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Lexology Article: Trademarks In Jamaica

Caribbean IP penned the following for publication via Lexology

Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Jamaica are:

  • the Trademarks Act 1999, as amended by the Trademarks (Amendment) Act 2013; and
  • the Trademarks Rules 2001 as amended by the Trademarks (Amendment) Rules 2011.

International law

Which international trademark agreements has your jurisdiction signed?

Jamaica is party to:

  • the Trade-Related Aspects of Intellectual Property Rights;
  • the Nice Agreement;
  • the Vienna Agreement; and
  • the Paris Convention.

Regulators

Which government bodies regulate trademark law?

The Houses of Parliament (House of Representatives and Senate) and the Jamaica IP Office regulate trademark law and the trademark registry.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership of a trademark in Jamaica is determined on a first-to-use basis.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Common law rights in passing off are available to unregistered marks.

How are rights in unregistered marks established?

Rights in unregistered marks are established through use and the establishment of goodwill in the mark.

Are any special rights and protections afforded to owners of well-known and famous marks?

Yes, the owner of a well-known mark can obtain injunctive relief against the use of a trademark which is identical to or similar to the well-known mark in relation to similar goods or services, if the use of the mark is likely to cause confusion. The registration of the well-known mark is not a prerequisite to obtaining injunctive relief.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Paris Convention priority may be claimed in Jamaica.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The registration of a mark confers a property right on the owner of the mark and provides access to remedies for infringement.

Who may register trademarks?

Any Jamaican or foreign legal person, including a natural person and a business entity, can register a trademark. Registration may be made either by a single entity or person or by two or more jointly.

What marks are registrable (including any non-traditional marks)?

Any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking.

Can a mark acquire distinctiveness through use?

Yes.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

An application for the registration of a mark will be examined on both absolute and relative grounds.

Are collective and certification marks registrable? If so, under what conditions?

Yes.

Collective marks An applicant must file regulations governing the use of the mark, including:

  • who is authorised to use the mark;
  • the conditions of membership of the association; and
  • any conditions of use of the mark, including any sanctions against misuse.

The registrar will examine the regulations and raise any issues or accept the regulations if all requirements are met.

Certification marks The applicant must file regulations governing the use of the mark, including:

  • who is authorised to use the mark;
  • the characteristics to be certified by the mark;
  • how the certifying body is to test those characteristics and supervise the use of the mark;
  • any fees to be paid in connection with the operation of the mark; and
  • procedures for resolving disputes.

The registrar will examine the regulations and raise any issues or accept them if all requirements are met.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Yes, but it is not required at the time of filing. No notarisation or legalisation is required.

What information and documentation must be submitted in a trademark registration application?

The following must be submitted in a trademark registration application:

  • the name and address of the applicant;
  • a request for registration of a trademark;
  • a statement about the goods or services;
  • a representation of the mark; and
  • an indication of whether the mark is being used in Jamaica or if there is a bona fide intention to use.

What rules govern the representation of the mark in the application?

The representation of the mark cannot be larger than A4 size. Five representations of the mark should be provided.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

No.

What are the application fees?

The following application fees apply:

  • US$70 for the first class;
  • US$20 for each additional class in a multi-class application; and
  • US$20 for filing address for service.

There is an additional fee of US$20 for applications claiming priority. There are additional fees for publication and completion of the registration.

Priority

How are priority rights claimed?

All that is needed to claim a priority right is an English language copy of the application on which the priority claim will be based. A certified copy of the priority application must be provided within three months of the filing date.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Searches are available and recommended, but not required. Searches are performed in person at the local registry, by:

  • the applicant;
  • the agent; or
  • the registry staff (on request).

The fees vary depending on the time involved and the amount of information obtained.

Examination

What factors does the authority consider in its examination of the application?

The application is reviewed to ensure all procedural formalities are met. Absolute and relative grounds are considered during examination to determine:

  • that the mark is not one of the enumerated non-registrable marks;
  • that the mark is distinctive; and
  • that there are no conflicting earlier marks.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes, if it appears that the requirements for registration are not met, then the registrar will inform the applicant and give them an opportunity to make representations or to amend the application.

Read on at: https://www.lexology.com/library/detail.aspx?g=70969b0b-2c5e-40eb-8510-05cd08149d8f

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