It is often said that imitation is the sincerest form of flattery; but is this applicable in the world of trade marks? The answer is no.
It is neither permissible nor advisable to imitate a brand’s design or logo in the creation of a similar product because you like the style of the original. This caution applies whether the mark is registered or unregistered.
Registered Marks
A registered mark is governed by the Trade Marks Act of Jamaica 2001. It defines a trade mark as a “sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking.” The registration of a mark under the Act confers on the proprietor the right to exclusive use of the mark and any use without his permission is an infringement of those rights.
To that end, a person infringes a registered mark where he uses, in the course of trade, a sign which is
- identical to the registered mark in relation to goods or services which are identical to those for which the registered mark is used;
- likely to deceive or confuse the public because the sign is either identical or similar to the registered mark and used in relation to similar goods or services; or
- identical or similar to the registered mark in relation to goods or services which are not similar but which has a reputation in Jamaica and the use of the sign takes unfair advantage of or is detrimental to the distinctive character or the reputation of the trade mark.
While it may be obvious that using an identical mark for identical products amounts to trade mark infringement, it is worth mentioning that, it is equally trade mark infringement to use a similar mark for similar goods or services. Therefore, it is not a defence to trade mark infringement to claim that minor changes have been made to a mark. The question is whether the mark is capable of deceiving the public into believing that both marks are related to products from the same brand.
The law infers that the use of an infringing mark amounts to fraud on the public as much as on the proprietor of the mark. This is because the infringing party is benefitting from the status that the mark has in the market and unfairly acquires profits by associating his product with that of another.
Unregistered Marks
Imitation resulting in the likelihood of confusion and possible fraud on the public is possible even when a mark is unregistered. Even where a trade mark is not registered, a party can still take legal action for passing off against another party if the imitation is likely to confuse consumers about the source of the goods or services.
An action for passing off allows the original brand to protect its reputation and prevent misleading representations that could harm its business. To prove the tort of passing off, the proprietor must provide evidence of goodwill, misrepresentation and damage.
The party complaining of passing off must prove that:
- its goods or services have acquired a reputation that consumers recognise and associate with its brand;
- the other party’s product or branding is deceptively similar; and
- they have suffered or are likely to suffer harm due to public confusion or misrepresentation, which could result in loss of sales, dilution of brand value or reputational harm.
The likelihood of public confusion is often demonstrated by visual, conceptual and/or aural similarities. Due to the similar legal requirements, generally, the same facts which establish a claim for trade mark infringement will also support a claim for passing off.
To protect both the public and the proprietor of the registered mark or the party whose unregistered mark has been passed off, the law provides several remedies. The proprietor/party affected can seek an injunction to restrain the breaching party from continuing to use the infringing mark; claim damages for the loss caused by the infringing mark or request destruction of the infringing products. These remedies are designed to protect the integrity of trade marks and prevent consumer confusion.
While some may view imitation as a form of respect, the potential for consumer confusion and brand dilution remains a pressing concern for businesses and individuals alike. Ultimately, protecting intellectual property—whether registered or unregistered—is crucial for fostering a fair marketplace and preserving brand integrity. As we continue to celebrate our rich cultural and entrepreneurial spirit, understanding the implications of trade mark infringement is essential for all businesses striving to succeed in a competitive environment.
This article was written by Ronaldo Richards and Adalia Nembhard who are graduates of the Norman Manley Law School hoping to be called to the Bar, and reviewed and approved by Amanda Montague, a Partner in the Litigation Department at Myers, Fletcher & Gordon. She may be contacted at amanda.montague@mfg.com.jm or through the firm’s website www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.
