Although you have access to the trademark forms, and although the forms may appear simple to complete, simple errors can have devastating effects, including significant delays in the time to register the mark, potential cancellation of the mark, and potential abandonment of the mark.
Prior to the enactment of the June 22, 2000 Trademarks Act, most Trademarks in Belize could only be protected through a system of so-called “Cautionary Notices”. Only trademarks that had been registered in the UK could be registered in Belize. The new Trademarks Act of Belize repealed the United Kingdom Trademarks Act and the Merchandise Marks Act. Any mark previously registered under the United Kingdom Trademark Act upon expiry required re-registration under the new Trademark Act of Belize. All marks previously “protected” by Cautionary Notices now require registration with BELIPO.
Belize is a party to the International Classification of Goods and Services for the Purposes of the Registration Agreement (NICE). The NICE Classification was incorporated into local Trademark Law by direction issue under Rule 59 of the Trademark Rules as set out in BELIPO Intellectual Property Journal Vol. 6- No. 4.
Each country which is a party to the Nice Classification Agreement is obliged to apply the Nice Classification in connection with the registration of marks, either as the principal classification or as a subsidiary classification, and has to include in the official documents and publications relating to its registration of marks the numbers of the classes of the Classification to which the goods or services for which the marks are registered belong. The NICE classification is available at: http://www.wipo.int/classifications/nivilo/nice/index.htm
The alphabetical list of Goods and Services and the Explanatory Notes of the Nice Classification, shall be consulted when classifying each individual product or service. The class headings in Schedule III of the Trademarks Act (CAP. 257) only indicate in a general manner the fields to which the goods and services in principle belong.
Use of the Nice Classification is mandatory not only for the national registration of marks in countries that are party to the Nice Agreement, but also for the international registration of marks effected by the International Bureau of WIPO, under theMadrid Agreement Concerning the International Registration of Marks and under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and for the registration of marks by the African Intellectual Property Organization (OAPI), by the African Regional Intellectual Property Organization (ARIPO), by the Benelux Trademark Office (BBM) and by the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM).
By registering a trademark a proprietor is afforded protection of his mark since he is granted exclusive right to use the said mark to identify his goods and/or services. Trademark protection is also enforced by the Supreme Court of Belize and is directed at eliminating unfair competitors, such as counterfeiters, who use similar marks to market inferior quality products.
We are able to assist you with the following trademark services:
a) Opposition of Trademarks in Belize
b) Opinions with regards to Trademarks
c) Renewal of Trademarks in Belize
d) Registration of Trademarks in Belize
e) Application for change of Agent
Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.
A cancellation proceeding is similar to an opposition proceeding, but filed against a registered trademark (and not a trademark application). The procedures are virtually the same (e.g., initial disclosures, conferences between the parties, a discovery period, a testimony “trial” period, the opportunity to file motions, and the submission of briefs). However, since the trademark is already registered, the Defendant (registered trademark owner) has the benefit of a legal presumption of trademark ownership. In lieu of a Notice of Opposition, a Petition to Cancel is filed.
Whenever a Trademark Examiner issues a Final Office Action (“final refusal”), the applicant has the option of filing an appeal to the Trademark Trial and Appeal Board (TTAB). An Ex-Parte Appeal is a proceeding between the applicant and the Trademark Examiner who issued a final refusal. The applicant attempts to persuade the TTAB to withdraw the Trademark Examiner’s final refusal and the Trademark Examiner attempts to defend his decision to maintain the final refusal. The TTAB will either maintain the Trademark Examiner’s final refusal or reverse it.
While it is difficult to overcome an Examiner’s final refusal before the TTAB, it is important to note that many Examiners also decide to withdraw the final refusal after an Ex-Parte Appeal is filed, rather than risk a reversal before the TTAB.
Trademark rights arise from use of a trademark in commerce. As long as you place a trademark on goods sold or distributed, or as long as you render services while using a service mark on advertising, trademark rights will apply. It then becomes a question of proof and priority.So then, why file for trademark registration? Here are several advantages:
Below is a basic summary of the typical trademark process:The trademark process normally begins by clearing a prospective trademark. This is done by performing a trademark search of the federal trademark register, all 50 state trademark registers, and common law sources (e.g., publications, business directories, internet).
If the trademark is available, a trademark application can be filed; however, it will not be examined until at least 3 to 6 months after the filing date. If a Trademark Examiner issues a refusal, an applicant will have six months to respond. If the response is not satisfactory, the Trademark Examiner will issue a final refusal. At that point, the applicant will have six months to either appeal the decision or file a Request for Reconsideration to overcome the final refusal.
