By Dianne Daley McClure
Intellectual Property Partner | Foga Daley
The Trade Marks (Amendment) Act (2013), which took effect on August 31, 2013, updated the Jamaica’s Trade Marks Act and Rules in several respects including changes in relation to opposition and revocation proceedings, the rights of an earlier user, registration of security interests and the assignability of trademark applications.
Changes in Opposition Proceedings
Prior to the amendments, an applicant had a non-extendable period of two months from the date of receipt of a Notice and Statement of Grounds of Opposition within which to file a counterstatement. This two-month period can now be extended. The potential opponent must seek the extension prior to the expiration of the initial two months outlining the reasons for requiring the extension.
An applicant used to have only two months within which to file his Counterstatement once the Opposition (Notice & Grounds) had been filed and served upon him/representative. However, the 2013 Amendments allow parties to agree to a further two months, known as the “cooling-off period” to facilitate settlement discussions. Further extensions of the cooling-off period for up to six (6) months after the expiration of the initial two-month period are allowed provided the opponent agrees.
The Rules state that the applicant has one month from the expiration of the cooling off period within which to file his Counterstatement failing which the application is deemed to be withdrawn. However, based on the general rules related to extensions, parties can still apply for extensions of time beyond this 6 month-period, once the opponent consents. The granting of such extensions is within the discretion of the Registrar. If further extensions are granted and no counterstatement is filed by the final deadline outlined by the Registrar the application will be deemed to be withdrawn.
Changes in Revocation Proceedings
Prior to the 2013 amendments, a trademark registration was vulnerable to revocation if the mark was not used in Jamaica by the proprietor, or with the proprietor’s consent (in respect of the goods/services covered by the registration), within three (3) years after the date of completion of the registration procedure and up to one month before the date of an application for revocation, and there were no proper reasons for non-use.
That period is now five (5) years, which, based on the amended wording of the Trade Marks Act, is counted retrospectively from the date of the application for revocation and not as at the date of completion of the registration procedure.
A mark can also be revoked if use of the mark has been suspended for a continuous period of five (5) years prior to the date of an application for revocation and there are no proper reasons put forward by the proprietor for its disuse. Use for the purposes of challenging a revocation proceeding must be ‘bona fide use’.
Marks which are likely to deceive or confuse the public as to the nature, quality or geographical origin of the goods or services for which they are registered are also subject to revocation under the 2013 Amendment Act.
Extensions of Time Generally
The 2013 Amendments have made it possible to obtain an extension of time for certain matters which previously had to be done by a fixed non-extendable deadline, including filing an Opposition and Counterstatement, as mentioned above. Further, whereas it was only the parties concerned that could request an extension, an extension may also be granted purely on the initiative of the Registrar.
Preservation of rights of an earlier user
The 2013 amendments preclude a registered proprietor from restraining or interfering with anyone’s use of an identical or very similar unregistered trademark in relation to identical or very similar goods/services, provided the person has continuously used the mark and began using it before the registered proprietor’s mark was used or registered (whichever was earlier). The registered proprietor also cannot object to the earlier user’s later application for registration of the mark in respect of those goods/services.
Trade Mark Applications are Property
A trademark application confers a property right on the applicant and is consequently transmissible by assignment, will or operation of law in the same way as other personal or moveable property and can be so transmitted either in connection with the goodwill of a business or otherwise. The application may also be the subject of a charge in the same way as a registered trademark and other personal or moveable property. Previously, a trademark application was not assignable. One had to wait until the trademark was registered before assigning the mark.
The Trade Mark Office no longer has jurisdiction for the registration of grants of security interests over registered trademarks as this is the purview of the Security Interests and Personal Property, 2013 which established a new Securities Registry.
JIPO Practice Re Class Headings
On February 4, 2015, the Jamaica Intellectual Property Office (JIPO) issued a Practice Notice indicating that it would no longer accept Class Headings. JIPO will only accept applications that list the specific goods or services which the applicant uses or intends to use under the mark.
Upon examination of a trademark application form JIPO will reject class headings and require applicants to list specific goods and/or services for which protection is sought. In those circumstances applicants will be required to submit their amended list of goods and/or services on the appropriate form along with the applicable fee.
Foga Daley IP Partner Dianne Daley details the recent changes to Jamaica's Trademark Laws that are most impactful on IP practice.
