Services

Legal Framework

Jamaica’s Telecommunications Regime

International Memberships

Jamaica is a member of the International Telecommunications Union as well as the Caribbean Telecommunications Union


Legislation

The principal legislation governing telecommunications in Jamaica is the Telecommunications Act, 2000. Other relevant Acts include the Radio and Telegraph Control Act, the Fair Competition Act, the Broadcasting and Radio Re-Diffusion Act and the Office of Utilities Regulation Act. The principal telecommunications regulator is the Office of Utilities Regulation (OUR).

The Spectrum Management Authority regulates the radio frequency spectrum on behalf of the Minister, while the Broadcasting Commission regulates the broadcasting and subscriber television industry primarily as a content regulator. The Government has consistently expressed an interest in creating a Super Regulator to regulate the converged sectors of telecommunications, broadcasting and spectrum management. To date no such regulator has been created nor has any legislation creating this regulator been tabled in Parliament.

However, the draft telecommunications policy (most recently update in February 2009) does make reference to a single regulator.
Please click link to download the Draft Policy.

While the Fair Trading Commission regulates competition it has tended to defer to the OUR in regulating competition in the telecommunications sector.

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Industry Profile

The Jamaican Telecommunications industry currently comprises carriers and service providers i.e. mobile carriers and mobile service providers ( which currently are the same licences,) internet service providers, data service providers, domestic carriers, domestic service providers, international voice service providers and international voice carriers.

There are 3 mobile providers: LIME formerly Cable and Wireless Jamaica, Mossel Jamaica trading as Digicel, and American Movil offering mobile service in Jamaica under the name “Claro”.

Jamaica’s first triple play telecommunications provider is Columbus Communications Limited operating Jamaica under the name “FLOW”. It offers island wide cable service, high speed internet access and telephony.

Prior to liberalization, in 2000, Jamaica’s teledensity was 17%, Cable and Wireless Jamaica, the telecommunications monopoly had 130,000 mobile subscribers and used TDMA technology. Jamaica’s teledensity is now over 100% with over 2 million mobile subscribers and the most widely used network is GSM.

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Road To Liberalization

The liberalization of the Jamaican Telecommunications market began in 1997 when Jamaica made market access commitments to the World Trade Organization in relation to basic telecommunications and value added services. In 1999 the Government tabled in Parliament a modern telecommunications policy which addressed such issues as the role of the regulator, negotiations with the public telephone company, liberalization, universal service, interconnection, and spectrum management.

On September 30, 1999, the Government of Jamaica signed a historic agreement with Cable and Wireless Jamaica, the then monopoly telecommunications provider, for the liberalization of the telecommunications sector in three phases over a three year period.

Consequent to the Agreement, the Government sought to jump start the liberalization process with the auctioning of 2 mobile telecommunications licences even before the necessary legislation was in place to grant the licences.

In December 1999, companies were invited to bid for the two licences which would be awarded as soon as the proposed Telecommunications Bill was passed. The Government determined that at least one of the licences should utilize GSM Technology. Cellular One Caribbean Limited emerged the winner of one of the licences with a bid of US$ 45 million, for the 800 Mhz band using CDMA Technology. This bid was US$5million dollars more than the Government’s reserve price. No winner was declared for the GSM licence as no bid exceeded the Government’s reserve price of US$30 Million dollars.

The Government of Jamaica then decided to hold a second auction in January 2000. Mossel Limited a start-up company owned by Irish entrepreneur Dennis O’Brian emerged the only successful bidder for the GSM licence with a bid of US$ 47.5 million dollars. This bid was US$17 million more than they had bid in December 1999.

On March 1, 2000, Jamaica’s new Telecommunications Act which repealed the Telephone Act of 1893 and sections of the Radio and Telegraph Control Act came into effect.

The liberalization of the Jamaican Telecommunications market was a 3 phase process. Phase One commenced on March 1, 2000 and was for a period of 18 months. During that time the Minister was only empowered to issue Cellular, Reseller (Data, Internet and International Voice), Free Trade Zone Service and Carrier licences.

Phase Two commenced September 1, 2001 and extended the Minister's power to grant licences to include domestic carrier and service provider licences as well as Internet licences for licensed cable operators.

Phase Three commenced March 1, 2003 and fully liberalized the Jamaican Telecommunications market.

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IP Regime In Jamaica

For a more detailed treatment of the intellectual property regime in Jamaica see Jamaica: Intellectual Property by Foga Daley Partner, Dianne Daley in International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property - Suppl. 47 (September 2008)


COPYRIGHT LAW

History

As a former British Colony with a Common Law tradition Jamaica was governed by the Copyright Act of 1911 of the United Kingdom, the predecessor Imperial Statute which once applied in all the former Colonies of the Caribbean. Jamaica’s first local Copyright Act 1913 incorporated the UK Act of 1911 provisions on copyright offences and sanctions which otherwise would only have applied in the UK. The UK Act of 1911 applied in Jamaica until it was repealed by the Copyright Act No. 4 of 1993.

