Significant Trademark Amendments

Jamaica has recently amended its trademark laws. Dianne Daley, Foga Daley, details the changes that are most impactful on IP practice.

Jamaica's Trade Marks Act and Rules, 2001 were recently updated by a series of significant amendments which include:

the establishment of a cooling-off period in opposition proceedings, increasing the period of non-use for which a party can apply to revoke a registration, the preservation of rights of an earlier user, and the treatment of trademark applications as property. Most of these changes were brought about by the Trade Marks (Amendment) Act, 2013, which took effect on August 31, 2013.

The amendments which are considered most impactful on trademark practice in Jamaica are the focus of this report.

Résumé

Dianne Daley, Founding Partner, Foga Daley

Dianne is a founding partner of the boutique law firm of Foga Daley established in 2000, and heads the firm's Intellectual Property (IP) Department. She is a CIDA scholar and has a Bachelor of Laws Honours Degree from the University of the West Indies (UWI) and a Master's Degree in Comparative Law from McGill University specializing in IP and International Copyright.

Her professional memberships include - the International Association of the Advancement of Teaching and Research in Intellectual Property (ATRIP) – the International Trademark Association (INTA) where she is a contributor to the INTA Opposition Guide and a member of the Advertising and Related Rights Sub-Committee of the INTA Public Resources Committee - the Global Advertising Lawyers Alliance (GALA) where she is the exclusive Member for English Commonwealth Caribbean Countries - the Inter-American Association of Intellectual Property (ASIPI) - the Jamaican Bar Association where she chairs the Intellectual Property Committee and - the recently formed Intellectual Property Caribbean Association (IPCA).

She is also Vice Chairman of the Jamaican Copyright Licensing Agency (JAMCOPY) and Company Secretary for the Jamaica Music Society (JAMMS), which are prominent Copyright Management Organizations in Jamaica.

She has taught Intellectual Property Law as an adjunct lecturer for the Master of Laws Programme at UWI and as a guest lecturer at other institutions.

Cooling-off period in Opposition Proceedings

Prior to the amendments, an applicant had a nonextendable period of two months from the date of receipt of a Statement of Opposition within which to file a counterstatement. By virtue of the new Act...