section and
sections 29, 30 and 32, a person uses a sign if, in
particular, he—
(a)applies it to goods or the packaging thereof;
(b)offers or exposes goods under the sign for
sale;
(c)puts goods on the market under the sign;
(d)stocks them under the sign for the purposeof offering or exposing them for sale orputting them on the market;
(e)offers or supplies services under the sign;
(f)imports or exports goods under the sign;
(g)uses the sign on an invoice, catalogue,business letter, business paper, price list orother commercial document, including anysuch document in any medium; or
(h)uses the sign in advertising. 
(5) Notwithstanding subsection (4), a person
who—
(a)applies a sign to any material used orintended to be used for labelling orpackaging goods; or258 No. 8 Trade Marks 2015(b)uses a sign on any document described in
subsection (4) (g),or in advertising,
is deemed not to use the sign if, at the time of such
application or use, he does not know, or does not havereason to believe, that the proprietor or a licensee of theregistered trade mark did not consent to suchapplication or use of the sign.
(6) A person who applies a registered trade mark
to material intended to be used for labelling orpackaging goods, as any document described insubsection (4) (g), or for advertising goods or services,
shall be treated as a party to any use of the materialwhich infringes the registered trade mark if when heapplied the mark he knew or had reason to believe thatthe application of the mark was not duly authorized bythe proprietor or a licensee. 
29.(1) Notwithstanding section 28, a person does not
infringe a registered trade mark where—
(a)he uses—
(i) his name or the name of his place of
business; or 
(ii) the name of his predecessor in
business or the name of hispredecessor’s place of business; 
(b)he uses a sign to indicate—
(i) the kind, quality, quantity,
intended purpose, value,geographical origin or othercharacteristic of goods or services;or
(ii) the time of production of goods or of
the rendering of services; or
(c)he uses the trade mark to indicate theintended purpose of goods, in particular asaccessories or spare parts, or services,
and such use is in accordance with honest practices inindustrial or commercial matters.Acts not constituting
infringementNo. 8 Trade Marks 2015 259(2) Notwithstanding section 28, a person does not
infringe a registered trade mark by using an
unregistered trade mark that is identical to, or similarto the registered trade mark in relation to goods orservices identical to, or similar to those for which the
trade mark is registered if he, or he and his predecessorin title, have continuously used in the course of tradethe unregistered trade mark in relation to those goodsor services from a time before—
(a)the date of registration of the registered
trade mark; or
(b)the date the proprietor of the registeredtrade mark, or a predecessor in title, or aperson who was a registered user of the
trade mark under the former Act, first used
the trade mark, 
whichever is the earlier. 
(3) Notwithstanding section 28, a registered
trade mark is not infringed by the use of another
registered trade mark in relation to goods or services forwhich the latter is registered. 
(4) Notwithstanding section 28, a person who
uses a registered trade mark does not infringe the trademark if such use—
(a)constitutes fair use in comparative
commercial advertising or promotion;
(b)is for a non-commercial purpose; or
(c)is for the purpose of news reporting or newscommentary. 
30.(1) Notwithstanding section 28, a registered
trade mark is not infringed by the use of the trade mark
in relation to goods which have been put on the market,whether in Trinidad and Tobago or outside Trinidadand Tobago, under that trade mark by the proprietor ofthe registered trade mark or with his express or impliedconsent, conditional or otherwise. 
Exhaustion of rights
conferred byregistered trade
marks260 No. 8 Trade Marks 2015(2) Subsection (1) does not apply where—
(a)the condition of the goods has been changed
or impaired after they have been put on themarket; and
(b)the use of the registered trade mark in
relation to those goods has caused dilution
in an unfair manner of the distinctivecharacter of the registered trade mark. 
31.(1) An applicant for registration of a trade mark,
or the proprietor of the registered trade mark, may—
(a)disclaim any right to the exclusive use ofany specified element of the trade mark; or
(b)agree that the rights conferred by the
registration shall be subject to a specifiedterritorial or other limitation,
and where the registration of a trade mark is subject toa disclaimer or limitation, the rights conferred bysection 27 are restricted accordingly.
Infringement Proceedings
32.(1) An infringement of a registered trade mark is
actionable by the proprietor of the trade mark.
(2) In infringement proceedings, all such relief by
way of damages, injunctions, accounts or otherwise isavailable to the proprietor as is available in respect ofthe infringement of any other property right. 
33.(1) Subject to subsection (3), where a person is
found to have infringed a registered trade mark, theCourt may make an order requiring him—
(a)to cause the offending sign to be erased,
removed or obliterated from any infringinggoods, material or articles in his possession,custody or control; or
(b)if it is not reasonably practicable for theoffending sign to be erased, removed orobliterated, to secure the destruction of theinfringing goods, material or articles inquestion. Registration subject to
disclaimer orlimitation
Action forinfringement
Order for erasure ofoffending signNo. 8 Trade Marks 2015 261(2) If an order under subsection (1) is not
complied with, or it appears to the Court likely that
such an order would not be complied with, the Courtmay order that the infringing goods, material or articlesbe delivered up to such person as the Court may direct
for erasure, removal or obliteration of the sign, or fordestruction, as the case may be. 
(3) Where a person who is found to have infringed
a registered trade mark has in his possession, custody or
control any infringing goods, the Court shall order thatthe infringing goods be delivered up to such person asthe Court may direct for destruction if the—
(a)claimant applies to the Court for such anorder; and
(b)Court is of the view that there are no
exceptional circumstances which justify the
refusal of such an order. 
34.(1) The Court may, in addition to any relief
granted under sections 32 and 33 in any action for an
infringement of a registered trade mark, order anyinfringing goods, material or articles in the possession ofthe defendant or before the Court to be delivered up tothe claimant. 
(2) No order shall be made under this section
unless the Court also makes, or it appears to the Court
that there are grounds for making, an order under
section 36. 
(3) A person to whom any infringing goods,
material or articles are delivered up pursuant to an
order under this section shall, if an order undersection 36 is not made, retain them pending the makingof an order, or the decision not to make an order, underthat section. 
35.(1) In this Act, the expressions “infringing goods”,
“infringing material”, “infringing articles”, “counterfeitgoods” and “counterfeit trade mark” shall be construedin accordance with this section.Order for delivery up
of infringing goods,materials or articles
Meaning of“infringing goods,material or articles”
and “counterfeit goods
and trade mark”262 No. 8 Trade Marks 2015(2) Goods are “infringing goods”, in relation to a
registered trade mark, if they or their packaging bear a
sign identical or similar to that mark and the—
(a)application of the sign to the goods or their
packaging was an infringement of theregistered trade mark; or
(b)goods are proposed to be imported into
Trinidad and Tobago and the application of
the sign in Trinidad and Tobago to them ortheir packaging would be an infringementof the registered trade mark; or
(c)sign has otherwise been used in relation tothe goods in such a way as to infringe theregistered mark.
(3) Material is “infringing material”, in relation
to a registered trade mark, if it bears a sign identical or
similar to that mark and either—
(a)it is used for labelling or packaging goods,
as a business paper, or for advertising goodsor services, in such a way as to infringe theregistered trade mark; or
(b)it is intended to be so used and such usewould infringe the registered trade mark.
(4) “Infringing articles”, in relation to a
registered trade mark, means articles—
(a)which are specifically designed or adaptedfor making copies of a sign identical or
similar to that mark; and
(b)which a person has in his possession,
custody or control, knowing or havingreason to believe that they have been or areto be used to produce infringing goods ormaterial.
(5) Goods are “counterfeit goods”, in relation to a
registered trade mark, if—
(a)they are infringing goods in relation to thatmark; andNo. 8 Trade Marks 2015 263(b)the sign borne by them or their packaging is
a counterfeit trade mark.
(6) A sign is a “counterfeit trade mark”, in
relation to a registered trade mark, if the sign—
(a)is identical to, or so nearly resembling the
registered trade mark as to be calculated todeceive; and
(b)is applied to goods or services—
(i) without the express or implied
consent (conditional or otherwise)
of the proprietor of the registeredtrade mark; and
(ii) to falsely represent the goods or
services to be the genuine goods oractual services of the proprietor ora licensee of the registered trademark.
36.(1) Where infringing goods, material or articles
have been delivered up pursuant to an order under
section 34, an application may be made to the Courtfor—
(a)an order that they be destroyed or forfeited
to such person as the Court may think fit; or 
(b)a decision that no such order should bemade. 
(2) In considering what order, if any, should be
made, the Court shall have regard to the—
(a)adequacy of other remedies; and 
(b)need to ensure that no infringing goods,
material or articles are disposed of in amanner that would adversely affect theclaimant. 
(3) Notwithstanding subsection (2), where the
infringing goods are counterfeit goods, the Court shallorder that the goods be destroyed if the—
(a)claimant applies to the Court for such anorder; and Order as to disposal of
infringing goods,material or articles264 No. 8 Trade Marks 2015(b)Court is of the view that there are no
exceptional circumstances which justify therefusal of such an order. 
(4) The Court shall issue directions as to the
service of notice on persons having an interest in the
goods, material or articles. 
(5) Any person having an interest in the goods,
material or articles is entitled—
(a)to appear in proceedings for an order underthis section, whether or not that person isserved with notice; and
(b)to appeal against any order made, whetheror not that person appears in the
proceedings. 
(6) An order made under this section shall not
take effect until the end of the period within whichnotice of an appeal may be given or, if before the end ofthat period notice of appeal is duly given, until the finaldetermination or abandonment of the proceedings onthe appeal.
(7) Subject to subsection (3), where there is more
than one person interested in the goods, material orarticles, the Court may direct that the goods, materialor articles be sold, or otherwise dealt with, and theproceeds divided, and shall make any other order as it
thinks just.
(8) If the Court decides that no order should be
made under this section, the person in whose
possession, custody or control the goods, material orarticles were before being delivered up, is entitled totheir return.
37.(1) Where a person threatens another with
infringement proceedings other than proceedingsrelating to the—
(a)application of the mark to goods or tomaterial used or intended to be used forlabelling or packaging goods;
Remedy for
groundless threats ofinfringement
proceedingsNo. 8 Trade Marks 2015 265(b)importation of goods to which, or to the
packaging of which, the mark has beenapplied; or 
(c)supply of services under the mark, 
any aggrieved person may bring proceedings for relief
under this section. 
(2) A person may apply for the following relief: 
(a)a declaration that the threats areunjustifiable;
(b)an injunction against the continuance of thethreats; and
(c)damages in respect of any loss the claimanthas sustained by the threats. 
(3) The claimant is entitled to the relief referred
to in subsection (2) unless the defendant shows that the
acts in respect of which proceedings were threatenedconstitute, or if done would constitute, an infringementof the registered trade mark concerned. 
(4) If the defendant showed that the acts in
respect of which proceedings were threatenedconstitute, or if done would constitute, an infringementof the registered trade mark concerned, the claimant isnevertheless entitled to relief if he shows that theregistration of the trade mark is invalid or liable to berevoked in a relevant respect.
(5) The mere notification that a trade mark is
registered, or that an application for registration hasbeen made, does not constitute a threat of proceedingsfor the purposes of this section. 
PART III
R
EGISTERED TRADE MARK AS OBJECT OF PROPERTY
38.A registered trade mark is personal property.
39.(1) Where a registered trade mark is granted to
two or more persons jointly, each of them is entitled,
subject to any agreement to the contrary, to an equalundivided share in the registered trade mark. Nature of registered
trade mark
Co-ownership ofregistered trade mark266 No. 8 Trade Marks 2015(2) Subsections (3) to (8) apply where two or more
persons are co-proprietors of a registered trade mark, by
virtue of subsection (1) or otherwise.
(3) Subject to any agreement to the contrary,
each co-proprietor is entitled, by himself or his agents,
to do for his own benefit and without the consent of orthe need to account to the other or others, any act whichwould otherwise amount to an infringement of theregistered trade mark.
(4) One co-proprietor shall not, without the
consent of the other or others—
(a)grant a licence to use the registered trade
mark; or
(b)assign or charge his share in the registeredtrade mark. 
(5) Infringement proceedings may be brought by
any co-proprietor, but he shall not, without the leave of
the Court, proceed with the action unless the other, oreach of the others, is either joined as a claimant oradded as a defendant.
(6) A co-proprietor who is added as a defendant
under subsection (5) is not liable for any costs in theaction unless he takes part in the proceedings. 
(7) Nothing in subsection (5) affects the granting
of interlocutory relief on the application of a singleco-proprietor. 
(8) Nothing in this section affects the mutual
rights and obligations of trustees or personalrepresentatives, or their rights and obligations.
