The statutes in force — no Industrial Property Act
An “Industrial Property Act” is sometimes spoken of in discussions of law reform in Guyana. As at the date of this note, no such Act has been identified as having been enacted or brought into force. The statutes that actually govern industrial property remain the older revised laws, administered in practice through the Patent Office at the Deeds Registry, under the Deeds and Commercial Registries Authority.
The principal statutes are the Trade Marks Act (Cap. 90:01, Act No. 67 of 1952, as amended by Act No. 4 of 1972), which came into force on 1 January 1956; the Patents and Designs Act (Cap. 90:03), which came into force on 1 January 1938 and has been amended, including in 1992; and the Geographical Indications Act 2005. Copyright continues to be governed by the Copyright Act 1956 as it applies in Guyana; no later general copyright statute has been identified as being in force. Official commentary has noted that modernisation of copyright law has been under consideration, but consideration is not enactment.
The WIPO Lex text of the Trade Marks Act is the official revised law used in this note. The Registrar of Patents, Designs and Trade Marks is the Registrar of Deeds, and the Patent Office is situated at the Deeds Registry in Georgetown, or at any other place appointed by the Minister.
Trade marks: governing law and what may be registered
Trade mark protection in Guyana is a matter of national law under the Trade Marks Act, together with the Trade Marks Rules made under it. The Act has been in force since 1 January 1956. It is not displaced by any later industrial-property code.
A “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination of those. A “trade mark” is defined, except in relation to a certification trade mark, as a mark used or proposed to be used in relation to goods, for the purpose of indicating a connection in the course of trade between the goods and a person having the right, as proprietor or registered user, to use the mark. The statutory definition is therefore a goods mark. This note does not treat the Act as establishing a general regime for the registration of service marks.
The register is divided into Part A, Part B and Part C. Registration in Part A requires the mark to contain or consist of at least one of the essential particulars in section 11 — including a name represented in a special or particular manner, a signature, an invented word, a word with no direct reference to the character or quality of the goods and not being in ordinary signification a geographical name or a surname, or any other distinctive mark (the last of those, in the cases specified, only on evidence of distinctiveness). Registration in Part B requires that the mark be capable of distinguishing the proprietor’s goods (section 12). It is not lawful to register matter that is likely to deceive or cause confusion, is contrary to law or morality, or is a scandalous design (section 13), or a mark that is identical with, or nearly resembles, a mark already on the register for the same goods or description of goods, subject to honest concurrent use (section 14). Certification trade marks are separately provided for in section 39.
Application, advertisement, opposition and classification
A person claiming to be the proprietor of a trade mark used or proposed to be used by that person applies in writing to the Registrar, in the prescribed manner, for registration in Part A or Part B (section 19). The Registrar may refuse the application, or accept it absolutely or subject to amendments, modifications, conditions or limitations. In a case of refusal or conditional acceptance, the applicant may require written grounds and may appeal to the High Court.
Once an application has been accepted, the Registrar is to cause it to be advertised in the prescribed manner (section 20). In practice, advertisement is in the Official Gazette. Section 20 itself refers to “the prescribed time.” The Trade Marks Rules (R. 1/1955, as amended, including by Act No. 4 of 1972 and R. 1/1992), which are printed as subsidiary legislation in Cap. 90:01 (L.R.O. 1/2022), prescribe that time: rule 46 provides that any person may, within one month from the date of any advertisement in the Gazette of an application for registration, give notice in Form 7 to the Registrar of opposition. The notice must include a statement of the grounds (rule 47). The applicant must then file a counter-statement within one month of receiving the duplicate notice (rule 48), or, under section 20, the application is deemed abandoned if no counter-statement is sent within the prescribed time. The Registrar hears the parties if required, decides whether registration is to be permitted, and that decision may be appealed to the Court.
When the time for opposition has expired without opposition, or an opposition has been decided in favour of the applicant, the Registrar is to register the mark, unless the application was accepted in error. The mark is registered as of the date of the application, and that date is deemed to be the date of registration (section 21). The Registrar then issues a sealed certificate of registration. If registration is not completed within twelve months of the application by reason of the applicant’s default, the Registrar may, after notice, treat the application as abandoned.
A trade mark must be registered in respect of particular goods or classes of goods. Any question as to the class within which goods fall is determined by the Registrar, whose decision is final (section 5). The Minister may make rules for classifying goods for the purposes of registration (section 52). The Fourth Schedule to the Trade Marks Rules, printed in the official chapter (Cap. 90:01, L.R.O. 1/2022), is headed “Classification of Goods” and sets out 34 numbered classes of goods. The official text, including the Rules, does not describe that schedule as the Nice Classification, contains no provision for the registration of service marks, and this note does not treat the classification used in Guyana as a particular Nice edition.
