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 trademark 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 trademarks can be risky business.

The Trade Marks Act defines “trademark” 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 trademarks 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 trademarks, including three-dimensional, colour, sound, smell, motion, touch, taste, pattern, hologram and multimedia marks. Not many of those “non-traditional” trademarks 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 trademarks confers a property right on the proprietor of the mark, and in an action for infringement of the trademark, 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 markwith 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 trademark 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 trademark in Jamaica can be maintained indefinitely, subject to the registration being renewed every 10 years.

So what happens when a trademark 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 trademark 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” (MFG) 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 trademarks 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 trademarks as being protected by the “well known trademark” provisions and the common law tort of passing off.

With respect to passing off, MFG would have to provide evidence that (i) goodwill is associated with the firm’s trademarks in connection with its business, (ii) the other law firm’s use of our trademarks 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 trademark 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 trademarks 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 trademark 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. This article is for general information purposes only and does not constitute legal advice.