New JBDC agro-processing incubator to drive innovation and exports

Kimberley Brown

SOME companies are willing to spend millions on the registration of their trademarks because they understand the value and goodwill that may be associated with a brand represented by a trademark. The intangible assets of an enterprise, including trademarks, can be more valuable than its tangible assets, including land.

A trademark is defined in The Trade Marks Act as meaning any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking. Trademarks protected by intellectual property rights may include the name of a business, and a logo associated with a business. People often identify and choose goods and services in accordance with familiarity with trademarks, including words such as "Red Stripe" or a logo such as the tick associated with Nike. Registration of trademarks provides better protection of the rights attached to trademarks, which includes the right to use a trademark exclusively.

The Madrid System was intended to foster the registration of trademarks in multiple jurisdictions simultaneously.

The Madrid System is governed by the Madrid Agreement Concerning the International Registration of Marks, and the protocol relating to that Madrid Agreement. The Madrid Agreement and the Madrid Protocol are treaties or international agreements by which different countries agree on a centralised system for the registration of trademarks. Under the Madrid System an international trademark application may be filed in one country — with the payment of one set of fees — yet be applicable for registration in more than 100 countries which are the member countries under the system.

Jamaica acceded to the Madrid Protocol in 2021 and, with the coming into effect of the Trade Marks (Amendment) Rules 2022, is now a participant in the Madrid System. Applicants from other jurisdictions are therefore permitted to designate Jamaica as one of the countries in which an application for registration of a trademark should apply. Likewise, Jamaicans are now permitted to make an international application at the Jamaica Intellectual Property Office designating other jurisdictions in which an application to register a trademark should be made.

If a trademark is not registered it may still have some protection, including under the Paris Convention for the Protection of Industrial Property, another international agreement to which Jamaica is a party. The Paris Convention offers protection to trade names and well known trademarks, however that is not generally considered sufficient protection compared to the legal certainty often associated with registration.

A trademark is property that is transferable in a sale agreement or a will, can be valued by a valuation assessment, and can be collateral for a loan. Registration of trademarks which are potential assets should be an essential part of a business' marketing strategy, especially if that business operates or intends to operate in multiple jurisdictions. The aim is to secure the exclusive use of trademarks that are associated with that business, and prevent others from copying trademarks or exploiting the goodwill associated with those trademarks. The Madrid System may assist with the registration of trademarks in jurisdictions of interest.

Notwithstanding, registration under the Madrid System is not automatic and is subject to rules applicable to each jurisdiction. Additionally, an application for registration of a trademark requires consideration of certain factors, including the classes or goods and services in relation to which the trademark is used and should be registered. It may be prudent to seek legal assistance if you intend to make applications for the registration of trademarks in Jamaica and elsewhere.

Kimberley Brown is an attorney at Myers, Fletcher & 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.

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