Businesses, lawyers at odds over trademark registration
Published:Sunday | December 26, 2010 | 12:00 AM
Avia Collinder, Business Writer
Jamaican businesses, which have to fork out significant sums to register their Jamaican products and services internationally, are pushing for the country's accession to a treaty that they say would simplify and reduce the costs associated with the brand protection.
But, not so fast, say lawyers, who are required to actually lodge the intellectual property registrations and make representation at legal hearings involved, and who foresee a potential erosion in their income.
The business and legal communities remain at odds over the signing of the Madrid Protocol, which would permit the one-time registration of trademarks in major international markets.
While businesses see the benefits in terms of lower registration costs and simplicity to the entire registration process, the lawyers have raised the issue of loss of income, says Carol Simpson, executive director of the Jamaica Intellectual Property Office (JIPO).
The Madrid System for the international registration of marks established in 1991, functions under the Madrid Agreement of that year and the 1989 Madrid Protocol. It is administered by the International Bureau of the World Intellectual Property Office (WIPO) located in Geneva, Switzerland.
JIPO points out that while the one-time registration under the Madrid System might not necessarily be cheap, considering the administrative costs involved, it would be more efficient.
Simpson said Jamaica's intellectual property authority was consulting with the stakeholders to build consensus for signing the accord.
Power of Brand Jamaica
The Jamaican Bar Association, in written comment to Sunday Business, was cool to the signing and has cautioned against being in any hurry to do so.
"Due to the power of Brand Jamaica there is an increasing trend by some foreign entities/individuals with no genuine link to Jamaica to obtain around the world, registered trademarks comprising either the country name Jamaica or derivatives thereof or of names of famous Jamaican people, foods and locations in order to capitalise on the growing value of the Brand," the lawyers said.
If Jamaica accedes to the Protocol, such marks would gain easy entry into Jamaica and dilute Brand Jamaica, they argued.
"In addition, it is anticipated that Jamaica's accession could also result in access to the Protocol system still being limited to a few local businesses (with already strong international portfolios), due to cost constraints," the bar association said.
The Jamaica Coffee Board (CIB), which spends millions of dollars on trademark protection through registration and policing, supports the one-time registration of brands under the convention instead of the existing system of having to lodge separate registrations in different jurisdictions.
"The legal advice currently available to the Board is that if Jamaica signs the Madrid protocol, it could save us at least J$5 million per year and it could allow us to expand the reach of our brand protection with less cost," Christopher Gentles, the CIB's director general told Sunday Business.
The facility, he said, would give the Board protection in markets where it cannot afford to file registrations to protect the country's premium coffee brands from fake products being passed off as being authentically Jamaican.
"There are some producing countries that we would like to take legal action against offenders, but this is balanced against maintaining the cost of registration," he said.
Another local business pushing for the umbrella agreement is P.A. Benjamin Manufacturing Company Limited, producer of a range of personal care products, flavour and pharmaceuticals. Company officials said the firm has experienced financial losses this year from fraudulent use of its name and copycat products.
"Clearly if the registration under the Madrid Protocol provides effective protection, no less than obtained by registration in individual countries, we will support it," chairman and CEO, Errol Powell said, noting that his company exports some 24 products.
P.A. Benjamin officials have not put a precise cost on annual trademark protection spend as not all marks are renewed each year.
"On average, our cost is J$20,000 for new registration in Jamaica, J$60,000 for registration outside of Jamaica and J$12,000 for each renewal," Powell said.
Reflecting similar concerns about the cost of brand protection registration overseas, an official of spirits producer and distributor, J. Wray and Nephew, said the company was selective in registration and renewals each year.
Wray and Nephew's assistant company secretary, Marva Williams, said the Madrid
System was becoming larger and more beneficial as more countries join, among them United States, China, Japan and European Union members.
Williams, who has responsibility for trademark protection at her company, said the Madrid system will provide protection not only for companies, like rum manufacturers, which export to multiple countries, but also newer manufacturers, who may wish to sell via the Internet to multiple markets.
The Jamaica Bar Association has also suggested that signing on to the Madrid system could burden the Jamaican Intellectual Property Office unless additional budgetary resources are provided.
The lawyers also cite loss of general consumption tax revenue applied to the filing of foreign marks by local agents and the loss of income for local service providers, without a counterbalancing revenue benefit to Jamaica to compensate for such losses, as a downside.
The powerful lawyers' lobby, jealous of its fees derived from marks registrations and renewals, has been fingered as the reason no company in Latin America has so far signed on to the convention.
In the Caribbean, only one country, Antigua and Barbuda, has signed.
"But under European Union agreements, all Carofurim countries must sign by 2014," Simpson said.