The introduction on 30 September 2023 of the new Jamaican Trade Marks (Amendment) Rules, 2022, Resolution (also referred to as Jamaica's Trade Marks Act) represents a significant milestone in the country's intellectual property (IP) landscape and enhances their IP regime. HSM IP Manager, Kate Cleary, has highlighted the key changes:
1. Madrid Protocol
One of the most significant changes is that the new Trade Marks Act introduces provisions for Jamaica's accession to the Madrid Protocol, which became effective 27 March 2022, allowing brand owners to file a single application with the World Intellectual Property Organization (WIPO). This accession will significantly benefit brand owners seeking to protect their trade marks in multiple countries, as it can streamline the registration process and reduce the administrative burden.
2. Non-Traditional Marks
The new law also expands the scope of protection for non-traditional marks. Previously, Jamaica's trade marks law primarily focused on protecting traditional marks such as words, logos, and slogans. However, the new legislation recognises the importance of non-traditional marks, including sounds, smells, colours, and holograms. As well as opening up new options for those registering trade marks locally, this new capability potentially simplifies the designation of Jamaica when registering non-traditional marks under the Madrid Protocol, given that each designated office examines the International Registration for local acceptance.
3. Cultural sensitivity
One of the most timely and progressive steps taken is the expansion of protection against the misuse of country names, flags and symbols, as well as misappropriation of local traditional knowledge and traditional cultural expressions. The new provisions seek to prevent the appropriation by unscrupulous parties of local culture and the knowledge and expressions of indigenous and / or local communities, as well as to safeguard consumers from confusion. Misuse of such protected terms are elevated in the new law to grounds for absolute refusal of a trade mark application.
4. Pre-filing searches and advice
The law now specifically provides the option for brand owners to have the Jamaica Intellectual Property Office (JIPO) conduct pre-filing searches and provide its advice as to the registrability of marks. While it was possible to informally request this previously, the Act represents the first time this has been enshrined in law.
5. Increase in official fees
The introduction of this Act implements increased official fees, as well as offering brand owners the option to pay additional fees to expedite their trade mark applications. While the option to expedite is welcome, it should be noted that the JIPO already operates quickly and efficiently, particularly in comparison to some other IP offices in the region.
6. Documentary requirements
It was announced on 29 September 2023 that the JIPO will require trade mark applicants to submit a simply signed, scanned copy of an Authorisation of Agent (Form TM3) in order to appoint a local representative. Formerly, no documents were required to be signed by the applicant when applying to register a trade mark in Jamaica. This requirement may change since it is likely to face objection from local firms who are accustomed to submitting applications on their clients' behalf without the provision of an authorisation.
In short, the new Jamaica Trade Marks Act represents a significant step forward in the protection and enforcement of intellectual property rights, as well as making Jamaica an even more attractive destination for brand owners seeking to register their trade marks.
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