On July 21, 2017, the Court of Appeal gave its decision in favour of the Appelant 3M Company in 3M Company v. Manufacturera 3M SA de CV [2017] JMCA Civ 21. 3M Company was represented by Lival’s Tana’ania Small-Davis, Kathryn Pearson and Mikhail Jackson. This keenly anticipated decision is welcomed by Jamaican practitioners in the area of Trade Mark Law, where few judgments exist, particularly at the Appellate level.
3M appealed the decision of Sykes J. in the Supreme Court, which was itself an appeal by way of rehearing from the decision of the Registrar of the Jamaica Intellectual Property Office (JIPO). 3M Company opposed the application of Manufacturera 3M SA de CV (“M3M”) for registration of the mark “3M & Device” on several grounds, chief of which was that the proposed trade mark was too similar to its existing “3M” trade mark. 3M Company contended that its “3M” trade mark enjoyed a reputation in Jamaica, and as such M3M’s proposed mark would cause confusion among the public as well as detriment to the “3M” brand and its distinctiveness. Whilst JIPO’s Registrar found favour with nearly all of 3M Company’s grounds of opposition, the case was decided in favour of M3M on the basis that there was honest concurrent use of the “3M & Device” trade mark, and as such the registration of same would not be prevented.
In the Supreme Court’s decision, the judge found that the trade marks in question were not similar, the goods in question were not similar, the relevant public concerned was confined to actual consumers of M3M's goods, there was no likelihood of confusion or damage to 3M Company’s well established “3M” brand and there was honest concurrent use by M3M of the “3M & Device” mark.
3M Company’s appeal was successful on all grounds. In a thorough and elucidating judgment, the Court of Appeal interpreted various sections of the Jamaican Trade Marks Act and settled a number of salient trade mark principles, giving much welcomed clarification on the local law in line with our international counterparts, particularly the UK and EU courts. This judicial precedent is an important one for the development of Jamaica’s IP law.
The full decision of the Court of Appeal can be read here.