Intellectual Property Rights
NATIONAL LEGISLATION - TRINIDAD &
Geographical Indications Act, 1996*
ARRANGEMENT OF SECTIONS
Short title and commencement
PROTECTION OF GEOGRAPHICAL INDICATIONS
Availability of protection regardless of registration;
5. Homonymous geographical indications for wines
6. Exclusion from protection
REGISTRATION OF GEOGRAPHICAL INDICATIONS
8. Application for registration; right to file application;
9. Contents of application
10. Examination; opposition; registration
11. Right of use
12. Cancellation and rectification of registration; publication
13. Register; publication
14. Correction of errors; extension of time
15. Exercise of discretionary powers
16. Competence of Court; appeals
SPECIAL PROVISIONS CONCERNING MARKS; EXCEPTIONS
18. Marks conflicting with a geographical indication for wines and spirits
19. Exceptions regarding prior users
* Short title.
* Entry into force: December 1, 1997.
* Source: Legal Supplement Part A to the Trinidad
and Tobago Gazette, Vol. 35, No. 156, 6th August, 1996.
An Act to provide for the protection of geographical
indications and related matters.
(Short title and commencement)
(1) This Act may be cited as the Geographical
Indications Act, 1996.
(2) This Act shall come into force on a date to be fixed
by the President by Proclamation.
2. In this Act—
“Controller” means the Controller of the Intellectual
Property Office appointed under section 3 of the Patents Act and any reference
to the Controller shall be construed as including a reference to any officer
discharging the functions of the Controller;
“Court” means the High Court;
“geographical indication” means an indication which
identifies a good as originating in the territory of a country, or a region or
locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical
“good” means any natural or agricultural product or
any product of handicraft or industry;
“Minister” means the Minister to whom responsibility
for legal affairs has been assigned;
“Paris Convention” means the Paris Convention for the
Protection of Industrial Property of March 20, 1883, as last revised;
any producer of agricultural products or any other person exploiting
any manufacturer of products of handicraft, or industry; and
any trader dealing in the said products;
“Register” means the Register of Geographical
PROTECTION OF GEOGRAPHICAL INDICATIONS
3. Any interested person and any interested group of
producers or consumers may institute proceedings in the Court to prevent, in
respect of geographical indication—
the use of any means in the designation or presentation of a good that
indicates or suggests that the good in question originates in a geographical
area other than the true place of origin in a manner which misleads the public
as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the
meaning of Article 10bis of the Paris Convention; or
(c) use of a geographical indication identifying wines for wines not
originating in the place indicated by the geographical indication in question
or identifying spirits for spirits not originating in the place indicated by
the geographical indication in question, even where the true origin of the
goods is indicated or the geographical indication is used in translation or
accompanied by expressions such as “kind”, “type”, “style”,
“imitation” or the like, and in proceedings under this section, the Court may, in
addition to issuing an injunction, award damages and grant any other remedy or
relief as it may deem fit.
(Availability of protection regardless of registration;
4. Protection under this Act shall be available—
(a) regardless of whether a geographical indication has been registered;
however, registration of a geographical indication under Part III of this Act
shall, in any proceedings under this Act, raise a presumption that such
indication is a geographical indication within the meaning of section 2; and
(b) against a geographical indication which, although literally true as to
the territory, region or locality in which the goods originate, falsely
represents to the public that the goods originate in another territory.
(Homonymous geographical indications for wines)
5. In the case of homonymous geographical indications for
wines, protection shall be accorded to each indication, subject to paragraph
(b) of section 4. The Controller, in cases of permitted concurrent use of such
indications, shall determine the practical conditions under which the
homonymous indications in question will be differentiated from each other,
taking into account the need to ensure equitable treatment of the producers
concerned and that consumers are not misled.
(Exclusion from protection)
6. The following shall not be protected as geographical
(a) indications which do not correspond to the definition in section 2;
(b) indications which are contrary to public order or morality;
(c) geographical indications which are not or cease to be protected in
their country of origin, or which have fallen into disuse in that country.
