Although Jamaica’s trade mark laws underwent ground breaking changes back in 2021 with the passing of the Trade Marks (Amendment) Act, 2021, many of the amendments concerned the implementation of the Madrid Protocol and as such are only now about to take effect on account of the December 27, 2021 accession.

With just over 1 month to go before the Madrid Protocol officially enters into force on March 27, 2022, it is an opportune time for a refresher on how the new Act affects trade mark practice in Jamaica and a look at what is to come.  

1. Country Names, Flags and Symbols Cannot Be Misused. 

As a small island nation punching way above its weight class on the global cultural scene, there is a certain pride and sometimes near hysterical level of patriotism that comes with being Jamaican and a fierce possessiveness of all things Jamaican.

While the Trade Marks Act has always guarded against the inclusion of the Jamaican flag, the Coat of Arms and other national emblems in trade marks, protection has now been extended to the name Jamaica, abbreviations of the name, national colours, maps and other symbols.

The Act goes further by granting this protection to the names, flags, national symbols, maps etc. of all countries. Applications for trade marks which contain country names, flags, colours and the like will require an undertaking from the Applicant that the goods or services will originate in the country depicted. Otherwise, registration will likely be refused.

This welcome and important provision will go a long way in safeguarding consumers from deception as to the geographic origin and authenticity of products and services, rightfully reserving that premium benefit for genuine traders. 

2. Protection of Traditional Knowledge (“TK”) and Traditional Cultural Expressions (“TCEs”) has been elevated to an Absolute Ground of Refusal

A basis for protection of TK and TCEs has always existed in some form. Certainly, the 2001 Act prevented (and still prevents) the registration of trade marks which are contrary to public policy or accepted principles of morality, deceptive trade marks and trade marks which falsely suggest a connection with persons, institutions or belief systems. In 2012, a Practice Notice was issued by JIPO to specifically indicate that the public policy of the Government of Jamaica is to preserve and protect TK and TCEs of Jamaica and its indigenous, traditional and local communities.

The Amendment Act has now given TK and TCEs “high roller” status, as their protection has been enshrined in specific terms amidst section 11’s other absolute grounds of refusal (such as non-distinctive marks and bad faith applications). Section 11(4)(f)(iii) now provides that:

“A trade mark is not registrable if it is of such a nature to misrepresent, or misappropriate, the traditional knowledge or traditional cultural expressions of indigenous or local communities.” 

3. Official Preliminary Searches Can be Requested at JIPO

Although JIPO has always facilitated this service, it was not previously provided for in the legislation. A provision to request preliminary searches and advice from the Registrar is now expressly included in section 55A and perhaps serves as a black and white reminder of a tool which applicants and practitioners may consider using, either instead of or as a compliment to their own clearance searches. 

4. We’re Going to Madrid! Effective Date and Membership. 

With an accession date of December 27, 2021, the protocol comes into effect 3 months later on March 27, 2022. The current total of Member States (including Jamaica) is 110.

The UK, USA, Canada and China are all members as well as regional offices of the EUIPO (European Union) and OAPI (African Intellectual Property Organization). Only two other English speaking Caribbean nations are currently Members – Antigua & Barbuda and Trinidad & Tobago. From a regional perspective therefore, it should be noted that the Protocol is currently not extensive in its offerings. 

5. International Registration – What it IS.

The Madrid Protocol is an international trade mark filing system allowing for numerous countries to be covered in one filing through the World Intellectual Property Office (WIPO). For Jamaican applicants, the system allows the owner of a Jamaican application (or registration) to access WIPO’s system by filing an international application to extend protection of its trade mark to other member states. This Jamaican application forms what is known as the “basic application.” In the case where an existing registration is used, it is called the “basic registration.”

