Intellectual property is much like one’s reputation: you cannot see it, you cannot touch it, but it is an extremely valuable asset that must be jealously guarded. The law on intellectual property governs the use and exploitation of the products of mental and creative labour, granting property rights over intangible assets, such as inventions, literary and artistic works, computer programs and designs. This article touches on one of the most popular types of intellectual property rights—trade marks.
A trade mark may be any graphical representation which is capable of identifying certain goods or services as those produced or provided by a specific person or business entity and distinguishing them from those of others. Its primary purpose is therefore to identify the source of goods, which may provide indications to the consumer as to their quality. In today’s brand-conscious market place, protection of trade marks is thus a key marketing strategy. Popular brands such as “Blackberry”, “Coca-Cola” and “Puma” are all trade marks. However, a trade mark may also be a phrase, such as Nike’s “Just do it” or a sign, such as the bitten apple forming Apple’s logo.
In Jamaica, trade mark protection is governed by the Trade Marks Act 1999 (“the Act”), which came into effect in 2001. The Act grants the registered proprietor of a trade mark the right to the exclusive use and benefit of the mark within Jamaica. Any use of the mark without the proprietor’s consent will constitute an infringement of the trade mark for which legal action can be taken. This may be in the form of a Cease and Desist Letter or the commencement of court proceedings, which may provide remedies such as damages, an account of profits, or injunctions ordering the withdrawal of the infringing goods from the market and for their destruction. The Act also recognizes trade marks as rights of property, with the implication that they may be freely licensed, sold, or otherwise transferred to others, thereby granting significant economic rights to the proprietor.
In order to obtain these rights under the Act, you must first register the trade mark. In Jamaica, this may be done with the Jamaica Intellectual Property Office (JIPO). JIPO has a very useful website and their staff is also very helpful. However, it is always advisable to seek legal assistance from attorneys experienced in intellectual property who may assist with assessing whether your mark is registrable, conducting searches for the availability of the mark, advising you of the classes in which to register the mark and responding to any opposition that may be filed against its registration or issues raised by the Registrar, among other services.
You should also bear in mind that while the Act provides an expansive definition of a trade mark, not all marks are capable of registration. For example, the Coat of Arms and national flag of Jamaica are protected emblems and cannot form part of a trade mark. Another obvious bar to the registration of a trade mark is if it is identical or similar to an earlier registered trade mark which covers similar goods and services. A crucial preliminary step is therefore to conduct a search of the Trade Mark Register at JIPO to determine whether the trade mark is available. Even where a mark is available, it will not be registered if it lacks distinctiveness, as this is a key ingredient of a trade mark.
The general steps involved in the registration process include: conducting an availability search; completing a Form TM1; paying the requisite fees; and submitting the application and fees to the Registrar. The Registrar will then examine whether the application satisfies the requirements of the Act and will also conduct a search to determine whether the mark is similar or identical to any earlier marks. If the Registrar is not satisfied, you will get a minimum of thirty (30) days within which to respond and/or amend the application. If the Registrar is satisfied, then the application will be accepted and you will be notified. Thereafter, the application will be published in the Gazette to give members of the public an opportunity to oppose your application. If no opposition is received, the Registrar will register the mark and issue a Certificate of Registration.
The registration lasts for ten (10) years and may be renewed as many times as you wish for further periods of ten years once you apply for a renewal and pay the attendant fees.
In the event that you have failed to register your trade mark, you may still seek protection against infringement through the common law action of “passing off”. However, this requires you to prove to a court several key elements, including that (1) you have goodwill in the mark; (2) there has been a misrepresentation by the alleged infringer that their goods or services are derived from or connected with yours; and (3) as a result you have or are likely to suffer damage. There is no guarantee that you will be able to persuade a court that all these elements are fulfilled. Therefore, it is better to go the safe route by registering your trade mark, which guarantees you protection.
Your reputation is to you what your trade mark is to your brand. Do not allow it to be tarnished.