40.(1) A registered trade mark is assignable and
transmissible in the same way as other personalproperty and is so assignable or transmissible either inconnection with the goodwill of a business orindependently. 
(2) An assignment or transmission of a registered
trade mark may be partial, that is, limited so as to applyin relation to some but not all of the goods or services forwhich the trade mark is registered. 
Assignment of
registered trade markNo. 8 Trade Marks 2015 267(3) An assignment of a registered trade mark, or
an assent relating to a registered trade mark, is not
effective unless it is in writing signed by, or on behalf ofthe assignor or a personal representative, as the casemay be. 
(4) Where the assignor or personal representative
is a body corporate, subsection (3) may be satisfied by
the affixing of its seal. 
(5) Subsections (1) to (4) apply to assignment by
way of security as they apply to any other assignment. 
(6) A registered trade mark may be the subject of
a charge in the same way as other personal property. 
(7) Nothing in this Act shall be construed as
affecting the assignment or transmission of anunregistered trade mark as part of the goodwill of abusiness.
41.(1) On application being made to the Controller
by—
(a)a person claiming to be entitled to an
interest in, or under a registered trademark by virtue of a registrable transaction; or
(b)any other person claiming to be affected bysuch a transaction,
the prescribed particulars of the transaction shall be
entered in the Register.
(2) The following are registrable transactions
under subsection (1): 
(a)an assignment of a registered trade mark or
any right in it;
(b)the grant of a licence under a registeredtrade mark; 
(c)the granting of any security interest,whether fixed or floating, over a registeredtrade mark or any right in or under it; Registration of
transactions affectingregistered trade mark268 No. 8 Trade Marks 2015(d)the making by personal representatives of
an assent in relation to a registered trademark or any right in or under it; and 
(e)an order of the Court or other competent
authority transferring a registered trademark or any right in or under it.
(3) Until an application has been made for the
registration of the prescribed particulars of a registrable
transaction referred to in subsection (2) (a), (c), (d)or (e),
the transaction is ineffective as against a personacquiring a conflicting interest in or under theregistered trade mark in ignorance of the transaction.
(4) A person who becomes the proprietor or a
licensee of a registered trade mark by virtue of any
registrable transaction referred to in subsection (2) (a),
(c), (d)or (e)is not entitled to damages or an account of
profits in respect of any infringement of the registeredtrade mark occurring after the date of the transactionand before the date of the application for theregistration of the prescribed particulars of thetransaction.
(5) For the avoidance of doubt, subsections (3)
and (4) shall not apply to any registrable transactionrelating to—
(a)a licence under a registered trade mark; or 
(b)any right in or under the licence.
42.(1) No notice of any trust shall be entered in the
Register, and the Controller shall not be affected by anysuch notice. 
(2) Subject to this Act, equities in respect of a
registered trade mark may be enforced in like manneras in respect of other personal property.
43.(1) The provisions of sections 38, 39, 40 and 42
shall apply, with the necessary modifications, inrelation to an application for the registration of a trademark as they apply in relation to a registered trademark. 
Trusts and equities
Application for
registration of trademark as object of
propertyNo. 8 Trade Marks 2015 269(2) For the purposes of subsection (1), the
reference in section 39(1) to the granting of a
registration shall be construed as a reference to themaking of an application for the registration of a trademark. 
(3) Any person claiming to be—
(a)entitled to an interest in or under an
application for registration of a trade mark
by virtue of a registrable transaction; or
(b)affected by a registrable transaction,
shall give to the Controller notice of the prescribedparticulars of the transaction.
(4) The following are registrable transactions
under subsection (3):
(a)an assignment of an application for
registration of a trade mark or any right init; 
(b)the grant of a licence under an applicationfor registration of a trade mark; 
(c)the grant of any security interest, whetherfixed or floating, over an application forregistration of a trade mark or any right inor under it;
(d)the making by a personal representative ofan assent in relation to an application forregistration of a trade mark or any right in
or under it; and 
(e)an order of the Court or other competentauthority transferring an application forregistration of a trade mark or any right inor under it. 
(5) The Controller shall maintain a record of each
notice given to him under subsection (3).
(6) Until the notice referred to in subsection (3)
has been given to the Controller in respect of a270 No. 8 Trade Marks 2015transaction referred to in subsection (4) (a), (c), (d)or (e),
the transaction is ineffective as against a person
acquiring a conflicting interest in or under the
application for registration of a trade mark in ignorance
of the transaction.
(7) Subsection (6) does not apply to any
registrable transaction relating to—
(a)a licence under an application for
registration of a trade mark; or
(b)any right in or under the licence.
PART IV
LICENSING
44.(1) A licence to use a registered trade mark may
be general or limited.
(2) A limited licence may, in particular, apply in
relation to some but not all of the goods or services for
which the trade mark is registered.
(3) A licence is not effective unless it is in writing
signed by or on behalf of the grantor. 
(4) Where the grantor is a body corporate,
subsection (3) may be satisfied by the affixing of its seal.
(5) Subject to subsection (7), a licence to use a
registered trade mark is binding on every successor in
title to the interest of the grantor, unless—
(a)any person who, in good faith and without
any notice of the licence, has given valuableconsideration for the interest in theregistered trade mark; or 
(b)the licence provides otherwise,
and any reference in this Act to doing anything with, orwithout, the consent of the proprietor of a registeredtrade mark shall be construed accordingly.
(6) A person is deemed to have notice of a licence
if the prescribed particulars of the grant of the licenceare entered in the Register under section 41(1).Licensing of
registered trade markNo. 8 Trade Marks 2015 271(7) Where the licence so provides, a sub-licence
may be granted by the licensee and references in this
Act to a licence or licensee include references to asub-licence or sub-licensee.
45.Section 44 applies, with the necessary
modifications, to an exclusive licence.
46.(1) This section applies to the rights of a licensee
in relation to infringement of a registered trade mark.
(2) This section does not apply where the licensee
has a right to bring proceedings in his own name under
section 47(1).
(3) A licensee is entitled, unless his licence, or
any licence through which his interest is derived,
provides otherwise, to call on the proprietor of theregistered trade mark to take infringement proceedingsin respect of any matter which affects his interests. 
(4) If the proprietor refuses, or fails within two
months, to take infringement proceedings after beingcalled upon to do so by the licensee in accordance withsubsection (3), the licensee may bring the proceedings inhis own name as if he were the proprietor. 
(5) Where infringement proceedings are brought
by a licensee by virtue of this section, the licensee shallnot, without the leave of the Court, proceed with the
action unless the proprietor is either joined as a
claimant or added as a defendant. 
(6) Subsection (5) does not affect the granting of
interlocutory relief on an application by a licensee alone. 
(7) A proprietor who is added as a defendant
under subsection (5) shall not be made liable for anycosts in the action unless he takes part in theproceedings. 
(8) In infringement proceedings brought by the
proprietor of a registered trade mark—
(a)any loss suffered or likely to be suffered by
licensees shall be taken into account; andExclusive licences
General provisions as
to rights of licenseesin case of
infringement272 No. 8 Trade Marks 2015(b)the Court may give such directions as it
thinks fit as to the extent to which theclaimant is to hold the proceeds of anypecuniary remedy on behalf of licensees. 
(9) This section applies in relation to an exclusive
licensee if or to the extent that he has, by virtue of
section 47(1), the rights and remedies of an assignee asif he were the proprietor of the registered trade mark.
47.(1) An exclusive licence may provide that the
licensee shall have, to such extent as may be provided
by the licence, the same rights and remedies in respectof matters occurring after the grant of the licence as ifthe licence had been an assignment.
(2) Where or to the extent that the provision
referred to in subsection (1) is made, the licensee is
entitled, subject to the provisions of the licence and tothe provisions of this section, to bring infringementproceedings against any person, other than theproprietor, in his own name. 
(3) Any such rights and remedies of an exclusive
licensee are concurrent with those of the proprietor ofthe registered trade mark, and references to theproprietor of a registered trade mark in the provisions ofthis Act relating to infringement shall be construedaccordingly. 
(4) In an action brought by an exclusive licensee
by virtue of this section, a defendant may avail himselfof any defence which would have been available to himif the action had been brought by the proprietor of theregistered trade mark.
(5) Where infringement proceedings brought by
the proprietor or an exclusive licensee relate wholly orpartly to an infringement in respect of which they haveconcurrent rights of action, the proprietor or, as the casemay be, the exclusive licensee shall not, without theleave of the Court, proceed with the action, unless theother is either joined as a claimant or added as adefendant, but this does not affect the granting ofinterlocutory relief on an application by a proprietor orexclusive licensee alone.Exclusive licensee
having rights andremedies of assigneeNo. 8 Trade Marks 2015 273(6) A person who is added as a defendant as
mentioned in subsection (5) shall not be made liable for
any costs in the action unless he takes part in theproceedings. 
(7) Where infringement proceedings are brought
which relate wholly or partly to an infringement in
respect of which the proprietor and an exclusive
licensee have or had concurrent rights of action—
(a)the Court shall, in assessing damages, take
into account—
(i) the terms of the licence; and 
(ii)any pecuniary remedy already
awarded or available to either of
them in respect of theinfringement;
(b)no account of profits shall be directed by the
Court, if an award of damages has beenmade; and
(c)the Court may, if an account of profits isdirected, apportion the profits betweenthem as the Court considers just, subject toany agreement between them.
(8) Subsection (7) shall apply whether or not the
proprietor and the exclusive licensee are both parties to
the action, and if only one is a party, the Court may givesuch directions as it thinks fit as to the extent to whichthe party to the proceedings is to hold the proceeds ofany pecuniary remedy on behalf of the other. 
(9) The proprietor of a registered trade mark,
before applying for an order under section 34, shallnotify any exclusive licensee who has a concurrent rightof action and the Court may on application of thelicensee make such order under that section as it thinksfit having regard to the terms of the licence.274 No. 8 Trade Marks 2015(10) The provisions of subsections (5) to (9) shall
have effect subject to any agreement to the contrary
between the exclusive licensee and the proprietor.
48.(1) The use of a sign on the Internet shall
constitute use in Trinidad and Tobago only if the usehas a commercial effect in Trinidad and Tobago.
(2) In determining whether use of a sign on the
Internet has a commercial effect in Trinidad and
Tobago, the Controller shall take into account allrelevant circumstances including—
(a)circumstances indicating that the user of
the sign is doing, or has undertakensignificant plans to do, business in Trinidad
and Tobago in relation to goods or serviceswhich are identical or similar to those forwhich the sign is used on the Internet;
(b)the level and character of commercialactivity of the user in relation to Trinidadand Tobago;
(c)the connection of an offer of goods orservices on the Internet with Trinidad andTobago;
(d)the connection of the manner of use of thesign on the Internet with Trinidad andTobago; and
(e)the relation of the use of the sign on theInternet to a right in that sign in Trinidadand Tobago.
PART V
O
FFENCES
49.(1) Any person who counterfeits a registered
trade mark commits an offence and is liable on
conviction on indictment to a fine of two hundred andfifty thousand dollars and imprisonment for a term often years.Use of trade marks on
the Internet
Counterfeiting a trademarkNo. 8 Trade Marks 2015 275(2) A person who—
(a)makes a sign identical to or so nearly
resembling a registered trade mark as to becalculated to deceive; or 
(b)falsifies a genuine registered trade mark,
whether by alteration, addition, effacement,
partial removal or otherwise,
without the consent of the proprietor of the registered
trade mark shall be deemed to counterfeit a registeredtrade mark.
50.(1) Any person who falsely applies a registered
trade mark to goods or services commits an offence andis liable on conviction on indictment to a fine of twohundred and fifty thousand dollars and to
imprisonment for ten years on indictment.
(2) For the purposes of this section and
sections 52, 56 and 57, a person falsely applies aregistered trade mark to goods or services if—
(a)without the consent of the proprietor of the
registered trade mark, the person appliesthe trade mark or a sign likely to bemistaken for that trade mark to the goodsor services; and 
(b)in the case of an application to goods, thegoods are not the genuine goods of theproprietor or licensee of the registered trade
mark. 
(3) For the purposes of subsection (2), a trade
mark shall be deemed to be applied to goods or services
if it is used in any—
(a)sign or advertisement; or 
(b)invoice, catalogue, business letter, business
paper, price list or other commercialdocument, including any such document inany medium, 
and the goods are delivered, or services provided, as the
case may be, to a person in pursuance of a request ororder made by reference to the trade mark as so used. Falsely applying a
registered trade markto goods or services276 No. 8 Trade Marks 2015(4) For the purposes of subsection (2)—
(a)a sign shall be deemed to be applied to
goods if—
(i) it is applied to the goods
themselves; or 
(ii) it is applied to any covering, label,
reel or thing in or with which the
goods are sold, offered or exposedfor sale or kept in possession for thepurpose of trade or manufacture;and 
(b)a sign shall be deemed to be applied to
goods or services if it is used in a manner
that is likely to lead persons to believe thatit refers to, describes or designates thegoods or services. 
