WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/ATG/T/1
14 February 2002
(02-0775)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
ANTIGUA AND BARBUDA
The present document reproduces the text1 of the Trade Marks Bill 2001, as notified by
Antigua and Barbuda under Article 63.2 of the Agreement (see doc ument IP/N/1/ATG/1).
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
ANTIGUA-ET-BARBUDA
Le présent document contient le texte1 du projet de loi sur les marques, 2001, notifié par
Antigua-et-Barbuda au titre de l'article 63:2 de l'Accord (voir le document IP/N/1/ATG/1).
Consejo de los Aspectos de los Derechos de Propiedad
Intelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
ANTIGUA Y BARBUDA
En el presente documento se reproduce el texto1 del proyecto de ley de marcas de fábrica o de
comercio de 2001, que Antigua y Barbuda notificó de conformidad con lo dispuesto en el párrafo 2del artículo 63 del Acuerdo (véase el documento IP/N/1/ATG/1).
                                                     
1 In English only./En anglais seulement./En inglés solamente.IP/N/1/ATG/T/1
Page 2
ANTIGUA AND BARBUDA
TRADE MARKS ACT 2001
Table of Contents
Section 1:  Short title and commencement
Section 2 Interpretation
Section 3: Acquisition of the Exclusive Right to a Mark and  Registrability
Section 4: Application for Registration
Section 5: Examination, Oppositi on and  Registration of Mark
Section 6: Rights Conferred by Registration,. Duration and Renewal
Section 7: Invalidation and Re moval on Grounds of Non-Use
Section 8: Collective MarksSection 9: Licensing of MarksSection 10: Trade NamesSection 11: Interpretation of terms concerning the Madrid Protocol
Section 12 Effect of International Registration as National applicationSection 13 National processing of International Registration
Section 14 Effect of International Registration as National Registration
Section 15 Further provisions concerni ng international applications and
International Registrations
Section 16 Conflict between the Ma drid Protocol and this Act
Section 17          Changes in Ownership;  Licence Contracts
Section 18: AgentsSection 19: RegisterSection 20: Corrections of Erro rs and  Extension of Time
Section 21: Exercise of  Discretionary Powers
Section 22: Competence of Court and  AppealsSection 23: Infringement,  Unlawful Acts and  OffencesIP/N/1/ATG/T/1
Page 3
Section 24: Application of  International Treaties
Section 25: Regulations.Section 26: Repeals and Transitional ProvisionsIP/N/1/ATG/T/1
Page 4
ANTIGUA AND BARBUDA
TRADE MARKS ACT
NO     OF 2001
BILL FOR
AN ACT  to make provision for the registration of trade marks and other purposes related thereto
[]
ENACTED by the Parliament of Antigua and Barbuda as follows –
Short title and 1.  This Act may be cited as the Trade Marks Act 2001
commencement. and comes into force on a day fixed by the Minister by Order
published in the Gazette
Interpretation.              2.  In this Act,
“collective mark” means any visible sign designated
as such in the application for registration and capableof distinguishing the origin or any other commoncharacteristics, including the quality, of goods orservices of different enterprises which use the signunder the control of the registered owner of thecollective mark;
“Court” means the High Court;
“International Classification” means the
classification according to the Nice AgreementConcerning the International Classification ofGoods and Services for the Purposes of theRegistration of Marks, of June 15, 1997 as lastrevised;
“mark” means any visible sign capable of
distinguishing the goods (“trademark”) or services(“service mark”) of an enterprise;
“Minister”  means the Minister responsible for
intellectual property;
“Paris Convention”  mean s the Paris Convention for
the Protection of I ndustrial Property of
March, 20, 1883, as last revised;IP/N/1/ATG/T/1
Page 5
“priority date” means the date of the earlier application
that serves as the basis for the right of priority providedfor in the Paris Convention;
“Register” means the register maintained by the
Registrar under section 19;
“Registrar” means the Registrar of Intellectual
Property  appointed under the Registrar of IntellectualProperty Act 2001;
“trade name” means the name or designation
identifying and distinguishing an enterprise.
Acquisition of the 3.  (1)  The exclusive right to a mark, as
exclusive right to a conferred by this Act, shall be acquired bymark and Registrability. registration in  accordance with the provisions thereof.