Post-independence (1962) lobby by the Jamaica Federation of Musicians and Affiliated Artistes Union, led to the tabling and passage of the 1977 Copyright Act, which was never brought into force. This Act did not grant any rights in performances or moral rights. Further lobby by the Union for a more comprehensive Law on copyright that would also address neighbouring rights led to the passage of the current principal Act of 1993. In addition to the Union, the other local copyright interest groups which lobbied for the Act were Book Publishers, Librarians and Performers

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Current Law

Copyright in Jamaica is governed by the Copyright Act (4/1993) (in force September 1, 1993), a suite of Orders and Regulations and the Amendment Acts of 1999 and 2015.

The Act of 1993 was fashioned off the copyright and related rights provisions of the UK Copyright Designs and Patents Act of 1988 (CDPA) but incorporates of some provisions which are more akin to US Copyright Law than to British Copyright Law. Remnants of the Imperial Copyright Act of 1911 (repealed by 1993 Act) have still applied through savings provisions, to certain material (in particular sound recordings) and infringements occurring prior to the commencement date.

A few provisions were introduced in 1999 by the Copyright Amendment Act pursuant to Jamaica’s bilateral agreement with the USA on Intellectual Property and Investment as well as its membership in the WTO and consequently the TRIPS Agreement (1995). Among other things, compilations of data or original databases gained copyright protection and manufacturing/trading in decoders of encrypted transmissions with the requisite knowledge and without authorization, became a copyright offence.

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The 2015 Jamaica Copyright Amendments

In 2015 sweeping changes were made to Jamaica’s Copyright Act through the Copyright (Amendment) Act of 2015 in force July 30, 2015 including new and expanded rights for copyright owners and performers and with that, new liabilities, offences and exceptions to infringement and a revival of Crown Copyright. Perhaps, most impactful, is an extension of the already long duration of copyright. Some of the changes brought about by the amendments were gestating for over ten (10) years while others gained momentum in a relatively short space of time.

The Copyright (Amendment) Act of 2015 is the most substantial set of amendments since the 1993 Act. It brought into effect several major substantive & administrative changes including:

• Extension of Duration of Copyright and Rights in Performances

• Express provisions on Ownership of Copyright and Crown Copyright

• New/expanded right for copyright owners

• New rights for Performers and Persons with Exclusive Recording Rights

• Offences for the circumvention of Technological Protection Measures (TPM) and altering of Rights Management Information (RMI).

• Liabilities & Exemptions for ISPs

• Exceptions for the Visually and Hearing Impaired

• New Provisions on Orphan Works

• Exceptions in relation to sound recordings

• Statutory Copyright Registration

• Regulation of Collecting Societies (Regulations still pending)

Main Factors of Change
The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty (together known as the WIPO Internet Treaties (1996) to which Jamaica acceded in 2002) were the main catalysts for Jamaica’s copyright amendments. However, the amendments seemed to take on ‘a life of their own’ particularly in the run up to the amendment Act. The result is that the Internet Treaties only account for a ‘handful’ of the amendments, namely the new/expanded rights for copyright owners, performers and persons with recording rights, liabilities/exemptions for ISPs and offences for circumvention and tampering with rights management information. Some provisions mandated by the Treaties were omitted from the 2015 amendments and are expected to be included in a subsequent amendment.

Extension of Term of Copyright
The extension of the term of copyright and related rights could be considered the flagship amendments of the 2015 Act. The Copyright Act of 1993 gave the minimum duration stipulated by the Berne Convention of life plus 50 years for works of authorship and 50 years for entrepreneurial works. Under the 2015 Act the term of copyright has been increased to life plus 95 years across the board. For example:

• Copyright protection for original literary, dramatic, musical or artistic works now lasts for the life of the author plus 95 years (up from 50).

• Copyright in a sound recording, film, broadcast or cable programme now lasts 95 years (up from 50) from the end of the calendar year in which it was made, or where it was made available to the public before the end of that period, the end of the calendar year in which it is so made available.

• Performances previously protected for 50 years now enjoy 95 years from the end of the calendar year in which the performance was recorded or if not fixed in a recording, from the end of the calendar year in which the performance takes place.

