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Jamaica: A step closer to the Madrid Protocol

On June 11, 2021, Jamaica’s Upper House of Parliament passed the Trade Marks (Amendment) Act bringing the country just steps away from accession to the Madrid Protocol. The Act cleared the Lower House on June 1 and quickly made its way to the Senate.

It is not known exactly when the Amendment Act will come into force or when the Government of Jamaica will accede to the Protocol. Some businesses have signaled their expectation that the Government will move swiftly to sign on to the Protocol and there has even been talk about a one-month timeline for accession.

The urgency appears to be sparked by, among other things, the fact that Jamaican exporters of a variety of food products including sauces, spices and other condiments have been plagued by imposters in key foreign markets.

Enterprises with no legitimate link to Jamaica, have been known to imitate Jamaican brands by using similar packaging and identical or confusingly similar marks on their products, thereby posing as authentic Jamaican products on grocery shelves abroad.

Expectations are that Jamaica’s participation in the Protocol will address these woes. While registered trademark protection, nationally and through the simultaneous multinational filing facility offered by the Protocol, provides proprietors with a key tool to wield at infringers, the enforcement toolkit includes effective marketing, management, and other strategies that businesses must be prepared to employ to stem the problem of infringement around the world.

As Jamaica readies itself for implementation, international users can expect their international registrations designating Jamaica to be subject to local examination and publication. An international registration must be examined on substantive grounds by the Registrar of the Jamaica Intellectual Property Office (JIPO) and published in the local Trade Marks Journal for opposition purposes prior to grant. If the international registration is opposed or refused, the Registrar is required to notify WIPO’s International Bureau of the provisional refusal within 18 months of the date on which the extension of protection was notified to JIPO.

Local users seeking to extend protection of their trademarks to other Madrid Protocol countries, should expect a fairly smooth filing process through JIPO, once the requirements are met, but must be on the lookout for potential refusals as the international application makes its way through designated national trademark offices before proceeding to grant.

On the question of when this will all begin to happen, considering that the coming into force of the legislation should precede accession to the Protocol and there is a three-month timeframe from accession to implementation, one can reasonably expect that it could take a few months before the Protocol is a reality in Jamaica. A Madrid Christmas? Perhaps.

By Dianne Daley McClure | Partner | Foga Daley

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