(2)  A mark cannot be validly registered:
(i) if it is incapable of distinguishing the
goods or services of one enterprise fromthose of other enterprises;
(ii) if it is contrary to public order or
morality;
(iii) if it is likely to mislead the public or
trade circles, in particular as regards thegeographical origin of the goods orservices concerned or their nature orcharacteristics;
(iv) if it is identical with, or is an imitation
of or contains as an element, an armorialbearing, flag and other emblem, a nameor abbreviation or initials of the nameof, or official sign or hallmark adoptedby, any State, intergovernmentalorganisation or orga nisation created by
an international convention, unlessauthorized by the competent authority ofthat State or organisation;
(v) if it is identical with, or confusingly
similar to, or constitutes a translation of,IP/N/1/ATG/T/1
Page 6
a mark or trade name which is well
known in Antigua and Barbuda foridentical or similar goods or services ofanother enterprise, or if it is well knownand registered in Antigua and Barbudafor goods or services which are notidentical or similar to those in respect ofwhich registration is applied for,provided, in the latter case, that use ofthe mark in relation to those goods orservices would indicate a connectionbetween those goods or services and theowner of the well-known mark and that
the interests of the owner of the well-
known mark are likely to be damaged bysuch use;
(vi) if it is identical with a mark belonging to
a different proprietor and already on theRegister, or with an earlier filing orpriority date, in respect of the samegoods or services or closely relatedgoods or services, or if it so nearlyresembles such a mark as to be likely todeceive or cause confusion.
Application for 4.(1)  The app lication for registration of a
registration. mark shall be filed with the Registrar and shall contain
a request, a reproduction of th e mark and a list of the
goods or services for which registration of the mark isrequested, listed under the app licable class or classes of
the International Classificati on; and it shall be subject
to the payment of the prescribed application fee.
(2)  The application may contain a declaration
claiming the priority, as provided for in the ParisConvention, of an earlie r national or regional
application filed by the app licant or his predecessor in
title in or for any State party to the Convention or anymember of the World Trade Organisation in whichcase, the Registrar may require that the applicantfurnish, within the prescribed time limit, a copy of theearlier application, certified as correct by the Officewith which it was filed.
(3)  The effect of the said declaration shall be as
provided in the Paris Conven tion and if the Registrar
finds that the requirements under this subsection andIP/N/1/ATG/T/1
Page 7
the Regulations pertaining thereto have not been
fulfilled, the declaration shall be considered not to havebeen made.
(4)  The applicant may withdraw the application at
any time during its pendency.
Examination, 5.(1)  The Regi strar shall examine whether
Opposition and the application co mplies with the requirements of
Registration of Mark section 4(1) and the Regulations pertaining thereto.
(2)  The Registrar shall examine and determine
whether the mark is a mark as defined in section 2 andis registrable under section 3(2).
(3)  Where the Registrar finds that the conditions
referred to in subsection (1) and (2) hereof are fulfilled,he shall forthwith cause the application, as accepted, tobe published in the prescribed manner.
(4)  Any interested person may, within the
prescribed period and in the prescribed manner, givenotice to the Registrar of opposition to the registrationof the mark on the grounds that one or more of therequirements of sections  2 and 3(2) and the
Regulations pertaining thereto are not fulfilled.
(5)  The Registrar shall send forthwith a copy of
a notice referred to in subsection (4) to the applicant,and, within the prescribed period and in the prescribedmanner, the applicant shall send to the Registrar acounter-statement of the gr ounds on which he relies for
his application and if he does not do so, he shall be
deemed to have abandoned the application.
(6)  If the applicant sends a counter-
statement, the Registrar shall furnish a copy of it to theperson giving notice of opposition and, after hearingthe parties, if either or both wish to be heard, and
considering the merits of the case, shall decide whetherthe mark should be registered.
(7)  After an application is published and until
the registration of the mark, the applicant has the sameprivileges and rights as he would have if the mark had
been registered;  however, it shall be a valid defence toan action brought hereunder in respect of an act doneIP/N/1/ATG/T/1
Page 8
after the application was published, if the defendant
establishes that the mark could not validly have been
registered at the time the act was done.
(8)  Where the Registrar finds that the conditions
referred to in subsections (1) and (2) are fulfilled, andeither:
(i) the registration of the mark has not been
opposed within the prescribed timelimit;  or
(ii) the registration of the mark has been
opposed and the opposition has been
decided in the applicant’s favor,
he shall register the mark, publish a reference to the
registration and issue to the applicant a certificate ofregistration; otherwise he sh all refuse the application.