This increase was triggered mainly by the local music/recording industry seeking to rescue iconic reggae music from the public domain. Industry stakeholders had lobbied the Government for a longer term extension to preserve Jamaican recordings of iconic songs, like Many Rivers to Cross by Jimmy Cliff and One Love by Bob Marley created in the 1960s which had already fallen or were about to fall into public domain. However, the increased terms could prove problematic particularly because of their retroactive effect.The extensions apply retroactively as at January 1, 2012. Therefore all works for which copyright expired on January 1, 2012 up to July 29, 2015, gain another 45 years, and those thereafter are protected for life plus 95 years or 95 years as the case may be, and 50 years in the case of typographical arrangements.

Ownership of Copyright
Another interesting amendment relates to ownership of copyright. Express provisions on copyright ownership appear consequential to the provisions on term extension, but may create unwelcomed challenges for businesses. The 1993 Act departed from the UK and other copyright laws around the world by not exempting works created in the course of employment from the first ownership rule and the amendments seem to compound the issue.Under the 1993 Act, the author is deemed to be the first owner of the copyright unless there is an agreement to the contrary. The only statutory exception to the first ownership rule relates to works first published by or under the direction or control of a specified international organization.

The dilemma with this has been that in the case of a work done in the course of employment where one might assume that ownership should be deemed to rest with the employer, the absence of an agreement vesting copyright in the employer would have the effect of it resting with the employee. The 2015 Amendment Act for the first time makes reference to ownership in relation to an employer and the employee, but rather than bringing Jamaica in line with international norms it seems to reinforce the diversion. It states that where pursuant to an agreement between an employer and employee copyright in a work created by the employee has vested in the employer, the copyright expires 95 years from the end of the calendar year in which the work was made.

Crown Copyright
Interestingly, the Government ‘climbed its way out’ of this ‘dilemma’ by introducing a provision in the 2015 Amendment Act that copyright in works made by a person employed or engaged by the Crown under a contract of service, a contract of apprenticeship or a contract for services, is first owned by the Crown unless there is an agreement to the contrary.

Crown copyright works are protected, in the case of a typographical arrangement of a published edition, for 50 years from the end of the calendar year in which the work was made; and for any other work, 95 years from the end of the calendar year in which the work was made.

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The Government Copyright Office

The Copyright Directorate of Jamaica Intellectual Property Office (JIPO) handles policy and implementation of the Copyright Law.

 

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Collective Management Of Copyright In Jamaica

Copyright Tribunal

The Copyright Act of 1993 made provision for the establishment of a Copyright Tribunal.

Similar to the UK Copyright Tribunal, Jamaica’s Copyright Tribunal is designed to interface with user groups and collecting societies in the licensing of various rights. It provides a mechanism for the settlement of disputes relating to licensing schemes or licenses, which the parties have not been able to resolve otherwise.

The Copyright Tribunal may hear references concerning licensing schemes operated, or licenses granted by a licensing body in relation to the copyright in literary, dramatic, musical or artistic works or films (or film sound tracks when accompanying a film) which cover works of more than one author. Such licenses or schemes must concern the reproduction, public performance, broadcasting or cable casting of the protected work.

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Collective Management Organisations (CMOs)

There are three (3) CMOs in Jamaica established pursuant to the Copyright Act of 1993:

The Jamaica Association of Composers, Authors and Publishers (JACAP)

The Jamaican Copyright Licensing Agency (JAMCOPY)

The Jamaica Music Society (JAMMS)

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JACAP

JACAP administers the public performing rights of composers, authors and publishers in their musical works film synchronization rights and recording rights granted to copyright owners under the Act and licenses those rights to users in exchange for licence fees which are in turn distributed to its members and affiliates. Incorporated in early 1998, JACAP succeeded the local agency of the PRS (UK) that operated satellite agencies in former British Colonies like Jamaica.  JACAP is a member of the international collective management organization called CISAC.

For more information on JACAP go to: http://www.jacapjamaica.com/

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JAMCOPY

JAMCOPY was established in 1998 and administers the reprographic rights of authors and publishers of works in print media, which concerns licensing the right to make multiple copies/photocopies of such works. The Copyright Act generally restricts copying by a reprographic process.  Although copyright in literary works is not infringed by virtue of copying for instructional purposes such copying cannot be done by a reprographic process. Institutions providing tertiary education may make reprographic copies of passages from a published work for instructional purposes without infringing copyright but are limited to five percent (5%) of any work per quarter. This allowance is however rendered inapplicable where a licensing regime exists.

JAMCOPY is a member of the International Federation of Reproduction/Reprographic Rights Organizations (IFRRO) and has foreign reciprocal agreements with several equivalent RROs including Argentina, Australia, Belgium, Brazil, Canada, Finland, Greece, Iceland, Mexico, Slovakia, Spain, United Kingdom, the United States of America and Zimbabwe.

