Foga Daley is currently recruiting for the following positions:
Associate - Commercial Department
Attorney at-Law with at least 2 years experience to work in the Firm's Commercial Department.
Experience with Complex Commercial Transactions including Real Estate Transactions is an Asset.
Experienced Paralegal familiar with Supreme Court Filings, and Submitting documents to the Registrar of Titles, Companies Office and Jamaica Intellectual Property Office.
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of the cooling off period within which to file his Counterstatement failing which the application is deemed to be withdrawn.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and no counterstatement is filed by the final deadline outlined by the Registrar the application will be deemed to be withdrawn.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.
By Dianne Daley McClure
Intellectual Property Partner | Foga Daley
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 2000 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.
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.
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.
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.
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.
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.
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.
Intellectual Property Partner Dianne Daley is among the top 250 women from around the world in Intellectual Property. Dianne is one of five IP Lawyers from the Caribbean who made the list of “IP STARS Top 250 Women in IP in 2018. IP Stars recognises female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year.
The Seminar aimed to sensitize Caribbean business managers, marketing and communication professionals and legal advisers, among others, to these emerging issues and challenges and help equip them to navigate the minefields of potential pitfalls.
The seminar brought together local, regional and international speakers to explore the revolutionary impact of social media and the internet on laws and regulations in the Caribbean as they affect the advertising industry. Keynote speaker, The Most Honourable P.J. Patterson, ON, OCC, PC, QC, former Prime Minister of Jamaica, addressed participants on The Evolving Role of Media in the Caribbean.
Representatives from Jamaica’s key regulatory agencies - Kent Gammon, Chairman, Consumer Affairs Commission, David Miller, Executive Director, Fair Trading Commission and Cordel Green, Executive Director, Broadcasting Commission examined the existing advertising regulatory framework and the challenges of the digital environment, while Chief Technical Director, ICT, Ministry of Science Energy & Technology, Jamaica, Wahkeen Murray, spoke on aspects of the Data Protection Act which is now before the Joint Select Committee.
President of the Caribbean Advertising Federation, Arnold JJ Foote and President of the Advertising Agencies Association of Jamaica, Kingsley Morris gave industry perspectives, while Ambassador Wayne McCook, Undersecretary in the Ministry of Foreign Affairs and Foreign Trade gave international perspectives.
The Global Chairman of GALA and Managing Partner of Frankfurt Kurnit Klein & Selz PC, New York, Jeffrey Greenbaum updated participants on current trends in advertising in the digital era with discussions on the use of influencers, Native Advertising, Hashtags and other Do’s & Don’ts in Social Media from a US perspective.
Intellectual Property (IP) Attorneys Jaime Angeles from Angeles Pons, Dominican Republic, Regional President of GALA for the Americas and Foga Daley IP Partner, Dianne Daley McClure highlighted the plethora of IP issues that can arise in the business of advertising while GALA Advertising Lawyers from the Caribbean, Mrs. Karyl Bertrand Partner, Bertrand Legal, Curaçao and GALA Dutch Caribbean Member, and Mrs. Olive Ramchand, Partner, Fitzwilliam, Stone, Furness-Smith & Morgan, Trinidad & Tobago informed participants about legal developments in advertising regulation and other hot topics in their respective jurisdictions.
A panel of In House Counsel from Cable & Wireless, Rochelle Cameron, Kerry-Ann Heavens from GraceKennedy and Shena Stubbs-Gibson from the RJRGleaner Communications Group addressed the tensions that can arise between marketing and legal departments as advertisers seek to push legal and ethical boundaries.