To read the full Trademark Lawyer - Issue 2 2015 click here
Jamaica Trademark update – Foga Daley IP Partner Dianne Daley, outlines some of the latest changes to Jamaica’s Trademark Act in World Trademark Review Yearbook 2014/2015. This article first appeared in World Trademark Review Yearbook 2014/15, a supplement to WTR magazine, published by The IP Media Group. To view the guide in full, please go to worldtrademarkreview.com
International Opposition Guide: Comparative Practice and Procedures is an exclusive service provided to INTA members that offers a searchable database of country profiles on the structure of trademark opposition practice and procedure. Foga Daley IP Partner Dianne Daley contributed the Jamaica Chapter.
Monday March 6, 2013 - Day 4
We began by taking the INTA shuttle to the convention center only to realize on arrival that the Opening Ceremony was being held at the Omni Hotel. After brisk walking we made it to the Ballroom for the opening. The Guest speaker Jerry Jones owner of the Dallas Cowboys was both humorous and engaging as he told us how he developed the Cowboy franchise which he bought in 1989 into the second most valuable sports brand in the world. Manchester United is the number 1 brand.
I then attended in the same Ballroom as the opening ceremony the Session on Social Media: Sidestepping Problems and Pitfalls. When that session finished I rushed over to the Exhibit Hall to examine a few booths and then rushed back for the next session Do We Launch: Assessment of the new gTLD Program. After this I found Dianne Daley and we headed for the Millen White, Zelano & Branigan luncheon at the Union Station which was terrific. Great food and award winning beer. We met some new colleagues, were encouraged to go to Hong Kong, participated in a review of the previous days receptions and discussed the upcoming receptions that could not be missed. After this we rushed (a word used frequently at INTA) back for the next session with start time 3:30 pm. My session was Trademark Bullying. I reserve comment on this topic/concept as it appears did the rest of the attendees of the session as when it came time for Q&A no one had any questions.
With the sessions over we headed off to the various receptions. Monday tends to be the most packed day for firm hosted receptions. We began at 5pm by attending the Knobbe Martens reception at the W Hotel, I think on the 33rd Floor. It was a nice reception. We left that reception and went to the Iron Cactus Mexican Grill & Margarita Bar for another reception only to discover that we mixed up the days and the reception is on Tuesday.We were not deterred and simply moved on to the next reception which was held at the Sambuca Restaurant hosted by Honigman. Yet another great reception with wonderful food and drinks. We left that reception went to another and then attended the Haynes Boone reception at the Perot Museum of Nature and Science. Special mention to our friend Phil now the Managing Partner of the firms Washington Office. I have included pictures. Food as usual wonderful catered by ....who else Wolfgang Puck.
At this point I need to bring up the issue of taxis. Dallas has tons of taxis but as I heard one attendee remark they do not appear to know the city. Our cab driver had to use GPS to find the Perot museum!
Our colleague Joanne Wood Rattray and her husband Robin encouraged us to attend the Groth & Co. Reception at the Dallas Aquarium. Excellent reception hosted by A Swedish law firm. For every guest who attended they contributed to a charity in Africa. We saw Manatees, sea snakes, tarantulas, and even penguins...go figure.
We left that reception, and moved to the Arent Fox reception at the Tower Club. Another great view of the Dallas skyline at night. After that we were off to the Merchant & Gould reception. After some dancing we called it quits at 11:30pm.
Sunday March 5, 2013 - Day 3
We began the day by joining yet another long line. We were invited to the Vivien Chan brunch reception. After about 45 minutes we reached the entrance to the banquet hall. As per usual, our Host the lovely Vivien Chan herself, the grand dame of IP in China was at the entrance to personally greet every guest. The breakfast was another success with Salmon, cream cheese, bagels, omlettes made on demand, fruits, cereals, scrambled eggs, bacon, pork sausages you name it. During the reception Vivien Chan encouraged us all to attend next year's INTA in Hong Kong her home town. She will be hosting some very special receptions in Hong Kong and looks forward to us all getting there to experience Hong Kong.
We left that reception and went to the Seyfarth Shaw reception at restaurant Five Sixty by Wolfgang Puck. Suffice it to say everything was EXCELLENT! It's hard to beat drinking champagne at 11:00am looking out at a spectacular panoramic view of Dallas 560 feet up. We were offered several Asian inspired appetizers including a quail egg on glazed pork belly, lacquered duckling and a fabulous wild mushroom fried rice to name a few delicacies.
