Sep 04, 2023 (Newsletter Issue 7/23)Trade Marks (Amendment) Rules to Enter into ForceJamaica's Trade Marks (Amendment) Rules 2022 (rules) are expected to come into effect on 30 September 2023.
An update to the rules was required following the entry into force of the Madrid Protocol in Jamaica on 27 March 2022. The rules outline the procedures to be followed in respect of international trade mark applications designating Jamaica and international applications in respect of which Jamaica is the country of origin.
Notably, the Rules have also been updated to increase official trade mark prosecution fees across the board, introduce a process for requesting the expedited examination and processing of applications, and set out formality requirements for non-traditional trade mark applications.
Official trade mark prosecution fees will be increased for all types of national applications effective 30 September 2023. Applications for registrations filed prior to 30 September 2023 will be processed in accordance with the current fees regime, even if publication and registration fees do not become payable until after 30 September 2023.
Trade mark applicants will be permitted to request expedited examination for new applications. There is also an option to request that other types of applications or requests be processed on an expedited basis upon the payment of an additional fee. The request for expedited examination made at the time of initial filing will result in an almost doubling of trade mark application costs for a single class application. It is not yet known how quickly expedited applications will be examined, but currently the examination of regular applications is generally taking longer than six months to be completed.
With regard to the filing of non-traditional trade marks (three-dimensional shapes, colour, sound, pattern, touch, taste, smell, hologram and multi-media marks, for example), the rules introduce updated formality requirements. They include the acceptance of audio files (to support applications for sound marks), video files (to support applications for hologram marks) and audio-visual files (to support applications for multi-media marks). Applications for smell and taste marks may contain the chemical formulation that creates the scent or taste. Jamaica's Trade Mark Act still calls for the graphical representation of trade marks and this is still also a general requirement. The new rules also require applicants claiming colour as a distinctive feature of a trade mark to specify the colour(s) claimed by reference to an internationally recognised colour identification system (such as the Pantone colour system).
For more information click here.Source: www.ogier.com Jan 27, 2022 (Newsletter Issue 1/22)
Accession to Madrid Protocol
On December 27, 2021, WIPO notified the deposit by the Government of Jamaica of its instrument of accession to the Madrid Protocol.
The said instrument contained the following declarations:
- The time limit for refusal of a trademark is extended to 18 months. Notifications of refusal based on opposition are possible after the expiry of this period.
- Jamaica wishes to receive an individual fee when it is designated in an international application, in a subsequent designation, and with respect to renewal of an international registration. The amount will be determined in a separate notice.
- Any provisional refusal notified to WIPO will be subject to a review by the Office of Jamaica, and the decision taken may be the subject of a further review or appeal before that Office (Rule 17(5)(d) of the Regulations under the Madrid Protocol).
The Madrid Protocol (1989) will enter into force, with respect to Jamaica, on March 27, 2022.
Source: www.wipo.int
Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Hague System
On November 10, 2021, WIPO notifes the deposit by Jamaica of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act enters into force, with respect to Jamaica, on February 10, 2022.
Source: www.wipo.int
Mar 19, 2020 (Newsletter Issue 4/20)Modern Patents and Design Act SoonModern Patents and Design Act Soon
On January 23, 2020, the Jamaican Parliament passed the Patents and Designs Act (New Act). The New Act was passed by the House of Representatives on December 3, 2019 and received approval by the Senate on January 23, 2020. It will repeal the prevailing Patent Act of 1857 and the Designs Act of 1937. The New Act will come into effect by the Governor General’s Assent.
The New Act is a significant step towards a well-needed reform. From a system that has granted patents based on local novelty to one that makes universal novelty a criterion for patentability.
Industrial designs must be new and have individual character in order to obtain registered design protection under the New Act. This concept of ‘individual character’ is new to Jamaica’s design law but is a requirement under the Economic Partnership Agreement (EPA) between the European Community and CARIFORUM states to which Jamaica is a party. Registered designs will be protected for five years with the possibility of renewal for two consecutive five year periods which accords with international norms as TRIPS requires a minimum duration of 10 years while the EPA sets a maximum of 25 years.