(5) In subsection (4)—
“covering” includes any stopper, glass, bottle,
vessel, box, capsule, case, frame or
wrapper;
“label” includes any band or ticket.
51.Any person who—
(a)makes an article specifically designed or
adapted for making copies of a registeredtrade mark or a sign likely to be mistaken
for that trade mark; or 
(b)has such an article in his possession,
custody or control, 
knowing or having reason to believe that it has been, oris to be, used for, or in the course of, committing anoffence against section 49 or 50, commits an offence andis liable on conviction on indictment to a fine of twohundred and fifty thousand dollars and toimprisonment for ten years. 
52.(1) Subject to subsection (2), a person who—
(a)imports into Trinidad and Tobago for the
purpose of trade or manufacture;Making or possessing
of article forcommitting offence
Importing or selling ofgoods with falselyapplied trade markNo. 8 Trade Marks 2015 277(b)sells or offers or exposes for sale; or 
(c)has in his possession for the purpose of
trade or manufacture, 
any goods to which a registered trade mark is falsely
applied, commits an offence and is liable on convictionon indictment to a fine of two hundred and fiftythousand dollars, and to imprisonment for a term of tenyears.
(2) It is a defence to a charge under subsection (1)
if the person proves that—
(a)having taken all reasonable precautionsagainst committing an offence under thissection, he had, at the time of thecommission of the alleged offence, no reasonto suspect the genuineness of the mark andon demand made by, or on behalf of theprosecution, he gave all the information inhis power with respect to the persons fromwhom he obtained the goods; or
(b)he had acted innocently.
53.Any person who—
(a)makes, or causes to be made, a false entryin the Register;
(b)makes, or causes to be made, any thingfalse purporting to be a copy of an entry in
the Register; or
(c)produces or tenders or causes to beproduced or tendered in evidence any thingreferred to in paragraph (b),
knowing or having reason to believe that the entry orthing, as the case may be, is false commits an offenceand is liable on conviction on indictment to a fine of onehundred thousand dollars and to imprisonment for aterm of five years.
Falsification of
Register278 No. 8 Trade Marks 201554.(1) Any person who—
(a)falsely represents that a mark is a
registered mark, collective mark orcertification mark; or
(b)makes a false representation as to the goods
or services for which a mark is registered, 
knowing or having reason to believe that the
representation is false commits an offence and is liableon summary conviction to a fine of ten thousand dollars.
(2) For the purposes of this section, the use in the
course of trade in Trinidad and Tobago in relation to amark of—
(a)the word “registered”; or
(b)any other word or symbol importing a
reference, express or implied, toregistration,
shall be deemed to be a representation as to registration
under this Act unless it is shown that the reference is toregistration elsewhere than in Trinidad and Tobago andthat the mark is in fact so registered for the goods orservices in question. 
55.(1) Subject to subsection (2), where any person
commits an offence under any provision of this Part, the
Court may, where it considers appropriate, order theperson to forfeit to the State all or any—
(a)goods in relation to which; or 
(b)articles by means of which,
the offence was committed.
(2) Where any person commits an offence under
section 50 or 52 in relation to a registered trade mark,
the Court shall, unless it is of the view that there areexceptional circumstances for deciding otherwise, orderto be forfeited to the State and destroyed any goodswhich satisfy all of the following conditions: 
(a)the goods are goods in relation to which—
(i) the offence was committed; and Falsely representing
trade mark asregistered
Forfeiture anddestruction of goodson convictionNo. 8 Trade Marks 2015 279(ii) the trade mark has been falsely
applied; and 
(b)the goods or their packaging bear the trade
mark or sign giving rise to the false
application of the trade mark. 
(3) Any—
(a)forfeiture of goods or articles under
subsection (1); or
(b)forfeiture and destruction of goods undersubsection (2),
shall be in addition to any penalty or punishment thatthe Court may impose for the offence committed.
56.(1) Any police officer may arrest without a
warrant any person who, in any street or public place—
(a)sells or offers or exposes for sale; or 
(b)has, or is reasonably suspected of having, in
his possession for the purpose of trade ormanufacture,
any goods to which a registered trade mark is falselyapplied. 
(2) Any police officer or Officer designated by the
Comptroller may, pursuant to a warrant issued undersubsection (3)—
(a)stop, search and board, whether forcibly orotherwise, any conveyance in which hereasonably suspects there are goods towhich a registered trade mark has beenfalsely applied; and 
(b) seize, remove or detain any such goods and
anything which appears to him—
(i) to be or to contain; or 
(ii) to be likely to be or to contain, 
evidence of any offence under section 49, 50, 51 or 52.Enforcement
measures280 No. 8 Trade Marks 2015(3) If information is given upon oath to a
Magistrate that there is reasonable cause for suspecting
that there is in any premises or conveyance—
(a)any goods which are the subject of an
offence under section 49, 50, 51 or 52;
(b)any material or article which has been usedin the commission of an offence under
section 49, 50, 51 or 52; or 
(c)any document which is evidence that an
offence under section 50, 51, 52, 53 or 55has been committed,
the Magistrate may issue, either unconditionally or
subject to such conditions as the Magistrate thinks fit, awarrant authorising a police officer to enter and search
the premises or conveyance for any goods, material,article or document referred to in the warrant, whetherspecifically or in any general category, and to seize anysuch goods, material, article or document found at thepremises or conveyance.
(4) If any goods, material, article or document has
been seized under subsection (3) and—
(a)in proceedings brought under section 49, 50,
51 or 52,  no order is made as to thedisposal of the goods, material, article ordocument; or 
(b)no such proceedings are instituted withinsix months of the seizure, 
the goods, material, article or document shall be
returned to the person in whose possession it was whenit was seized or, if it is not reasonably practicable toreturn it to that person, shall be disposed of in suchmanner as the Magistrate may order. 
(5) No action or other legal proceeding shall lie
against the State or any officer or employee thereof foranything which is in good faith done or omitted to bedone in the exercise of any power, duty or functionunder this section. No. 8 Trade Marks 2015 281(6) In this section—
“conveyance” includes any vehicle, vessel or
aircraft in which persons or goods can be
carried;
“document” means anything in which
information of any description is recorded; 
“premises” includes any land, building or
structure.
PART VI
INTERNATIONAL MATTERS
The Madrid Protocol
57.(1) The Minister may make regulations to give
effect to the provisions of the Madrid Protocol or of any
treaty, convention, arrangement or engagementrelating to trade marks to which Trinidad and Tobago isa party. 
(2) Regulations under subsection (1) may, in
particular, provide for—
(a)the making of applications for internationalregistrations by way of the IntellectualProperty Office as the office of origin;
(b)the procedures to be followed where thebasic application or registration in Trinidad
and Tobago fails or ceases to be in force; 
(c)the procedures to be followed where theIntellectual Property Office receives fromthe International Bureau or any bodyspecified in the rules, a request forextension of protection to Trinidad andTobago; 
(d)the effects of a successful request forextension of protection to Trinidad andTobago; Power to make
provision giving effectto Madrid Protocol,
etc.282 No. 8 Trade Marks 2015(e)the transformation of an international
application for registration into a nationalapplication for registration; 
(f)the communication of information to the
International Bureau; 
(g)the payment of fees and amounts in respect
of applications for internationalregistrations, extensions of protection andrenewals of international registrations; and
(h)the application of section 37 and Parts Vand XI to an international trade mark(Trinidad and Tobago).
(3) For the purposes of this section—
“basic application” has the meaning assigned
by Article 2(1) of the Madrid Protocol;
“basic registration” has the meaning assigned
by Article 2(1) of the Madrid Protocol;
“international application” has the meaning
assigned by Article 2(2) of the Madrid
Protocol;
“International Bureau” has the meaning
assigned by Article 2(1) of the MadridProtocol;
“international registration” has the meaning
assigned by Article 2(1) of the MadridProtocol;
“international trade mark (Trinidad and
Tobago)” means a trade mark which isentitled to protection in Trinidad andTobago under the Madrid Protocol;
“Madrid Protocol” means the Protocol relating
to the Madrid Agreement concerning theInternational Registration of Marks,adopted at Madrid on 27th June, 1989, asrevised or amended from time to time.No. 8 Trade Marks 2015 283The Paris Convention, the TRIPS Agreement and
Well-known Marks: Supplementary Provisions
58.(1) A well-known trade mark is entitled to
protection under this section whether or not the—
(a)trade mark has been registered in Trinidad
and Tobago, or an application for theregistration of the trade mark has beenmade to the Controller; and
(b)proprietor of the trade mark carries onbusiness, or has any goodwill, in Trinidadand Tobago. 
(2) Subject to subsections (6) and (7), the
proprietor of a well-known trade mark is entitled to
restrain by injunction the use in Trinidad and Tobago,in the course of trade and without the proprietor’sconsent, of any trade mark which, or an essential part ofwhich, is identical with, or similar to, the proprietor’strade mark in relation to identical or similar goods orservices, where the use is likely to cause confusion.
(3) Subject to subsections (6) and (7), the
proprietor of a well-known trade mark is entitled torestrain by injunction the use in Trinidad and Tobago,in the course of trade and without the proprietor’sconsent, of any trade mark which, or an essential part ofwhich, is identical with, or similar to, the proprietor’s
well-known trade mark in relation to any goods or
services, where the use of the trade mark would—
(a)indicate a connection between those goods
or services and the proprietor, and is likelyto damage the interests of the proprietor; 
(b) cause dilution in an unfair manner of thedistinctive character of the proprietor’swell-known trade mark; or
(c)take unfair advantage of the distinctivecharacter of the proprietor’s well-knowntrade mark. Protection of
well-known trademarks284 No. 8 Trade Marks 2015(4) Subject to subsections (6) and (7), the
proprietor of a well-known trade mark is entitled to
restrain by injunction the use in Trinidad and Tobago,without the proprietor’s consent, of any businessidentifier which, or an essential part of which, is
identical with, or similar to, the proprietor’s well-knowntrade mark where the use of the business identifierwould—
(a)indicate a connection between the business
in respect of which it is used and theproprietor, and is likely to damage theinterests of the proprietor; 
(b)cause dilution in an unfair manner of thedistinctive character of the proprietor’swell-known trade mark; or 
(c)take unfair advantage of the distinctivecharacter of the proprietor’s well-knowntrade mark.
(5) If the Court grants an injunction under
subsection (4) restraining the use by any business of any
business identifier, the Court may make such otherorder as the Court deems fit in respect of any entry inany record maintained by any person, body or authoritywhich associates that business with that businessidentifier. 
(6) The proprietor is not entitled to the right
referred to in subsection (2), (3) or (4) if the use of thetrade mark or business identifier, as the case may be,began before the proprietor’s trade mark becamewell-known in Trinidad and Tobago, unless the trademark or business identifier has been used in bad faith. 
(7) The proprietor ceases to be entitled to the
right referred to in subsection (2), (3) or (4) if theproprietor has acquiesced for a continuous period of fiveyears in the use of the trade mark or businessidentifier, as the case may be, in Trinidad and Tobago,being aware of that use, unless the trade mark orbusiness identifier has been used in bad faith. No. 8 Trade Marks 2015 285(8) In deciding whether the trade mark or
business identifier, as the case may be, has been used in
bad faith, it shall be relevant to consider whether theperson who used the trade mark or business identifierhad, at the time he began to use the trade mark or
business identifier, knowledge of, or reason to know of,the proprietor’s well-known trade mark. 
(9) Nothing in subsection (2) affects the
continuation of any use referred to therein in good faithof a trade mark that began before the commencement ofthis Act. 
(10) Nothing in subsection (3) or (4) shall affect the
continuation of any use referred to therein in good faithof a trade mark or business identifier, as the case may
be, that began before the commencement of this Act. 
(11) For the purposes of this section and
sections 59, 60, 61 and 63, “use”, in relation to a trademark, means use within the meaning of section 28(4).
59.(1) Notwithstanding section 58, the proprietor of
a well-known trade mark is not entitled to restrain byinjunction the use, in Trinidad and Tobago inaccordance with honest practices in industrial orcommercial matters, by any person of—
(a)the name of—
(i) the person himself; 
(ii) the person’s place of business; 
(iii) the person’s predecessor in
business; or 
(iv) the place of business of the person’s
predecessor in business; 
(b)any sign to indicate—
(i) the kind, quality, quantity,
intended purpose, value,geographical origin or othercharacteristic of goods or services;or 
(ii) the time of production of goods or of
the rendering of services; orPermitted use of
well-known trademarks286 No. 8 Trade Marks 2015(c)the trade mark to indicate the intended
purpose of goods, in particular asaccessories or spare parts, or services.
