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)
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 The Trade Marks Act of 1999 repealed the Trade Marks Act of 1958.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 2013 introduced further changes to the Act and Rules, the major ones of which are discussed below.
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
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.