The Trade Mark of Jamaica’s Heritage and Her Future

There has been a lot of talk recently of Jamaica complying with requests  from the International Monetary Fund (“IMF”) to adopt a legislative and regulatory framework that the IMF deems necessary to effectively implement and manage the Extended Fund Facility.  Some of these legislative changes include implementing the Omnibus Tax regime, the Security Interest in Personal Property Act and various amendments to the Companies Act.  It is therefore quite refreshing to highlight and discuss an instance where Jamaica, on its own volition, and through the route of consultation, has decided to become compliant with a Treaty already acceded to in order to further its own cause including nation branding.

On July 16th, 2013 The Trademarks Amendment Act 2013 (the “Act”) was debated and passed.  This Act brings Jamaica to a compliant status with regard to international agreements, such as The Paris Convention for the Protection of Industrial Property and reflects Jamaica’s membership obligations in the World Trade Organization.  On an administrative level the Act gives statutory recognition to the Jamaica Intellectual Property Office (“JIPO”) as the appropriate body responsible for intellectual property in Jamaica rather than the Office of the Registrar of Companies.  The Act also recognizes JIPO’s monthly publication of the Trademarks Journal (the “Journal”) as the official notice of all trademark applications, removals and marks which have been restored to the Register.

As it pertains to substantive changes which bring Jamaica in line with international best practices, there are three of practical importance.  Firstly, a registered trademark may be revoked after five years of non-use instead of three.  Secondly, there is now a cooling off period in relation to proceedings instituted for opposition of a trade mark application.  Where parties agree to apply for a cooling-off period the parties may negotiate and agree on an amicable resolution without the need to file further documents with JIPO or the fear of being prejudiced because time is running out.

Thirdly, a new provision has been included to provide protection for marks that have been in use but not registered.  Previously, trademarks were afforded protection under a ‘first to file’ basis.  This meant that as a general rule, whoever registered the mark first, owned it subject to another party being able to establish, among other things, that they had been using it for an extended period of time and/or that the mark played a role in distinguishing their product or service from that of their competitors.  The new provision prevents the owner of a registered mark from restricting the use of an identical or similar mark by someone who was using it prior to registration.  This gives greater recognition to the rights of persons using unregistered trademarks.

Of particular note in the Parliamentary Debate was the concern regarding nation branding.  The Act clarifies and reinforces the protocol applicants would have to observe if they are desirous of registering trademarks which contain a national symbol.  Such an applicant must first apply to the Office of the Prime Minister for a review and an assessment as to the suitability of that designation being authorized.   The Act authorizes the JIPO office to register such a trademark if approved by the Office of the Prime Minister.  Before such registration, the mark will then face the usual examination standards by JIPO.  The topic of nation branding was then expanded on by Karl Samuda who pressed for the government and private sector to formulate “one universally accepted brand that is going to identify us as a people”.  Mr. Samuda asserted that the concept of Brand Jamaica has eluded Jamaica for years.  He cited the success of Colombia’s 2004 nation branding campaign “Colombia is passion”.  

A 2008 Wall Street Journal article which tracked the success of this campaign cited that 250 companies had licenced the logo which even appeared on the packaging of Colombia’s exported roses.  There was a “Colombia is Passion” bicycling team, which included the then under-23 world champion among cyclist.

As the article points out, rebranding requires “sweeping societal transformations” and not just clever public relations.  Interestingly enough Colombia’s campaign was designed, not only to set itself apart in the global marketplace, but to “have a strong domestic stakeholder engagement”.  Soon after the campaign was launched, public and private organizations joined forces, they started introducing the campaign logo and slogan into their products.  Moreover, “Colombia is passion” has become a source of pride and national identity for Colombian citizens.

The important issue to note from this example is best magnified by Claudia Lacouture, Colombia’s general manager for country image.  Ms. Lacouture says that the campaign is designed to help change the conversation about Colombia.  There can be no doubt that there are many conversations that can be had about Jamaica.  The framework is now reinforced to facilitate the change of that conversation topic to one of our choosing.

This article is for general information purposes only and does not constitute legal advice.

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