关于知识产权 知识产权培训 树立尊重知识产权的风尚 知识产权外联 部门知识产权 知识产权和热点议题 特定领域知识产权 专利和技术信息 商标信息 工业品外观设计信息 地理标志信息 植物品种信息(UPOV) 知识产权法律、条约和判决 知识产权资源 知识产权报告 专利保护 商标保护 工业品外观设计保护 地理标志保护 植物品种保护(UPOV) 知识产权争议解决 知识产权局业务解决方案 知识产权服务缴费 谈判与决策 发展合作 创新支持 公私伙伴关系 人工智能工具和服务 组织简介 与产权组织合作 问责制 专利 商标 工业品外观设计 地理标志 版权 商业秘密 WIPO学院 讲习班和研讨会 知识产权执法 WIPO ALERT 宣传 世界知识产权日 WIPO杂志 案例研究和成功故事 知识产权新闻 产权组织奖 企业 高校 土著人民 司法机构 遗传资源、传统知识和传统文化表现形式 经济学 金融 无形资产 性别平等 全球卫生 气候变化 竞争政策 可持续发展目标 前沿技术 移动应用 体育 旅游 PATENTSCOPE 专利分析 国际专利分类 ARDI - 研究促进创新 ASPI - 专业化专利信息 全球品牌数据库 马德里监视器 Article 6ter Express数据库 尼斯分类 维也纳分类 全球外观设计数据库 国际外观设计公报 Hague Express数据库 洛迦诺分类 Lisbon Express数据库 全球品牌数据库地理标志信息 PLUTO植物品种数据库 GENIE数据库 产权组织管理的条约 WIPO Lex - 知识产权法律、条约和判决 产权组织标准 知识产权统计 WIPO Pearl(术语) 产权组织出版物 国家知识产权概况 产权组织知识中心 产权组织技术趋势 全球创新指数 世界知识产权报告 PCT - 国际专利体系 ePCT 布达佩斯 - 国际微生物保藏体系 马德里 - 国际商标体系 eMadrid 第六条之三(徽章、旗帜、国徽) 海牙 - 国际外观设计体系 eHague 里斯本 - 国际地理标志体系 eLisbon UPOV PRISMA UPOV e-PVP Administration UPOV e-PVP DUS Exchange 调解 仲裁 专家裁决 域名争议 检索和审查集中式接入(CASE) 数字查询服务(DAS) WIPO Pay 产权组织往来账户 产权组织各大会 常设委员会 会议日历 WIPO Webcast 产权组织正式文件 发展议程 技术援助 知识产权培训机构 COVID-19支持 国家知识产权战略 政策和立法咨询 合作枢纽 技术与创新支持中心(TISC) 技术转移 发明人援助计划(IAP) WIPO GREEN 产权组织的PAT-INFORMED 无障碍图书联合会 产权组织服务创作者 WIPO Translate 语音转文字 分类助手 成员国 观察员 总干事 部门活动 驻外办事处 职位空缺 采购 成果和预算 财务报告 监督
Arabic English Spanish French Russian Chinese
法律 条约 判决 按管辖区浏览

特立尼达和多巴哥

TT020-j

返回

H.C.A. No. 1029 of 1994

In 1954, Walters Trinidad Brewery Co. Ltd submitted an application for the registration of the trademark “Pola Beer” in respect of beers, which was granted. In 1961, the ownership of the mark “Pola Beer” was assigned to Caribbean Development Company Limited, which did not use the assigned mark until December 1993. From December 1993 to June 1994, there was an unusually small production of beer using the mark “Pola Beer”. These beers were distributed throughout Trinidad and Tobago without any promotional advertising campaign.

In 1992, the trademark “Polar”, in respect of beers, was registered in the name of Cerveceria Polar C.A. At that time, there was a “Negative List” prohibiting the importation of foreign beer to Trinidad and Tobago, and there was a high tariff attached to beers produced outside of the Caribbean Community and Common Market (CARICOM), of which Trinidad and Tobago was a part. Representatives of Cerveceria Polar C.A. visited Trinidad and Tobago and held discussions with certain firms there. Also, samples of products from Cerveceria Polar C.A. were sent to potential distributors in Trinidad and Tobago. However, there was no advertisement of the beer produced using the mark “Polar” in Trinidad and Tobago, nor was any dealership established in that territory.