For more information on JAMCOPY got to: http://www.jamcopy.com/

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JAMMS

The Jamaica Music Society (JAMMS) was established in July 2006. JAMMS administers the broadcasting and public performance rights in respect of protected sound recordings and represents local and international sound recording copyright holders including independent record labels/record producers as well as the major international label groups and artist-owned labels. JAMMS took over from the now defunct Jamaica Musical Rights Administration Society (JMRAS) and has also assumed the mandate in relation to performers’ rights from the Jamaica Performers’ Administration Society (JPAS).

For more information on JAMMS go to http://www.jammsonline.com/

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Copyright Registration in Jamaica

Prior to 2015, there was no statutory registration system in Jamaica and no requirement for registration under the Copyright Act. With the passage of Jamaica’s Copyright Act of 1993, the government of Jamaica policy was to not impose a statutory system of copyright registration based on the principle of automatic protection under the Berne Convention, i.e. copyright protection must not be conditional upon compliance with any formality.

In 2002 a non-profit, non-governmental organisation, the Intellectual Property Service Centre (IPC), created a voluntary copyright recordation and deposit facility in conjunction with National Library of Jamaica, where copyright owners could file their ownership claims to copyright and deposit a copy of their work, to establish a public record of their claims. IPC became a nationally recognized voluntary copyright registration facility.

The Government’s Copyright Registration System
Copyright registration is now recognized under Jamaica’s Copyright Act. The government introduced statutory copyright registration through amendments to the Copyright Act in 2015 making it is possible to register your copyright at the Jamaica Intellectual Property Office (JIPO).  The Copyright (Amendment) Act 2015 in force July 30, 2015, establishes JIPO as the Copyright Registry and outlines procedures and fees for registration.

The JIPO copyright system is an adaptation of the copyright recordation system carried out by IPC for several years, with one of the main differences being that JIPO only accepts works in digital format.

 Procedures
The JIPO Copyright Registration process requires the Applicant (author/copyright owner) to complete sign and submit an Application for Registration form as prescribed in the First Schedule to the Amendment Act.  The original application (not a digital copy) must be submitted to JIPO. The Application must be witnessed by a Justice of the Peace, Attorney-at-Law, Minister of Religion or Medical Doctor.  The Applicant must also complete sign and submit a Declaration which is to be witnessed by a Justice of the Peace.  A digital copy of the work (in specified formats) must be deposited with the application at JIPO.

Voluntary System
The JIPO Copyright registration system is voluntary.  Registration is not a condition for copyright protection. Copyright protection is automatic so long as the work qualifies for protection under the Copyright Act.

Benefits
One of the benefits of the Copyright registration system is that the certificate of registration and other documents which are certified extracts of the JIPO Copyright Register are presumed to be authentic for all purposes and are admissible in evidence in any legal proceedings.

Registration Fees
The JIPO Copyright Registration fees are based on the type of work. In relation to short literary works such as poems, song lyrics and short stories, the fees are discounted based on the volume of the works being registered by the Applicant. For longer works such as books and magazines the fees are based on the number of pages.  

For further information on the copyright registration procedures and fees please contact us at This email address is being protected from spambots. You need JavaScript enabled to view it.

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About the Intellectual Property Service Centre (IPC)

The IPC is a non-profit non-governmental entity which was created in 2000 to provide services to intellectual property rights owners and users of intellectual property with a focus on encouraging and facilitating the documentation of rights which was then lacking largely due to a culture of oral transactions and the absence of a formal registration system.

The aim was to establish and maintain a registry for copyright works and to provide the facility for certification, verification and recordation of copyright rights. As such, the IPC voluntary copyright registration facility was one of its core activities when it was launched.

Other objects of the IPC include:

  • To further the education and to increase the awareness of intellectual property rights owners of their rights and obligations and other matters pertaining thereto and to provide for the giving and holding of lectures, exhibitions, seminars, workshops and meetings for the promotion or advancement of intellectual property education;

IPC opened its doors to the public on March 13, 2000 and was officially launched as part of the activities of National Intellectual Property Week (May 14 – 19, 2000) on Monday May 15, 2000 at the Terra Nova Hotel in Kingston.

The Government of Jamaica through the Ministries of Education and Culture, Industry, Commerce & Technology and the Ministry of Tourism and Sports with portfolio for Entertainment publicly supported IPC’s establishment. Officials from WIPO and other industry stakeholders attended the launch.

The IPC was initially funded by Convergent Services Ltd, and run by the Jamaican Musicologist, radio talk show host and cultural activist the late Keith Anthony “Tony” Laing. The IPC Advisory Board which became the Board of Directors when IPC was incorporated as a registered company comprised representatives from the University of the West Indies (UWI), the Government Archives, the Jamaica Intellectual Property Office and the Media Owners’ Association of Jamaica.