(2) Notwithstanding section 58, the proprietor of
a well-known trade mark shall not be entitled to
restrain by injunction the use, in Trinidad and Tobago,of any registered trade mark in relation to goods orservices for which the latter is registered.
(3) Notwithstanding section 58, the proprietor of
a well-known trade mark shall not be entitled torestrain by injunction the use, in Trinidad and Tobago,of the trade mark if the use—
(a)constitutes fair use in comparative
commercial advertising or promotion;
(b)is for a non-commercial purpose; or 
(c)is for the purpose of news reporting or newscommentary.
60.(1) A trade mark which consists of, or contains,
the flag of a Convention country shall not be registered
without the authorisation of the competent authoritiesof that country, unless it appears to the Controller thatuse of the flag in the manner proposed is permittedwithout such authorisation. 
(2) A trade mark which consists of, or contains,
the armorial bearings or any other State emblem of aConvention country which is protected under the ParisConvention or the TRIPS Agreement shall not beregistered without the authorisation of the competentauthorities of that country.
(3) A trade mark which consists of, or contains,
an official sign or hallmark adopted by a Conventioncountry and indicating control and warranty shall not,where the sign or hallmark is protected under the ParisConvention or the TRIPS Agreement, be registered inrelation to goods or services of the same or a similarkind, as those in relation to which it indicates controland warranty in relation to goods and services, withoutthe authorisation of the competent authorities of thecountry concerned. National emblems,
etc., of Conventioncountries: Article 6ter
of Paris Convention
and TRIPSAgreementNo. 8 Trade Marks 2015 287(4) The provisions of this section as to national
flags and other State emblems, and official signs or
hallmarks, apply equally to anything which from aheraldic point of view imitates any such flag or otheremblem, or sign or hallmark.
(5) Nothing in this section prevents the
registration of a trade mark on the application of a
national of a country who is authorised to make use of aState emblem, or official sign or hallmark, of thatcountry, notwithstanding that it is similar to that ofanother country. 
(6) Where by virtue of this section the
authorisation of the competent authorities of aConvention country is or would be required for the
registration of a trade mark, those authorities areentitled to restrain by injunction any use in the courseof trade of the trade mark in Trinidad and Tobagowithout their authorisation.
61.(1) This section shall apply to—
(a)the armorial bearings, flags or other
emblems; and 
(b)the abbreviations and names,
of international organisations of which one or more
Convention countries are members. 
(2) A trade mark which consists of, or contains,
any emblem, abbreviation or name which is protected
under the Paris Convention or the TRIPS Agreement
shall not be registered without the authorisation of theinternational organisation concerned, unless it appearsto the Controller that the use of the emblem,abbreviation or name in the manner proposed—
(a)does not suggest to the public that a
connection exists between the organisationand the trade mark; or
(b)is not likely to mislead the public as to theexistence of a connection between the userand the organisation. Emblems, etc., of
certain internationalorganisations: Article
6ter of Paris
Convention andTRIPS Agreement288 No. 8 Trade Marks 2015(3) The provisions of this section as to emblems of
an international organisation apply equally to anything
which from a heraldic point of view imitates any suchemblem. 
(4) Where, by virtue of this section, the
authorisation of an international organisation is or
would be required for the registration of a trade mark,that organisation is entitled to restrain by injunctionany use in the course of trade of the trade mark inTrinidad and Tobago without its authorisation. 
(5) Nothing in this section affects the rights of a
person whose bona fide use of the trade mark in
question began before August 1, 1964.
62.(1) For the purposes of section 60, State emblems
of a Convention country, other than the national flag,
shall be regarded as protected under the ParisConvention or the TRIPS Agreement only if, or to theextent that—
(a)the country in question has notified
Trinidad and Tobago in accordance withArticle 6ter (3) of the Paris Convention, orunder that Article as applied by the TRIPSAgreement, that it desires to protect thatemblem, sign or hallmark; 
(b)the notification remains in force; and 
(c)Trinidad and Tobago has not objected to itin accordance with Article 6ter (4) of theParis Convention, or under that Article asapplied by the TRIPS Agreement, or anysuch objection has been withdrawn. 
(2) For the purposes of section 61, the emblems,
abbreviations and names of an international
organisation shall be regarded as protected under theParis Convention or the TRIPS Agreement only if, or tothe extent that—
(a)the organisation in question has notified
Trinidad and Tobago in accordance withArticle 6ter (3) of the Paris Convention, orNotification under
Article 6ter of ParisConvention and
TRIPS AgreementNo. 8 Trade Marks 2015 289under that Article as applied by the TRIPS
Agreement, that it desires to protect thatemblem, abbreviation or name; 
(b)the notification remains in force; and
(c)Trinidad and Tobago has not objected to itin accordance with Article 6ter (4) of theParis Convention, or under that Article asapplied by the TRIPS Agreement, or anysuch objection has been withdrawn.
(3) Notification under Article 6ter (3) of the Paris
Convention, or under that Article as applied by the
TRIPS Agreement, shall have effect only in relation toapplications for registration made more than twomonths after the receipt of the notification.
(4) The Controller shall keep and make available
for public inspection by any person, during the hours
when the Intellectual Property Office is open forbusiness and free of charge, a list of—
(a)the state emblems and official signs or
hallmarks; and 
(b)the emblems, abbreviations and names ofinternational organisations,
which are for the time being protected under the Paris
Convention or the TRIPS Agreement by virtue of anotification under Article 6ter (3) of that Convention or
under that Article as applied by the TRIPS Agreement.
63.(1) Subsections (2) to (6) apply where an
application for registration of a trade mark is made by a
person who is an agent or representative of a personwho is the proprietor of the trade mark in a Conventioncountry.
(2) If the proprietor opposes the application,
registration shall be refused.
(3) If the application is not opposed and is
granted, the proprietor may—
(a)apply for a declaration of the invalidity of
the registration; or Acts of agent or
representative:Convention   country290 No. 8 Trade Marks 2015(b)apply for the rectification of the register so
as to substitute his name as the proprietorof the registered trade mark. 
(4) Notwithstanding the rights conferred by this
Act in relation to a registered trade mark, the proprietor
may, by injunction, restrain any use in the course oftrade of the trade mark in Trinidad and Tobago which isnot authorised by him.
(5) Subsections (2), (3) and (4) do not apply if, or
to the extent that, the agent or representative justifieshis action. 
(6) An application under subsection (3) (a) or (b)
shall be made within three years of the proprietorbecoming aware of the registration. 
(7) No injunction shall be granted under
subsection (4) in respect of a use in which the proprietor
has acquiesced for a continuous period of three years ormore.
PART VII
C
OLLECTIVE MARKS
64.(1) The provisions of this Act shall apply to
collective marks subject to the provisions of this Part.  
(2) A collective mark is a sign used, or intended to
be used, in relation to goods or services dealt with or
provided in the course of trade by members of anassociation to distinguish those goods or services fromgoods or services so dealt with or provided by personswho are not members of the association. 
(3) In relation to a collective mark, the reference
in the definition of “trade mark” in section 3 todistinguishing goods or services dealt with or providedin the course of trade by a person from those so dealtwith or provided by any other person shall be construed
as a reference to distinguishing goods or services dealtwith or provided in the course of trade by members of anCollective marksNo. 8 Trade Marks 2015 291association which is the proprietor of the mark from
those so dealt with or provided by persons who are notmembers of the association.
65.(1) Notwithstanding section 8(1) (c), a collective
mark which consists of signs or indications which may
serve, in trade, to designate the geographical origin ofthe goods or services may be registered. 
(2) The proprietor of a mark under subsection (1)
is not entitled to prohibit the use of the signs orindications in accordance with honest practices inindustrial or commercial matters, including, by a personwho is entitled to use a geographical name. 
(3) A collective mark shall not be registered if the
public is likely to be misled as regards the character or
significance of the mark, including, if it is likely to betaken to be something other than a collective mark.
(4) The Controller may require that a mark in
respect of which application is made for registration asa collective mark include some indication that it is acollective mark. 
(5) Notwithstanding section 15(3), an application
may be amended so as to comply with subsections (3)and (4).
66.(1) An applicant for registration of a collective
mark shall, within the prescribed period following thedate of the application, file with the Controller rules
governing the use of the mark and pay the prescribed
fee.
(2) The rules under subsection (1) shall specify—
(a)the persons authorised to use the mark;
(b)the conditions of membership of the
association; and
(c)where they exist, the conditions of use of themark, including any sanctions againstmisuse,
and further requirements with which the rules shall
comply may be imposed by Regulations.Registration of
collective marks
Rules governing use ofcollective marks292 No. 8 Trade Marks 2015(3) A collective mark shall not be registered
unless the rules governing the use of the mark—
(a)comply with subsection (2); and 
(b)are not contrary to public policy or to
accepted principles of morality.
(4) An application for registration of a collective
mark shall be deemed to be withdrawn if an applicant
fails to comply with subsection (1). 
67.(1) If it appears to the Controller that the
requirements under section 66(3) are not satisfied, heshall inform the applicant and give him an opportunity,within such period as the Controller may specify, tomake representations or to file amended rules. 
(2) If the applicant responds within the specified
period but fails to satisfy the Controller that the
requirements under section 66(3) are satisfied, or to filerules that have been amended so as to satisfy thoserequirements, the Controller may refuse theapplication. 
(3) If the applicant fails to respond within the
specified period, the application shall be treated aswithdrawn. 
(4) If it appears to the Controller that the
requirements under section 66(3), and any otherrequirements for registration are satisfied, he shallaccept the application and shall proceed in accordancewith section 14.
(5) The Controller shall publish a notice that the
rules governing the use of the collective mark are opento public inspection in accordance with section 68 andnotice of opposition may be given and observations maybe made relating to the matters mentioned insection 66(3), in addition to any other grounds on whichthe application may be opposed or observations made.
68.The rules governing the use of a registered
collective mark shall be open to public inspection in thesame manner as the Register. Controller’s discretion
regarding rules
Rules to be open toinspection No. 8 Trade Marks 2015 29369.(1) An amendment of the rules governing the use
of a registered collective mark is of no effect unless the
amended rules are filed with the Controller andaccepted by him. 
(2) Before accepting any amended rules, the
Controller shall publish a notice that the amended rules
have been filed and are open to public inspection in
accordance with section 68 and notice of opposition may
be given, and observations may be made, relating to thematters mentioned in section 66(3). 
70.(1) Section 28(5) and section 97 apply in relation
to an authorised user of a registered collective mark as
in relation to a licensee of a trade mark.
(2) Section 46 has effect as regards the rights of
an authorised user in relation to infringement of a
registered collective mark. 
(3) An authorised user is entitled, subject to any
agreement to the contrary between him and theproprietor, to request the proprietor to takeinfringement proceedings in respect of any matterwhich affects his interests. 
(4) Subject to subsection (5), if the proprietor—
(a)refuses to do so; or
(b)fails to do so within two months after being
called upon,
the authorised user may bring the proceedings in his
own name as if he were the proprietor.
(5) Where infringement proceedings are brought
under this section, the authorised user shall not,without the leave of the Court, proceed with the actionunless the proprietor is either joined as a claimant oradded as a defendant. 
(6) Subsection (5) does not affect the granting of
interlocutory relief on an application by an authoriseduser alone.Amendment of rules
Rights of authorised
users regardinginfringement of a
collective mark294 No. 8 Trade Marks 2015(7) A proprietor who is added as a defendant
under subsection (5) shall not be made liable for any
costs in the action unless he takes part in theproceedings. 
(8) In infringement proceedings brought by the
proprietor of a registered collective mark any loss
suffered or likely to be suffered by authorised users
shall be taken into account by the Court which may givesuch directions as it thinks fit as to the extent to whichthe claimant is to hold the proceeds of any pecuniaryremedy on behalf of the authorised users.
71.(1) In addition to the grounds of revocation
provided for in section 23, the registration of a collective
mark may be revoked on the ground that—
(a)the manner in which the mark has been
used by the proprietor has caused it tobecome likely to mislead the public in themanner referred to in section 65(3); 
(b)the proprietor has failed to observe, or to
secure the observance of, the rulesgoverning the use of the mark; or 
(c)an amendment of the rules has been madeso that the rules—
(i) no longer comply with section 66(2)
and any further requirements
imposed by Regulations; or 
(ii) are contrary to public policy or to
accepted principles of morality. 
