This paper examines how Jamaica’s accession to the Madrid Protocol may assist (and hurt) trade mark owners.
Trade Marks are used by many entities as a means of distinguishing themselves from the pack. Well-known trade marks include Apple, Samsung, Craven A, Johnson & Johnson and Kellogs. Generally, when these brands are mentioned, consumers can associate the products with a certain quality, functionality and desirability. Trade marks allow consumers to differentiate between different brands. As a result, some companies expend large amounts of money in order to develop their trade marks and marketing concepts. A lot of money is also spent on protecting these trade marks.
When trade marks are registered in a particular jurisdiction, it generally means another individual cannot register or use a similar or identical mark in relation to similar or identical goods and/or services in that country.. There are exceptions, whereby, if you have registered your trade mark in a country that is signatory to the Paris Convention for the Protection of Industrial Property (the “Paris Convention”) (of which Jamaica is a member), you can claim protection for that mark in another Paris Convention country when someone else tries to use or register your mark even if your mark is not registered there. For the Paris Convention, each member country must extend the same protections it gives its own nationals for covered intellectual property, including trade marks to nationals of other member countries. There are over 170 signatories to the Paris Convention, so chances are, you would be able to claim that you have an earlier mark or existing right under the Paris Convention and as such bar someone else from registered a similar or identical mark.
While claiming an earlier mark or existing right under the Paris Convention could be useful, if you must oppose the registration or enforce your rights in relation to a mark that is identical or similar to your own, it would be stronger protection to have an existing registration in that country. Many proprietors may not register their marks in all the countries in which their products and/or services are sold. One reason for this is the costs associated with registering your mark in different countries.
Recently, the Trade Marks (Amendments) Act 2021 was passed in the Senate. These amendments are meant, amongst other things, to bring into force the Madrid Protocol in Jamaica. The Madrid Protocol is a treaty, whereby signatories agree to allow international applications to be registered in their country once the applicant has designated that country as a country in which they wish to file an application. The Madrid Protocol is touted as “a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 124 countries. Modify, renew or expand your global trademark portfolio through one centralized system” by the World Intellectual Property Organization (“WIPO”)
The Madrid Protocol, will allow entitles and individuals who are nationals of Jamaica, domiciled in Jamaica or have a real and effective commercial or industrial establishment in Jamaica, to file a national application to register a trade mark, and simultaneously select other signatory countries in which it wishes to file. In other words, local brands would be able to use the Madrid system to file an application in Jamaica, and simultaneously select other countries in which to file applications. Different countries may require that the applicants appoint a local agent to handle and receive notices about the applications. Even if an applicant must select a local agent and pay the agent fees for monitoring the application, the Madrid Protocol may still be more cost effective, in that not as high level of legal fees are expended. The Trade Marks (Amendments) Act 2021, currently does not require an foreign applicant to designate a local agent in Jamaica although many members of the local Bar have pressed for this.
While it is arguable that the Madrid Protocol may benefit some local companies, many local practitioners have commented on the lack of requirement for foreign applicants to appoint local agents. Under the current trade mark registration system in Jamaica, foreign applicants must have an address for service in Jamaica. Under the Madrid system, foreign applicants may appoint local agents if they wish. This means that foreign applicants could by-pass having to pay local attorney fees, while other jurisdictions have made it mandatory for a local agent to be appointed. The government may very well be losing revenue, as it collects income tax and General Consumption Tax from legal fees charged locally.
Additionally, under the new regime, if the Registrar of Trade Marks does not issue a refusal to register a mark within 18 months, the mark will automatically be registered. There are some concerns that there may be a barrage of applications from foreign applicants, which ought not to be registered but are registered nonetheless because of administrative oversights. Under the current system, trade marks are not automatically registered, and must be published to the public, who have 2 months from the publication to object to applications.
Once an applicant has designated the various countries that it is desirous of filing in, the applicant would thereafter have to pay the various fees which are then sent to WIPO. It is important to point out, however, that if a country is selected, it does not mean that the mark will be automatically registered. The application still has to undergo the national application process, and can be refused on many grounds, such as an existing mark that is identical or similar, or that the mark does not meet the requirements of a trade mark.
Additionally, coverage in the other member countries is not automatic. The applicant must select the various countries and pay the associated fees. The Madrid Protocol will not have retroactive effect where previously registered marks in Jamaica, are not automatically protected in the member countries. For already existing marks, new applications under the Madrid system will have to be filed and the applicant will have to select the relevant countries.
The Madrid Protocol will make it easier for applicants to make their applications in other jurisdictions. An applicant may be tempted to file as many applications in as many countries as they can to broaden their protection. However, an applicant should be mindful that many jurisdictions have use requirements, whereby trade mark owners must use their marks in relation to the goods and services which they are registered. If an owner does not use their marks, it is open to revocation and if another person wishes to use the mark, they can file applications to have the mark revoked based on non-use. In some jurisdictions, in order to renew the marks, an owner has to prove use. Therefore, a trade mark owner should not make applications for marks in countries where they do not intend to use it.
Helen Liu is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Helen may be contacted via Helen.Liu@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.