Trademark registration in St. Kitts and Nevis (SaN)

St. Kitts and Nevis, the beautiful island nation in the Caribbean, possesses many advantages that promote economic development, attract investment and tourism. The CBI program pioneered in 1984, providing a rich source of income for the government. Investors contribute to the investment fund or purchase real estate to receive St. Kitts and Nevis citizenship, enjoying many incentives such as tax exemption, freedom of movement and settlement. St. Kitts and Nevis possesses beautiful beaches, a mild tropical climate, rich historical and cultural sites. Attracts visitors from all over the world. St. Kitts and Nevis has the potential to develop many types of tourism such as luxury resorts, ecotourism, adventure tourism,… meet the diverse needs of visitors. The tourism sector contributes significantly to GDP, creates jobs and promotes related service industries such as restaurants, hotels, transportation,… Capital from the CBI promotes industries such as real estate, tourism, infrastructure construction, financial services,… contribute to job creation and economic growth. Therefore, more and more businesses are expanding their business scope here, in order to be able to distinguish their brand from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in St. Kitts and Nevis through the article below.

Legal basis

• Law on Trademarks, Collective Marks and Trade Names of 2000 (Law No. 10 of 2000) (Chapter 18.22)

Trademark definition at SaN

A trademark is defined as any visible sign capable of distinguishing the goods (trademarks) or services (service marks) of one business from the goods or services of other businesses.

Conditions for trademark registration at SaN

• It is impossible to distinguish the goods or services of one business from other businesses.
• Contrary to public order or morality.
• There is the potential to mislead the public or commercial circles, particularly regarding the geographical origin of related goods or services or their nature or characteristics.
• Identical to, imitating or containing in part a coat of arms, national flag or other symbol, name, abbreviation or initials of a name, or an official sign or mark of accreditation used by any country, intergovernmental organization or organization established by an international convention, unless authorized by the competent authority of that country or organization.
• Identical, misleading or a translation of a trademark or trade name eminent in Saint Kitts and Nevis with respect to the same or similar goods or services of another business, or if it is known and registered in Saint Kitts for goods or services that are not identical or similar to those required for registration, provided that, in the latter case, that
• The use of the trademark in connection with those goods or services will show a connection between those goods or services and the owner of the well-known trademark; and The rights of well-known trademark owners may be affected by such use.
• Be identical to a trademark belonging to another owner and already on the Register, or with a previous filing date or priority date, for the same type of goods or services or closely related goods or services, or if it is so similar to that mark that it is likely to be deceptive or confusing.

Types of trademarks that can be registered at SaN

Trademark (for goods): This is the most common type, which serves to identify the origin of  specific goods, distinguishing them from similar products of other companies.

Service marks: Similar to trademarks, but used to identify the origin of  specific services provided by a particular business. For example, the golden arch represents McDonald’s restaurant service.

Collective mark: This type of mark is used by an association of individuals to identify goods or services derived from the members of the association. For example, an organic farming cooperative might use collective labels to identify its members’ products.

In addition, the applicant can also register other trademarks such as:

• Certification marks: These marks ensure that goods or services meet certain standards set by the trademark owner. For example, the UL (Underwriters Laboratories) trademark indicates that the product has met specific safety requirements.
• 3D Marks: These marks protect the shape of the product as a brand. The distinctive shape of Coca-Cola bottles is a well-known example of a 3D brand.

Trademark registration dossier at SaN

The applicant prepares the dossier according to the list of documents as follows:

• A trademark application includes the following:

(a) Trademark registration requirements;

(b) Copies of trademarks; and

(c) A list of goods or services for which registration of a trademark is required, classified under the applicable group or groups of the International Classification.

• The application must be accompanied by the prescribed registration fee.
• The application may contain a statement claiming precedence, as provided for by the Paris Convention, on a previous national or regional application filed by the applicant or its predecessor in or for any state party to the Convention or any member of the World Trade Organization, in such case, the Clerk may require the applicant to provide, within the prescribed period, a copy of the previous application, certified as authentic by the Office where the application was submitted.

How to file for trademark registration at SaN

To file a trademark protection application at SaN, customers can apply by the following filing methods:

• Direct Submission: You can go directly to the Intellectual Property Office of St. Kitts and Nevis Department of Justice and Legal Affairs at 1st Floor of The Cable Building Cayon Street Basseterre St. Kitts to file the application and related documents.
• By Post: You may send your application form and all required documents via postal service or courier service to the Intellectual Property Office of St. Kitts and Nevis, Ministry of Justice and Legal Affairs, address: 1st Floor of The Cable Building, Cayon Street, Basseterre, St. Kitts.

Trademark registration service at SaN of Viet An Law Firm

• Perform the search and notify customers in writing of the trademark search results at SaN;
• Draft the dossier and directly file and monitor the status of the trademark application filing on behalf of the trademark owner at SaN;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications at SaN;
• Support monitoring, representing the resolution of objections and feedback with intellectual property representatives to carry out procedures at SaN.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to file a trademark application, please contact Viet An Law for the most effective support.