As a business owner you have to communicate with your target audience to interest them in buying your goods or services. Often, specific images or words are used to make it easier for a potential buyer to remember your products. This is a very effective way of communication. No one can see the Apple sign without thinking of computers and iPhones. No one can read the word Heineken without thinking of a cold bottle of beer.
When a business consistently uses the same image or words to recommend its products, it becomes a brand. When a brand does its job, it evokes positive feelings in consumers. As a result, people buy the product and therefore brands can become very valuable. That’s why you do not want other people to use your brand for the benefit of their business endeavors. To help businesses protect their brands, all countries in the world have some sort of intellectual property (also called IP) legislation. A specific way to protect a brand in Aruba is by using a trademark. Aruba has its own trademark legislation as of 1989. The Bureau for Intellectual Property Aruba (often referred to as BIPA) is responsible for the registration of trademarks in Aruba.
What is a trademark?
A trademark is any sign that is used to distinguish the goods or services of a business from those of other businesses. It is important to note that the name of a company cannot be a trademark. A trademark regards the products, a trade name regards a company. Still, the definition of trademark sounds pretty broad. And you are right, it is. That is why it is helpful to look what can and what cannot be used as a trademark.
What can be used as a trademark?
It can be a word like Nike or Swiffer. It can be a combination of words like Dolce & Gabbana or Ben & Jerry’s. It can be an image like the red and yellow shell form of Shell. It can be a combination of a word and an image like Toblerone with the mountain image (fun fact: did you ever notice there is an image of a bear hidden in the image of the mountain?). It can be a combination of letters like DA for the drug stores. Or a combination of numbers, for example 501 for Levi’s jeans. It can be a combination of numbers and letters like 7 eleven supermarkets. Or letters with an image like TUI with the winking face. And the list still goes on: it can be colors (Milka purple or Zwitsal yellow), shapes (Pringles) or sounds (Nokia ringtone). By now you may be wondering if everything can be a trademark. Fortunately, the answer is: no.
What cannot be used as a trademark?
Trademarks that lack a distinctive character for the product cannot be recognized as a trademark. You cannot use the word ‘apple’ as a trademark for apples but you can use it for computers. You cannot use trademarks that are contrary to morality or to public order. This is of course quite subjective but you can think of trademarks referring to sex or drugs. Also national symbols or flags or signs for public services like the police cannot be used. Trademarks which could deceive the public are also not allowed. The BIPA refuses to register these kind of non-registrable trademarks. The BIPA however does not check if your trademark violates existing trademarks. You violate existing trademarks in three cases:
- if your trademark is the same as or too similar to an existing trademark for similar goods or services, unless the true holder of the original trademark gave you consent;
- trademarks which can be confused with a well-known (international) trademark unless the true holder of the original trademark gave you consent; and
- trademarks too similar to a trade name which may cause confusion with the public about the origin of the goods and services.
These types of trademarks will be registered by the BIPA, but if an Aruban judge draws the conclusion that there is a violation, your trademark loses its protection and you might face a claim for damages from the original trademark holder.
How do you get a trademark in Aruba ?
If a (first) user of a trademark in Aruba has used that trademark for certain products for three years, he automatically obtains the right to exclusively use that trademark for those products. Registration of a trademark is not obligatory in Aruba, in contrast to the rest of the Kingdom of the Netherlands. However, the first one that applies for a trademark registration is also considered to be the first user, unless someone else proves differently. The BIPA registers the trademarks upon receipt of an application. The protection of the registered trademark lasts for ten years, after which it must be renewed. Both a person and a legal entity can apply for registration of a trademark. It is not necessary that the applicant has a business to which the trademark relates. This means that a trademark can be registered by one party and used by another (of course with consent). You don’t even need to have the intention to use a trademark yourself, to be able to register it. Foreigners may also register trademarks in Aruba via an Aruban trademark agent.
From experience, we’d like to share the following tips and suggestions with you:
- Remember that it is easier to register a trademark than to prove that you used it first.
- Do not forget to renew your trademark registration.
- Do not use or register trademarks that look or sound like existing trademarks. It can cost you!
- For more information regarding trademarks and the use thereof, download tailored Trademark Guides for all of the four jurisdictions in the Dutch Caribbean.