The late Professor the Honourable Rex Nettleford – Vice Chancellor UWI, served as IPC’s chairman until a few years before his passing in 2010. Founding IPC director, Mr John Aarons who was a former

Executive Director of the National Library of Jamaica (2002) and Government Archivist (since 2009), assumed the IPC chairmanship and served the IPC for several years before his retirement in July 2017.

IPC continues to be supported by volunteers and is currently focused on its intellectual property educational objectives.

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IPC Registration Procedures

The Copyright Claimant is required to fill out a voluntary declaration of the claim to ownership of copyright, containing a brief description of the work and the date and place of creation or first publication. The Declaration must be witnessed by a Justice of the Peace or in the case of a foreign applicant by a Notary Public.

The Claimant is also required to complete an IPC Copyright Claimant Form providing further details of the claim. A copy or true representation of the work must be provided to the IPC for deposit in the National Library.

The IPC makes a publication of the claim in the Jamaica Gazette, issues a certificate of registration and is available to support the certificate in evidence in the event such proof is needed by the copyright claimant in Jamaica.

Works deposited under IPC’s copyright Recordation System are housed in the National Library, while the copyright claims are published in the Jamaica Gazette.

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For Gazetted Copyright Claims in Jamaica
click on the year — 2008, 2009

For more information contact the IPC at 876 946 1592

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INDUSTRIAL DESIGNS LAW

For more details on industrial designs law in Jamaica see Design and Copyright Protection of Products World Law and Practice, Thomson, Sweet & Maxwell, 2005 and Jamaica: Intellectual Property by Dianne Daley, International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property - Suppl. 47 (September 2008)

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Existing Legislation On Registered Designs

The Designs Act No. 32, July 1937,
The Designs (Amendment Act) No. 9-75, March 1975,
The Designs Rules, September 1937
The Designs (Amendment) Rules No. 171, December 1983

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Qualification for Protection

An industrial design as defined by the Designs Act is any design that can be applied to an article of manufacture or any natural or artificial substance, whether the design is applicable for the pattern, or the ornament thereof.

The Designs Act protects designs which are original and novel in Jamaica through a system of registration. Applications for registration can be made in respect of any of 16 classes of designs, with one application being made per class.

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Rights

The owner of a protected industrial design has the right to prevent third parties, not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy or substantially a copy of the protected design, when such acts are undertaken for commercial purposes.

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Duration

A registered proprietor of a design has copyright in the design for fifteen (15) years from the registration of the design.  There are no renewal periods or annuities for designs.

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International Compliance

The Designs Act of 1937 falls below the standards set by the TRIPS Agreement and the Paris Convention. Foreign applicants have not yet been able to take advantage of priority filings notwithstanding Jamaica’s accession to the Paris Convention. Although the Designs Act of 1937 was amended in 1975 those amendments merely transferred the administration of the registration system from the Registrar General to the Registrar of Companies. Designs are registered under an old system of classification with only 16 classes.

Similar to the Patents Legislation, the Draft Bill on Patents and Designs will repeal the existing Designs Legislation and incorporate provisions for compliance with the TRIPS Agreement.

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The Government Designs Office

The Designs Law is administered by the Trade Marks and Designs Directorate of Jamaica Intellectual Property Office (JIPO).

For more information visit JIPO’s official website http://www.jipo.gov.jm/

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LAYOUT-DESIGNS

For a more detailed treatment of layout-designs law in Jamaica see Jamaica: Intellectual Property by Dianne Daley, International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property - Suppl. 47 (September 2008).

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Legislation

The Layout-Designs (Topographies) Act No. 30 of 1999 came into force on September 3, 1999. The Act was passed in fulfilment of Jamaica’s obligations under Section 6 of the TRIPS Agreement which obliges Members to provide protection to the layout-designs (topographies) of integrated circuits in accordance with particular articles of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty) and to comply with additional standards of protection for layout-designs as outlined in Articles 36-38 of the TRIPS Agreement.

A layout-design (also described as topography) is the design element of a semiconductor chip or integrated circuit, several of which are used in the creation of computers and other electronic devices. There is no layout-design or semiconductor chip manufacturing industry in Jamaica and prior to 1999 there was no domestic legislation designed specifically to protect this form of design. No regulations have been promulgated under the Act.

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Qualification for Protection

In order to be protected under the Act the layout-design must be original in that it must result from the creator’s intellectual effort and must not be commonplace in the layout-design or integrated circuit industry at the time of its creation. Layout-designs which comprise a combination of elements and interconnections that are commonplace, can only be protected under the Layout-Designs Act “if the combination taken as a whole is original” in the sense outlined above.

