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What is Trade mark?

The New Trade Marks Act, 1999, which came into force on September 1, 2001, defines a Trade Mark as:-
Any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking (i.e. any person, company or business entity) from those of another undertaking.

A SIGN includes a word, (including a personal name), design, letter, numeral, colour, combination of colours or a combination of the foregoing or the shape of goods or their packaging.

In essence therefore, a Trade Mark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or business entity, for example; “Red Stripe”, “Grace”, “Island Grill”, “Mothers”, “Walkers Wood”, “Reggae Boyz”, “Ting”.

What does a Trade mark do?

1. The most critical role of a Trade Mark is that it provides protection for the proprietor’s right of ownership and interest in the Mark, by ensuring that the proprietor has the exclusive right to use the Mark to identify his/her goods and/or services, or to authorize another to use it in return for payment.

2. A registered Trade Mark enables a proprietor to guarantee the quality of goods and standard of services for which the Mark is used. Due to his/her exclusive rights of use of the Mark, he/she can ensure that the Mark is only used upon goods of a certain quality, or services which meet a certain standard; and even where he consents to other person’s using the Mark under a license agreement he/she is still able to ensure that the goods/services to which the Mark relates, meet his/her standard of quality. In so doing he/she protects his reputation and goodwill on the market.

3. The period of protection of a Trade Mark is for ten (10) years upon registration, and this period can be renewed indefinitely, that is, for every ten (10) years, thereafter.

4. Trade Mark protection is enforceable by the courts of law, which under the Act have authority to block trade Mark infringement.

5. Trade Mark protection also restricts the efforts of unfair competitors, such as counterfeiters, from using similar distinctive signs to market or promote goods or services of inferior quality, or different goods or services.

6. Trade Marks have a crucial function of promoting the marketing and sale of goods and or services. A Trade Mark is often used to stimulate sales, i.e. it is designed to appeal to the consumer to create interest and to inspire a feeling of confidence in the consumer in purchasing the goods or services to which it relates.

7. The Trade Marks’ system helps consumers to identify or purchase a product or service because its nature and quality, which is indicated by the unique Trade Mark, meet their needs.

What kind of Trademarks can be registered?

In addition to a Trade Mark which distinguishes the proprietors goods or services, there are two other categories of marks.

1. COLLECTIVE MARK
This is a Mark distinguishing the goods or services of members of an association which is the proprietor of the Mark, from those of other undertakings (i.e. any person, company or business entity)
The main purpose of this Mark is to indicate that those using it, belong to a specific association, which usually has regulations with which its members must comply.
Examples of such associations are Chartered Institutes, Trade Associations, Educational Institutes, Hotel Chains, or those representing Accountants, Engineers, or Architects.

2. CERTIFICATION MARK
This is a Mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the Mark in respect of origin, material, mode of manufacture of goods or performance services, quality, accuracy or other characteristics.
The main purpose of this Mark is to certify that the goods or services covered by the Mark meet certain established standards, as set out by the Certifying Body.
A prime example of this Mark is The Jamaica Coffee Board, which acts as a Certifying Body for coffee producers wishing to use the Trade Mark “Blue Mountain Coffee”.
 

How is a Trade mark registered?

i. Firstly, an application to register a trademark must be filed at the Trade Marks & Designs Directorate, of the Jamaica Intellectual Property Office (JIPO), on a specific form called TM1.

ii. The application must contain a clear reproduction of the Mark being filed for registration, including any colours, forms, or three-dimensional features.

iii. The application must also contain a list of the goods and/or services to which the Mark will apply.

iv. The Mark must fulfill all the requirements under the Trade Marks Act, 1999, and Trade Marks Rules, 2001, in order for it to be protected as a Trade Mark or other type of Mark (i.e. a Collective or Certification Mark).

v. It is recommended that an applicant conducts a preliminary search and examination at JIPO, to ensure that the Mark for the goods and/or services which he/she is applying for, is not the same as, or similar to a registered Mark for the same or similar goods or services; which would prevent the applicant’s Mark from being registered.

There is a fee charged by the office for conducting a preliminary search and examination; which is $500 per hour or for any fraction of an hour.

The Trade Mark fee is payable in two stages:-
i. Upon an application to register: $3,500 (plus $1,000 for every additional class).

ii. Upon acceptance of the Mark for registration:
$1,320.00 for advertising the Mark in the Jamaica Gazette, and $3,500.00 for registration.

N.B. For a Certification or Collective Mark, an additional fee of $5,000.00 is required to file regulations governing the use of the Mark.

For a detailed list of the Trade Mark fees, please click here.

Kai-Saran Davis, Manager, Trade Marks & Designs[ Email ]

Elease Sibblies, Assistant Manager

Tracey Herdsman, Registration Officer

Herman Dawson, Senior Registration Officer[ Email ]

Mary Montaque, Registration Assistant

Melesa Richardson, Registration Assistant

Stephanie Thomas, Registration Assistant

Andrea Thompson, Registration Officer

Hyacinth James, Secretary

Thelma Walford, Secretary

Kurt Mullings, Data Entry Clerk

Stacy Edwards, Registration Officer

Winston Francis, Vault Attendant