On March 24, 1994, Caribbean Development Company Limited filed an action to have “Polar” struck off the Register of Trade Marks on the grounds that:

(a) the trademark of Cerveceria Polar C.A. was registered without any bona fide intention that it should be used in relation to the goods in respect of which it was registered, and that there had been in fact no bona fide use of the said trademark in relation to the goods by any proprietor thereof for the time being up to the date one month before the date of the application; and

(b) up to the date of one month before the date of the application, a continuous period of five years or longer had lapsed during which time there was no bona fide use in relation to the goods in respect of which the trademark was registered by any proprietor for the time being; and

(c) the trademark “Polar” was entered on the Register without sufficient cause and/or so nearly resembled the trademark of Caribbean Development Company Limited in respect of the same goods or description of goods as to be likely to deceive or cause confusion.

Likewise, on May 17, 1994, Cerveceria Polar C.A. filed an equivalent action against Caribbean Development Company Limited in relation to the mark “Pola Beer”, registered in the name of Caribbean Development Company Limited and excluded the ground identified at (c) above.

In making its decision, the court determined that the issues to be considered were:

(i) whether Cerveceria Polar C.A. registered its mark “Polar” with no bona fide intention of using it;

(ii) whether Caribbean Development Company Limited registered its mark “Pola Beer” with no bona fide intention of using it;

(iii) whether there had been bona fide use of the mark “Pola Beer” in relation to beers by Caribbean Development Company Limited up to one month before the date of the application by Cerveceria Polar C.A.;

(iv) whether there had been bona fide use of the mark “Polar” in relation to beers by Cerveceria Polar C.A. up to one month before the date of the application by Caribbean Development Company Limited; and

(v) whether the “Negative List” made the importation into Trinidad and Tobago of “Polar” beer practically impossible or banned it altogether.

As regards the first issue, the court found that there was an absence of a firm intention on the part of Cerveceria Polar C.A. to use its mark in the immediate future, and that the ignorance of its Export Director concerning the possibility of having “Polar” beers imported under a special license, the removal of the Negative List and the reduction of tariffs on ex-CARICOM beer, suggested a casual approach by Cerveceria Polar C.A. to the use of “Polar” in Trinidad and Tobago at the time of its registration. As a result, the court held that Cerveceria Polar C.A. lacked bona fide intention to use the mark “Polar” in Trinidad and Tobago.

Similarly, in relation to Caribbean Development Company Limited, the court found that there was no bona fide intention on its part to use the mark “Pola Beer” as it had not used the mark from 1961 to 1993, and depressed market conditions presented a challenge for such use only from 1989.

In respect of the third issue mentioned above, the court found that the evidence did not clearly show that the “Polar” samples sent to firms in Trinidad and Tobago were intended for the purpose of introducing the product into the country, and as such, the court held that there had not been a bona fide use of the trade mark “Polar” up to the date one month before the date of the application by Caribbean Development Company Limited.

Moreover, the court found that based on the extent of the sales of “Pola Beer”, which was unusually small, the production and sale of that beer was not a course of trading embarked upon as an end in itself, and further, was not a genuine use of the mark “Pola Beer” but rather a colorable use. As such, the court held that there had not been bona fide use of the mark “Pola Beer” in relation to beers by Caribbean Development Company Limited up to one month before the date of the application by Cerveceria Polar C.A.

Finally, in relation to (v) above, the court distinguished the facts of this matter from those of Aktirbologet Manus v RJ Fullwood and Bland Ltd (1948) 65 RPC 329 and (1949) 66 RPC 71, in which it was considered that war-time legislation and an Import Prohibition Order were special circumstances in trade that made it practically impossible for a Swedish firm to use their British mark for a period of more than five years. The court found that the Negative List did not totally prohibit imports and that the Export Director of Cerveceria Polar C.A. was unaware of the figures involved in the tariff and did not interest himself in finding out. As a result, the court held that Cerveceria Polar C.A.’s non-use of “Polar” in Trinidad and Tobago was not due to special circumstances in trade but to the absence of intention to use the mark.

Accordingly, the court held that both applicants succeeded and ordered both “Polar” and “Pola Beer” to be taken off of the Register of Trade Marks.

Cases referred to:

Re Ducker’s Trademark (1921) 1 CH 113;

Electrolux Ltd. v Electrix Ltd. (1954) RPC 23;

Aktirbologet Manus v RJ Fullwood and Bland Ltd (1948) 65 RPC 329 and (1949) 66 RPC 71.

Other authorities referred to:

Powell’s T.M. 2 Ch 388;

Concord Trade Mark (1987) 13 FSR 209;

Kerly’s Law of Trade Mark and Trade Names;

Kerly’s Law of Trade Mark and Trade Names 10th Ed., at para 11-43

Kerly’s Law of Trademark and Trade Names 12th Ed., paras 2-19

Notes of Official Rulings (1944) 61 R P C 148; and

“Bulova” Trademark 1967