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Rights

The rights in a protected layout-design comprise the exclusive right on the part of the owner to, and to authorize another person to, (a) reproduce the whole or part of the layout-design by any means, whether by its embodiment in an integrated circuit or otherwise, except to the extent that the layout-design is not regarded as original pursuant to section 4 (2) and (b) import, distribute or otherwise commercially exploit the layout-design or the integrated circuit in which it is embodied. Distribution includes selling, leasing, to bail or otherwise transfer or to offer to sell, lease, bail or otherwise transfer the layout-design or the integrated circuit in which it is embodied.

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Duration of Protection

Section 7 of the Layout-Designs Act provides that the layout-design right shall subsist for ten years from the date on which the layout-design is first commercially exploited. The period of protection ends at the end of the calendar year in which the right expires.

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No Registration

Under the Act there are no requirements for registration or other formalities. Once the qualifications for protection are met (i.e. the owner, or in the case of joint ownership, one of the owners is a Jamaican citizen or habitual resident of Jamaica or a citizen or habitual resident of a specified country) and the layout-design is original as outlined in section 4(2) and was not commercially exploited before the appointed day of the Act, protection is automatic.

With no registration system it has been difficult to ascertain whether this law is being utilized. No civil action has been brought in Jamaica under this Act.

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PATENT LAW

For a more detailed treatment of patent law in Jamaica see Jamaica: Intellectual Property by Dianne Daley, International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property - Suppl. 47 (September 2008)

Existing Legislation On Patent Law

  • The Patent Act No. 30 of 1857,
  • The Patent (Amendment) Act No. 42-74, October 1974
  • The Patent (Amendment) Act No. 8-75, March 1975.

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Brief Background

The Patent Act of 1857 is the oldest domestic statute conferring intellectual property rights which is still in operation in Jamaica.

Under the Patent Act, Letters Patent are granted by the Queen of England, Queen Elizabeth the Second through Her representative the Governor General of Jamaica. In case of doubts with regard to its construction, the Patent Act may be construed by analogy to the laws in force in England relating to the granting of Letters Patent for inventions, in so far as the provisions of such laws are applicable.

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Qualification for Protection

Patentable subject matter includes an invention, discovery or improvements of some new and useful art, machine, manufacture or composition of matter. The person applying for a patent (The Petitioner) must declare that the invention, discovery or improvement has not been known or used in the Island before to the best of his/her knowledge, information and belief. Therefore the requirement that the patentable subject matter must be novel is restricted to local novelty as opposed to universal novelty.

Where products have already been patented in a foreign country they can still be patented in Jamaica so long as the period of patent protection in the foreign country has not expired. In this case the Jamaican Patent would last as long as the foreign Patent remains valid.

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Rights

The Patent Law grants the Patent Holder the full and exclusive right and liberty to make, construct, use and sell the new invention, discovery or improvement. These rights extend to the inventor or assignee, his executors and administrators. During the term of the patent no person shall without the consent, licence or agreement, of the patentee within Jamaica “directly or indirectly make use of or put in practice the said invention, or any part of the same or in anywise imitate the same, or make or cause to be made any addition thereto or subtraction therefrom whereby to pretend themselves the inventors thereof.”

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Duration of Protection

Letters Patent are granted for a period of 14 years. An extended term of a further 7 years may be granted.  There are no renewal periods or annuities for patents.

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International Compliance

Since its enactment the Act has only had administrative amendments in 1974 and 1975. The scope and nature of protection provided to the patent holder falls below the minimum requirements of the TRIPS Agreement.

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Priority Claims

The current Act does not recognize priority claims notwithstanding Jamaica’s membership to the Paris Convention. Hence all Patent Applications are assigned the Jamaican filing date and not the first filing date elsewhere.

A Draft Bill on Patents and Designs currently under consideration will repeal the existing Patent Legislation and will incorporate provisions for compliance with the TRIPS Agreement. It is also expected to provide for the implementation of the Patent Corporation Treaty.

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The Government Patent Office

The Patent Law is administered by the Patent Directorate of The Jamaica Intellectual Property Office (JIPO).

For more information visit JIPO’s official website http://www.jipo.gov.jm/

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TRADEMARK LAW

For a more detailed treatment of trademark law in Jamaica see Jamaica: Intellectual Property by Dianne Daley, International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property - Suppl. 47 (September 2008).

