Sometimes people decide to set up business and open shop without confirming that a name or logo they decide to use is available to be used by them. Marketing efforts, branded items and good intentions could come to nought when we use a trade mark in association with our business and the mark is already being used by someone else or is the subject of prior registration. Be careful – using unregistered trade marks can be risky business.
The Trade Marks Act defines “trade mark” as any sign that is capable of being graphically represented and of distinguishing the goods and services of one undertaking from those of another undertaking. The most well-known types of trade marks are (i) word marks, such as the name of a brand in plain text – letters, words or numbers without graphics, and (ii) logos, such as a symbol or graphic. Notwithstanding that, Jamaican legislation actually provides for other types of trade marks, including three dimensional, colour, sound, smell, motion, touch, taste, pattern, hologram and multimedia marks. Not many of those “non-traditional” trade marks are currently registered in Jamaica, but business owners may want to consider taking steps in that direction. A short jingle, for example, could be an ideal candidate for registration as a sound mark. In any event, Jamaican brands are usually depicted by the traditional word mark and logo, and registration of these brands will provide protection to the brand owner.
The registration of trade marks confers a property right on the proprietor of the mark, and, in an action for infringement of the trade mark, relief by way of damages, injunctions, accounts or otherwise is available to the proprietor, as is the case in the infringement of any other property right. Acts of infringement include someone, without the consent of the proprietor of the mark, using in the course of trade, a sign that is identical or similar to a proprietor’s trade mark with respect to goods or services identical or similar to the goods or services of the proprietor. Such conduct is likely to deceive the public into thinking that the goods are those of the proprietor or, at the very least, that there is some association between the infringing product and the proprietor’s product.
An application to register a trade mark in Jamaica must include the statement of the classes and description of goods and/or services in relation to which the applicant wishes to have the mark registered, and registration of a trade mark in Jamaica can be maintained indefinitely, subject to the registration being renewed every 10 years.
So what happens when a trade mark is not registered?!
The Trade Marks Act provides that the proprietor of a well-known mark which is entitled to protection under the Paris Convention, is entitled to restrain by injunction the use in Jamaica of a trade mark which is identical with or similar to the proprietor’s mark in relation to identical or similar goods or services, where the use of the mark is likely to cause confusion. The Trade Marks Act also expressly provides that nothing in this legislation is to be construed as affecting the law relating to passing off, which is a common law tort that can be used to protect the goodwill associated with unregistered marks.
As an actual example, “Myers, Fletcher & Gordon” is a word mark which was registered on June 4, 2009, and a version of the firm’s logo was first registered on December 8, 2000. However, even if the firm’s name and logo had not been registered, the firm was established as long ago as in 1944 and “Myers, Fletcher & Gordon” was first registered as a business name at the Companies Office of Jamaica in 1963. Lex Mundi is the world’s leading network of independent law firms in more than 100 countries worldwide, and Myers, Fletcher & Gordon is the Lex Mundi member firm for Jamaica. MFG has attorneys ranking annually on international ranking directories including International Financial Law Review IFLR1000, Legal500 and Chambers & Partners. Even if MFG’s trade marks had never been registered and a different law firm in Jamaica tried to use the name “Myers, Fletcher & Gordon” in relation to legal services, MFG would have a solid basis on which to seek to its trade marks as being protected by the “well-known trade mark” provisions and the common law tort of passing off. With respect to passing off, MFG would have to provide evidence to prove that (i) goodwill is associated with the firm’s trade marks in connection with its business, (ii) the other law firm’s use of our trade marks is intentionally or unintentionally a misrepresentation to the public that their services are, or are related to, ours, and (iii) our firm suffered damage as a result of the misrepresentation.
As such, not having registered your trade mark does not necessarily mean that all hope is lost, but, unless you have been using the mark before everybody else, using an unregistered mark can be risky. Registration of trade marks is strongly recommended, and you may have a search conducted at the Jamaica Intellectual Property Office before making an application to register a mark to find out if the trade mark is already registered in Jamaica.
Kimberley Brown is an Associate at Myers, Fletcher and Gordon and a member of the firm’s Commercial Department. She may be contacted at kimberley.brown@mfg.com.jm or through the firm’s website www.myersfletcher.com.
