BELIZE TRADEMARKS

HISTORY (TRADEMARKS ACT OF BELIZE)

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 The new Trademarks Act of Belize repealed the United Kingdom Trademarks Act and the Merchandise Marks Act.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.

BENEFITS OF TRADEMARK PROTECTION

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.

The laws of Belize are designed to ensure that counterfeit and infringing goods are confiscated and forfeited upon importation at our borders.

NICE CLASSIFICATION (TRADEMARK);

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 Trade Marks 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 (Trade Marks and Designs) (OHIM).

APPLICATION FOR REGISTRATION OR RESTORATION OF TRADEMARK

An application for registration of a trademark must be made to the Registrar of Intellectual Property.
The application requires the following:

1. General Application Form (FORM NO. 3) which 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.
2. Fee Payment
3. Application for an Address for Service (FORM NO 1.) This form is only required for an applicant whose residence or principal place of business is outside Belize or for a local applicant who is applying through an attorney.
4. Form of Authorization of Agent (FORM NO. 2)

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 Trade Marks 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 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.

DATE OF REGISTRATION OF A TRADEMARK IN BELIZE

The date of registration of a trademark in Belize is the date of filing of the application for registration.

TERM OF PROTECTION OF A TRADEMARK IN BELIZE

The term of protection of a trademark in Belize is ten years from the date of registration. The term of protection may be extended for further periods of ten (10) years.

TYPES OF MARKS:

• Collective Marks:A collective mark is used to distinguish the goods or services of members of an association from the goods or services of non-members.

• Certification Marks:A certification mark is used to distinguish goods or services certified by the proprietor in respect of quality or some other characteristic.

• Multi-class Applications:Multi-class applications are limited to five (5) classes per application. There is no bar however, for the filing of multiple applications for the same mark.

TERM & RENEWAL OF REGISTRATION IN BELIZE

Registration remains valid for a period of ten years from the date of registration. Consecutive renewals after every ten years must be made subject to the payment of renewal fees. Renewal applications will be accepted if the mark is being used by the applicant and its use is specifically stated on the renewal application. 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 (Restoration). If the application is made within six months after the expiration date, the Applicant has to pay the renewal fees and additional late registration fees. Renewal takes effect from the expiry of the previous registration. Failure to renew a trade mark after the six months grace period results in the striking-off of the mark from the Register. A trade mark 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.

USE OF A TRADEMARK IN BELIZE

Prior use of a Trademark in Belize for registration is not mandatory. However, if the Trademark is not being used prior to the application being filed, the application must state conclusively that the applicant has a bona fide intention that it should be so used. Thereafter, the applicant must ensure that the mark is put to genuine use in Belize within the period of five years following the date of completion of the registration process.

REVOCATION

A trademark registration may be revoked on any of the following grounds –

• that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in Belize by the proprietor or with his consent, in relation to the goods Or services for which it is registered, and there are no proper reasons for non-use;

• that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

• that, in consequence of the acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;

• that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) above if such use as is referred to in those paragraphs is commenced or resumed after the expiry of the five year period and before the application for revocation is made:

Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

PRIORITY

An applicant for registration can claim priority from an earlier application filed in a country which is party to the Paris Convention for the Protection of Industrial Property. The priority claim must be made within six months of the earlier application. The date of filing of such an application for the purposes of priority shall be the date of filing of the first Paris Convention application. A certified copy of the earlier application must be submitted to BELIPO within 90 days of the date of filing.

REQUIREMENTS FOR REGISTRATION OF A TRADEMARK IN BELIZE

In order for us to register a trademark in Belize on your behalf we will require the following:

• A Power of Attorney signed and completed by the Applicant.

• Details of the Trademark

• Copy of the Image that is being registered

• Intended Classes of registration for the trademark

Note: With respect to the Power of Attorney, a scanned copy may be presented in support of the application for filing purposes provided we receive the original within 30 days of such filing.

Click here for a copy of our Power of Attorney.

REQUIREMENTS TO RENEW A TRADEMARK IN BELIZE

In order for us to renew a trademark in Belize on your behalf we will require the following:

• Renewal of Registration of a Mark (Form No. 11) (We will provide this)

• Renewal Fees

• Application for an Address for Service (Form No. 1) (We will provide this)

• Form of Authorization of Agent (Form No. 2) (We will provide this)

• A Power of Attorney signed and completed by the Applicant. A scanned copy may also be presented in support of the application for filing purposes provided we receive the original within 30 days of such filing.