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Existing Legislation On Trademarks

Trade Marks Act of 1999 and Act of 2001
Trade Marks (Amendment) Act of 2013
Trade Marks Rules of 2001
Trade Marks (Amendment) Rules 2011& 2013

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Brief Background To The Trade Marks Law

The prevailing legislation on the registration of trade marks in Jamaica is the Trade Marks Act No. 32 of 1999 which came into force on September 3, 2001 and Act No. 25 of 2001 which introduced amendments by way of the JIPO Act Schedule 3. The Trade Marks Act of 1999 repealed the Trade Marks Act of 1958. Trade Marks Rules of 2001 replaced the Trade Marks Rules, 1958. The Trade Marks Act is similar to the UK Trade Marks Act of 1994.The Trade Marks (Amendment) Rules 2011 significantly increased statutory fees for trademark prosecution and other matters. The Trade Marks (Amendment) Act of 2013introduced further changes to the Act and Rules, the major ones of which are discussed below.

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Qualification for Protection as a Registered Trademark

For a trademark to be registrable it has to meet the definition of a trade mark outlined in section 2 of the Act

Section 2 defines a trade mark as a sign “including a word (including a personal name), design, letter, numeral, colour, combination of colours or a combination of the foregoing or the shape of goods or their packaging that is capable of being graphically represented and capable of distinguishing the goods and services of one undertaking from those of another undertaking”.

Trade marks also include Collective Marks and Certification Marks. Collective Marks are trade marks that are owned by an association and which comport with special requirements laid down by that association. Certification Marks are trade marks which are to be used exclusively on products which meet certain requirements and possess the characteristics which qualify them for certification by the owner of the mark.

Well-known marks and Emblems of international organization are also protected under the Law.

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Classification System

Trademarks can be registered in respect of both goods and services based on the 45 classes outlined in the 11th edition of the International Classification of Goods and Services (Nice Classification) which extends to services in several fields including financial, business, law, construction and repair, transportation, education, telecommunications, entertainment, hotel, food, insurance, advertising and travel.

An applicant for a registered trademark can apply for the registration of one mark in several classes under a single application, with a reduced fee for the additional classes.

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Rights

The Trade Marks Act grants the proprietor of a registered trademark, exclusive rights in the trademark and any use of the mark in Jamaica without the proprietor’s consent constitute an infringement.

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Duration of Registration

A trademark is registered for an initial period of 10 years and can be renewed for successive ten-year periods upon the application of the proprietor and payment of the requisite renewal fees.

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Timeframes

On average the registration process takes 12-18 months. In the event of actions by the Registrar or Oppositions by third parties this period may be delayed.

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Priority Claims

The Act recognizes the right of priority in respect of trademark applications from nationals of members of the Paris Convention and allows for registration in electronic form. The right of priority allows an applicant for a registered trademark who intends to file applications in different Paris Convention countries to claim the date on which the first application was filed as the effective filing date in the subsequent applications in other countries. All subsequent applications have to be made within 6 months of the first filing date in order to claim priority.

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Enforcement

The Act provides a number of remedies to infringement of a registered trademark including an order for forfeiture of infringing items, destruction of infringing items, damages, injunctions, and account of profits.

The Act also empowers the Commissioner of Customs on the notice and request of a Trade Mark proprietor or licensee to prohibit the import of goods, which infringe a registered Trademark and further to this the goods may be forfeited.

The Merchandise Marks Act (1888) in conjunction with the Customs Act has been utilized to impose sanctions on certain actions in connection with Trademarks such as forgery of trademarks and false description of goods. The Merchandise Marks Act provides for fines and forfeiture of counterfeit goods.

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International Compliance

The Trade Marks Act complies with Jamaica’s obligations under the TRIPS Agreement and the Paris Convention. The Act conforms to obligations under the WTO-TRIPS Agreement as well as obligations under the USA/Jamaica Bilateral Agreement on Intellectual Property Rights.

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Trademark Amendments 2013

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.

Cooling-off Period
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.

Security Interests
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.

Subsequent Changes
New 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 amendedlist of goods and/or services on the appropriate form along with the applicable fee.

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The Government Trademark Office

The Trade Mark Law is administered by the Trade Marks & Designs Directorate of JIPO. This Directorate is the successor to the Intellectual Property Department of the Office of the Registrar of Companies.

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GEOGRAPHICAL INDICATIONS LAW

For a more detailed treatment of geographical indications law in Jamaica see Jamaica: Intellectual Property by Dianne Daley, International Encyclopaedia of Laws, Kluwer 2008

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Brief Background To The Geographical Indications Law

The Protection of Geographical Indications Act No. 5 of 2004 provides special protection to geographical indications in Jamaica. The Act comports with requirements of Articles 22 and 23 of the TRIPS Agreement giving geographical indications for wines and spirits greater protection than that which applies to geographical indications for other goods, leaving important local GIs with only minimal protection.

