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Apply for your trade mark in Jamaica first

Legal Notes

with PETER GOLDSON
& HELEN LIU

Wednesday, October 04, 2017

In today's global market and with the increase of e-commerce, a business will often look to other markets to sell its products and, as such, may wish to protect its trade marks in as many countries as possible.

A business will sometimes register its marks before using them in the market, and will take steps to conceal them from the public before the products or services are launched.

This could ensure that the resources expended by the business will have maximum impact on consumers, and will deny third parties the opportunity to (a) start using the marks in trade before the business itself launches its products or services in various markets, and (b) make applications to have the mark registered before the business itself files 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's application.

Not only is the registration of a trade mark vital, but the date when 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: 1) 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 2) 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 if 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, the proprietor of a mark will be able to enforce his proprietary rights in Jamaica at the date when the application was filed at JIPO. Although the application process for a trade mark can take up to one year or more, the date of registry entered into the Register is the date when the application was actually filed. This means that the proprietor of a mark has an enforceable right; and any 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 THE FIRST CONVENTION APPLICATION?

Given the information provided 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. When the application is accepted, it 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: 1) in such cases and to such extent as may be prescribed; 2) with the consent of the applicant; or 3) where a 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 that all searches be 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: 1) a word or device (logo); or 2) a proprietor search. A word or device search of the register will reveal all the identical or similar marks entered on the Register. The person conducting this type of search must 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 when an unpublished trade mark was inadvertently revealed 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 financial and human resources on 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 the escalation of 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, apply for registration 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. They are members of the firm's Commercial Department. Peter may be contacted 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.