Tabling THE TRADE MARKS (AMENDMENTS) ACT – House of Representatives

Minister of Industry, Investment and Commerce, Hon. Audley Shaw. 

The Hon. Audley Shaw Minister of Industry, Investment and Commerce yesterday debated the Trade Marks Act in the House of Representatives which was tabled in Parliament on April 13, 2021.

During his address the Minister stated “I am pleased that the Trade Mark Amendment Bill is finally, before Parliament, and look forward to greater protection for Jamaican products which will foster continued business expansion and create opportunities for Jamaica’s economic growth as a nation”

The main element and implication of the Trade Marks (Amendments) Act is as follows:

Jamaica’s Accession to the Protocol will result in Jamaica being designated for the international registration of marks.

Consequently, a Jamaican applicant may file one application in English with JIPO and thereafter pay a fee to JIPO to obtain an international registration effective in all selected member countries of the Madrid Protocol as requested by the trade mark owner.   This will be beneficial to Jamaican businesses especially exporters of products as well as persons and companies engaged in the creative industries as it will, inter alia, simplify the application process for marks in overseas markets, providing added protection for exported goods and services.   

The following is a draft of his speaking notes:

The Parliament is invited to examine the attached Bill which seeks to amend the Trade Marks Act, 1999 (“the Act”).

In Cabinet Decision No. 19/13, dated 13th May 2013, Cabinet gave approval for Jamaica’s accession to the Madrid Protocol and the issuance of drafting instructions to the Chief Parliamentary Counsel for the requisite amendments to be made to the Trade Marks Act and Rules.

The Trademarks Act 1999 is being amended to allow for the implementation of the Madrid Protocol in Jamaica and accession to the protocol. The Madrid Protocol is included in the Madrid System for the International Registration of Marks which is governed by two treaties:

1.      The Madrid Agreement concerning the International Registration of Marks,1981

2.      The Madrid Protocol relating to the Madrid Agreement adopted in 1989 and entered into force on December 1, 1995.

The Madrid System of international registration of trademarks has two primary objectives: facilitating the obtaining of protection for trademarks and the more efficient management of trademarks and service marks by the owners of the marks or their agent.

The Madrid Protocol allows for the following:

•a centralized filing procedure for international registration of marks through the Jamaica Intellectual Property Office in the English language;

•one set of applicable rules for the international registration of marks; and

•fees being paid in one currency, including one set of administrative fees paid to the World Intellectual Property Organization (WIPO).

Jamaica’s Accession to the Protocol will result in Jamaica being designated for the international registration of marks. This would be beneficial to Jamaica as it will, inter alia, simplify the application process for marks, improve access in global recognition and adjudication.

Consequently, a Jamaican applicant may file one application in English with JIPO and thereafter pay fee to JIPO to obtain an international registration effective in all selected member countries of the Madrid Protocol as decided by the trade mark owner.       

Accordingly, this Bill seeks to make provisions for the Madrid Protocol as it provides for, inter alia, the making of an international application and registration procedures, communication with the international Bureau, effecting of an international registration, recordings of marks in the international register and the administration of fees in respect of the international registration of trade marks.

This Bill therefore seeks to amend the Trade Marks Act to provide for: -

a)      administration locally of the international registration of a trade mark;

b)      setting out the criteria for the international registration of a trade mark;

c)       application procedure of international registration of trademarks;

d)      making provision for the opposition procedure for the international registration of a trade mark; and

e)      administration of fees in respect of the international registration of trade marks.

The Bill is definitely a move in the right direction for creating an enabling environment for Jamaican businesses in recovering stronger and faster in the current economic climate.

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