Trademark applications in Jamaica

THE Trade Marks (Amendment) Act, 2021 (“the Act”) was enacted in June 2021. The Act is meant to, among other things, bring the Madrid Protocol into effect in Jamaica.

The Madrid Protocol is a treaty whereby, inter alia, contracting countries agree to allow international applications to be registered in their country once the applicant has designated that country as one in which they wish to file an application. Contracting parties include Antigua and Barbuda, Australia, Cuba, Germany, the European Union and now Jamaica.

The Madrid Protocol will allow entities and individuals who are incorporated in or nationals of Jamaica, domiciled in Jamaica or have a real and effective commercial or industrial establishment in Jamaica, to file a national application to register a trademark, and simultaneously select other contracting parties in which it wishes to file.

Conversely, this means that entities or individuals in contracting parties may designate Jamaica as one of those countries in which they wish to file an application. This will mean that an entity or individual will file an application in their home country (the “national application”) and indicate all the additional contracting parties they wish to file in (“international registrations”). These applications are then sent to International Bureau of the World Intellectual Property Organisation (the “International Bureau”).

Once an international registration is made which designates Jamaica, the International Bureau will notify the registrar of trademarks at the Jamaica Intellectual Property Office (“JIPO”) that an international registration contains a designation of Jamaica. The Jamaican registrar will then publish the international registration in the Intellectual Property Journal and proceed to examine the international registration on substantive grounds. This international registration will receive the same application date as the national application.

Any person who opposes the protection of an international registration designating Jamaica should then file a notice of opposition within two months of the date of publication in the Intellectual Property Journal. This deadline is non-extendable. Once two months from the date of the publication has passed, a third party will not be able to oppose the registration of the mark in Jamaica. Where an opposition is filed in respect of the international registration, the registrar must, before the expiration of eighteen months from the date of notification of the application from the International Bureau, notify the International Bureau of a provisional refusal of protection, together with a statement of grounds of provisional refusal. Thereafter, opposition proceedings under the Trade Mark Act will commence.

Where the registrar, after the examination period, determines that the trademark which is the subject of an international registration should not be accepted for registration in Jamaica or can only be accepted with conditions, the registrar must, before the expiration of eighteen months from the date of notification of the application from the International Bureau, notify the International Bureau of her refusal, together with a statement of grounds of provisional refusal.