Rights Conferred 6.(1)  The use of a registered mark, in relation
by Registration; to any goods or services for which it has beenDuration; Renewal.  registered, by any person other than the registered
owner shall require the agreement of the latter.
(2)  The registered owner of a mark shall, in
addition to any other rights, remedies or actionsavailable to him, have the right to institute courtproceedings against any person who infringes the markby using the mark, without his agreement, or whoperforms acts which make it likely that infringementwill occur; and the right shall extend to the use of asign similar to the registered mark and use in relationto goods and services similar to those for which themark has been registered, where confusion may arise inthe public.  In case of the use of an identical sign foridentical goods or services, a likelihood of confusionshall be presumed.
(3)  The rights conferred by registration of a mark
shall not extend to acts in respect of articles whichhave been put on the market in [Antigua and Barbuda][in any country]
* by the registered owner or with his
consent.
                                                     
* Article 6 of the TRIPS Agreement leaves members to choose the level of exhaustion (see attached
note on exhaustion).IP/N/1/ATG/T/1
Page 9
(4)  The provisions of Section 3(2)(v) shall apply,
mutatis mutandis , in any action instituted by the owner
of a well-known mark against any person in respect ofthe unlawful use of the well-known mark.
(5)  The registration of a mark shall be for a period
of ten years from the filing date of the application forregistration.
  (6)  The registration of a mark may, upon request, be
renewed for consecutive periods of ten years, providedthat the registered owner pays the prescribed renewalfee.
 (7)  A period of grace of six months shall be allowed
for the late payment of the renewal fee on payment ofthe prescribed surcharge.
Invalidation, 7.(1)  Any interested person may request the
Removal on Grounds Registrar to i nvalidate the registration of a
of Non-Use. mark.
(2)  The Registrar shall invalidate the registration if the
person requesting the invalidation proves that any ofthe requirements of sections 2 or 3(2) are not fulfilled.
 (3)  Any invalidation of a registration of a mark shall
be deemed to have been effective as of the date ofregistration, and it shall be recorded and a referencethereto published as soon as possible.
 (4)  Any interested person may request the Registrar to
remove a mark from the Register, in respect of any ofthe goods or services in respect of which it isregistered, on the ground that up to one month prior tofiling the request the mark had, after its registration,not been used by the registered owner or a licenseeduring a continuous period of three years or longer; buta mark shall not be removed if it is shown that specialcircumstances prevented the use of the mark and thatthere was no intention not to use or to abandon thesame in respect of those goods or services.
Collective Marks 8.(1)  Subject to subs ections (2) and (3), Sections 3 to 7
and 12 to 16 shall apply to collective marks.IP/N/1/ATG/T/1
Page 10
(2)  An application for registration of a collective
mark shall designate the mark as a collective mark andshall be accompanied by a copy of the regulationsgoverning the use of the collective mark.
(3)  The registered owner of a collective mark shall
notify the Registrar of any changes made in respect ofthe regulations referred to in subsection (2).
(4)  In addition to the grounds provided in
section 7(2), the Registrar shall invalidate theregistration of a collective mark if the personrequesting the invalidati on proves that only the
registered owner uses the mark, or that he uses or
permits its use in contravention of the regulationsreferred to in subsection (2) or that he uses or permitsits use in a manner liable to deceive trade circles or thepublic as to the origin or any other commoncharacteristics of the goods or services concerned.
Licensing of Marks 9.(1)  Any licence contract concerning the
and Collective Marks registration of a ma rk, or an application therefor, shall
provide for effective control by the licensor of thequality of the goods or services of the licensee inconnection with which the mark is used.  If the licencecontract does not provide fo r such quality control or if
such quality control is not effectively carried out, thelicence contract shall not be valid.
(2)  The registration of a collective mark, or an
application therefor, may not be the subject of a licencecontract.
Trade Names 10.(1)  A name or de signation may not be used as a
trade name if by its nature or the use to which it maybe put, it is contrary to pub lic order or morality and if,
in particular, it is liable to deceive trade circles or thepublic as to the nature of the enterprise identified bythat name.
(2)  Notwithstanding any laws or regulations
providing for any obligation to register trade names,such names shall be protecte d, even prior to or without
registration, against any unlawful act committed bythird parties.IP/N/1/ATG/T/1
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(3)  In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark orcollective mark, or any such use of a similar tradename or mark, that is likely to mislead the public, shallbe deemed unlawful.
