Okeeto DaSilva | Greater international protection for Jamaican companies

The Trade Marks Amendment Act of 2021 (TMA 2021) is a major development in Jamaica’s trade mark law. Jamaican company brands, logos, as well as Brand Jamaica are now able to obtain global protection.

Under Section 69 of the Trade Marks Act, it is a criminal offence to use a sign or logo similar or identical to a registered trade mark. Prior to the passage of the TMA 2021, this provision was only enforceable in Jamaica. Therefore, in order to receive legal protection for a company trade mark beyond the shores of Jamaica, local companies had to register a trade mark in the country where protection was being sought. Now, with the TMA 2021 being passed, it will be easier for trade mark breaches of Jamaican logos and company marks to be prosecuted internationally.

GREATER GLOBAL PROTECTION

The TMA 2021 represents Jamaica’s accession to the Madrid Protocol (MP), which provides a system for the implementation of an international trade mark registration system. Over 120 countries are signatories to the MP. The MP represents a demise in artificial borders as it relates to trademark registration, as there is now one trade mark register where every registered trade mark will receive equal protection, regardless of the country of origin.

Arguably, the accession of Jamaica to the MP will complement the Mutual Assistance (Criminal Matters) Act (MACMA), specifically in areas regarding trade mark protection. MACMA is the legislation that governs the international cooperation between Jamaica and other member states in matters concerning cross-border criminal investigations and prosecution. Under MACMA, signatory member states can request information from Jamaica, and vice versa, if the information forms part of a criminal investigation. Possibly, the current provisions of MACMA could be reviewed in light of the passage of the TMA 2021, with a view of amending its provisions to specifically provide for international cooperation on legal matters concerning trade mark breaches and the unlawful use of Jamaican national emblems and symbols.

PROTECTION OF BRAND JAMAICA

Under the TMA 2021, the Jamaican Flag, the Coat of Arms, and Jamaican national emblems are protected and cannot be incorporated within a logo unless permission from the Jamaican Government is given. Correspondingly, an application to register a trade mark with the word ‘Jamaica’ can be refused where the goods and services associated with the company mark or logo does not originate from Jamaica. The same principle applies to other countries.

REGISTERING AN INTERNATIONAL TRADE MARK

Included among the list of the over 120 countries where Jamaica’s trade marks can be protected are Australia, Brazil, Canada, European Union countries, Ghana, Japan, Trinidad and Tobago, the United Kingdom and the United States. Trade mark protection in all these states can be commenced with a single application locally at the Jamaica Intellectual Property Office (JIPO). This is a direct benefit to local entities and will reduce the costs associated with registering trade marks in different countries.

Once the registrar at JIPO receives the application for registering a trade mark, it is certified and forwarded to the World Intellectual Property Organization (WIPO). WIPO then examines the mark, and once it is approved, registers it in the International Register. The new trade mark is then published in the WIPO Gazette of International Marks. All member states are then notified of the publication. Once the trade mark is registered, it is protected for 10 years. The trade mark may be challenged any time within five years after it has been registered.

CASE STUDY ON THE MADRID PROTOCOL

A study done by the WIPO, titled ‘Study on Accession to the Madrid System’, highlighted some of the issues that member states experienced with the implementation of the Madrid Protocol within their jurisdiction. While most jurisdictions found the process efficient, there was an increase in the workload for the respective government intellectual property offices due to an increase in trade mark application filings.

One of the countries that the study explored was the Euro-Asian country of Turkey. In the first year of adopting the Madrid Protocol, that country experienced a 42 per cent increase in trade mark applications; this figure increased to 72 per cent in the second year of accession.

The study also found an overall increase in non-resident filings. There was also an increase in telephone calls to respective government intellectual property offices from persons seeking information.

The study further highlighted the need for trademark applicants to be familiar with the local intellectual property laws within the respective countries that protection is being sought. For instance, it was highlighted that in the United States, there is a requirement by the United States Patent and Trademark Office (USPTO) for trade mark owners to file a declaration that the mark has been used continuously for five years. This must be done within the fifth and sixth year after the trade mark is registered. Failure to file this declaration may result in the trade mark being cancelled.

This demonstrates that notwithstanding the efficiency associated with filing a single application, there is still a need for trade mark applicants to be knowledgeable of the local trade mark laws in the respective countries that trade mark registration is being sought.

Overall, the TMA 2021 has been long overdue, and the benefits to local businesses and Brand Jamaica cannot be overstated.

Okeeto DaSilva is crown counsel in the Office of the Director of Public Prosecutions. The above article is not legal advice and has been published for information purposes only. Email feedback to okeeto@hotmail.com and columns@gleanerjm.com.