7. Any person who knowingly and with intent to deceive
performs any of the acts referred to in section 3 is guilty of an offence and
is liable on summary conviction to a fine of eight thousand dollars and to
imprisonment for three years.
REGISTRATION OF GEOGRAPHICAL INDICATIONS
(Application for registration; right to file application;
(1) An application for the registration of a
geographical indication shall be filed with the Controller.
(2) The following shall have the right to file an
(a) persons carrying on an activity as a producer in the geographical area
specified in the application, with respect to the goods specified in the
application, as well as groups of such persons;
groups of consumers; and
(c) any competent authority.
(3) Where an applicant’s ordinary residence or
principal place of business is outside Trinidad and Tobago, he shall be
represented by an attorney-at-law resident and practising in Trinidad and
(Contents of application)
9. An application for the registration of a geographical
indication shall specify—
(a) the name, address and nationality of the natural person or legal entity
filing the application, and the capacity in which the applicant is applying
(b) the geographical indication for which registration is sought;
(c) the geographical areas to which the geographical indication applies;
(d) the goods for which the geographical indication applies;
(e) the quality, reputation or other characteristic of the goods for which
the geographical indication is used, and shall be subject to the payment of the prescribed
(Examination; opposition; registration)
(1) The Controller shall examine the application to
ascertain whether it complies with the requirements of sections 6(b), 8 and 9
and the Regulations pertaining thereto.
(a) Where the Controller finds that the conditions
referred to in subsection (1) hereof are fulfilled, he shall cause the
application, as accepted, to be published in the prescribed manner.
(b) Any interested person or competent authority may,
within the prescribed period and in the prescribed manner, give notice to the
Controller of opposition to the registration of the geographical indication on
the grounds that one or more of the requirements of sections 6, 8 and 9 are
(c) The Controller shall send a copy of such a notice to
the applicant, and, within the prescribed period and in the prescribed manner,
the applicant shall send to the Controller a counter-statement of the grounds
on which he relies for his application; if he does not do so, he shall be
deemed to have abandoned the application.
(d) If the applicant sends a counter-statement, the
Controller shall furnish a copy thereof to the person giving notice of
opposition and, after hearing the parties, if either or both wish to be heard,
and considering the merits of the case, shall decide whether the geographical
indication should be registered.
(3) Where the Controller finds that the conditions
referred to in subsection (1) are fulfilled, and either—
(a) the registration of the geographical indication has not been opposed
within the prescribed time limit; or
(b) the registration of the geographical indication has been opposed and
the opposition has been decided in the applicant’s favour, he shall register
the geographical indication, publish a reference to the registration and issue
to the applicant a certificate of registration. Otherwise, he shall refuse the
(Right of use)
11. Only producers carrying on their activity in the
geographical area specified in the Register shall have the right to use a
registered geographical indication, in the course of trade, with respect to
the products specified in the Register, provided that such products possess
the quality, reputation or other characteristic specified in the Register.
(Cancellation and rectification of registration;
(1) Any interested person or any competent
authority may apply to the Court for—
(a) the cancellation of the registration of a geographical indication on
the ground that it does not qualify for protection as such having regard to
section 6; or
(b) the rectification of the registration of an appellation of origin on
the ground that the geographical area specified in the registration does not
correspond to the geographical indication, or that the indication of the
products for which the geographical indication is used or the indication of
the quality, reputation or other characteristic of such products is missing or
(2) In any proceedings under this section, notice of the
request for cancellation or rectification—
(a) shall be served on the person who filed the application for
registration of the geographical indication or his successor in title; and
(b) shall, by a publication in the prescribed manner, be given to all
persons having the right to use the geographical indication under section 11.
(3) The persons referred to in subsection (2) and any
other interested person may, within a period which shall be specified by the
Court in the said notice and publication, apply to join in the proceedings.
(4) The Registrar of the Court shall notify the
Controller of the decision of the Court or the decision on any appeal
therefrom and the Controller shall record it and publish a reference thereto
as soon as possible.
