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Tuesday, 15 June 2004

WHY T&T TRADE MARK REGISTRY CAN’T MAGIC REGISTRATIONS INTO EXISTENCE


The Privy Council ruled yesterday on an appeal from Trinidad & Tobago in Cigarrera Bigott SUCS v Phillip Morris Products Incorporation and another [2004] UKPC 28. This case arose after Phillip Morris Inc applied to register the word BELMONT as a trade mark for tobacco products. After the application was refused and following an internal reorganisation, Phillip Morris Inc assigned various assets to PMP asked the registrar to substitute it as applicant in respect of that application. The registry staff, accepting that request as an ordinary request for registration by an assignee of the mark, didn’t spot that there was no registered mark to assign and issued a certificate of assignment stating that PMP had been entered on the register as proprietor of the mark by virtue of the assignment. Under the law of Trinidad and Tobago, that certificate served as prima facie evidence of the entry in the register which it recorded. However, PMP continued to believe that the mark had not been registered and that the application remained pending. Bigott later applied successfully to register BELMONT. PMP filed an opposition to the application within the extended period allowed to it by the registrar and Bigott sought a determination that PMP was irretrievably out of time in seeking to oppose the application. The deputy registrar found in Bigott’s favour whereupon PMP appealed, arguing that it was the registered proprietor of the mark. This appeal was upheld and that judgment was affirmed by the Court of Appeal of Trinidad and Tobago.

Bigott’s appeal to the Privy Council succeeded. That court ruled that, on its true construction, the register did not evidence registration of the mark in PMP’s name. The register contained no entry of the actual registration, but only an entry of an assignment and it was clear that the entry was concerned only with an assignment of the application, not with an assignment of a registered mark. It was also apparent that the original application had been neither accepted nor advertised. That being so, the registrar had no jurisdiction to register PMP as proprietor. Accordingly, Bigott should be registered as BELMONT’s proprietor instead.

The IPKat notes that, even in the post-colonial era, the Privy Council can come up with some pretty effective and sensible reasoning when righting wrongs perpetrated in far-flung colonies by trade mark registries who can magic a trade mark registration into existence via the certification of the assignment of an application.

Why Tobago is called Tobago here und hier

3 comments:

Anonymous said...

T & T achieved independence in 1962, and while it is one of the few outposts of the former British Empire to still have Privy Council appellate jurisdiction, it is not by any measure a 'colony'.

john cahir

Jeremy said...

Quite right, but I didn't call T&T a colony: I was referring to the post-colonial era.

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