There are many ways to safeguard your brand and to protect your brand’s image. One way to do so is through registering, maintaining and enforcing your trademark.

Trademarks are signs or words which distinguish the source of your goods or services from other goods or services. They help customers to trust that the product they are purchasing comes from a known and legitimate source. By giving customers this confidence, it allows them to expect a certain quality and standard, and this allows your brand to develop a reputation in the marketplace.

Unauthorised use of your trademark by a third party can erode your brand’s reputation, especially where the unauthorised use is in relation to inferior goods or services. There are also financial implications. Business profits can slump and your investment in marketing to maintain a good brand reputation could be affected.

Trademark Infringement

A trademark is infringed by a person where there is unauthorised use in the course of trade of:

a) A sign identical to the registered mark in relation to goods or services that are identical with the registered mark;

b) A sign which is likely to deceive or confuse the public because it is identical to the trademark and is used in relation to goods or services similar to the goods or services of the registered trademark;

c) A sign which is likely to deceive or confuse the public because it is similar to the trademark and is used in relation to goods or services that are identical or similar to the goods or services of the registered mark.

d) A sign which is identical or similar to the registered mark in relation to goods or services that are not similar, and the trademark has a reputation in Jamaica and the use of the mark, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the mark.

Counterfeiting

Counterfeiting is one example of trademark infringement. Although counterfeiting is prevalent across the globe, locally, the Jamaica Constabulary Force Intellectual Property Unit between 2022 and 2024 seized $3.35 billion in counterfeit goods.

The Trade Marks Act provides that where a registered proprietor becomes aware of this type of infringement, it may give written notice to the commissioner of customs requesting that he treats the infringing goods, which are expected to arrive in Jamaica, as prohibited goods under the Customs Act.

While this accounts for goods imported into Jamaica which already has the trademark affixed to the product, it is not likely to protect against goods that are imported but do not have the trademark affixed prior to importation, nor would it protect against goods that are manufactured in the jurisdiction.

Genericide

Trademarks should generally be distinctive when they are being registered. This means that the mark is capable of distinguishing goods or services from one business to another. However, when a trademark becomes too common, so that it is used across the board to describe a product or service, it runs the risk of revocation for being generic. For example, “escalator” was a registered trademark, but it lost its trademark protection due to it becoming the common name to refer to moving stairs.

To avoid this, you should carefully consider the trademark which you want to register, monitor the trademark carefully, and enforce your rights against any unauthorised use.

Oppositions

A trademark should not be registered if it infringes an earlier registered mark. You should try to stay aware of new trademark applications in relation to the goods or services you offer so that you can oppose those applications when they arise.

To make the process of managing your marks easier, you can keep a consolidated record of all your trademarks to simplify the monitoring process.

Protecting your brand does not stop with enforcing your intellectual property rights, but enforcing your intellectual property rights will help to maintain your brand’s image and its overall reputation. You should seek legal advice if you become aware of any infringing act or if you need assistance in managing your intellectual property assets.

Joshua Guiness-Brown is an Associate at Myers, Fletcher and Gordon and a member of the firm’s Commercial Department. He may be contacted at Joshua.Guiness-Brown@mfg.com.jm or through the firm’s website www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.