72.In addition to the grounds of invalidity provided
for in section 24, the registration of a collective mark
may be declared invalid on the ground that the markwas registered in breach of the provisions ofsection 65(3) or section 66(3).Grounds for
revocation ofregistration of
collective marks
Grounds for invalidity
of registrationNo. 8 Trade Marks 2015 295PART VIII
CERTIFICATION MARKS
73.(1) The provisions of this Act shall apply to
certification marks subject to the provisions of this Part.
(2) A certification mark is a sign used, or
intended to be used, to distinguish goods or services—
(a)dealt with or provided in the course of
trade; and 
(b)certified by the proprietor of the
certification mark in relation to origin,material, mode of manufacture of goods, orperformance of services, quality, accuracyor other characteristics,
from other goods or services dealt with or provided in
the course of trade but not so certified.
(3) In relation to a certification mark, the
reference in the definition of “trade mark” in section 3(1)to distinguishing goods or services dealt with orprovided in the course of trade by a person from those sodealt with or provided by any other person shall beconstrued as a reference to distinguishing goods orservices dealt with or provided in the course of tradeand which are certified in the manner referred to insubsection (2) (b)from those which are not so certified.
74.(1) Notwithstanding section 8(1) (c),a certifica-
tion mark which consists of signs or indications whichmay serve, in trade, to designate the geographical originof the goods or services may be registered. 
(2) The proprietor of a mark under subsection (1)
is not entitled to prohibit the use of the signs orindications in accordance with honest practices inindustrial or commercial matters, including, by a personwho is entitled to use a geographical name. Certification marks 
Registration of
certification marks296 No. 8 Trade Marks 2015(3) A certification mark shall not be registered if
the proprietor carries on a business involving the supply
of goods or services of the kind certified. 
(4) A certification mark shall not be registered if
the public is likely to be misled as regards the character
or significance of the mark, including if it is likely to betaken to be something other than a certification mark. 
(5) The Controller may require that a mark in
respect of which application is made for registration asa certification mark  include some indication that it is acertification mark. 
(6) Notwithstanding section 15(3), an application
may be amended so as to comply with subsections (4)
and (5).
75.(1) An applicant for registration of a certification
mark shall within the prescribed period file with the
Controller the rules governing the use of the mark. 
(2) The rules under subsection (1) shall specify—
(a)who is authorised to use the mark;
(b)the characteristics to be certified by the
mark;
(c)how the certifying body is to test thosecharacteristics and to supervise the use ofthe mark; and
(d)the fees, if any, to be paid in connectionwith the use of the mark and the proceduresfor resolving disputes,
and further requirements with which the rules shall
comply may be imposed by Regulations.
(3) A certification mark shall not be registered
unless—
(a) the rules governing the use of the mark—
(i) comply with subsection (2); and Rules governing use of
certification markNo. 8 Trade Marks 2015 297(ii) are not contrary to public policy or
to accepted principles of morality;
and 
(b)the applicant is competent to certify the
goods or services for which the mark is to beregistered. 
(4) An application for registration of a
certification mark shall be deemed to be withdrawn if an
applicant fails to comply with subsection (1).
76.(1) If it appears to the Controller that the
requirements under section 75(3) are not satisfied, he
shall inform the applicant and give him an opportunity,within such period as the Controller may specify, to
make representations or to file amended rules. 
(2) If the applicant responds within the specified
period but fails to satisfy the Controller that therequirements under section 75(3) are satisfied, or to filerules that have been amended so as to satisfy thoserequirements, the Controller may refuse theapplication. 
(3) If the applicant fails to respond within the
specified period, the application shall be treated aswithdrawn.
(4) If it appears to the Controller that the
requirements under section 75(3), and any otherrequirements for registration, are satisfied, he shallaccept the application and shall proceed in accordancewith section 14. 
(5) The Controller shall publish a notice that the
rules governing the use of the certification mark areopen to public inspection in accordance with section 77and notice of opposition may be given and observationsmay be made relating to matters mentioned insection 75(3), in addition to any other ground on whichthe application may be opposed or observations made. 
77.The rules governing the use of a registered
certification mark shall be open to public inspection inthe same manner as the Register. Controller’s discretion
regarding Rules
Rules to be open toinspection298 No. 8 Trade Marks 201578.(1) An amendment of the rules governing the use
of a registered certification mark is of no effect unless
and until the amended rules are filed with theController and accepted by him. 
(2) Before accepting any amended rules, the
Controller may in any case where it appears to him
expedient to do so cause them to be published and if hedoes so, notice of opposition may be given, andobservations may be made, relating to the mattersmentioned in section 75(3).
79.(1) The assignment or other transmission of a
registered certification mark is of no effect without thewritten consent of the Controller.
80.(1) Section 28(5) and section 97 apply in relation
to an authorised user of a registered certification mark
as in relation to a licensee of a trade mark.
(2) In infringement proceedings brought by the
proprietor of a registered certification mark, any losssuffered or likely to be suffered by authorised usersshall be taken into account by the Court which may givesuch directions as it thinks fit as to the extent to whichthe claimant is to hold the proceeds of any pecuniaryremedy on behalf of authorised users.
81.(1) In addition to the grounds of revocation
provided for in section 23, the registration of a
certification mark may be revoked on the ground that—
(a)the proprietor has begun to carry on such a
business as referred to in section 74(3); 
(b)the manner in which the certification markhas been used by the proprietor has causedit to become likely to mislead the public inthe manner referred to in section 74(4);
(c)the proprietor has failed to observe, or tosecure the observance of, the rulesgoverning the use of the certification mark; Amendment of rules 
Consent to
assignment ofregistered certification
mark
Rights of authorised
users regardinginfringement of a
certification mark
Grounds for
revocation ofregistrationNo. 8 Trade Marks 2015 299(d)an amendment of the rules has been made
so that the rules—
(i) no longer comply with section 75(2)
and any further conditions imposedby Regulations; or 
(ii) are contrary to public policy or to
accepted principles of morality; or 
(e)the proprietor is no longer competent to
certify the goods or services for which thecertification mark is registered. 
82.In addition to the grounds of invalidity provided
for in section 24, the registration of a certification markmay be declared invalid on the ground that themark was registered in breach of the provisions of
section 74(3), 74(4) or 75(3).
PART IX
R
EGISTER OF TRADE MARKS
83.(1) The Controller shall maintain a Register of
Trade Marks. 
(2) There shall be entered in the Register in
accordance with this Act—
(a)registered trade marks; 
(b)such particulars of registrable transactions
affecting a registered trade mark as may beprescribed; and
(c)such other matters relating to registeredtrade marks as may be prescribed.
(3) The Register may be kept, in whole or in part,
in electronic form. 
(4) Any record of a particular or other matter
made electronically for the purpose of keeping the
Register is taken to be an entry in the Register. 
84.(1) The Register shall be available at the
Intellectual Property Office for inspection by any person
during the hours when the Intellectual Property Officeis open for business. Grounds for invalidity
of registration
The Register
Inspection of, andextract from, Register300 No. 8 Trade Marks 2015(2) If the Register, or any part of the Register is
kept in electronic form, subsection (1) is satisfied if a
person who wants to inspect the Register or that part ofthe Register is given access to a computer terminal fromwhich he can read on a screen, or obtain a printed copyof, the particulars or other matters recorded in theRegister or that part of the Register. 
(3) Any person who applies for a certified copy of
an entry in the Register or a certified extract from theRegister shall be entitled to obtain such a copy orextract on payment of the prescribed fee and any personwho applies for an uncertified copy or extract shall beentitled to such a copy or extract on payment of the
prescribed fee. 
(4) In relation to any portion of the Register kept
otherwise than in documentary form, the right to a copy
or extract conferred by subsection (3) is a right to a copyor extract in a form in which it can be taken away. 
(5) In this section, “certified copy” or “certified
extract” means a copy or extract, respectively, which iscertified by the Controller and sealed with the seal ofthe Controller.
85.(1) Any person having a sufficient interest may
apply for the rectification of an error or omission in theRegister. 
(2) An application for rectification shall not be
made in respect of a matter affecting the validity of theregistration of a trade mark. 
(3) An application for rectification may be made
either to the Controller or to the Court, except that—
(a)if proceedings concerning the trade mark in
question are pending in the Court, theapplication shall be made to the Court; and 
Rectification or
correction of RegisterNo. 8 Trade Marks 2015 301(b)if in any other case the application is made
to the Controller, he may at any stage of theproceedings refer the application to theCourt. 
(4) Except where the Controller or the Court
directs otherwise, the effect of rectification of the
Register is that the error or omission in question shallbe deemed never to have been made. 
(5) The Controller may, on request made in the
prescribed manner by the proprietor of a registeredtrade mark, or a licensee, enter any change in his nameor address as recorded in the Register. 
(6) The Controller may remove from the Register
matters appearing to him to have ceased to have effect. 
PART X
P
OWERS AND DUTIES OF CONTROLLER
86.(1) The Controller may award costs in respect of
the matters, and in the amounts, provided for in the
Regulations, against any party to proceedings broughtbefore him. 
(2) The Regulations may provide for the taxation
of the costs, or any part of the costs, by the Controller. 
(3) A party desirous to obtain costs or to have the
costs taxed shall apply to the Controller in accordance
with the Regulations. 
(4) If a party is ordered to pay the costs of
another party, the costs may be recovered in a court ofcompetent jurisdiction as a debt due by the first party tothe other party. 
87.(1) If the Controller is satisfied that the
circumstances justify it, he may, upon receiving a
written request and upon payment of the prescribed fee,extend the time for doing any act or taking anyproceeding under this Act, other than the filing of anotice of opposition.
(2) Where an extension is granted under
subsection (1), the Controller shall give notice to theparties concerned.Costs awarded by
Controller
Extensions of time302 No. 8 Trade Marks 2015(3) An extension under subsection (1) may be
granted—
(a)subject to such terms as the Controller may
direct; and
(b)notwithstanding that the time for doing theact or taking the proceeding has expired.
88.Where any discretionary or other power is given
to the Controller by this Act, he shall not exercise thatpower adversely to the applicant for registration or theregistered proprietor of the trade mark in questionwithout giving to the applicant or registered proprietoran opportunity of being heard or making representationin writing.
89.If a person who neither resides nor carries on
business in Trinidad and Tobago—
(a)gives notice of opposition under section 14;
or 
(b)applies to the Controller under section 23 or24 for the registration of a trade mark to berevoked or to be declared invalid, as thecase may be,
the Controller may require the person to give security
for the costs for the proceedings and may, if security isnot given, dismiss the proceedings. 
90.The Controller may, for the purposes of any
proceedings before him under this Act—
(a)summon witnesses, including independent
expert witnesses; 
(b)receive evidence on oath, whether orally orotherwise; and 
(c)require the production of documents orarticles. 
91.(1) A person who has been summoned to appear
as a witness before the Controller shall not, without
lawful excuse, fail to appear in obedience to thesummons. Hearing before
exercise ofController's discretion
Security for costs
Evidence beforeController
Disobedience tosummons an offenceNo. 8 Trade Marks 2015 303(2) A person who has been required by the
Controller to produce a document or article shall not,
without lawful excuse, fail to produce the document orarticle.
(3) Any person who contravenes subsection (1)
or (2), commits an offence and is liable on summary
conviction to a fine of ten thousand dollars and toimprisonment for one year. 
92.(1) A person who appears before the Controller
shall not, without lawful excuse, refuse to be sworn or tomake an affirmation, or to produce documents orarticles, or to answer questions, which he is lawfullyrequired to produce or answer. 
(2) A person who contravenes subsection (1)
commits an offence and is liable on summary conviction
to a fine of ten thousand dollars and to imprisonment forone year. 
93.(1) The Controller shall not be taken to warrant
the validity of the registration of a trade mark under
this Act or under any treaty, convention, arrangementor engagement to which Trinidad and Tobago is a party. 
(2) The Controller is not subject to any liability by
reason of, or in connection with, any examinationrequired or authorised by this Act, or any such treaty,convention, arrangement or engagement, or any reportor other proceedings consequent on such examination.
(3) No proceedings shall lie against an officer of
the Intellectual Property Office in respect of any matter
for which, by virtue of this section, the Controller is notliable. 
94.(1) The Court shall have jurisdiction in cases of
disputes relating to the application of this Act. 
(2) An appeal lies to the Court from any decision
of the Controller under this Act. Refusal to give
evidence an offence 
Exclusion of liabilityin respect of officialacts
Jurisdiction of Court304 No. 8 Trade Marks 201595.Except as otherwise provided by the Regulations,
any act required or authorised by this Act to be done by,
or to a person in connection with the registration of atrade mark, or any procedure relating to a registeredtrade mark, may be done by, or to an agent authorised
by that person in the prescribed form.