Under the Geographical Indications Act of 2004,  whereas geographical indications for all products are protected against false and misleading uses, geographical indications for wines and spirits are also protected against uses on a wine or a spirit not originating in the place denoted by the geographical indication even where the use is not misleading.  The legislation is not yet operational.  A number of procedural matters have to be prescribed by regulations which have not yet been promulgated.

Prior to the GI Act there was no separate statutory protection for geographical indications in Jamaica. Some protection is available for geographical indications and trade names though a combination of trade marks law, consumer protection laws, and the Fair Competition Act and at common law.  In respect of common law protection against misleading uses of a trade name or a geographical indication has primarily been afforded through the tort of passing off.

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Protection for Geographical Indications

A geographical indication (GI) is defined as:
“an indication which identifies a good as originating in the territory of a country, or a region or locality in that territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin” (Section 2).

‘Good’ means “any natural or agricultural product or any product of industry or handicraft” (Section 2).

Under the Act any interested party may apply to the Court to prevent the use of GIs:

  • on goods in a manner that misleads the public as to the true geographical origin of the goods
  • which amounts to unfair competition
  • identifying wines and spirits that do not actually originate in the place indicated by the GI even where the true place of origin is indicated and even where used in conjunction with “kind” “style” “imitation” “type” “comparable to” or other similar expressions.

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Offences and Sanctions

Misleading use of a geographical indication which is deliberate constitutes a criminal offence punishable in a lower court (Resident Magistrate’s Court) by a fine not exceeding one million Jamaica dollars and/or by imprisonment of a term not exceeding 12 months. If the matter is addressed in a higher court (Circuit Court) the fine is unlimited and the maximum term of imprisonment is 5 years. In addition either court may impose a pecuniary penalty where the court is satisfied that benefits were derived by or accruing to the offender from the commission of the offence.

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Registration

The Act protects unregistered geographical indications but also provides for a registration system to serve as prime facie evidence that a particular GI properly falls under the Act.

Any producer or group of producers may apply to register a geographical indication once they are carrying on an activity in the specified geographical area in relation to the goods specified in the application.

Producer” means:

  • producers of agricultural products
  • manufacturers of products of industry or handicraft
  • persons who exploit natural products and
  • persons dealing or trading in such products

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Exclusions

The Act excludes certain types of indications from protection and allows for exceptions in relation to indications that were in continuous use prior to a specified date. Trademarks containing or consisting of misleading geographical indications may be disallowed registration and, where already registered, may be revoked.

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Regulations

The Act provides for the promulgation of Regulations for the proper implementation of the provisions thereof including the procedures for registration of geographical indications.

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The Government Geographical Indications Office

The Geographical Indications Law is administered by the Trade Marks & Designs & Geographical Indications Directorate of JIPO. 

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Practice/Services

Foga Daley’s Practice focuses on Intellectual Property Law, Communications Law and the law relating to Information Technology. See below for more details on our practice areas.

Intellectual Property

The Intellectual Property commercial practice covers all types of commercial transactions involving intellectual property rights acquisition and rights management and licensing in the areas of Trademarks, Copyright, Patents, Designs, Geographical Indications, Trade Secrets and Confidential Information.

The practice involves the conduct of intellectual property audits, intellectual property portfolio management and domain name disputes.

As adjuncts to intellectual property the Firm’s practice extends to entertainment and media law, merchandising, franchising and international trade, including trade-related aspects of intellectual property rights. The Firm’s IP litigation practice covers trademark and copyright infringement actions, anti-counterfeiting and anti-piracy actions including raids, and criminal prosecutions, patent prosecutions, passing off actions, breach of obligations under commercial agreements and other civil causes of action.


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Communications Law

The Firm’s Communications Law practice focuses on the acquisition of licences, regulatory compliance and commercial negotiations and agreements. We provide legal advice on applications for telecommunications and broadcast licences, compliance with relevant statutes and regulatory authorities, liability of telecommunications and other service providers, network interconnection agreements, carrier and service provider agreements. Services also include conducting negotiations and developing legal strategies for new entrants in a competitive telecommunications market.


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Information Technology

Our Information Technology practice encompasses Multimedia Law, Cyber Law, Computer Law and relevant aspects of Intellectual Property Law. We provide legal advice on privacy, publicity and defamation in the context of cyberspace, rights acquisition, multimedia / website product development and distribution agreements, on line transactions, software licenses and web hosting, E-Commerce, E-procurement and E-government, Technology Transfer and Escrow Services.


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Entertainment Law

We advise Jamaican Entertainers and Celebrities on endorsements deals and contracts involving their intellectual property.


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Mergers & Acquisitions

We provide due diligence services and advise foreign investors particularly companies with high value intellectual property assets that wish to acquire Jamaican businesses or licence services and technologies to Jamaican business interests


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