Acts and Agreements
The Trade Marks Act, 1999, 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.
A Trade Mark, therefore, 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”, “Cooyah”, “Reggae Boyz”, “Starfish Oils”, “Ting”.
For the use of NATIONAL EMBLEMS and SYMBOLS [2] in Trademark Applications,Please refer to The Office of the Prime Minister [2]
What does a Trade mark do?
1. A Trade Mark protects 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 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. As the proprietor has exclusive rights of use of the Mark, he can ensure that the Mark is only used upon goods of a certain quality, or services which meet a certain standard. Where he consents to other persons using the Mark under a license agreement, he is still able to ensure that the goods and/or services to which the Mark relates, meet his standard of quality so as to protect his reputation and goodwill in the market.
3. A Trade Mark also forms part of the promotion of the goods and/or services. It is often designed to appeal to the consumer, to create interest and to inspire a feeling of confidence in the goods or services to which it relates.
4. 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.
How Long Does A Trade Mark Last
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.
How Do I Enforce My Rights?
Trade Mark protection is enforceable in the Courts by civil or criminal action. Trade Mark proprietors can initiate civil suits against infringers as well make complaints of incidents of trade mark infringement to the IP Unit of the Organised Crime Division of the Jamaica Constabulary Force for the initiation of a criminal action.
Trade Mark Registration
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 offered by members of a particular association, from those of other undertakings (i.e. any person, company or business entity)
The association is usually the proprietor of the Mark. 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 bearing the Mark have been certified by the proprietor of the Mark and met certain established standards, as set out by the Certifying Body. Certification may be in respect of origin, material, and mode of manufacture of goods or performance services, quality, accuracy or other characteristics of the goods/services being offered.
An example of a Certification Mark is the “Blue Mountain Coffee” mark for which the Jamaica Coffee Board acts as a Certifying Body for coffee producers wishing to use the Trade Mark.
How is a Trade Mark Registered?
i. An application to register a Trade Mark must be filed at the Trade Marks & Designs Directorate, of the Jamaica Intellectual Property Office (JIPO), via form ‘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 acceptable and specific descriptions of the goods and/or services to which the Mark will apply. While we classify goods and services based on the Nice Classification of goods and services. The goods and services must be specific as the Class Headings are not generally acceptable descriptions..
iv. The Mark must fulfill all the requirements under the Trade Marks Act, 1999, Trade Marks Rules 2001 and The Trade Marks Amended Rules 2011, in order for it to be protected as a Trade Mark including as a Collective or Certification Mark.
v. It is recommended that an applicant conduct a preliminary search and examination at JIPO, to ensure that the Mark for the goods/ services being applied for is not identical or similar to an earlier registered Mark for identical or similar goods/services, which would prevent the applicant’s Mark from being registered.
There are two (2) options for conducting the preliminary search:
(a) The applicant or his representative may conduct the search manually at a cost of $1,100.00 per hour or for any fraction of an hour.
(b) The applicant may request that JIPO conduct the preliminary search and provide advice. A Letter requesting same must be used to request this search; the applicant must provide a representation of the Mark and the list of classes and the appropriate goods and/or services. The cost for this search is $4,200.00 per class
Trade mark fees
The Trade Mark fee is payable in two stages:-
i. Upon application: $13,700.00 (application fee include payment for the first class), plus $4,200.00 for every additional class.
ii. Upon acceptance of the Mark for registration:
$17,700.00 for publishing the Mark in the JIPO TMs Journal, and for registration.
For a Certification or Collective Mark, an additional fee of $20,000.00 is required to file regulations governing the use of the Mark.
N.B. Application Fees are Non-Refundable
For a detailed list of the Trade Mark fees, please click here. [3]
Trade Marks Forms
- [Trade Mark Form - 1 [4]
- [Trade Mark Form - 1- Interactive] [5]
- [Trade Mark Form - 1- Sample] [6]
- [Trade Mark Form - 2] [7]
- [Trade Mark Form - 3] [8]
- [Trade Mark Form - 4] [9]
- [Trade Mark Form - 4A] [10]
- [Trade Mark Form - 5] [11]
- [Trade Mark Form - 6] [12]
- [Trade Mark Form - 7] [13]
- [Trade Mark Form - 8] [14]
- [Trade Mark Form - 9] [15]
- [Trade Mark Form - 10] [16]
- [Trade Mark Form - 11] [17]
- [Trade Mark Form - 12] [18]
- [Trade Mark Form - 13] [19]
- [Trade Mark Form - 14] [20]
- [Trade Mark Form - 15] [21]
- [Trade Mark Form - 16] [22]
- [Trade Mark Form - 17] [23]
- [Trade Mark Form - 18] [24]
- [Trade Mark Form - 19] [25]
- [Trade Mark Form - 20] [26]
- [Trade Mark Form - 21] [27]
- [Trade Mark Form - 22] [28]
- [Trade Mark Form - 23] [29]
- [Trade Mark Form - 23A] [30]
- [Trade Mark Form - 24] [31]
- [Trade Mark Form - 25] [32]
- [Trade Mark Form - 26] [33]
- [Trade Mark Form - 27] [34]
Application to Register a Trade Mark (including certification and collective marks).
Application for additional Classes (Where goods and services were placed in incorrect class).
Request to appoint an Agent or to enter a Change of Address for Service.
Notice of Opposition.
Request for Cooling-Off Period.
Application Form for Counter-Statement.
Request to change the details of an Application or a Registration.
Request to Divide an Application.
Request to merge either Applications or Registrations.
Filing of Regulations Governing the Use of a Certification or a Collective Mark.
Application to Amend the Regulations Governing the use of Certification or Collective Mark.
Request for Alteration of a Registered Mark.
Notice to Surrender a Registered Mark.
Notice of a Partial Surrender of the Specifications of Goods and Services for which the Mark is Registered.
Renewal of Registration.
Request for the Restoration and Renewal of a Registration Removed from the Register because of non-payment of the renewal fee.
Application for the Revocation or Rectification of a Registration or for it to be declared invalid.
Application to intervene in proceedings for Revocation or Rectification of a Registration.
Application to Record or Cancel a Registrable Transaction or Memoranda Relating to a Trade mark, but not an Assignment or Licence.
Application to register a Change of Proprietor.
Application for the Registration of a Licensee for a Registered Trade mark.
Application to Remove or Amend a License.
Request for Registrar's General Certificate.
Request for Information about Applications and Registered Marks.
Request for Preliminary Search and Registrar's Advice.
Request to the Registrar for a Statement of Grounds of Decision.
Request for an Extension of Time on an Application.
Request to Registrar to Take Note of an International Registration in the Register.
Application for Registration Resulting from Transformation of an International Registration.
Notice under Schedule 3, Paragraph 10 (2) of the Act: Claim to have registrability of a Mark applied for before determined under the Act (Conversion of Application).