Trademarks

– Trade Marks Act, 1906, as amended.
– Trade Marks Rules, 1948, as amended.
– Industrial Property Act, 1965, as amended.
– Industrial Property Rules, 1967, as amended.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since July 10, 1973.
– Paris Convention for the Protection of Industrial Property, Lisbon Act since 1973, Stockholm Act since 1977, Art. 13 to 30.
– Convention Establishing the World Intellectual Property Organization (WIPO), since January 4, 1977.

Filing

Applicant: (who may be) anyone claiming to be the proprietor of a trademark. 

Foreigners and nationals not living in the country: may apply directly, or through a duly authorized agent. 

Trademarks of foreigners: marks in a foreign language must have an endorsement on the application and on each representation of the mark of a sufficient translation of each word to the satisfaction of the Registrar General. Every such endorsement must be signed by the applicant or his agent. 

Service marks: not registrable.

Kinds of protection: non-Convention and Convention applications to register any device, brand, heading, label, ticket, name, signature, letter, numeral or combination thereof. 

Exceptions to protection: the following are excepted: the words “patented”, “patent”, “Royal Letters Patent”, “Registered”, “Registered Design”, “Copyright”, “Entered at Stationer’s Hall”, “To counterfeit this is forgery”, or words to like effect; representations of Her Majesty or any member of the Royal Family, Royal flags or crests or any words letters or device calculated to lead persons to believe that applicant has Royal patronage; the Bahamian emblems, emblems of foreign countries or of international organizations; a mark or part of a mark the use of which by reason of its being calculated to deceive is disentitled to protection in a court of justice, a mark which is contrary to the law or morality, or any scandalous design, geographical names or proper names.

Priorities: Convention priority if the application is made within six months of the basic application.

Classification: National Classification based on an early English Classification. 

Multi-class applications: not possible. 

Territory covered: The Commonwealth of The Bahamas.

Filing requirements for an application (to be sent to resident agent):
1. Application (Form No. 2 in Second Schedule of the Trade Mark Rules);
2. Authorization of agent, unlegalized (Form No. 1 in Second Schedule of the Trade Mark Rules);
3. 5 representations of the trademark (Form No. 3 in Second Schedule of the Trade Mark Rules). The representations should not exceed 2 x 2 inches;
4. Certified copy of basic application, if priority is claimed, with verified English translation (if applicable).

Note: all the documents must be on foolscap paper of a size approximately 13 x 8 inches and shall have on the left hand part thereof a margin of not less than 1 inch and a half.

Examination

Amendment of application: possible, before the mark is registered. 

Examination: the Registrar carries out a substantive examination.

Opposition – reasons and procedure: opposition must be filed with the Industrial Property Section of The Registrar General’s Department within one month from the date of the advertisement of the application in The Journal. Such notice shall be filed on Form No. 7 in Second Schedule of the Trade Mark Rules and shall contain a statement of the grounds upon which the opponent objects to the registration. If registration is opposed on the ground that the mark resembles marks already on the Register, the numbers of such marks and the number of the Gazette in which they were advertised shall be set out. Such notice must be filed in duplicate. 

Deadline to file counterstatement: one month from receipt of the Registrar’s notification. 

Reasons: infringement of rights or any other grounds that it ought not to be registered.

Disputes about ownership: must be determined by the court. 

Application kept secret: not possible. 

Appeal: possible only where expressly given by provisions of the Act. 

Urgent registration: possible but the advertisement period must be observed. 

Provisional registration: not possible. 

Publication: The Journal is published at least once per month and each application appears once. 

Correction of registration: possible, on application by the proprietor or his agent to the Registrar General to correct an error in the name or address of the proprietor, to change the name or address of the proprietor, to enter a disclaimer or memorandum relating to a trademark which does not in any way extend the rights given by the existing registration, or strike out goods or classes of goods from those for which a trademark is registered. The Register may be rectified by the court on application of any aggrieved person for non-insertion, wrongful entry or error in making of an entry there. In the case of fraud in the registration or transmission of a registered mark, the Registrar may himself apply to the court for rectification.

Protection

Delivery of documents (and usual duration after filing): about three months. 

Beginning of protection: from the priority date in the case of Convention application or from the filing date. 

Durationextension: fourteen years; can be renewed indefinitely for further periods of fourteen years.

User rights: trademarks may be assigned to users. 

Obligation to use: any aggrieved person may apply to the court for the removal of the mark from the Register in the case of non-use of a mark for a period of five years or more.

Marking of registered goods: not compulsory, but recommended. 

Renewal: every fourteen years. 

Latest term for renewal: not less than two months and not more than three months before the expiration of the last registration. If the applicant does not apply for renewal before the expiration, the Registrar General must advertise the fact in The Journal, and after one month he may remove the mark from the Register. 

Term of grace for renewal: six months.

Modification of the mark: possible. The mark itself may be added to or altered but not in a manner to substantially effect its identity. 

Changes in the list of goods: only in so far that goods or any classes of goods can be struck from those for which the trademark is registered. 

Assignments: possible. Joint application of registered proprietor and assignee or by a request from a new claimant. In the latter case, the claimant must leave a case stating full particulars of the assignment with the Registrar General. The Registrar may also require the assignee to furnish a declaration in a form prescribed by the Trade Mark Rules. An executed copy of the assignment itself is usually filed. 

Licenses: a person other than the proprietor of a trademark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered and either with or without conditions or restrictions. The use of a trademark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which the trademark is registered is deemed as “permitted use” and accrues to the trademark owner.

Modification of Protection after Registration

Rights of prior user: opposition may be filed by person who claims prior use of a mark. The right of the use of a registered mark may not be infringed by another person. Unregistered trademarks are not protected under the Act, but the common law action of “passing-off” may be brought against anyone for passing off goods as those of another person. 

Opposition to registered marks: infringement action in Supreme Court.

Compulsory licenses: none.

Expropriation: possible. Goods forfeited on conviction of criminal offense. 

Nullification: cancellation by Registrar General at request of proprietor himself or application by an aggrieved person to the court for non-use. Also if case of non-use is proved the mark will be taken off the Register.

Validation of invalidated marks: restoration possible, if Registrar General is satisfied that it is just to do so, when removal was a result of non-payment of renewal fee. 

Provision for restoration: upon such conditions as the Registrar General may think fit to impose. 

Registration of invalidated marks: after removal for non-payment of renewal fee, the mark is still deemed to be a registered mark for a period of one year after the date of such removal, unless it is shown to the satisfaction of the Registrar General that there has been no bona fide trade user of the mark during the two years immediately preceding its removal from the Register. 

Infringement and penalties: the action is a civil one in the Equity Side of the Supreme Court; every infringer is liable to be sued. Persons who forge or falsely apply for trademarks are criminally punishable. A fine is imposed on summary conviction, and on a second or subsequent conviction, a heavier fine is levied. In any case, there is forfeiture of all goods in respect of which the offense was committed. No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trademark.