(a) The Controller shall maintain a Register in
which he shall record all matters required by this Act to be recorded.
(b) The Register may be consulted by any person, and any
person may obtain extracts therefrom, under the conditions prescribed in the
(2) The Controller shall publish in the prescribed manner
all the publications provided for in this Act.
(Correction of errors; extension of time)
(1) The Controller may, subject to Regulations made
under this Act, correct any error of translation or transcription, clerical
error or mistake in any application or document filed with the Controller or
in any matter recorded pursuant to this Act or the Regulations.
(2) If the Controller is satisfied that the circumstances
justify it, he may, upon receiving a written request, extend the time for
doing any act or taking any proceeding under this Act and the Regulations,
upon notice to parties concerned and upon such terms as he may direct.
Notwithstanding that the time for doing the Act or taking the proceeding has
expired, the Controller may grant an extension of time.
(Exercise of discretionary powers)
15. The Controller shall, before exercising any
discretionary power vested in him by this Act adversely to any party to a
proceeding before him give that party an opportunity to be heard.
(Competence of Court; appeals)
(1) The Court shall have jurisdiction in cases of
dispute relating to the application of this Act and in matters which under
this Act are to be referred to the Court.
(2) Any decision taken by the Controller under this Act
may be the subject of an appeal by any interested party before the Court and
such appeal shall be filed within two months of the date of the decision.
SPECIAL PROVISIONS CONCERNING MARKS; EXCEPTIONS
17. The Controller shall, on his own motion or at the
request of an interested party, refuse or invalidate the registration of a
trademark which contains or consists of a geographical indication with respect
to goods not originating in the territory indicated, if use of the indication
in the trademark for such goods in Trinidad and Tobago is of such a nature as
to mislead the public as to the true place of origin.
(Marks conflicting with a geographical indication for
wines and spirits)
18. The registration of a trademark for wines which
contains or consists of a geographical indication identifying wines or of a
trademark for spirits which contains or consists of a geographical indication
identifying spirits shall be refused or invalidated by the Controller on his
own motion or at the request of an interested party, with respect to such
wines or spirits not having this origin.
(Exceptions regarding prior users)
(1) Nothing in this Act shall prevent continued and
similar use of a particular geographical indication of another country
identifying wines or spirits in connection with goods or services by any of
its nationals or domiciliaries who have used that geographical indication in a
continuous manner with regard to the same or related goods or services in the
territory of that country either—
for at least ten years preceding April 15, 1994; or
in good faith preceding that date.
(2) Where a trademark has been applied for or registered
in good faith, or where rights to a trademark have been acquired through use
in good faith either—
before the date of entry into force of this Act; or
before the geographical indication is protected in its country of
origin, this Act shall not prejudice the registrability of or the
validity of the registration of a trademark, or the right to use a trademark,
on the basis that such a trademark is identical with, or similar to, a
(3) Nothing in this Act shall apply in respect of a
geographical indication of any country with respect to goods or services for
which the relevant indication is identical with the term customary in common
language as the common name for such goods or services in Trinidad and Tobago
or in respect of a geographical indication of any other country with respect
to products of the vine for which the relevant indication is identical with
the customary name of a grape variety existing in Trinidad and Tobago as of
January 1, 1995.
(4) Any request for relief made under Part II of this Act
in connection with the use or registration of a trademark must be presented
within five years after the adverse use of the protected indication has become
generally known in Trinidad and Tobago or after the date of registration of
the trademark in Trinidad and Tobago, provided that the trademark has been
published by that date, if such date is earlier than the date on which the
adverse use became generally known in Trinidad and Tobago and provided that
the geographical indication is not used or registered in bad faith.
(5) This Act shall in no way prejudice the right of any
person to use, in the course of trade, that person’s name or the name of
that person’s predecessor in business, except where such name is used in
such a manner as to mislead the public.
20. The Minister may make Regulations prescribing all
matters that are required or permitted by this Act to be prescribed, or are
necessary or convenient to be prescribed for giving effect to the purposes of