Anguilla: An Overview of IP Protection

Anguilla’s IP laws were revised just four years ago. Harry Wiggin, of Webster Dyrud Mitchell, explains what protection is available for different IP rights.

The trademark and intellectual property laws of Anguilla were revised in 2002 to comply with the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

Trademarks are registered under the Trademarks Act (Revised Statutes of Anguilla ("RSA"), Ch.T30). Trademarks are protected by original registration of the mark in Anguilla with the Registrar of Trademarks or by registration in Anguilla of a mark already registered in the UK. An advantage of registration under the UK Act is that an applicant may dispense with some of the formal requirements, such as advertising, required under the domestic Act.

The Act also provides for reciprocal treatment for community trademarks in the Official Journal pursuant to Rule 101 of the EC Commission Regulations. Under the Trademarks Regulations, the Registrar applies the International Classification of Goods and Services as set out in the Nice Agreement which, in its latest updates, classifies Classes 1-34 for goods and Classes 35-45 for services. Applicants who may have previously registered in other countries will be allowed recognition and given priority for those applications which fulfill the criteria set out in the Paris Convention. A trademark is protected for a 10-year period which is renewable indefinitely (or for as long as the UK registration subsists).

To be validly registered, a trademark must not:

• be incapable of distinguishing the goods or services of one enterprise from those of other enterprises;

• be contrary to public order or morality;

• be likely to mislead the public or trade circles, in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics;

• be identical with, or an imitation of or contain as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any State, intergovernmental organisation or organisation created by an international convention, unless authorised by the competent authority of that State or organisation;

• be identical with, or confusingly similar to, or constitute a translation of, a trademark or trade name which is well known in Anguilla for identical or similar goods or services of another enterprise;

• be well known and registered in Anguilla for goods or services which are not identical or similar to those in respect of which registration is applied for, if, in the latter case, use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known trademark and the interests of the owner of the well-known trademark are likely to be damaged by such use; or

• be identical with a trademark belonging to a different proprietor and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or so nearly resemble such a trademark as to be likely to deceive or cause confusion.

Registrable trademarks include:

• any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings;

• a collective mark; or

• a certification mark;

and may consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

Use of a registered trademark, in relation to any goods or services for which it has been registered, requires the agreement of the registered owner. The registered owner of a trademark shall, in addition to any other rights, remedies or actions available to him, have the right to institute court proceedings against any person who infringes the trademark or a sign similar to the trademark by using, without his agreement, the trademark or who performs acts which make it likely that infringement will occur. The legislation is strict in its protection and there are civil and criminal penalties for infringement.

The registration of patents in Anguilla is governed by the Patents Act (RSA, Ch. P15). Protection is achieved through first registration in Anguilla with the Registrar of Patents, or registration of a patent registered in the UK or under the European Patent Convention. The Registrar must be given written notice of any change in ownership, which in turn will be published. A patent is protected for 20 years from the date of filing, and is non-renewable.

A patent may be granted only for an invention in respect of which the following conditions are satisfied:

• the invention is new;

• it involves an inventive step;

• it is capable of industrial application.

These criteria are defined in greater detail in the legislation but broadly follow common usage.

The following inventions are not patentable:

• inventions the commercial exploitation of which would be contrary to public order or morality;

• a discovery, scientific theory or mathematical method;

• a scheme, rule or method for performing a mental act, playing a game or doing business;

• diagnostic, therapeutic and surgical methods for the treatment of humans or animals, but not including the products used in any of these methods.

Exploitation in Anguilla of a patented invention by a person other than the owner of the patent and without the owner’s agreement constitutes an infringement and, at the request of the owner, or of a licencee if he has requested the owner to institute court proceedings for specific relief and the owner has refused or failed to do so, the Court may grant an injunction to prevent infringement or imminent infringement, may award damages and may grant any other remedy provided for in the general law. There are civil and criminal penalties for infringement which extend, in the case of companies, to any directors and officers consenting to an offence.

