On The Road To Madrid: Jamaican House Of Representatives Passes The Trade Marks Amendments Act

• Published date: 05 June 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Foga Daley
• Author: Ms Dianne Daley McClure

On June 1, 2021, the Lower House of Parliament passed the Trade Marks (Amendment) Act, 2021, culminating several years of deliberations on whether to accede to the Madrid Protocol.

The Madrid Protocol established 1989 (last amended in 2007) (the "Protocol") together with its companion treaty, the Madrid Agreement of 1891 (last amended in 1979) comprise the Madrid System ("Madrid"). Madrid facilitates the international registration of marks and is administered by the International Bureau of the World Intellectual Property Organization (WIPO).

The Act which was passed without amendments, has as its focus the implementation through legislation of the Protocol, clearing the way for the Government of Jamaica's accession to the treaty.

The amendments encapsulate provisions which make it possible for Jamaican nationals to seek registered protection for their trademarks in jurisdictions that are contracting parties to the Protocol based on a pending application or existing registration in Jamaica. Concomitantly, nationals of other Protocol countries may also 'extend' their marks for protection in Jamaica.

The Act enables the Jamaica Intellectual Property Office (JIPO) to administer the international registration system locally and outlines, among other things, the application procedures, opposition procedures, matters pertaining to publication, fees and so on.

While trademark professionals around the world are au fait with the workings of Madrid, for Jamaican-based businesses, the use of the system will be uncharted territory and expectations of ease of protection may be tempered once the system is up and running. An application for an international registration is to be examined by each national trademark office (usually on substantive grounds only) before being approved for protection in that country and can also be opposed by interested third parties. Hence the Protocol does not promise automatic protection, nor does it eliminate the work of trademark examiners in scrutinizing the application for acceptability under the relevant trademark law or the work of trademark counsel in advising on legal considerations regarding registrability and responding to objections and oppositions which an application may encounter in different jurisdictions.

In addition to providing for international applications under the Protocol, other significant changes include provisions aimed at protecting country brands, traditional knowledge and traditional cultural expressions. More...