PART XI
B
ORDER ENFORCEMENT MEASURES
96.(1) In this Part, unless the context otherwise
requires—
“aircraft” has the meaning assigned under
section 2 of the Customs Act;
“Comptroller” means the Comptroller of
Customs and Excise referred to in section 2
of the Customs Act;
“conveyance” means any vessel, train, vehicle
or aircraft in which persons or goods can be
carried;
“Customs area” has the meaning assigned to it
in section 2 of the Customs Act;
“goods” includes all kinds of goods, wares,
merchandise and livestock; 
“goods in transit” means goods imported,
whether or not landed or transshipped
within Trinidad and Tobago, which are tobe carried to another country either by thesame or another conveyance;
“importer” has the meaning assigned under
section 2 of the Customs Act;
“infringement action” means an action for an
infringement of a registered trade markarising from the importation of seizedgoods;Recognition of agents
Interpretation of
Part XI (BorderEnforcement
Measures)No. 8 Trade Marks 2015 305“master” has the meaning assigned under
section 2 of the Shipping Act;
“objector”, in relation to seized goods, means
the person who gave the notice under
section 97 as a result of the giving of whichthe goods were seized; 
“proprietor”, in relation to a registered trade
mark, includes a licensee of the trademark;
“retention period”, in relation to seized goods,
means—
(a)the period specified in a notice
given under section 100 in respectof the goods; or
(b)if that period has been extendedunder section 100, that period asso extended;
“seized goods” means goods seized under
section 97;
“vehicle ”includes any vehicle in which persons
or goods can be carried by land howeverdrawn or propelled or set or kept in motion; 
“vessel” includes any ship or boat or other
description of vessel used in navigation.
(2) Any act, matter or thing required by this Part
to be done or performed by, with, to or before the
Comptroller, if done or performed by, with, to or beforeany Officer appointed by the Comptroller for thatpurpose shall be deemed to be done or performed by theComptroller.
97.(1) A person who is the proprietor or a licensee of
a registered trade mark may give the Comptroller awritten notice—
(a)stating that he is—
(i) the proprietor of the registered
trade mark; or
Restriction of
importation ofinfringing goodsChap. 50:10306 No. 8 Trade Marks 2015(ii) a licensee thereof having the power
to give such a notice;
(b)stating that goods which, in relation to the
registered trade mark, are infringing goods,are expected to be imported;
(c)providing sufficient information—
(i) to identify the goods; 
(ii) to enable the Comptroller to
ascertain when and where the
goods are expected to be imported;and
(iii) to satisfy the Comptroller that the
goods are infringing goods; and 
(d)stating that he objects to such importation.
(2) A notice given under subsection (1) shall be
supported by such documents and information, and
accompanied by such fee, as may be prescribed. 
(3) A notice under subsection (1) shall remain in
force until the end of the period of sixty dayscommencing on the day on which the notice was given,unless it is withdrawn, before the end of that period, byletter given to the Comptroller—
(a)by the licensee, if the person giving the
notice is a licensee of the registered trademark and he has power to withdraw the
notice; or
(b)by the proprietor of the registered trademark in any other case. 
(4) If—
(a)a notice has been given under this section inrespect of a registered trade mark; 
(b)the notice has not lapsed or beenwithdrawn; and
(c)a person imports goods, not being goods intransit, which bear a sign that, or whoseNo. 8 Trade Marks 2015 307packaging bears a sign that, in the opinion
of the Comptroller is identical with orsimilar to the registered trade mark inquestion, 
the Comptroller may seize the goods. 
98.The Comptroller may refuse to seize goods under
section 97 unless—
(a)the objector has deposited with the
Comptroller a sum of money that, in theopinion of the Comptroller, is sufficient to—
(i) reimburse the State for any liability
or expense it is likely to incur as aresult of the seizure of the goods; and 
(ii) pay such compensation as may be
ordered by the Court under
section 104(2) or 105(6); or 
(b)the objector has given security, to thesatisfaction of the Comptroller, for thereimbursement of the State for any suchliability or expense and the payment of suchcompensation.
99.Seized goods shall be taken to such secure place
as the Comptroller directs.
100. (1) As soon as is practicable after goods are
seized under section 97, the Comptroller shall give to
the importer and the objector, either personally or bypost, a written notice identifying the goods and statingthat they have been seized. 
(2) A notice under subsection (1) shall state that
the goods shall be released to the importer unless—
(a)an infringement action in respect of the
goods is instituted by the objector within aspecified period from the date specified inthe notice, being no more than one monthfrom the date of the notice; and Security for liability
or expense of seizure
Secure storage ofseized goods
Notice of seizure308 No. 8 Trade Marks 2015(b)the objector gives written notice to the
Comptroller within the specified periodstating that the infringement action hasbeen instituted. 
(3) The date specified for the purposes of
subsection (2) (a)shall not be earlier than the date on
which the notice is given. 
(4) The objector may, by written notice given to
the Comptroller before the end of the specified period
referred to in subsection (2) (a), request that the period
be extended. 
(5) Subject to subsection (6), if—
(a)a request is made in accordance with
subsection (4); and 
(b)the Comptroller is satisfied that it isreasonable that the request be granted, 
the Comptroller may extend the specified period by such
period as he thinks fit. 
(6) A decision on a request made in accordance
with subsection (4) shall be made within ten workingdays after the request is made, but such a decision shallnot be made after the end of the specified periodreferred to in subsection (2) (a).
101. (1) The Comptroller may permit the objector or
the importer to inspect the seized goods. 
(2) If the objector gives the requisite
undertakings, the Comptroller may permit the objectorto remove a sample of the seized goods from the custodyof the Comptroller for inspection by the objector.
(3) If the importer gives the Comptroller the
requisite undertakings, the Comptroller may permit theimporter to remove a sample of the seized goods fromthe custody of the Comptroller for inspection by theimporter.Inspection, release,
etc., of seized goodsNo. 8 Trade Marks 2015 309(4) The requisite undertakings are undertakings
in writing that the person giving the undertaking shall—
(a)return the sample to the Comptroller at a
specified time that is satisfactory to the
Comptroller; 
(b)take reasonable care to prevent damage to
the sample; and
(c)deposit with the Comptroller a security, inthe amount of which the Comptroller shalldetermine, upon his satisfaction that thesecurity deposit can be used to offset thecost of the sample if the goods are used fortesting purposes.
(5) A person under this section who does not
return the sample in accordance with subsection (4)
commits an offence and is liable to a fine of ten thousanddollars unless the Comptroller is satisfied that thesample had to be used for testing purposes.
(6) If the Comptroller permits inspection of the
seized goods, or the removal of a sample by the objector,in accordance with this section, the Comptroller is notliable to the importer for any loss or damage suffered bythe importer arising out of—
(a)damage to any of the seized goods incurredduring that inspection; or
(b)anything done by the objector or any otherperson to, or in relation to, a sampleremoved from the custody of theComptroller or any use made by the objectorof such a sample.
102. (1) Subject to subsection (2), the importer may,
by written notice to the Comptroller, consent to theseized goods being forfeited to the State. 
(2) A notice under subsection (1) shall be given
before any infringement action in relation to the seizedgoods is instituted.
Forfeiture of seized
goods by consent310 No. 8 Trade Marks 2015(3) If the importer gives a notice under
subsection (1), the seized goods shall be forfeited to the
State and shall be disposed of—
(a)in the manner prescribed; or
(b)if no manner of disposal is so prescribed, as
the Comptroller directs.
103. (1) The Comptroller shall release seized goods,
not being goods forfeited to the State under section 102,
to the importer on the expiration of the retention periodfor the goods if the objector has not, before theexpiration of that period—
(a)instituted an infringement action inrelation to the goods; and 
(b)given written notice to the Comptroller
stating that the action has been instituted. 
(2) If—
(a)an infringement action has been institutedin relation to the seized goods; and 
(b)at the end of a period of ninety dayscommencing on the day on which the actionwas instituted, there is not in force an orderof the Court in which the action wasinstituted preventing the release of thegoods, 
the Comptroller shall release the goods to the importer.
(3) If the objector gives written notice to the
Comptroller stating that he consents to the release ofthe seized goods, the Comptroller shall release the goodsto the importer.
104. (1) Where goods have been seized pursuant to a
notice given under section 97 and the objector concernedfails to take infringement action within the retentionperiod for the goods, a person aggrieved by such seizuremay apply to the Court for an order of compensationagainst the objector. Compulsory release of
seized goods toimporter
Compensation forfailure to take actionNo. 8 Trade Marks 2015 311(2) Where the Court is satisfied that the
applicant had suffered loss or damage as a result of the
seizure of the goods, the Court may order the objector topay compensation in such amount as the Court thinksfit to the applicant. 
105. (1) The Court in which an infringement action is
pending may, on the application of a person having a
sufficient interest in the subject matter of the action,allow the person to be joined as a defendant to theaction. 
(2) The Comptroller is entitled to be heard on
the hearing of an infringement action. 
(3) In addition to any relief that may be granted
apart from this section, the Court may—
(a)at any time, order that the seized goods be
released to the importer subject to suchconditions, if any, as the Court thinks fit; 
(b)order that the seized goods not be releasedto the importer before the end of a specifiedperiod; or 
(c)order that the seized goods be forfeited tothe State. 
(4) The Court shall not make an order under
subsection (3) (a)if it is satisfied that the State or any
statutory authority, person or entity is required or
permitted under any other law to retain control of the
seized goods.
(5) The Comptroller shall comply with an order
made under subsection (3).
(6) If—
(a)the action is dismissed or discontinued, or ifthe Court decides that the relevantregistered trade mark was not infringed bythe importation of the seized goods; and Actions for
infringement ofregistered trade mark312 No. 8 Trade Marks 2015(b)a defendant to the infringement action
satisfies the Court that he has suffered lossor damage as a result of the seizure of thegoods, 
the Court may order the objector to pay compensation in
such amount as the Court thinks fit to that defendant.
106. Notwithstanding section 103, in a case in which
no order has been made under section 105(3) in relation
to seized goods, the Comptroller is not obliged to releaseor dispose of the goods if the State is required orpermitted, under any other law, to retain control of thegoods.
107. If the Court orders that seized goods are to be
forfeited to the State, the goods shall be disposed of—
(a)in the manner prescribed; or
(b)if no manner of disposal is so prescribed, as
the Comptroller directs.
108. (1) If the reasonable expenses incurred by the
Comptroller in relation to any action taken by theComptroller under this Part, or taken in accordancewith an order of the Court under this Part, exceed theamount deposited, or the amount of the security given,under section 98, the amount of the excess is a debt dueto the State. 
(2) The debt created by subsection (1) is due by
the objector, or, if there are two or more objectors, by theobjectors jointly and severally.
109. (1) Notwithstanding section 97(4), an Officer
may—
(a)detain any goods—
(i) that are imported into, or that are
to be exported from, Trinidad andTobago; and 
(ii) that are not goods in transit; or Retention of control of
seized goods
Disposal of seizedgoods ordered to beforfeited
Insufficient security
Detention andexamination ofcounterfeit goodsNo. 8 Trade Marks 2015 313(b)examine any goods, including goods in
transit, 
which he reasonably suspects are counterfeit goods in
relation to a registered trade mark.
(2) As soon as practicable after goods are
detained under subsection (1) (a), the Officer shall give—
(a)to the importer, exporter or consignee, asthe case may be, of the detained goods; and 
(b)to the proprietor of the registered trademark, 
a written notice identifying the goods, stating that theyhave been detained and setting out the matters referredto in subsection (3).
(3) The detained goods shall be released to the
importer, exporter or consignee, as the case may be, of
the goods, unless, within the prescribed period, theproprietor of the registered trade mark—
(a)in the case of goods that are imported intoTrinidad and Tobago and that are not goodsin transit—
(i) gives the Comptroller a written
notice referred to in section 97(1); 
(ii)submits the documents andinformation, and pays the feereferred to in section 97(2) to theComptroller; and 
(iii) deposits with the Comptroller the
sum of money referred to insection 98 (a)or gives the security
referred to in section 98 (b); or
(b)in the case of goods that are to be exportedfrom Trinidad and Tobago or goods intransit that are consigned to a person witha commercial or physical presence inTrinidad and Tobago—
(i) institutes an action for the
infringement of his trade mark; 314 No. 8 Trade Marks 2015(ii) serves on the Comptroller an order
of the Court authorising the
further detention of the goods; and 
(iii) deposits with the Comptroller a
sum of money that, in the opinionof the Comptroller, is sufficientto—
(A) reimburse the State for
any liability or expense ithas incurred and is likelyto further incur as aresult of the detention ofthe goods; and
(B) pay such compensation to
any person who suffersloss or damage as a resultof the detention of thegoods as may be orderedby the Court, 
or gives security, to the satisfactionof the Comptroller, for thereimbursement of the State for anysuch liability or expense and thepayment of such compensation.