Interpretation of terms 11.  For the purposes of this Act:
concerning the Madrid Protocol
“Madrid Protocol” means the Protocol
Relating to the Madrid AgreementConcerning the International Registration ofMarks, adopted at Madrid on June 27, 1989;
“Common Regulations” means the
Common Regulations under the MadridAgreement and Madrid Protocol;
“international application”, “international
registration”, “International Bureau”, “holder”,
“designation” “subsequent designation”, “date ofinternational registration” and “date of
subsequent designation” have the same meaning
as in the Madrid Protocol or the Common
Regulations, as the case may be.
“designation of Antigua and Barbuda” means
request made in relation to an international
registration (either in the international
application or subsequently) for extension of
protection to Antigua and Barbuda underArticle 3 ter(1) or (2) of the Madrid Protocol;
“date of the designation of Antigua and
Barbuda” means the date of an international
registration resulting from an internationalapplication in which Antigua and Barbuda was
designated or the date of a subsequent
designation of Antigua and Barbuda, as the
case may be.
Effect of International 12.  Where an  international registration of a mark
Registration as National contains a de signation of Antigua and Barbuda,
Application. the protection of the ma rk shall be the same, as from the
date of the designation of Antigua and Barbuda, as if
the mark had been the subject of an application forregistration filed under Section 4.
National Processing of 13.(1)  Where the Registrar has been notified by
International Registration the International Bureau  that an international registration
contains a designation of An tigua and Barbuda, he shallIP/N/1/ATG/T/1
Page 12
proceed in   accordance with Section 5(2).
(2)  Where the Registrar finds that the conditions
referred to in Section 5(2) are not fulfilled, he shallnotify the International Bureau that, to the extent thatthe said conditions are not fulfilled, protection of the
mark in Antigua and Barbuda is refused.
(3)  Any interested person may, within the prescribed
period and in the prescribed manner, give notice to theRegistrar of opposition to the protection of the mark onthe grounds that one or more of the requirements ofsection 2 or 3(2)  and the Re gulations pertaining thereto
are not fulfilled.
(4)  The Registrar shall forthwith notify the
International Bureau of an opposition undersubsection(3) and subseque nt procedure shall be in
accordance with Section 5(5) and (6), references to theapplicant being construed as references to the holder ofthe international registration.
(5)  No notification in accordance with subsection (2) or
(3) and (4) shall be sent to the International Bureau after
the end of one year from the date on which theInternational Bureau notified the Registrar of thedesignation concerned.
Effect of International  14.  Where no notification of refusal or opposition
Registration as National has  been se nt to the International Bureau in
Registration. accordance with section 13(2), (3), (4) and (5), or any
such refusal has been withdrawn or any such oppositionhas been decided in favor of the holder of theinternational registration, th e protection of the mark in
Antigua and Barbuda  shall, as from the date of the
designation of Antigua and Ba rbuda, be the same as if
the mark had been registered under Section 5(8) of thisAct.
Further provisions concerning 15.  Further details concerning international
international applications and applications and international registrations,
International Registrations. including the procedure to be followed and any fees
to be paid in connection with the filing of an
international application through the Intellectual
Property Registry, may be included in the Regulations.
Conflict Between the Madrid 16.  In the event of any conflict between, on the
Protocol  and this Act. one hand, this Act or the Regulations and, on the other, the
Madrid Protocol or the Common Regulations, the latter shallIP/N/1/ATG/T/1
Page 13
prevail.
Changes in ownership and 17. (1)  Any change in the ownership of
Licence contracts or the registration of  a mark or collective mark, or in
the ownership of an appli cation therefor, shall be in
writing and shall, at the request of any interested party,to the Registrar, be recorded and, except in the case ofan application, published by the Registrar; but suchchange shall have no effect  against third parties until
such recording is effected.
(2)  Any change in the ownership of the registration
of a collective mark, or in the ownership of anapplication therefor, shall require previous approval by
the Minister.
(3)  Any change in the ownership of a trade name
must be made with the transf er of the enterprise or part
thereof identified by that name and shall be in writing.
(4)  A change in ownership of the registration of a
mark or a collective mark shall be invalid if it is likelyto deceive or cause confusi on, particularly in regard to
the nature, origin, manufacturing process,characteristics, or suitability for their purpose, of thegoods or services to which the mark is applied.
(5)  Any licence contract concerning a registered
mark, or an application therefor, shall be submitted tothe Registrar who shall keep its contents confidentialbut shall record it and publish a reference thereto; andthe licence contract shall have no effect against thirdparties until such submission has been made.