Part C of the register provides a separate route for a person who is the registered proprietor of a trade mark in the United Kingdom (or a person deriving title from that proprietor) to apply, during the subsistence of the United Kingdom registration, to have the mark registered in Guyana in respect of some or all of the goods comprised in that registration (sections 40 to 42). The privileges conferred date from the United Kingdom registration and continue, subject to renewal, for so long as the United Kingdom registration remains in force for those goods, but no infringement action lies in respect of use of the mark before the date of issue of the Guyanese certificate (sections 43 and 44).
Duration, renewal, use, infringement and passing off
The registration of a trade mark is for a period of seven years, and may be renewed from time to time (section 22). On application by the registered proprietor in the prescribed manner and within the prescribed period, the Registrar is to renew the registration for a period of fourteen years from the expiry of the original registration or of the last renewal. (A registration as of a date before the commencement of the Act is treated, for the original term, as a fourteen-year registration.) Before expiry, the Registrar is to send the proprietor notice of the date of expiry and of the conditions, including fees, on which renewal may be obtained. If those conditions are not complied with, the Registrar may remove the mark from the register, subject to any prescribed conditions as to restoration. A mark removed for non-payment of the renewal fee is, for one year after removal, still deemed to be on the register for the purpose of a later application, unless there was no bona fide trade use in the two years before removal, or no deception or confusion would be likely to arise.
A registered mark may be taken off the register, on the application of a person aggrieved to the Court or, subject to the Act, to the Registrar, on grounds of non-use (section 28). Those grounds include that the mark was registered without any bona fide intention that it should be used in relation to the goods, and that there has in fact been no bona fide use up to one month before the application; or that a continuous period of five years or longer elapsed during which the mark was registered and there was no bona fide use in relation to those goods. Non-use that is shown to have been due to special circumstances in the trade, and not to any intention not to use or to abandon the mark, may not be relied on for that purpose. Permitted use by a registered user is deemed to be use by the proprietor (section 30). Use in Guyana on goods to be exported is deemed to be use of the mark (section 33).
No person is entitled to institute a proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark (section 4). Registration in Part A, if valid, gives the proprietor the exclusive right to use the mark in relation to the goods for which it is registered. That right is deemed to be infringed by a person who, not being the proprietor or a registered user using by way of permitted use, uses in the course of trade a mark identical with it, or so nearly resembling it as to be likely to deceive or cause confusion, in the manner set out in section 6. Registration in Part B gives a like right, but in a Part B infringement action, otherwise than in the cases specified, no injunction or other relief is to be granted if the defendant establishes that the use complained of is not likely to deceive or cause confusion, or to be taken as indicating a connection in the course of trade with a person entitled to use the mark (section 7).
Section 4 expressly preserves the right of action against any person for passing off goods as the goods of another person, and the remedies in respect of that action. The same saving is repeated, for marks registered through the United Kingdom route, in section 45. Passing off therefore remains available, as a common-law cause of action, whether or not the claimant has a registered mark. After seven years, the original registration of a Part A mark is, in legal proceedings, to be taken to be valid in all respects, unless the registration was obtained by fraud or the mark offends against section 13 (section 15).
The Madrid Protocol
Guyana is not a contracting party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. It does not appear on WIPO’s official list of parties to the Madrid Protocol. An international registration under the Protocol cannot, therefore, be used to designate Guyana. Protection in Guyana is obtained by a national application under the Trade Marks Act, or, where the statutory conditions are met, by an application under the Act’s provisions for a mark already registered in the United Kingdom. A foreign proprietor who has protected a mark through Madrid in other Caribbean or Latin American jurisdictions will still need a Guyanese filing if protection is required here.
Patents, designs, geographical indications and copyright
Patents and registered designs remain governed by the Patents and Designs Act (Cap. 90:03), in force from 1 January 1938 and later amended, including in 1992. Applications are made to the same Registrar. This note does not attempt to restate the Act’s conditions of patentability, term or procedure; those should be read in the statute and in current Registry practice. Geographical indications have a dedicated statute, the Geographical Indications Act 2005. Copyright, as noted above, continues to rest on the 1956 copyright legislation as it applies in Guyana, pending any later enactment.
Intellectual property instructions in Guyana therefore still begin with an identification of the correct existing statute, and not with an assumption that a modern industrial-property code has already been passed. Trade mark filings, in particular, need to be planned on a national basis, with the goods classification actually used by the Registrar, the seven-year term and fourteen-year renewal, and the five-year non-use jurisdiction, clearly in view.