Trademark Enforcement & IP Litigation in the Caribbean

While there is no uniform procedure across the region, many jurisdictions that have oppositions follow a similar procedure. Often the opponent must file a notice of opposition including the grounds on which it claims the mark should be blocked from registration. The applicant responds with a counter-statement. Evidence rounds often follow the counter-statement, but in some jurisdictions the evidence is due at the same time as the notice or counter-statement. In some instances a hearing is held while in others the Registrar will make a determination based on the written submission. Reconsideration or appeals can follow in some instances.

We coordinate with our clients to form a regional strategy that also aligns with any broader concerns they may have. We then implement that strategy in coordination with a network of local partners who will serve as the direct local contacts for opposing counsel and the IPO. Our work typically involves consultation on prosecution gaps and the potential risks that enforcement can expose the client to in other Caribbean jurisdictions or further afield. We find that timing and coordination of enforcement work can be overlooked in some situations, which we work to avoid.

Some Caribbean jurisdictions offer customs recordals and border enforcement options. The options can vary widely depending on the specific jurisdiction. We work with clients to assess the cost-benefit of each customs or border enforcement option and make certain that they are prepared with their trademark portfolio if they should wish to move forward with those options.

We routinely look to options like cease-and-desist letters as a first means of stopping infringement. To that end, we have had considerable success with those efforts. Many local infringers are not familiar with the bounds of intellectual property rights and often an educationally toned letter can resolve the matter. We craft our communications with adverse parties thoughtfully in light of client goals, cost-benefit considerations, the local law, and our experience with the responses of various types of infringing parties.

We have often responded to urgent client needs in enforcement matters. While acting with plenty of time is always encouraged, information from the Caribbean region is not always available as easily as in other regions. We have often acted under tight deadlines. Alternatively, when available we have experience in presenting convincing arguments to extend deadlines when no other option exists. We have received extensions in several scenarios when the Registry initially opposed additional time by presenting convincing legal and policy arguments for additional time.

Not all jurisdictions are fully computerized, and this can make finding register details difficult, especially for brands with long histories. Our local teams maintain strong working relationships with IP registry staff members in these paper-based jurisdictions, meaning we can be present at the registry to sit down, and carefully and collaboratively work with examiners to solve issues. This may sound insignificant, but this is a key part of our special sauce!

There are still a couple of countries where service mark protection is not yet available, and this can be frustrating for brands used to working in larger jurisdictions like the UK or US. We often, and effectively, advise on registration strategies for these jurisdictions. 

Clients often note lack of responsiveness from local counsel as a major issue that leads them to moving to, and staying with, Caribbean IP. If you work with Caribbean IP you will experience the same kind of service you would expect from a leading US or European IP firm.

Clients coming to us from other local counsel have also been frustrated by a lack of clear guidance in filing strategy when marks, designs, or patents require a bit of finesse to ensure registration. We aim to present clients with all available filing and protection options open to them, but more importantly, we tap into our extensive knowledge and experience to give clear guidance on what we think is the best course of action, and why!

Yes. While we often have enforced or defended marks when we were involved in the initial prosecution or maintenance, we often become involved in matters via a different route. We often have clients who seek our advice about existing rights filed by others. In some cases, this is part of a transition of portfolios. In others we have worked with the client in other jurisdictions, and they want a regional perspective on enforcement. In other instances still, we have aided clients whose Madrid application were opposed. We have also taken over matters mid-proceedings in some instances. Finally, we also have considerable experience in advising and acting for clients with unregistered rights or relying on non-trademark rights to take action against infringers or other opposing parties.

We have advised clients in many instances regarding domain names. Several Caribbean ccTLDs are used as vanity domains, e.g., Anguilla’s .ai (artificial intelligence), St. Vincent and the Grenadines’ .vc (venture capital). Some jurisdictions use the UDRP, but others do not. In some instances, because of local procedures can make UDRP challenging. In these cases, we have aided clients in finding efficient solutions to domain disputes without having to resort to an action in court. Moreover, we routinely advise clients regarding the implications of local enforcements related to gTLDs.