In Jamaica, the legislation dealing with trademarks is the Trademarks Act (32/1999 and 25/2001), the Trademarks (Amendment) Act (17/2013) and the Trademarks Rules 2001 (as amended in 2011 and 2013).
The Trademarks Act is modelled on the UK Trademarks Act 1994, and case law interpreting the UK act provides guidance and persuasive precedent in the Jamaican courts.
Jamaica is a member of the World Trade Organisation (WTO) and the Paris Convention on Industrial Property. The Trademarks Act implements Jamaica's obligations under the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention as they relate to trademarks.
An unregistered mark can be protected by virtue of the common law tort of passing off, provided that the mark is in use and has established goodwill.
The Jamaican courts have been guided by the principles outlined in two UK decisions – Erven Warninck BV v J Townend & Sons (Hull) Ltd and Reckitt & Colman Products Ltd v Borden – which set out the essential factors to establish passing off. Reckitt & Colman outlined three criteria:
goodwill; deception due to misrepresentation; and actual or potential damage. Erven Warninck outlined five factors:
a misrepresentation; made by a trader in the course of trade; to prospective or ultimate customers of goods or services supplied by it; which is calculated to, or may in a reasonably foreseeable way, injure the business or goodwill of another trader; and which causes or is likely to cause actual damage to the business or goodwill of the trader by which the action is brought. It is generally felt that there should be continued use for at least three years in order to prove the existence of the goodwill or reputation necessary to establish passing off.
Marks that are pending registration are also protected by virtue of the Trademarks (Amendment) Act, as a trademark application now confers a property right on the owner. Consequently, certain provisions which previously applied only to a registered trademark as an object of property now also apply to a mark pending registration.
Any legal or natural person can apply for and own a registered mark. Applications can be made by a single entity or person or by two or more applicants jointly. In relation to registered partnerships and business names, the application must be made in the name of the individual partners or business owners.
All Jamaica-based applicants are now required to disclose their taxpayer registration number on the application form and all other forms required to be submitted under the trademarks legislation.
No power of attorney is required before filing a trademark application. However, every applicant must have a service address in Jamaica for the purposes of proceedings before the registrar. The service address must be filed on a prescribed form (TM3) which can be signed by the agent and need not be notarised or legalised.
Section 2 of the Trademarks Act defines a 'trademark' as any sign that is capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those of another undertaking. Words (including personal names), designs, letters, numerals, colours, combinations of colours or a combinations of these, or the shape of goods or their packaging, are examples of signs which can be protected as trademarks.
Section 11 outlines the absolute grounds on which a sign may be refused registration and provides that the following are non-registrable:
signs which do not satisfy the definition of a 'trademark'; signs which consist exclusively of the shapes of goods resulting from the nature of the goods or which are necessary to bring about a technical result or...