The Trade Marks (Amendment) Act (2013), which took effect on August 31, 2013, updated the Jamaica's Trade Marks Act and Rules in several respects including changes in relation to opposition and revocation proceedings, the rights of an earlier user, registration of security interests and the assignability of trademark applications.
Changes in Opposition Proceedings
Prior to the amendments, an applicant had a non-extendable period of two months from the date of receipt of a Notice and Statement of Grounds of Opposition within which to file a counterstatement. This two-month period can now be extended. The potential opponent must seek the extension prior to the expiration of the initial two months outlining the reasons for requiring the extension.
An applicant used to have only two months within which to file his Counterstatement once the Opposition (Notice & Grounds) had been filed and served upon him/representative. However, the 2013 Amendments allow parties to agree to a further two months, known as the "cooling-off period" to facilitate settlement discussions. Further extensions of the cooling-off period for up to six (6) months after the expiration of the initial two-month period are allowed provided the opponent agrees.
The Rules state that the applicant has one month from the expiration of the cooling off period within which to file his Counterstatement failing which the application is deemed to be withdrawn. However, based on the general rules related to extensions, parties can still apply for extensions of time beyond this 6 month-period, once the opponent consents. The granting of such extensions is within the discretion of the Registrar. If further extensions are granted and no counterstatement is filed by the final deadline outlined by the Registrar the application will be deemed to be withdrawn.
Changes in Revocation Proceedings
Prior to the 2013 amendments, a trademark registration was vulnerable to revocation if the mark was not used in Jamaica by the proprietor, or with the proprietor's consent (in respect of the goods/services covered by the registration), within three (3) years after the date of completion of the registration procedure and up to one month before the date of an application for revocation, and there were no proper reasons for non-use.
That period is now five (5) years, which, based on the amended wording of the Trade Marks Act, is counted retrospectively from the date of the application for...