In today’s global market and with the increase of e-commerce, a business will often-times look to other markets to sell its products and, as such, may wish to protect its marks in as many countries as possible. A business will sometimes register its marks before using them in the market, and more often than not, it is desirous of not having its trade marks revealed to the public before the products or services are launched. This can ensure that the resources that the business has expended have maximum impact on consumers as well as to ensure that third parties do not start to use the mark in trade before the business itself launches its product or services in markets and/or make applications to have the mark registered before the business itself makes an application to register the trade mark. This could result in the third party being able to claim a prior right and bar the business’ application. Therefore, registration of a trade mark is vital, and similarly the date that the application is filed is also significant.
Why is the filing date important
A trade mark application made at the Jamaica Intellectual Property Office (JIPO) is not accepted for registration if:
- it is identical with an earlier trade mark and the goods or services are identical to or similar with the goods or services for which the earlier trade mark is protected; or
- it is similar with an earlier trade mark and the goods or services in relation to which application for registration is made are identical or similar to those for which the earlier trade mark is registered; and there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark.
Therefore, if a third party makes an application for an identical or similar mark, any subsequent application for an identical or similar mark can be opposed by the proprietor and/or refused registration by the Registrar of Trade Marks at JIPO.
Additionally, a proprietor of a mark will be able to enforce his proprietary rights in Jamaica at the date that the application was filed at JIPO. Although the application process for a trade mark can take up to, and in some instances over, a year, the date of registration entered onto the Register is the date that the application was actually filed. This means that a proprietor of a mark has an enforceable right as at the date of the application and any third party or unauthorised use of the mark from the date of application can be seen as infringing the proprietor’s intellectual property rights.
Priority Applications
A priority application is one whereby a proprietor who has duly filed an application for the protection of a trade mark in a Convention country (a member of the Paris Convention, which includes 177 countries) has a right to priority in another Convention country for the purposes of registering the same trade mark for some or all of the same goods or services, for a period of six months from the date of filing of the first such application.
Why use Jamaica as a the first convention application
Given the information above, international businesses should consider Jamaica as the first Convention country in which to file their applications.
When an application for the registration of a trade mark is made, the Registrar of Trade Marks at JIPO examines the application to ensure that the proposed mark satisfies the requirements of the Trade Marks Act and Rules. Where it appears to the Registrar that the requirements for registration are met, the Registrar must accept the application. On acceptance of the application, the application is then published in the Jamaica Trade Marks Journal.
It is only at the stage of publication that the application is made public. The Act states that after the publication of an application for registration, the Registrar must provide information relating to an application to any person who makes a request and must permit him to inspect any documents relating to the application or to any registered trade mark resulting from it. The Act goes further to state that the Registrar shall not publish any documents or communicate any information relating to an application for registration of a trade mark before the publication of the application except:
- in such cases and to such extent as may be prescribed;
- with the consent of the applicant; or
- where person has been notified that an application for registration of a trade mark has been made and that the applicant will, if the application is granted, bring proceedings against him in respect of acts done after publication of the application.
Additionally, Jamaica does not have an online database containing information on applications or existing marks, necessitating all searches being conducted at JIPO. It has been suggested in published articles that if an individual wishes to ascertain details of the latest project of a business, a proprietor search at JIPO can often reveal or hint at new products and/or services that these businesses are launching.
Searches can be conducted manually at JIPO and can either be:
- a word or device (logo); or
- a proprietor search.
A word or device search of the register will reveal all the identical or similar marks entered on the Register. To conduct this type of search, the person conducting the search has to have an inkling of the name of any new product or service that is to be launched. A proprietor search on the other hand will bring up all of a proprietor’s existing trade marks and published applications. There have been instances in the past, where an unpublished trade mark was inadvertently made known through a proprietor search.
JIPO has now clarified the existing rules whereby proprietor searches are conducted by JIPO’s staff upon request. This ensures that unpublished applications are not accessible and inadvertently revealed to the public. The above clearly demonstrates that an international business should consider Jamaica as the first Convention Country in which to file an application since, in doing so, it can preserve the secrecy of an application up until publication. This is not necessarily so in other countries.
Trade marks are important intellectual property. Businesses can expend a great deal of monetary and human resources into the development of their trade marks. Trade marks are identifiers of products and services and can carry a great deal of goodwill with consumers. Consumers usually associate particular trade marks with certain levels of quality and service. Therefore the protection of trade marks is vital. With globalisation and increase in e-commerce, businesses are now able to penetrate many more international markets. These companies and businesses will frequently protect their trade marks in as many countries as possible. To help ensure this protection, they can file an application in a Convention country where the Register is not searchable for unpublished applications. They can then use this application as a priority application and apply for registrations in other countries and receive protection for that application as at the earlier application date. This means that the proprietor can potentially enforce his proprietary rights in all Convention countries before they launch their campaigns, products and services.
Peter Goldson is the Managing Partner and Helen Liu is an Associate at Myers, Fletcher & Gordon, and are members of the firm’s Commercial Department. Peter may be contact via peter.goldson@mfg.com.jm and 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.
