On October 1, 2006, Antigua & Barbuda put into force the country’s first ever comprehensive trade mark law, the Trade Marks Act, 2003 and Trade Marks Regulations, 2006. A related act, the Intellectual Property Office Act, established an Intellectual Property Office and appointed a Registrar of Intellectual Property.
To comply with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), the enactment of the new Trademarks Act was accompanied by new legislation to protect patents, copyright, industrial designs, geographical indications, and integrated circuits.
Antigua & Barbuda thereby established an independent trade mark registration system and repealed its prior laws. Previously, a trade mark applicant was required to have a UK registration as a prerequisite to registration in Antigua & Barbuda or, alternatively, an applicant could obtain a local registration under the old British Classification system which made no provision for service marks.
The Antigua Act provides for protection of service marks and collective marks and adopts the International Classification of the Nice Agreement, Ninth Edition. Paris Convention priority is available. Antigua & Barbuda has long been a member of the Madrid Protocol, since accession in 1999.
A trademark is any sign capable of being represented graphically which is capable of distinguishing goods or services. The mark may consist of words (including personal names), designs, numerals, letters, or the shape of goods or their packaging.
Although a UK-based registration is no longer provided for nor possible under the new act, current UK-based and local registrations will continue under the new Act for their unexpired terms or 10 years from 1 October 2006, whichever occurs first. All new registrations are for a term of 10 years, with renewals for further periods of 10 years.
The Act includes a grace period of six months following expiration to renew a registration.
Trademark protection is obtained by registration. It can also be acquired by mere use within the jurisdiction whereby it is protected only by common law. Only if a mark is registered under the act is it entitled to protection under the Trade Marks Ordinance.
The Act confirms that common law "passing off" is still actionable. Also, the doctrine of "honest concurrent user" is still a valid defense to an allegation of trade mark infringement.
All applications are examined and subject to absolute and relative grounds of refusal.
Prior use in Antigua & Barbuda is unnecessary provided the applicant asserts, on its Declaration filed at the time of application, an intent to use the mark in Antigua & Barbuda. A registration is subject to cancellation after three years of nonuse following registration. However, a registrant may assert a defense of "good cause", which may excuse non-use.
Licenses of registered marks must be recorded and the registrant must exercise quality control over its licensed marks. Applications and registrations may be assigned with or without goodwill.
Consistent with TRIPS, the proprietor of a registered trade mark may give notice to Customs in Antigua & Barbuda to restrict importation of infringing goods, and the court may order the police to search for, seize and destroy infringing goods. Penalties for infringement include fines up to XCS 100,000 and imprisonment up to five years.