For more information, please click hereSource: www.fogadaley.com Apr 15, 2015 (Newsletter Issue 6/15)
New Practice Direction on Class Headings
On February 4, 2015, the Jamaica Intellectual Property Office (JIPO) issued a practice direction on class headings which became effective on March 4, 2015.
The effect of the practice direction is to prohibit the filing of trade mark applications which designate international class headings as specification of goods or services. Accordingly, a trade mark applicant is now required to provide the specific goods or services for which trade mark protection is being sought.
We have been advised that the USPTO acceptable list of goods and services will be acceptable in Jamaica.
Source: Livingston, Alexander & Levy, Jamaica
Mar 06, 2012 (Newsletter Issue 4/12)Official Fees IncreasedThe Intellectual Property Office of Jamaica has increased its official fees effective from March 1, 2012.
To access the amended official fees, please click here
Source: Livingston Alexander & Levy, Jamaica Legal basis is the Trade Marks Act 1999 (as amended) and The Trade Marks Rules, 2001 (as amended).
Member of Madrid Protocol as of March 27, 2022. The Trade Marks (Amendment) Act, 2021 allows for an international application procedure. An international application in respect of which Jamaica is the country of origin may be filed with the JIPO as of March 27, 2022. Equally, Jamaica may now be designated under an International Registration presented by the office of origin to the International Bureau.
Trademark protection is obtained by Registration. Unregistered trademarks may also be protected through use in the course of trade under the common law of “passing off”. Well-known marks are also entitled to protection under the Paris Convention.
Nice classification, 12th edition.
Registrable as trademarks are words (including personal names and surnames), and device marks, letters, numerals, colours, and combinations thereof and shapes of goods.
Collective and certification marks are also protectable.
The Trade Marks (Amendment) Rules, 2022, also set out the filing requirements in respect of a variety of non-traditional trade marks, including, three-dimensional, colour, sound, smell, motion, touch, taste, pattern, hologram and multimedia marks, effective 30 September 2024.
The application is filed at the Jamaica Intellectual Property Office (JIPO).
Foreign applicants do not need a local agent but require a local address for service for national applications. Applicants of international registrations designating Jamaica, do not need to file an address for service in Jamaica, while they do need to file an address for service in Jamaica to respond to a refusal from the Registrar, make a subsequent application or make a request directly to the Registrar in respect of that registration.
Authorization of agent is not required, but if an agent is substituted during the application procedure an authorization of the new agent may be required.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approx. 12 to 18 months. The Trade Marks (Amendment) Rules, 2022, allow trade mark applicants to request the expedited examination of a trade mark application or any other request before the JIPO.
The trademark application is published in the Intellectual Property Journal.
National:The opposition period is two (2) months from the publication of the trademark. A “cooling off” period was introduced by the Trade Marks (Amendment) Act, 2013. The object behind the cooling-off period is to facilitate parties in opposition proceedings who need additional time to negotiate a settlement. Prior to the amendment, there were a non-extendable deadline of two (2) months within which one had to respond to a notice of opposition filed in respect of a published application. Failure to respond in time would leave the Registrar with no choice but to deem the application to be withdrawn. Under the amended law, the Registrar may at any time before the expiration of the two-month period (referred to above) grant a cooling-off period for an additional two months with the consent of both parties to the matter. The Registrar may grant further extensions up to a period of six months following the expiration of the first cooling off period where both parties agree, and the application is made prior to the expiry of the first cooling off period. If the matter has not been settled after the expiration of the subsequent cooling-off period, the applicant has one month to file a counterstatement in response to the notice of opposition and failure to do so will result in the application being treated as withdrawn.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years. Renewal is possible for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereAs of September 30, 2024, the official application trademark fee is USD 93 for a single class and USD 29 for each additional class after the first. These fees include an address for service. The additional official fees upon acceptance and publication are USD 121.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Sep 30, 2023
Ogier, Camana Bay, Cayman Islands
