Lawyers fear loss of income from trademark treaty

Marcella Scarlett, Business Reporter

The Jamaica Bar Association is wary of Jamaica's plan to sign on to the international system for trademarks, called the Madrid Protocol, saying it would likely result in loss of income for lawyers and less tax revenue for the treasury.

"This is not the only reason but this is one of the reasons," said Dianne Daley, chair of the JBA's Intellectual Property Sub-Committee.

The lawyers said that broadly, the Protocol can be beneficial but warns that it opens up the potential abuse of 'Brand Jamaica' by foreign entities, and that Jamaica should not sign the agreement before adequately preparing its legislative and administrative framework.

"Of most concern to us is the fact that Jamaica has not undertaken a cost-benefit analysis to determine the impact of signing the treaty," Daley said.

"Assumptions are being made, and, rather than relying on anecdotal evidence, an empirical study needs to be done before signing."

JIPO charges J$8,320 to register a mark in Jamaica and, in the past three years, has remitted an average of J$23 million annually to the Government, representing all fees collected by JIPO which are paid into the Consolidated Fund, according to deputy CEO Lilyclaire Bellamy.

The fees will double at March 1, but in sum will still represent a fraction of Government's J$20 billion of annual non-tax revenue.

Attorneys' costs are separate from JIPO's fees. It's unclear how much trademark-related business lawyers conduct, especially since registrations do not have be done through a lawyer.

JIPO data indicates that in the latter half of the last decade, more than 1,800 marks were registered annually. The exception was 2007 when registrations fell to 1,266, which pushed the 2006-2009 average to 1,676.

The JBA declined to clarify how much income lawyers earn from this line of business, and how much they were likely to lose, but Daley said some of their earnings come from representation in legal fights over trademark rights.

Daley says JBA members represent 80 per cent of owners of trademarks in Jamaica on intellectual property transactions.

The Madrid Protocol, to which Jamaica and other Cariforum countries are required to sign with two years, by January 2014, will eliminate the need for multi-jurisdiction registrations once the applicant originates from within the bloc of countries that have signed on to the agreement.

At yearend some 85 countries were already on board, with only one from the Caribbean, Antigua & Barbuda, which became a signatory back in March 2000. The lawyers have pointed to Antigua as a lesson for Jamaica to heed, saying that "while foreign applicants were able to designate Antigua and Barbuda in their Madrid Protocol applications, local applicants were unable to access the international filing facility or oppose incoming international applications."

Registrations originating from non-residents have doubled in Antigua from 525 at signing to 1,031 at peak.

Loss of revenue

JBA, which updated its position paper on the Madrid Protocol last November, claims that the trademark fees are "substantial contributor of revenues for the Government" but did not quantify the intake. JBA predicts the government will lose out on GCT, income tax and statutory deductions and foreign exchange earnings under the Protocol.

The lawyers also say the treaty will likely dissuade registrations; that it would eliminate the need for foreign applicants and registrants to employ the services of a local trademark attorney to extend a foreign application or registration to Jamaica.

Fewer filings, it said, would also mean a loss of revenue for JIPO, which will no longer be able to charge for certain services - such as for cancellations, deadline extensions and changes in registration details - as these will become functions of the WIPO rather than the national IP office.

Another concern for the JBA is the absence of some of Jamaica's trading partners from the Protocol.

"The result is that for Jamaican businesses that wish to extend protection of their trademarks in other Caribbean and Latin American Countries and Canada they will receive no benefit if Jamaica signs the Protocol at this time," the JBA paper said.

"The developing countries which remain outside of the Protocol, like Jamaica, are net importers of foreign trademarks, have trademark systems that provide minimal barriers to accessing local trademark rights and continue to share common reservations regarding the Protocol."

business@gleanerjm.com