• We will also require the applicant to inform us which one of the following applies to his application for renewal:

  • The Mark covered by the registration has been used in Belize by the registered proprietor or a registered licensee during the last year in respect of all of the goods or services covered by the registration, or

  • The Mark covered by the registration has been used in Belize by the registered proprietor or a registered licensee during the last year in respect of the following goods or services covered by the registration (limited list), or

  • The Mark covered by the registration has not been used in Belize by the registered proprietor or a registered licensee during the last year in respect of the following goods or services covered by the registration for the following reasons: (Explain and provide reasons), or

  • The Mark covered by the registration has not been used in

Belize by the registered proprietor or a licensee during the last year in respect of any of the goods or services covered by the registration for the following reasons: (Explain and provide reasons).

OPPOSITION TO REGISTRATION OF TRADEMARKS:

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:

• Does not satisfy the requirements of the definition of a trademark;

• Is devoid of any distinctive character;

• Consists exclusively of signs or indications that designate the characteristics of goods or services;

• Consists exclusively of signs or indications that are customary in the current language or established practices of the trade;

• Consists exclusively of the natural or technical shape of the goods or the shape that gives substantial value to the goods;

• Is contrary to public policy or morality;

• Is capable of deceiving the public;

• Is prohibited by law;

• Is a specifically protected emblem; or

• Is applied for in bad faith.

The relative grounds for refusal are that the mark:

• Is identical in a confusing manner with an earlier mark and the goods or services are identical with those for which the earlier mark is protected;

• Is similar in a confusing manner with an earlier mark and the goods or services are identical with or similar to those for which the earlier mark is protected;

• Is identical with or similar to a famous and earlier mark, and the goods or services are not similar to those for which the earlier mark is protected;

• Conflicts with any rule of law

• Conflicts with an earlier right

Please feel free to contact us for an opinion regarding the likelihood of success and a detailed explanation as to the procedure involved.

REQUIREMENTS FOR OTHER TRADEMARK SERVICES

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 Trademark

• Power of Attorney

• Application for Change to Application for Registration of a Mark (Form No. 4).

• Application for an Address for service (Form No.1)

• Form of Authorization of Agent (Form No. 2)

• Written statement regarding the new address or name

Amendment to Trademark Application

• Power of Attorney

• Application for other change to application for Registration of a Mark (Form No. 4A). This form shall only be completed by an applicant for the recording of a change to the Trade mark application other than a change of name or address.

• Form of Authorization of Agent (Form No. 2)

Change of Agent:

• Form of Authorization of Agent (Form No. 2)

• Application for an address for Service (Form No. 1)

• Written instructions from Client

Recording of a Trademark License in Belize:

• Application to record a license contract (Form No. 13)

• Application to cancel record in Register of a license contract (Form No. 14) (if necessary)

• Application to record transfer of license contract (Form No. 15) (if necessary)

• Application for an address for Service (Form No. 1)

• Form of Authorization of Agent (Form No. 2)

• A copy of the original license agreement (or a notarized copy).

Transfer of a Trademark:

• Original Assignment document or notarized copy

• Form of Authorization of Agent (From No. 2)

Restriction and Forfeiture of entry of Infringing Articles into Belize

The laws of Belize provide sufficient safeguards to ensure that counterfeit and infringing goods are confiscated and forfeited. In the past such Marks such as NIKE, Viagra, FootLocker, Marlboro, Tommy Hilfiger, and Payless have all been successfully protected with the assistance of both Customs and the local Police Force in Belize.

Note:

• All documents for filing shall be in English. Where a different language is used the documents shall be accompanied by an English translation.

• Each sheet of paper must have its short sides at the top and bottom of the sheet.

• Each sheet of paper must be of the same size and on A4 size paper

• The papers of documents, other than the representations, must be numbered consecutively,

• Page margins must be approximately 2cm,

• Except for representations, pages must be typed or printed preferably with one and a half spacing.