To file the international application, the Applicant must rely on its basic application/ registration. The details of the Applicant (i.e. its name and address) and the trade mark must be identical. The goods and services must either be the same as or covered by the descriptions in the basic application/ registration. In other words, the international application can have a narrower or equivalent range of goods/ services but cannot go beyond that which is covered by the basic application/ registration. Finally, the Applicant must select each member state of interest and pay the relevant fee in each case to extend its application to those countries.

Once the above criteria are met in the international application, JIPO forwards the international application to WIPO certifying:

• The date of receipt of the international application;
• That the particulars of the international application correspond to the basic application/ registration; and
• The date and number of the basic application/ registration.

At WIPO, once the above requirements are met by the international application, the trade mark is registered in the International Register and WIPO issues and publishes the details of the International Registration. 

6. International Registration – What it is NOT.

The International Registration is, at this stage, only a first step acquiring trade mark protection and the term is therefore a bit of a misnomer. There is a common misconception that the Madrid System provides an “international trade mark” - a unicorn which does not exist. I’ll say it again for the people in the back: the Madrid Protocol provides an international filing system - a convenient platform enabling it’s users to file applications throughout any number of member states (as selected and paid for) through a single process.

WIPO, through its “international registration,” does not grant any actual enforceable trade mark rights. On issuing the international registration, WIPO submits the holder’s request to each individual country that was selected in the international application. The Intellectual Property Office (IPO) of each country will then receive and examine the application based on its own local laws, rules and procedures. The ultimate registrability and determination of trade mark rights can only be determined by the IPO of each territory selected and there are no rights bestowed until that IPO grants registration in accordance with its laws.

In time, the international registration should “flesh out” as grants are obtained in the countries selected, but applicants should always consider the following:

1. The registration will only potentially cover so many territories as are selected (not the entire world);
2. The registration will only be effective on a country by country basis as and when grants are completed;
3. The timeline for acquiring the rights will vary considerably country to country depending on the usual factors (third party rights, oppositions, office actions etc.); and
4. For non-Madrid member countries, traditional domestic filings must still be pursued. For applicants with a Caribbean footprint, the Protocol’s offerings are therefore currently limited. 

7. International Applications Designating Jamaica Require a Local Agent in Troubled Waters.

For international registrations filed through WIPO designating Jamaica, WIPO will notify JIPO of those registrations and JIPO will publish those trade marks and proceed to examine them on substantive grounds.

Within 18 months, JIPO is required to communicate to WIPO any refusals, conditional acceptances or notices of opposition and also provide a statement of grounds of the provisional refusal. The holder of the international registration may respond by requesting a review of the decision and has only 2 months to do so. If the holder doesn’t have an address for service in Jamaica, the request for review has to be submitted in writing through a Jamaican Agent together with a Power of Attorney.

It is therefore advisable for Madrid users designating Jamaica to have a local agent “on call” to quickly and effectively handle any provisionsl refusals from JIPO.

Oppositions may be filed against international registrations designating Jamaica within 2 months of JIPO’s publication. The existing Rule 12 procedure will apply, which involves the filing of grounds of opposition and counterstatements, evidence in support and ultimately a hearing before the Registrar. The usual “cooling-off periods” and extension of time provisions are also expected to pertain.  

Jamaica, No Problem? 

Jamaica has long been lauded by brand owners for its uncomplicated and efficient registration system. Applications are filed without the need for cumbersome documentation or Powers of Attorney and examination reports issue in approximately 4 months, a time frame which is enviable compared to the IP Offices in many developed countries. The Registry has also maintained a fair and even balance between being overly circumspect or too casual in its examination for both absolute grounds and relative grounds of refusal. Without oppositions, office actions or refusals, Applicants could look forward to completion of their registrations within a 12 – 15 month window.

Jamaican TM practitioners, through JIPO, have been proud to offer local and international clients world class TM registration services here in “the land of wood and water.” It is our hope that we will continue to do so as we navigate these new and sweeping changes to the landscape.

For more information on the new Act, Madrid and all things trade marks, contact me at kpearson@lival.co