Business View Caribbean | November 2020

11 BUSINESS VIEW CARIBBEAN NOVEMBER 2020 1. Using the Mark Many countries are now moving away from requiring use of a trademark as a condition for registration. While use may not be integral to registration, continued use of the mark is still essential for the trademark to remain in existence long-term. In most countries, a trademark can be expunged if within three years of the filing of such an application the trademark has not been used in association with the goods and/or services for which it is registered. What does this mean to you as a Caribbean SME, especially if your market is international? Ensure that you have an active presence in your registration markets. This may mean proof of sales and advertising that tangibly reaches consumers in countries where your mark is registered. For example, if your trademark covers services in more than one class, it is best that there is sufficient commercial usage of the mark in all registered classes. For example, the restaurant chain McDonald’s lost the right to use the word “Big Mac” in association with sandwiches in the European Union specifically for this reason – insufficient presence of the mark based on sales in the relevant consumer market. 2. Tackling Counterfeits Counterfeits have a negative impact on brand values. A recent report by the European Union Intellectual Property Office indicates that between 2013-2017, knock-offs decreased right holders sales by 50 billion euros per year. In the Marsha Simone Cadogan, Barrister & Solicitor, MSC Intellectual Property & Technology Law; Canaan Bridges Consulting