Copyright is governed by the Copyright Act (RSA, Ch. C120) and (as regards general copyright law) by the UK Copyright Act 1956 as extended to Anguilla. There is no provision for registration of copyright. Works are protected by the sole fact of their creation and irrespective of their mode or form of expression, or of their content, quality and purpose. Copyright protection lasts for a 50-years period after the death of the author or, in the case of joint authorship, after the death of the last surviving author. This period may vary in the case of works of applied art, collective work or work published anonymously. The economic rights of the copyright owner are assignable in whole or in part and such assignment must be made in writing. Moral rights under the Act are not transmissible by the owner except by testamentary disposition or by operation of law upon the death of the owner/author. The owner/author may, however, waive those rights, provided that such waiver is in writing and specifies the nature and extent of the waiver.

Protection is afforded to literary and artistic works which are original intellectual creations in the literary and artistic domain, including in particular:

• books, pamphlets, articles, computer programs and other writings;

• speeches, lectures, addresses, sermons and other oral works;

• dramatic, dramatico-musical works, pantomimes, choreographic works and other works created for stage production;

• musical works, with or without accompanying words;

• audiovisual works;

• works of architecture;

• works of drawing, painting, sculpture, engraving, lithography, tapestry and other works of fine art;

• photographic works;

• works of applied art; and

• illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Works are protected by the sole fact of their creation and irrespective of their mode or form of expression, as well as of their content, quality and purpose.

The following derivative works are also protected:

• translations, adaptations, arrangements and other transformations or modifications of works;

• collections of works, collections of mere data (databases), whether in machine readable or other form, and collections of expressions of folklore, if such collections are original by reason of the selection or arrangement of their contents.

The protection of any such work is without prejudice to any protection of a pre-existing work or expression of folklore incorporated in or utilised for the making of such a work.

Protection does not, however, extend to:

• any idea, procedure, system, method of operation, concept, principle, discovery or mere data, even if expressed, described, explained, illustrated or embodied in a work; or

• any official text of an administrative or legal nature (other than Acts or regulations of the Anguilla legislature) or to any official translation thereof.

Criminal liability will arise in instances of infringement. In such cases a person found guilty may be fined and/or imprisoned for infringement of a right protected under the Act. Civil remedies - most commonly injunctive relief, damages, seizure and destruction - are available to a wronged party. Privilege against self-incrimination and spousal incrimination is negated under the Act.

An industrial design can be registered if it is new. Protection is by registration with the Registrar of Companies (Industrial Design Act, RSA, Ch. I11). A registered industrial design is protected for five years, renewable for two further consecutive periods of five years. A layout-design is protected for 10 years, and is non-renewable. Exploitation in Anguilla requires the agreement of the registered owner. Similar protection is available in respect of layout-designs of integrated circuits, under separate specific legislation (Layout Designs (Topographies) of Integrated Circuits Act, RSA, Ch. L35).

An industrial design can be registered if it is new. Disclosure to the public of an industrial design shall not be taken into consideration if the disclosure:

• occurred within 12 months preceding the filing date or, where applicable, the priority date of the application; or

• was by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

An industrial design that is contrary to public order or morality is not registrable.

On the request of the owner of a registered industrial design or of a licencee, where he has requested the owner to institute court proceedings for a specific relief and the owner has refused or failed to do so, the Court may grant an injunction to prevent infringement or an imminent infringement, award damages and grant any other remedy provided for in the general law. Any person who intentionally performs an act which constitutes an infringement is guilty of an offence and is liable on summary conviction to a fine of $10,000 or to imprisonment for a term of 1 year or to both.

There is no protection for unregistered designs, except for geographical indications (see below) in relation to products that derive a distinctive characteristic specific to their place of origin, whether or not registered.

Under the Geographical Indications Act (RSA, Ch. G4), Anguilla provides protection to producers, manufacturers and traders dealing in products with a distinctive characteristic specific to its place of origin. Geographical indications do not have to be registered to be protected. Any interested person and any interested group of producers can institute proceedings to prevent, in respect of a geographical indication, misleading indications of a product's origin or any indication that constitutes unfair competition. The Court may, in addition to issuing an injunction, award damages and grant any other remedy or relief as it may deem fit. Geographical indications which are contrary to public morality, have fallen into disuse or have no protection in their originating countries will not be afforded protection under the Act.

No international treaties have been entered into in the area of intellectual property. However some treaties entered into by the United Kingdom are extended to Anguilla.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.