(4) Every order of the Court authorising the
further detention of goods under subsection (3) (b)(ii)
shall be subject to the condition that the proprietor
of the registered trade mark complies withsubsection (3) (b)(iii) within the prescribed period
under subsection (3).
(5) Where the Court has made an order
authorising the further detention of goods undersubsection (3) (b)—
(a)the detained goods shall be taken to such
secure place as the Comptroller directs; andNo. 8 Trade Marks 2015 315(b)sections 101, 102 and 104 to 108 shall
apply, with the necessary modifications, tothe further detention of the goods, and forthe purposes of such application—
(i) any reference to the objector shall
be read as a reference to the
proprietor of the registered trademark; 
(ii) any reference to the importer shall
be read as a reference to theexporter or consignee, as the casemay be, of the detained goods;
(iii) any reference to the seized goods
shall be read as a reference to thedetained goods;
(iv)any reference to the seizure ofgoods shall be read as a referenceto the detention or furtherdetention of the goods;
(v) any reference to the import or
importation of goods shall beread—
(A) in the case of goods that
are to be exported fromTrinidad and Tobago, as
a reference to the export
of the goods; or
(B) in the case of goods
in transit that areconsigned to a personwith a commercial orphysical presence inTrinidad and Tobago, asa reference to the importor export, of the goods bythe consignee;316 No. 8 Trade Marks 2015(vi)any reference to infringement
action shall be read as a referenceto an action for the infringement ofthe registered trade mark undersubsection (3) (b)(i); and
(vii) any reference to the retentionperiod shall be read as a referenceto the prescribed period undersubsection (3).
110. (1) The Comptroller may board any conveyance
in Trinidad and Tobago and may search all parts of theconveyance for goods liable to be seized under section 97or detained under section 109.
(2) For the more effective exercise of the powers
conferred by this section, the Comptroller may do all or
any of the following: 
(a)require the master of any vessel in Trinidadand Tobago to heave to;
(b)by direction to the master of any vessel or
the pilot of any aircraft in Trinidad andTobago, require the vessel or aircraft, as thecase may be, not to proceed until soauthorized;
(c)require any documents which ought to beon board any vessel or aircraft, beingdocuments relating to any goods therein, to
be brought to him for inspection;
(d)break open and forcibly enter any place orreceptacle in any conveyance to which hecannot otherwise reasonably obtain access; 
(e)by direction to the master of any vessel inTrinidad and Tobago, require the vessel toproceed to any specified anchorage, wharfor place to which the vessel may lawfully go; Powers of search in
relation to vessels,aircraft and vehiclesNo. 8 Trade Marks 2015 317(f)by direction to the master of any vessel in
Trinidad and Tobago, require him to moveor discharge any cargo or other goodstherein; 
(g)require the person in charge of a vehicle—
(i) to stop and not to proceed until so
authorised; or
(ii) to bring the vehicle to any police
station or Customs area;
(h)direct that the removal of any goods from or
placed in any vessel be prohibited until soauthorised; and
(i)require the master of any vessel or the pilot
of any aircraft to produce a completemanifest of the whole cargo of the vessel oraircraft and a complete list of stores carriedby that vessel or aircraft. 
(3) The Comptroller may exercise, in respect of
any vehicle or any vessel not exceeding 75 tons net
tonnage, the powers which are conferred upon theComptroller by subsection (2) other than the powersconferred by paragraph (d)of that subsection. 
(4) If any vessel or aircraft fails to comply with
any lawful requisition or direction given or made underthis section, the Comptroller may take all such steps asappear to him necessary to secure such compliance. 
(5) Any person who contravenes this section or
who fails to comply with any lawful requisition ordirection given or made thereunder commits an offenceand is liable on summary conviction to a fine of tenthousand dollars and to imprisonment for one year. 
(6) The Comptroller may exercise the powers
conferred by this section in respect of a vessel under wayif he reasonably suspects that it is not in transit throughTrinidad and Tobago.318 No. 8 Trade Marks 2015111. (1) Any goods, package, box, chest or other
article which is being or has recently been imported and
in regard to which a reasonable suspicion exists that itis or that it contains goods liable to be seized undersection 97 or detained under section 109 may be—
(a)examined and searched by the Comptroller;
(b)subjected to such tests or analysis as the
Comptroller thinks fit; 
(c)forcibly opened by, or by order of, theComptroller to facilitate the examination
and search except that any person in chargeof the package, box, chest or other articleshall be afforded every reasonable facilityfor being present at the opening,examination and search; or
(d)marked, locked, sealed or otherwise securedby the Controller pending examination andsearch.
(2) Any person, other than the Comptroller, who
removes, opens, breaks or tampers with any mark, lock,
seal or other means of securing any goods, package, box,chest or other article referred to in subsection (1) (d)
commits an offence and is liable on conviction to a fineof ten thousand dollars and to imprisonment forone year.
112. (1) For the more convenient exercise of the
powers conferred by section 109, the Comptroller mayremove any package, box, chest or other article or anygoods to a police station or Customs area or may requireit to be so removed by the owner thereof or his agent orany person having the custody, charge or controlthereof. 
(2) Any person who fails to comply with any such
requisition commits an offence and is liable on
conviction to a fine of ten thousand dollars and toimprisonment for one year.Examination of
packages, etc.
Power to removepackages and goods topolice station or
Customs areaNo. 8 Trade Marks 2015 319(3) Upon the failure by a person to comply with
such a requisition, the Comptroller may remove the
goods in the manner provided by subsection (1) and allthe expenses of such removal shall be recoverable as afine from that person or from the owner of the goods.
113. (1) Any person landing or being about to land or
having recently landed from any vessel or aircraft, or
leaving any vessel or aircraft in Trinidad and Tobagowhether for the purpose of landing or otherwise, orentering or having recently entered Trinidad andTobago by land, sea or air, shall—
(a)on demand by the Comptroller, either
permit his person and goods and baggage to
be searched by the Comptroller for anygoods liable to be seized under section 97 ordetained under section 109 or, togetherwith the goods and baggage, accompany theComptroller to a police station or anexamination station, and there permit hisperson and goods and baggage to besearched in the presence and under thesupervision of the Comptroller for anygoods liable to be seized under section 97 ordetained under section 109; or 
(b)on demand by the Comptroller, permit hisperson and goods and baggage to besearched by the Comptroller for any goods
liable to be seized under section 97 ordetained under section 109.
(2) Whenever it is necessary to cause a woman
to be searched, the search shall be made by another
woman and with strict regard to decency.
(3) The goods and baggage of any person who
requests to be present when they are searched shall notbe searched in his absence, unless he fails to be presentafter being given reasonable opportunity to be present. Search of persons and
baggage320 No. 8 Trade Marks 2015(4) Any person who refuses to comply with any
lawful demand made under this section may be
arrested without warrant by the officer making thedemand.
114. Any person who—
(a)refuses an Officer access to any vessel,
aircraft, vehicle or place which the officer isentitled to under this Part; or 
(b)obstructs or hinders an Officer in theexecution of any power conferred upon himby this Part, 
commits an offence and is liable on summary conviction
to a fine of fifteen thousand dollars and to imprisonmentfor one year.
115. No action or other legal proceedings shall lie
against an Officer for anything which is, in good faith,done or omitted to be done in the exercise of any power,duty or function under this Part.
PART XII
M
ISCELLANEOUS
116. The Controller may issue Practice Directions
relating to the procedures under this Act.
117. In all legal proceedings relating to a registered
trade mark, including proceedings for rectification ofthe Register—
(a)the register shall be prima facie evidence of
anything contained therein; 
(b)the registration of the prescribed
particulars of any registrable transactionunder section 41 shall be prima facie
evidence of the transaction; and Obstruction
Immunity of Officers
Practice Directions
Registration to be
prima facie evidenceNo. 8 Trade Marks 2015 321(c)the registration of a person as proprietor of
a registered trade mark shall be prima facie
evidence of—
(i) the validity of the original
registration; and 
(ii)any subsequent assignment or
other transmission of the
registration.
118. (1) If in proceedings before the Court the
validity of the registration of a trade mark is contested
and it is found by the Court that the trade mark isvalidly registered, the Court may certify to that effect. 
(2) If the Court certifies the validity of the
registration under subsection (1) and in subsequent
proceedings—
(a)the validity of the registration is again
questioned; and 
(b)the proprietor obtains judgment in hisfavour, 
he is entitled to his costs as between Attorney-at-law
and client unless the Court directs otherwise. 
(3) Subsection (2) does not extend to the costs of
an appeal in any such proceedings.
119. A certificate purporting to be under the hand of
the Controller as to any entry, matter or thing which heis authorised to make or do under this Act, shall beprima facie evidence of—
(a)the entry having been made, and of the
contents; or
(b)the matter or thing having been done or notdone,
as the case may be.Certificate of validity
Certificate of
Controller322 No. 8 Trade Marks 2015120. In all proceedings before the Court under this
Act, the Court may award to any party, including the
Controller, such costs as it may consider reasonable, but
the Controller shall not, except in a case in which he has
appeared in the proceedings, be ordered to pay the costsof any other of the parties.
121. If in any civil proceedings under this Act a
question arises as to the use to which a registered trademark has been put, it is for the proprietor to show whatuse has been made of it. 
122. (1) Proceedings for an offence under this Act
alleged to have been committed by a partnership shallbe brought against the partnership in the name of thefirm and not in that of the partners but without
prejudice to any liability of the partners undersubsection (3). 
(2) A fine imposed on a partnership on its
conviction in such proceedings shall be paid out of the
partnership assets. 
(3) Where a partnership commits an offence
under this Act, every partner, other than a partner whois proved to have been ignorant of, or to have attemptedto prevent the commission of the offence, also commitsthe offence and is liable to be proceeded against andpunished accordingly. 
(4) Where an offence under this Act committed by
a body corporate is proved to have been committed withthe consent or connivance of a director, manager,secretary or other similar officer of the body, or a personpurporting to act in any such capacity, he as well as thebody corporate commits the offence and is liable to beproceeded against and punished accordingly. 
123. The Minister may make Regulations subject to
the negative resolution of Parliament—
(a)for the forms to be used for any purpose
relating to the registration of a trade markor any other proceedings before theController under this Act; Costs of proceedings
before Court
Burden of proving useof trade mark
Offence committed bypartnership or bodycorporate
RegulationsNo. 8 Trade Marks 2015 323(b)prescribing fees in respect of applications,
registration and other matters underthis Act;
(c)for the remission of fees;
(d)in relation to the division of an application
for the registration of a trade mark,including the—
(i) circumstances in which the
application may be divided; 
(ii) conditions to be satisfied before a
request for the division  may be
granted; and
(iii) effect of dividing the application; 
(e)for the classification of goods and services
for the purposes of the registration of trademarks;
(f)to provide that a sign specified shall not beregistered as a trade mark, or shall not beso registered unless such conditions as maybe prescribed are satisfied;
(g)for the manner of claiming priority undersection 11;
(h)to provide for opposition proceedings andfor related matters;
(i)in relation to amendments to applicationsand the making of objections to suchamendments;
(j)for the issuance of notices with respect to
the expiration and renewal of theregistration of trade marks;
(k)to provide for the restoration of theregistration of a trade mark which has beenremoved from the Register;
(l)for the publication of an alteration of aregistered trade mark and the making ofobjections by any person claiming to beaffected by it;
(m)to provide for the manner and effect of acancellation of a registered trade mark;324 No. 8 Trade Marks 2015(n)for protecting the interests of persons
having a right in a registered trade markthat is cancelled;
(o)for the publication and entry in the Register
of a disclaimer or limitation;
(p)for the amendment of registered particularsrelating to a licence;
(q)as to the removal of particulars from the
register—
(i) where it appears from the
registered particulars that the
licence was granted for a fixedperiod and that period has expired;or 
(ii) where no fixed period is indicated
and, after such period as may beprescribed, the Controller hasnotified the parties of his intentionto remove the particulars from theregister; 
(r)for the amendment of, or removal from, the
Register of particulars relating to a securityinterest;
(s)for the publication by the Controller of theparticulars of any application for theregistration of a trade mark, including arepresentation of the mark, and such otherinformation relating to trade marks as theController thinks fit;
(t)for the times at which, and the manner inwhich, notices are to be given underthis Act;
(u)for the practice and procedure of anyproceedings or other matter before theController; 
(v)for the manner of filing of applications orother documents;No. 8 Trade Marks 2015 325(w)requiring persons to make statutory
declarations in support of any application,notice or request; 
(x)requiring and regulating the translation
of documents and the filing andauthentication of any translation; 
(y)for the service of documents; 
(z)for the rectification of irregularities ofprocedure; 
(aa) for time limits and extensions thereto foranything required to be done in connectionwith any proceedings under this Act; 
(ab) for the giving of evidence in proceedingsbefore the Controller;
(ac) for the reinstatement of—
(i) any application which is treated as
withdrawn; or 
(ii) a trade mark,
and the conditions for such reinstatement;
and
(ad) generally for carrying out the provisions ofthis Act.