PASSING OFF IN BELIZE

Passing off is a tort and a right which protects the goodwill in a business or the way in which a business sells its products or services. It is generally governed by case law

The purpose of it is to stop someone else from benefiting from another’s goods or business reputation. It aims to prevent the unauthorized imitation of names and image used with respect to the goods or services being offered. It is often considered the alternative remedy to trademark infringement.

BELIZE COPYRIGHT

Copyright is a legal concept, created by law, which grants the creator of an original work exclusive right to it.

REGISTRATION OF COPYRIGHT WORKS IN BELIZE

Copyright in Belize is governed by the Belize Copyright Act, Chapter 252 of the Laws of Belize. According to the Act, copyright protection is automatic upon the creation of the work, which clearly indicates that the works need not be registered for it to be protected in Belize. Nevertheless, the Belize Intellectual Property Office (BELIPO) affords copyright owners the opportunity to deposit their works with the Office.

According to the Act, the protection granted to literary, dramatic, musical, and artistic works is calculated by considering the life of the author plus fifty years. On the other hand the duration of protection granted to sound recordings, films, broadcasts and cable programs is calculated at fifty years from the end of the calendar year when the works were created.

BELIZE PATENTS

In Belize, the Patents Act, Chapter 253, of the Laws of Belize governs the establishment and registration of Patents. A patent is the exclusive right to make, use, or sell an invention for a specified period of time. It is the legal title granted to protect an invention. An invention is a product or process that provides a new way of doing a particular thing, or provides a new technical solution to a problem.

The primary benefit of a patent is that it protects a patent owner from the commercial exploitation of his or her invention without the patent owner’s consent. The patent owner may grant permission to someone or authorize him or her to exploit his or her invention by granting a patent license. The patent owner may also enforce his or her patent rights in the local courts of Belize.

A patent may be granted in Belize only for an invention which satisfies the following conditions –

• The invention must be new – it must not have been made public anywhere in the world, before the date on which the patent application is being filed. It must not be known to the body of existing knowledge in its relevant technical field.
• The invention must involve an inventive step – it must not be obvious to a person with a good knowledge and experience of the subject, when compared with what is already known.
• The invention must be capable of industrial application – it must be capable of being made or used in some kind of industry.
• An invention is not patentable if it is –
  (a) a discovery;
  (b) a scientific theory or mathematical method;
  (c) an aesthetic creation such as a literary, dramatic or artistic work;
  (d) a scheme or method for performing a mental act, playing a game or doing business;
  (e) the presentation of information, or a computer program;
  (f) a method of treatment for the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body;
  (g) a new animal or plant variety.

All products or processes are classified in accordance with the 7th Edition of the Strasbourg Agreement Concerning the International Patent Classification (IPC).

REQUIREMENTS TO APPLY FOR A GRANT OF PATENT
You are required to submit to our firm the following documents for your application:

• Completed Petition for Patent
• Description
• All Drawings / Specifications  (where applicable)
• One or more claims
• Abstract
• Application for an Address for Service
• Power of Attorney to Agent – which is to be completed and signed by the authorized signatory of the Applicant Company. Legalization or notarization is not required.
• Sequence listing part of description (where applicable)
• Translation (where applicable)
• Priority Documents – where the priority of an earlier application (national, regional, or international) is claimed – may be furnished until the date of international publication.

A Patent Cooperation Treaty (PCT) national phase applicant may file the petition without submitting copies of the relevant specification, international application, international search report and international preliminary examination report.

The specification must include the background and a description of the invention. The description must be written in clear language and must include enough detail so that an individual with an average understanding of the field could use or reproduce the invention.

Please contact us for the patent application fees and our legal fees to assist with your application.

We are able to assist you with the following patent services:

• Withdrawal of a Patent Application
• Opinions with regards to a Belize Patent
• Surrendering a Belize Patent
• Restoration of a Belize Patent
• Opposing the registration of a Patent in Belize
• Maintenance of a Belize Patent
• Assignment of a Belize Patent
• Amending a Belize Patent
• Recording a license contract
• Recoding of sublicense contract
• Application for change of Agent

We can also provide you with information regarding the following services:

• Registration of Industrial Designs
• Copyright Infringement
• Utility Model Certificates
• Domain Name Registration (.bz)