We left that reception and went to three more receptions including the Heenan Blakie reception at Nobu Restaurant. Brilliant sushi and other appetizers and wonderful sake (3 different blends). We also went to The INTA welcome reception featuring authentic Texan cuisine and again saw a number of our Caribbean colleagues. We returned to Wolfgang Puck's restaurant in the night to attend the Bracewell & Giuliani reception.
We followed this up by attending the Fulbright Norton Rose reception at the Basher Sculpture Center which was a wonderful setting.
We signed off on Sunday a little early at 10:30pm.
Saturday May 4, 2013 - Arrival in Dallas
We are here in Dallas Dianne Daley, our colleague and INTA traveling companion Arturo Stewart and myself, Nicole Foga your INTA tour guide. The morning kicks off with the Caribbean Breakfast at 9pm. There are 22 of us from Jamaica, Haiti, Suriname, Barbados, Dominica, Cayman Islands, St.Kitts and Nevis, Angulla, Turks & Caicos Islands, Trinidad &Tobago (T&T). The Annual Caribbean breakfast was started years ago by our colleague the indefatigable Anne-Marie Feanny who was unavoidably absent from INTA for the first time in a decade. We miss you Anne-Marie. This BLOG was started in your honour.
Once the breakfast was over we went our separate ways to meet with agents and colleagues before registration at 12:00pm. I let Dianne meet with a colleague while Arturo and I went to the nearby public park to see bronze sculptures of Texas Longhorns (big cows!) on the recommendation of our colleague Olive Ramchand from T&T who is actually Jamaican by birth and some legal training.
We left the Park and went to registration which was swamped with people. The line was so long that it stretched to the bathroom. As a true Jamaican I was challenged by the length of the line. Dianne was far advanced but I thought jumping the line with Arturo may have pushed tolerable limits of decency. I decided to undertake a reconnaissance mission. You must understand that the length of the line brought back memories of lines when visiting a foreign country! I discovered when I did my advanced scouting of the area that while the self registration line was designed to expedite registration it was intolerably long by any standard while the registration line by contrast was much shorter. I picked up Arturo who had only moved 12 inches from the bathroom since I left him and joined the ordinary registration line and we were soon good to go.
After registration we met with two Australian colleagues who intend to visit Jamaica and returned to our hotel to rest for the start of the Firm receptions at 5:30pm. For those who know me I decided that 2hrs was too much time to rest so I went to explore the area around the hotel. 1 hour later I returned. I liked the modern trolley cars I saw on my adventure but apart from that it was an empty downtown district no convenience stores anywhere. This is a major disappointment!
At 5:00pm left for the Adams & Adams (South African law firm) reception at South Fork....yes that's right, home of JR Ewing. For you youngsters Google it! On Board the shuttle bus that took us to the ranch ( approx 30 minute drive) sat with my good buddy from Cayman Islands Hue Moses formerly of Appleby and we had a great conversation about Dallas, the practice of law and the new KYC requirements. The reception was brilliant. Our hosts were very gracious, we saw real Texas longhorn steer and toured the Ewing home. They even had a room which contained the set for when JR was shot! There was real fake blood!
The food was great, really enjoyed the lamb chops, vegetable samosas and quesidilas. We left at around 7pm and headed to another reception. We called it quits 10:45pm.
End of Day Two
Friday May 3, 2013 - Travel to Dallas
Flight was delayed for almost an hour but pilot made up time. Landed in Miami to be greeted by a line to go into Immigration :-(
After 40 minutes in line and no where near completion one of our colleagues who was even further behind than us (having got a seat near the trunk of the plane!) enquired how long it would take. He was assured that if he had a 3hr connection time he would be okay. Not having a 3hr connection...closer to 1hr and 30 minutes there was a problem. Thankfully the official intervened and we were all put in faster lines. Only spent 1hr all told and we managed to make our flight.
On approaching Dallas airport when we looked out the Window in GIANT flashing red lights we could see a sign: INTA. By the time we got our bags, went with a colleague to rent a car, got slightly lost and reached the Hotel it was 11:10. Check-in was speedy but my room is on the 32nd floor.Nice if you like heights and have a spare parachute in case of emergencies.
End of Day One.