The Trade Marks (Amendments) Act 2021 (“the Act”) was enacted in June 2021. The Act is meant to, among other things, bring the Madrid Protocol into effect in Jamaica. The Madrid Protocol is a treaty whereby, inter alia, contracting countries agree to allow international applications to be registered in their country once the applicant has designated that country as one in which they wish to file an application. Contracting Parties include Antigua and Barbuda, Australia, Cuba, Germany, the European Union and now Jamaica.
The Madrid Protocol will allow entities and individuals who are incorporated in or 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 contracting parties in which it wishes to file.
Conversely, this means that entities or individuals in contracting parties may designate Jamaica as one of those countries in which they wish to file an application. This will mean that an entity or individual will file an application in their home country (the “national application”) and indicate all the additional contracting parties they wish to file in (“international registrations”). These applications are then sent to International Bureau of the World Intellectual Property Organisation (the “International Bureau”).
Once an international registration is made which designates Jamaica, the International Bureau will notify the Registrar of Trade Marks at the Jamaica Intellectual Property Office (“JIPO”) that an international registration contains a designation of Jamaica. The Jamaican Registrar will then publish the international registration in the Intellectual Property Journal and proceed to examine the international registration on substantive grounds. This international registration will receive the same application date as the national application.
Any person who opposes the protection of an international registration designating Jamaica should then file a notice of opposition within two months of the date of publication in the Intellectual Property Journal. This deadline is non-extendable. Once two months from the date of the publication has passed, a third party will not be able to oppose the registration of the mark in Jamaica. Where an opposition is filed in respect of the international registration, the Registrar must, before the expiration of eighteen months from the date of notification of the application from the International Bureau, notify the International Bureau of a provisional refusal of protection together with a statement of grounds of provisional refusal. Thereafter, opposition proceedings under the Trade Marks Act, will commence.
Where the Registrar, after the examination period, determines that the trade mark which is the subject of an international registration should not be accepted for registration in Jamaica or can only be accepted with conditions, the Registrar must, before the expiration of eighteen months from the date of notification of the application from the International Bureau, notify the International Bureau of her refusal together with a statement of grounds of provisional refusal.
The owner of the international registration designating Jamaica may respond to the provisional refusal of protection by requesting in writing a review of the decision within two months from the date of the notification of the provisional refusal was sent by the International Bureau to the owner. Where the owner of the international registration designating Jamaica does not respond to the provisional refusal within two months, the designation of Jamaica will be deemed abandoned and the trade mark will not be registered in Jamaica.
If the procedures related to the provisional refusal are addressed and completed, and the Registrar either totally or partially withdraws the provisional refusal, the trade mark will be registered for all of the goods and services, in the case where the refusal was totally withdrawn, and where there was a partial withdrawal, the trade mark will be registered for some of the goods and services, depending on the partial withdrawal.
Where the Registrar has sent a notification of provisional refusal and all the procedures related to the refusal are addressed and completed, and the Registrar decides to confirm the refusal for all the goods and services being applied for, the Registrar will send notice to the International Bureau.
Where after examination, the Registrar finds that there are no grounds for the Registrar to refuse registration, the Registrar must within eighteen months send notice to the International Bureau that protection is being granted to the mark.
Where an international registration designating Jamaica is cancelled by the International Bureau in respect of some or all the goods and services listed in the international registration, the owner can file an application to register the trade mark directly with the Registrar.
The Madrid Protocol is meant to facilitate easier applications of trade marks worldwide. As it is not a requirement for the owner of an international registration to appoint an agent in Jamaica, it would be interesting to see if owners will use Madrid Protocol or if they will continue to liaise with the local practitioners. Each jurisdiction has its unique quirks and local practitioners may be able to point out deficiencies in applications or the application process from the onset so as to avoid oppositions or refusals.
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.
