On June 30, 2021 the Trade Marks (Amendment) Act ("the Amended Act") came into force and with it came some significant changes to the Jamaican trade mark landscape.
Changes to the Trade Marks Act ("the Act") include the introduction of provisions to protect traditional knowledge and traditional cultural expressions and to prevent Applicants from taking advantage of the good- will of other countries.
Section 11(4)(f)(iii) of the Amended Act provides that "A sign shall not be registered as a trade mark if it is of such a nature as to misrepresent, or misappropriate, the traditional knowledge or traditional cultural expressions of indigenous or local communities."
Previously, section 12 of the Act provided that trade marks which consist of or contain a representation of Jamaican national emblems could not be registered without the prior consent of the Jamaican government. This section has now been amended to expand the scope of protection whereby the applicant of any mark that makes reference to, or suggests an affiliation with Jamaica or any other country, namely using the name of the country (including abbreviations and homonyms), national colours, national emblems or a map of the country, may be required by the Registrar, to provide a disclaimer that the goods and services for which the trade mark is registered originate in Jamaica or another country, as the case may be.
These two amendments are aimed at preventing applicants with no legitimate link to a particular country or group from deceiving the public into believing that their products originate from or are associated with that country or group. It is well known that applicants overseas sometimes seek to pass off products as authentically Jamaican and these provisions assist in the protection of "Brand Jamaica" and ensure that consumers are assured of the authenticity of goods and services.
Another compelling amendment to the Act is the adoption of the Madrid Protocol. The Madrid Protocol on trademarks, is designed to simplify the process of registration of trademarks around the world. By facilitating trademark protection in multiple territories using a single application, a registrant under the Madrid Protocol can potentially obtain protection in over 120 territories at a lower cost than having to seek protection country by country.
What is the Madrid Protocol, and how does it work?
There is a common misconception that the Madrid Protocol affords trademark owners the privilege of having their marks registered "anywhere in the world." However, the extent and effect of the Protocol is not without its limitations. To better understand its reach, we must first examine and understand what the Madrid Protocol is and the concept of International Applications.
Convened in 1891, the Madrid system was created for the International Registration of Marks and is governed by two treaties: the Madrid Agreement and the Madrid Protocol ("the Protocol"). The Protocol to the Agreement was concluded in 1989 and was designed to make the Madrid system more compatible and flexible with domestic legislation in countries that were unable to accede to the Madrid Agreement. The Madrid system provided the avenue by which marks would be given protection in a large number of countries by obtaining trademark registration in each "contracting party" to the system.
An applicant under the Madrid Protocol must be a natural or legal entity, specifically, a national of Jamaica or domiciled in Jamaica or have a real and effective industrial or commercial establishment in Jamaica2. In order to file an application for International Registration, the applicant must have a national application or registration in the "home country" (via the Jamaica Intellectual Property Office). This national application becomes the basis for the International filing, in which the applicant designates one or more countries in which the mark is to be registered. A country may only be designated where it is a contracting party to the same treaty as the "home country". However, where both contracting parties are parties to both the Agreement and the Protocol, the designation will be governed by the Protocol.
The party seeking protection must be a Contracting Party of one or both treaties and the Country in which the protection is being sought must be a Contracting Party of the same treaty of the Country seeking protection or a party to both treaties. For example, if Jamaica and Spain were both contracting parties to "the Protocol", an applicant in Jamaica desirous of protecting their mark in Spain would file a national application in Jamaica and designate Spain as a country for which protection is sought. Accordingly, the Madrid Protocol cannot be used to protect a trademark in a country that is not a party to one or both treaties.
Once the application is filed, the World Intellectual Property Organization ("WIPO"), conducts a formal examination to ensure all formality requirements are met. Once all requirements are met, WIPO will record the international registration in the International Register and publish this recording in the WIPO Gazette of International Marks. Thereafter, WIPO will send a Certificate of Registration to the applicant and notify each of the designated countries. At this point the mark will be examined by the Intellectual Property Office ("IPO") of each designated country which becomes the final arbiter as to whether the International Registration will have effect in that country.
It is therefore important to note that the issuance by WIPO of an international registration does not mean automatic protection in the countries that the applicant has designated because each IPO has to determine whether the application is registrable within the respective jurisdictions. This examination is subject to the rules and practices of each IPO. Consequently, even if a mark has been accepted in the home jurisdiction and even if WIPO issues an international registration, it does not always follow that it will be accepted in each country designated. Likewise, since the international registration is based on the home filing, any issues with the home application or registration such as rejection, invalidation or revocation will inevitably impact the validity of the International Registration.
While the Madrid system provides a multinational filing facility to allow for ease of registration across several jurisdictions, it is not an enforcement organization. Intellectual Property rights are private rights and it is still up to brand owners to leverage these registrations through management and enforcement to stem the issue of infringement around the globe. Accordingly, brand owners must be mindful of the situation in the countries in which they intend to enforce their trademark registrations. For example, some countries and regions, most notably in Africa, have not yet enacted domestic legislation to recognize the International Registration system, which leads to enforcement issues.
Footnotes
1. Guide to the International Registration of Marks under the Madrid Protocol, 2021, WIPO Series
2. Section 26(1)(a) of the Trademarks (Amendment) Act
Originally published by The Jamaican Bar Association.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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