Trademark registration in Jamaica

Businesses need to pay attention to the procedure for trademark registration in Jamaica in order to be able to distinguish their brand from other competitors. The country of Jamaica is located on the Caribbean Strait, Jamaica has an advantageous geographical position, connected to major markets such as the United States, Canada and Europe. The Port of Kingston is the largest seaport in the Caribbean, playing an important role in shipping and tourism. Jamaica’s economy is quite diversified with major industries such as tourism, financial services, mining, agriculture and manufacturing. Jamaica possesses a unique, diverse and rich culture, attracting visitors from all over the world. Tourism is an important economic sector of Jamaica, contributing greatly to GDP and creating many jobs. The Jamaican government is focusing on developing new industries such as renewable energy, information and communication technology. In order to be able to develop the economy, the Jamaican government strives to improve the investment environment, creating favorable conditions for domestic and foreign businesses. Jamaica has many tax incentives and policies to encourage investment. Therefore, more and more businesses are expanding their business scope here. Viet An Law Firm would like to guide customers through the preliminary procedures for trademark registration in Jamaica through the article below.

Legal basis

• Trademark Law, 1999 (Law No. 32 of 1999, amended to Law No. 38 of 2013)

Definition of trademark in Jamaica

A “trademark” is any sign that can be represented visually and has the ability to distinguish the goods or services of a business (any individual, company, or business entity) from other businesses.

“Signs” include: words (including proper names), drawings, letters, numbers, colors, combinations of colors or combinations of the foregoing, or the shape of goods or their packaging.

Thus, a “Trademark” is a special mark to identify certain goods or services produced or supplied by a particular individual or business entity, for example, “Red Stripe”, “Grace”, “Island Grill”, “Mothers”, etc  “Cooyah” (Fashion Label), “Reggae Boyz” (Jamaica Men’s Football Team), “Starfish Oils” (Starfish Oil), “Ting” (Ting Refreshment).

Benefits of trademark registration

Protection of Property Rights: A trademark protects the owner’s ownership and interest in it. This ensures the owner has the exclusive right to use the trademark to identify its goods and/or services, or authorize others to use it for an upfront fee.

Quality assurance: A registered trademark allows the owner to ensure the quality of goods and service standards to use it. Due to the exclusive right to use the trademark, the owner can ensure that the trademark is only used on goods that meet a certain level of quality or services that meet a certain standard. Even by allowing others to use the trademark under the license agreement, the owner can still ensure that the goods and/or services associated with the trademark meet its quality standards to protect its reputation and reputation in the marketplace.

Promotional tools: A trademark is also part of the promotion of goods and/or services. Trademarks are often designed to attract consumers, generate interest, and build trust in the goods or services involved.

Prevent unfair competition: Trademark protection also limits the efforts of unfair competitors, such as impostors, to use similar special signs to market or promote inferior quality or merchandising goods or services,  differentiated service.

Types of registerable trademarks

In addition to the trademark used to distinguish the owner’s goods or services, there are two other types of trademarks:

Collective Mark:

This is a trademark that distinguishes goods or services offered by members of a particular association, from goods or services of other businesses. The association is usually the owner of this trademark. The main purpose of a collective mark is to indicate that its users belong to a particular association, which usually has regulations that members must follow. Examples of such associations are Charter Institutes, Trade Associations, Educational Institutes, Hotel Chains, or organizations representing Auditors, Engineers, or Architects.

Certification Mark:

It is a mark indicating that the goods or services bearing the trademark have been certified by the owner of the trademark and meet certain standards set by the Certification Body. Certification may relate to the origin, material and method of production of goods or services, quality, accuracy or other characteristics of the goods/services provided.

Trademark registration in Jamaica

To register a trademark in Jamaica, the applicant needs to take the following steps

Apply for registration: File a trademark application at the Trade Marks & Designs Directorate of the Jamaica Intellectual Property Office (JIPO) using form “TM1”.

Form Requirements: The application must contain a clear copy of the trademark being filed for registration, including any color, form, or three-dimensional characteristics.

Description of goods/services

• The application must also contain an acceptable and specific description of the goods and/or services to which the trademark will apply.
• Although JIPO classifies goods and services based on Nice Classification, descriptions of goods and services must be specific because class titles are generally not accepted as descriptions.

Conditions for trademark registration: A trademark must meet all requirements under the Trade Marks Act of 1999, the Trademark Regulations of 2001 and the Trademark Amendment Regulations of 2011 to be protected as a trademark, including a collective mark or certification mark.

Preliminary inspection: Preliminary  checks and due diligence should be carried out at JIPO to ensure that the trademark for the registered goods/services is not the same or similar to the previously registered trademark for the same or similar goods/services, which may cause the applicant’s trademark not to be registered.

There are two options for performing a preliminary examination:

• The applicant or his/her representative may perform the manual inspection themselves at a cost of Jamaicans $1,100.00 per hour or part of an hour.
• The applicant may request that JIPO conduct a preliminary examination and provide counseling. The applicant should use a Letter of Inquiry to perform this check, including drawings of the mark, a list of appropriate classes and goods and/or services. The cost for this examination is Jamaican $4,200.00 per class.

Trademark registration in Jamaica through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Protocol:

• Jamaica accessed the Madrid Protocol on 27 March 2022.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Singles consist of the Madrid Singles of Vietnamese origin and the Madrid Singles with Jamaican designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Jamaica of Viet An Law Firm

• Perform the search and notify you in writing of the results of the trademark search in Jamaica;
• Draft the application and file directly on behalf of the trademark owner and monitor the status of the filing of the trademark application in Jamaica;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Jamaica;
• Assist in monitoring, representing the resolution of objections and feedback with intellectual property representatives carrying out procedures in Jamaica.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to apply for trademark registration in Jamaica, please contact Viet An Law Firm for the most effective support.