PART XIII
T
RANSITIONAL
124. (1) In this Part—
“existing registered mark ”means a mark
or certification mark registered under
the former Act immediately before thecommencement of this Act.
(2) For the purposes of this Part—
(a)an application under the former Act shall be
treated as pending on the date of thecommencement of this Act if it was madebut not finally determined before that date;and 
(b)the date on which an application under theformer Act was made shall be the date offiling under the former Act. Interpretation of
Part XIII(Transitional)326 No. 8 Trade Marks 2015125. (1) Any existing registered mark, whether
registered in Part A or B of the Register kept under the
former Act, is a registered trade mark for the purposes
of this Act. 
(2) Any existing registered mark registered as a
certification trade mark in the Register kept under the
former Act is a registered certification mark for thepurposes of this Act. 
(3) Any existing registered mark registered as a
series of trade marks in the Register kept under the
former Act is registered as a series of trade marks in theRegister for the purposes of this Act. 
(4) Any entry in the Register kept under the
former Act indicating that an existing registered markis associated with any other mark shall cease to haveeffect on the commencement of this Act.
(5) A condition entered on the Register kept
under the former Act in relation to an existingregistered mark immediately before the commencementof this Act shall cease to have effect on thecommencement of this Act.
(6) Notwithstanding section 141, proceedings
under section 47 of the former Act which are pendingimmediately before the commencement of this Act shallbe dealt with under the former Act and any necessaryalteration shall be made to the Register.
(7) A disclaimer or limitation entered on the
Register kept under the former Act in relation to an
existing registered mark immediately before thecommencement of this Act shall be deemed to betransferred to the Register and have effect as if enteredon the Register in pursuance of section 31.
126. (1) Sections 27 to 30 apply in relation to an
existing registered mark as from the commencement ofthis Act and subject to subsection (3), section 32 appliesin relation to infringement of an existing registeredmark committed on or after the commencement of thisAct.
(2) Notwithstanding section 141, the former Act
continues to apply in relation to infringements
committed before the commencement of this Act.Existing registered
trade marks
Effects of registration:infringement No. 8 Trade Marks 2015 327(3) It is not an infringement of—
(a)an existing registered mark; or
(b)a registered trade mark of which the
distinctive elements are the same or
substantially the same as those of an
existing registered mark and which isregistered for the same goods or services,
to continue on or after the commencement of this Act,
any use which did not amount to infringement of theexisting registered mark under the former Act.
127. Section 34 shall apply to infringing goods,
material or articles whether made before, on or after thecommencement of this Act.
128. (1) Section 46 shall apply to licences granted
before the commencement of this Act, but only inrelation to infringements committed on or after the dateof commencement. 
(2) Section 80(2) applies only in relation to
infringements committed on or after the commencementof this Act.
129. (1) Subject to subsection (2), the provisions of
section 39 apply as from the commencement of this Actto an existing registered mark of which two or morepersons were immediately before that date registered asjoint proprietors.
(2) Where the relations between the joint
proprietors remain as described in section 68 of the
former Act there shall be taken to be an agreement toexclude the operation of section 39(1) and (3).
130. (1) Section 40 shall apply to transactions and
events occurring on or after the date of commencement
of this Act in relation to an existing registered mark andnotwithstanding section 141, the former Act continuesto apply in relation to transactions and events occurringbefore that date. 
(2) Entries in the Register kept under the
former Act relating to the assignment and transmissionof registered marks and of applications for registrationInfringing goods,
materials or articles 
Rights and remediesof licensee orauthorised user
Co-ownership ofregistered mark
Assignment ofregistered mark328 No. 8 Trade Marks 2015of marks shall be deemed to be transferred on
commencement of this Act to the Register and haveeffect as if made under section 41. 
(3) Provision may be made by Regulations for
putting entries referred to in subsection (2) in the sameform as is required for entries made under this Act. 
(4) An application for registration under
section 34 of the former Act which has not beendetermined by the Controller before the commencementof this Act, shall be treated as an application forregistration under section 41. 
(5) The Controller may require the applicant to
amend his application so as to conform with therequirements of this Act. 
(6) An application for registration under
section 34 of the former Act which has been determinedby the Controller but not finally determined before thecommencement of this Act shall notwithstandingsection 141, be dealt with under the former Act andsubsections (2) and (3) shall apply in relation to anyresulting entry in the Register. 
(7) Where, before the date of commencement of
this Act a person has become entitled by assignment or
transmission to an existing registered mark but has not
registered his title, any application for registration on orafter that date shall be made under section 41.
131. (1) Section 44 shall apply only in relation to
licences granted on or after the commencement of thisAct and notwithstanding section 141, the former Actcontinues to apply in relation to licences granted beforethe commencement of this Act.
(2) Existing entries under section 37 of the
former Act shall be deemed transferred on thecommencement of this Act to the Register and haveeffect as if made under section 41. 
Licensing of
registered trade markNo. 8 Trade Marks 2015 329(3) Provision may be made by Regulations for
putting entries referred to in subsection (2) in the same
form as is required for entries made under this Act.
(4) An application under the former Act for
registration as a registered user which is pending beforethe Controller immediately before the commencement of
this Act shall be treated as an application for
registration of a licence under section 41(1).
(5) The Controller may require the applicant to
amend his application so as to conform with therequirements of this Act.
(6) An application for registration as a
registered user which has been determined by theController but not finally determined before the date ofcommencement of this Act shall be dealt with under theformer Act and subsections (2) and (3) shall apply inrelation to any resulting entry in the Register.
(7) Any proceedings pending immediately before
the commencement of this Act under section 41 of theformer Act shall be dealt with under the former Act andany necessary alteration made to the Register.
132. (1) Subject to section 133, an application for
registration of a mark under the former Act which is
pending on the commencement of this Act shall be dealt
with under the former Act and, if registered, the markshall be treated for the purposes of this Part as anexisting registered mark.
(2) The power of the Minister under section 123
to make Regulations regulating practice and procedureis exercisable in relation to an application referred to inthis section.
(3) Section 32 of the former Act shall be
disregarded in dealing with an application forregistration on or after the commencement of this Act.Pending applications
for registration330 No. 8 Trade Marks 2015133. (1) In the case of an application for registration
of a trade mark under the former Act which—
(a)has not been advertised under section 20 of
the former Act; and
(b)is pending,
immediately before the commencement of this Act, the
applicant may give notice to the Controller to have the
registrability of the mark determined in accordancewith the provisions of this Act.
(2) The notice under subsection (1) shall be—
(a)in the prescribed form;
(b)accompanied by the prescribed fee; and 
(c)given no later than six months after the
commencement of this Act.
(3) A notice under this section is irrevocable and
has the effect that the application shall be treated as if
made immediately after the commencement of this Act.
134. (1) Section 12 applies to an application for
registration made on or after the commencement of this
Act notwithstanding that the Convention applicationwas made before the commencement of this Act.
(2) Where, before the commencement of this Act,
a person has duly filed an application for protection of atrade mark in a foreign State, to which section 76 of theformer Act applies, which is not a Convention country
(referred to in this paragraph as a “relevant overseas
application”), he, or his successor in title, has a right topriority, for the purposes of registering the same trademark under this Act for some or all of the same goods orservices, for a period of six months from the date offiling of the relevant overseas application.
(3) If the application for registration under
this Act is made within the six months period referredto in subsection (2)—
(a)the relevant date for the purposes ofestablishing which rights take precedenceshall be the date of filing of the relevantoverseas application; and Conversion of pending
application 
Claim to priority fromoverseas application No. 8 Trade Marks 2015 331(b)the registrability of the trade mark shall
not be affected by any use of the mark inTrinidad and Tobago in the period betweenthe date of filing of the relevant overseasapplication and the date of the application
under this Act.
(4) Any filing which in a foreign State referred to
in subsection (2) is equivalent to a regular national
filing, under its domestic legislation or an internationalagreement, shall be deemed to give rise to the right ofpriority. 
(5) For the purposes of subsection (4), a “regular
national filing” means a filing which is adequate to
establish the date on which the application was filed in
the country concerned, whatever may be the subsequentfate of the application.
(6) A subsequent application concerning the
same subject as the relevant overseas application, filedin the same country, shall be considered the relevantoverseas application, of which the filing date is thestarting date of the period of priority, if at the time ofthe subsequent application—
(a)the previous application has been
withdrawn, abandoned or refused, withouthaving been laid open to public inspectionand without leaving any rights outstanding;and 
(b)it has not yet served as a basis for claiminga right of priority, 
and the previous application may not thereafter serve
as a basis for claiming a right of priority. 
(7) The Minister may make Regulations to
provide for the manner of claiming a right to priority onthe basis of a relevant overseas application. 332 No. 8 Trade Marks 2015(8) A right to priority arising as a result of a
relevant overseas application may be assigned or
otherwise transmitted, either with the application orindependently, and the reference in subsection (2) to theapplicant’s “successor in title” shall be construedaccordingly. 
(9) Nothing in this section shall affect
proceedings on an application for registration under theformer Act made before the commencement of this Act.
135. Notwithstanding section 141, section 20 applies
where the renewal of an existing registered mark fallsdue on or after the commencement of this Act and theformer Act continues to apply in any other case.
136. An application under section 49 of the former Act
which is pending on the date of commencement of this
Act shall be dealt with under the former Act and anynecessary alteration shall be made to the Register.
137. (1) An application under section 35 of the former
Act which is pending on the commencement of this Actshall be dealt with under the former Act and anynecessary alteration shall be made to the Register. 
(2) Subject to subsection (3), an application
under section 23(1) (a)or (b)may be made in relation to
an existing registered mark at any time on or after thecommencement of this Act.
(3) No application referred to in subsection (2)
for the revocation of the registration of an existingregistered mark registered under section 13
Aof the
former Act may be made until more than five years after
the commencement of this Act.
138. (1) An application under section 46 or section 48
of the former Act which is pending on the
commencement of this Act shall be dealt with under theformer Act and any necessary alteration made to the
Register. Renewal of
registration 
Pending applicationfor registration foralteration of
registered mark
Revocation for
non-use
Application forrectification andcorrection No. 8 Trade Marks 2015 333(2) An application under section 24 of this Act
may be made in relation to an existing registered mark
at any time on or after the commencement of this Act
and the provisions of this Act shall be deemed to have
been in force at all material times.
139. (1) Rules governing the use of an existing
registered certification mark submitted to theController in pursuance of section 50 of the former Actshall be treated after the commencement of this Act asif filed under section 75. 
(2) Any request for amendment of the rules
which was pending on the commencement of this Actshall be dealt with under the former Act.
140. A certificate given before the commencement of
this Act under section 56 of the former Act shall have
effect as if given under section 118.
PART XIV
R
EPEAL
141. The Trade Marks Act is repealed.
Passed in the House of Representatives this 20th day
of March, 2015.
J.  SAMPSON-MEIGUEL
Clerk of the House
IT IS HEREBY CERTIFIED that this Act is one the Bill for
which has been passed by the House of Representatives
and at the final vote thereon in the House has been
supported by the votes of not less than three-fifths of all
the members of the House, that is to say by the votes of26 members of the House.
J.  SAMPSON-MEIGUEL
Clerk of the HouseRepeal 
Chap. 82:81Rules as to use ofcertification mark
Certificate of validity334 No. 8 Trade Marks 2015Passed in the Senate this 14th day of April, 2015.
N.  ATIBA-DILCHAN
Clerk of the Senate
IT IS HEREBY CERTIFIED that this Act is one the Bill for
which has been passed by the Senate and at the final
vote thereon in the Senate has been supported by the
votes of not less than three-fifths of all the members of
the Senate, that is to say by the votes of 22 Senators. 
N.  ATIBA-DILCHAN
Clerk of the Senate
Senate amendments were agreed to by the House of
Representatives on the 27th day of May, 2015.
J.  SAMPSON-MEIGUEL
Clerk of the HouseNo. 8 Trade Marks 2015 335
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REPUBLIC OF TRINIDAD AND TOBAGO —2015