Agents. 18.  Where an applicant’s ordinary residence or
principal place of business is outside Antigua andBarbuda, he shall be represen ted by an attorney at law
resident and practising in Antigua and Barbuda.
Register. 19.(1)  The Registrar shall maintain a register for
Marks to be called the Regist er of Marks; and all the
recordings provided for in this Act shall be effected inthe Register..IP/N/1/ATG/T/1
Page 14
(2)   Collective marks shall be registered in a special
section of the Register of Marks.
(3)  The Register may be consulted by any person, and
any person may obtain extracts therefrom, under theconditions prescribed in the Regulations.
(4)  The Registrar  shall publish in the Gazette all the
publications provided for in this Act.
Corrections of Errors and 20.(1)  The Registrar may, subject to any
Extension of Time provision in the Regulations, correct any error
of translation or transcrip tion, clerical error or mistake
in any application or documen t filed with the Registrar
or in any recording effected pursuant to this Act or theRegulations.
(2)  If the Registrar is satisfied that the
circumstances justify it, he may, upon receiving awritten request, extend the time for doing any act ortaking any proceeding under this Act and theRegulations, upon notice to th e parties concerned and
upon such terms as he may direct; and such extensionmay be granted though the time for doing the act ortaking the proceeding has expired.
Exercise of 21.  The Registrar shall give any party to a
Discretionary proceeding before him an opportunity of beingPowers heard before exercisi ng adversely to that party
any discretionary power vested in him by this Act orthe Regulations.
Competence of 22.(1)  The High Court shall have jurisdiction
Court and  Appeals in cases of di spute relating to the application
of this Act and the Regulations and in matters whichunder this Act are to be referred to the court.
 (2)  Any decision taken by the Registrar under this Act, in
particular the registration of a mark or collective mark, orthe refusal of an application for such a grant orregistration, may be the subject of an appeal by anyinterested party before the C ourt and such appeal shall be
filed within two months of  the date of the decision.
Infringement, 23.(1)  Subject to section 6(3), an infringement
Unlawful Acts and shall consist of the performance of any actIP/N/1/ATG/T/1
Page 15
Offences. referred to in section 6 in Antigua and Barbuda by a
person other than the owner of the title of protectionand without the agreement of the latter.
(2)  On the request of the owner of the title of
protection, or of a licensee if he has requested the
owner to institute court proceedings for a specific reliefand the owner has refused or  failed to do so, the court
may grant an injunction to prevent infringement, animminent infringement, or an unlawful act referred toin section 10(2) and (3), award damages and grant anyother remedy provided for in the general law.
(3)  Any person who knowingly performs an act
which constitutes an infringement as defined insubsection (1) or an unlawful act as defined insection 10(2) and (3) is guilty of an offence and isliable on summary conviction to a fine of $100,000or to imprisonment for a term of five years, or toboth.
Application of 24.  The provisions of any interna tional treaties
International in respect of intellectual property to which AntiguaTreaties. and Barbuda is a party sh all apply to ma tters dealt with
by this Act and, in case of  conflict with provisions of
this Act, shall prevail over the latter.
Regulations. 25  The Minist er may make Regulations
prescribing details for the implementation ofthis Act and the Regulations may, in particular, providefor the payment of fees in connection with applicationsfor the registration of  marks and collective marks andmatters related thereto.
Repeals;                           26.  (1)   The Registration of the United Kingdom
Transitional Provisions Trade   Marks Act, Cap 377A and the Trade
Marks Act, Cap 435 are repealed.
(2) Notwithstanding the repeal of the Acts referred to
in subsection (1), trademarks registered under thoseActs shall remain in force but shall, subject tosubsection (3), be deemed to have been granted orregistered under this Act.
(3) Trademarks registered under the Acts referred to
in subsection (1) shall be due for renewal within thesame period as under those Acts or 10 years from theIP/N/1/ATG/T/1
Page 16
entry into force of this Act, whichever period first
expires, and, upon renewal, shall be reclassified inaccordance with the International Classification.IP/N/1/ATG/T/1
Page 17
(4) Within 18 months from the entry into force of
this Act, the Minister may, by notice* in the Gazette ,
make any further transitional or saving provisionswhich appear to him to be necessary or desirable.
Passed the House of Representatives this Passed the Senate this
                     Day of                     2001     day of        2001
Speaker President
Clerk to the House of Representatives Clerk to the Senate
__________
                                                     
* to check whether Constitution permits.