If a trademark application is approved, it will be published for opposition to allow the public an opportunity to oppose the registration of the trademark. If an application is not opposed within 30 days (unless a request for an extension to oppose is filed), it will either proceed to registration or a Notice of Allowance will be issued.
A Notice of Allowance is issued if an applicant could not show use of the trademark in commerce at the time the application was filed. Because evidence of use of a trademark is a prerequisite to registration for most trademark applications, an applicant who could not prove use of the trademark in the initial application must do so later. Evidence of trademark use is shown by filing a Statement of Use within six months of issuance of the Notice of Allowance.
If the Statement of Use is acceptable, the application will proceed to registration. If it is not acceptable, a refusal will be issued giving the applicant six months to provide acceptable evidence of use. If the evidence (“specimen”) is not acceptable again, the Trademark Examiner will issue a final refusal. At that point, the applicant will have six months to either provide an acceptable specimen or appeal the decision.
Any person who believes that he or she would be damaged by the registration of a trademark may oppose the registration of a trademark by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). A Notice of Opposition is similar to a Complaint filed by a Plaintiff in that it contains allegations identifying the grounds for opposing an application. The Defendant is the applicant seeking registration of a trademark. The applicant must file an Answer to the Notice of Opposition.
Thereafter, an opposition proceeds in a manner similar to litigation, requiring initial disclosures, conferences between the parties, a discovery period, a testimony (trial) period, the opportunity to file motions, and the submission of briefs. The Federal Rules of Civil Procedures, the Federal Rules of Evidence, and the TTAB Manual of Procedure (TBMP) govern the proceedings. The TTAB may only affirm or deny the opposition, but may not grant damages or issue an injunction.
An application for registration of a trademark must be made to the Registrar of Intellectual Property.
The application requires the following:
The application must also contain a statement that the trademark is being used by the applicant or that the applicant possesses a licensee or that he has a bona fide intention to use the trademark. The applicant must demonstrate a definite and present intention to deal in the goods or services for which the trademark is registered. The application is subject to payment of the application fee and other appropriate class fees prescribed in Schedule I to the Rules. Such payments shall be made in Belize dollars. The filing date of the application is the date on which all the requirements highlighted earlier are furnished to the Registrar.
In order for us to register a trademark in Belize on your behalf we will require the following:
In order to renew a trademark in Belize we will require the following:
Note: In order to carry out any of the trademark services listed below we will require a completed Power of Attorney.
Change of Name or Address for a Trademark:
Amendment to Trademark Application in Belize:
Change of Trademark Agent in Belize:
Recording of a Trademark License in Belize:
Transfer of a Trademark in Belize:
Note:
Anyone may, within the prescribed time from the date of the publication of an application for the registration of a Trademark, give notice to the Registrar of opposition to the said registration. The prescribed time for submitting a notice of opposition of a trademark application is twelve weeks from the date of the first publication of the notice of application for registration of a mark. The notice is published in three consecutive fortnightly issues of the Intellectual Property Journal.
GROUNDS FOR REFUSING OR OPPOSING A TRADEMARK IN BELIZE
An application for registration of a trademark in Belize can be refused or opposed on several absolute and relative grounds.
The absolute grounds are that the mark:
The relative grounds for refusal are that the mark:
Please feel free to contact us for an opinion regarding the likelihood of success and a detailed explanation as to the procedure involved.
An application for registration of a trademark must be made to the Registrar of Intellectual Property. The application shall be in the form set out in Schedule II (FORM NO. 3) to the Trademarks Rules (the “Rules”),and shall contain a request for registration of a trademark, the name and address of the applicant, a statement of the goods or services featured in the application and a representation of the trademark.
The application must also contain a statement that the trademark is being used by the applicant or a licensee or that he has a bona fide intention to use the trademark. The applicant must demonstrate a definite and present intention to deal in the goods or services for which the trademark is registered. The application is subject to payment of the application fee and other appropriate class fees prescribed in Schedule I to the Rules. Such payments shall be made in Belizean currency or in an equivalent amount in a convertible foreign currency. The filing date of the application is the date on which all the requirements highlighted earlier are furnished to the Registrar.
Registration is for periods of ten years from the date of registration, with consecutive renewals after every ten years, indefinitely, subject to the payment of renewal fees. Requests for renewal should be made by the proprietor or his agent before the expiry of the registration, and failing this, the request should be made within six months after the expiration date, in which event the Applicant has to pay renewal fees and “additional renewal fees” as late registration fees; that is, double the renewal fees. Renewal takes effect from the expiry of the previous registration. Failure to renew a trademark after the six months grace period results in the striking-off of the mark from the Register. A trademark which is struck-off the Register for non-renewal may only be restored upon re-registration, which will be subjected to the same procedures as a registration commenced as a new application for registration.