General trademark information of Jamaica

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

However, a prior user with sufficient use may be able to stop the applicant under common law through a passing-off action.
Use of an unregistered mark for any goods or services is legal.

No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

The benefits of registering a trademark include the following:

it provides prima facie evidence of ownership and validity;
it provides regional, national, and/or local protection;
it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
it allows the registrant access to bring actions in particular courts;
it helps to deter others from unlawfully using the trademark;
it provides a defense to infringement;
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it confers the ability to recover maximum monetary damages for infringement;
it encourages licensees and provides the opportunity to generate royalties through licensing;
it allows for the detention of counterfeit goods by customs at the ports of entry.
The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Jamaica.

II. Pre-Filing

A. Registrable Trademarks
The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
words;
names;
devices;
certain three-dimensional shapes;
colors;
slogans;
sounds
smells (olfactory trademarks)
trade dress/get-up;
holograms;
motion;
taste;
touch.

The special requirements for the registration of three-dimensional shapes are:
representation of the mark in high resolution (preferably JPEG) format.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for a three-dimensional mark shall contain: (1) a graphical representation; (2) a photographic reproduction; or (3) a computer-generated image of the mark in three-dimensional format which shows multiple views of the mark from different perspectives.

The special requirements for the registration of colors are:
description of the color along with a specimen of same.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for a color mark shall contain a written description of the color or colors and a reference to an internationally recognized color identification system.

The special requirements for the registration of sounds are:

The definition of the word "sign" under the Trade Marks Act does not appear to exclude auditory marks. Please note, however, that for these marks to be registered as trademarks they must be capable of being represented graphically.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for a sound mark shall contain a graphical representation of the sound that shall include the musical score or a written description of the sound and an audio file of the sound.

The special requirements for the registration of smells are:
The definition of the word "sign" under the Trade Marks Act does not appear to exclude olfactory marks. Please note, however, that for these marks to be registered as trademarks they must be capable of being represented graphically.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application of a smell mark shall contain a written description of the scent and may contain the chemical formulation that creates the scent.

The special requirements for the registration of trade dress are:
representation of the mark in high resolution (preferably JPEG) format.

The special requirements for the registration of holograms are:
The definition of the word "sign" under the Trade Marks Act does not appear to exclude holograms. Please note, however, that for these marks to be registered as trademarks they must be capable of being represented graphically.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for registration of a hologram mark shall contain a video file and a graphic or photographic reproduction containing the views necessary for sufficiently identifying the holographic effect in its entirety.

The special requirements for the registration of motion are:
The definition of the word "sign" under the Trade Marks Act does not appear to exclude motion. Please note, however, that a mark must be capable of graphical representation in order for it to be registered as a trademark.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for registration of a motion mark shall contain a video file and a series of graphical images that sequentially represent the motion with a written description of the movement, provided that the Registrar allows the filing as a series of marks or is of the view that the various images represent one mark.

The special requirements for the registration of taste are:
The definition of the word "sign" under the Trade Marks Act does not appear to exclude gustatory marks. Please note, however, that for these marks to be registered as trademarks they must be capable of being represented graphically.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for registration of a taste mark shall contain a written description of the taste and may contain the chemical formulation that produces the taste.

The special requirements for the registration of touch are:
The definition of the word "sign" under the Trade Marks Act does not appear to exclude tactile marks. Please note, however, that for these marks to be registered as trademarks they must be capable of being represented graphically.
Under the new Trade Mark (Amendment) Rules 2022 (pending implementation), an application for a touch mark shall contain a written description of what the mark feels like, with a clear and unambiguous description of its touch characteristics.

Marks registered in black and white or grayscale are construed narrowly to protect the mark as registered and not in other color combinations. 

A mark that is registered in black and white or grayscale that is used in color may not be sufficient to maintain the black and white registration.

In addition to regular trademark registrations, the following types of trademarks are registrable:

collective marks;
certification marks;
well-known marks 
(The proprietor of a well-known mark is entitled to protection under the Paris Convention and is entitled to restrain by injunction the use in Jamaica of a trademark that is (or the essential part of which is) identical with or similar to the proprietor's mark in relation to identical or similar goods or services, where the use of the mark is likely to cause confusion. There is no registry for famous or well-known marks.);
service marks.
Retail services are registrable provided that the nature of the retail services is clearly identified and provided that the types of goods connected with the services are indicated, e.g., retail services connected with the sale of [indicate goods or types of goods].

The following are not registrable as trademarks:

marks contrary to moral standards or public order;
generic terms;
names, flags, or symbols of states, nations, regions, or international organizations
(Consent from the relevant authorities is necessary for these to be registered.);
non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
marks that function principally as surnames
(It is registrable as long as it satisfies the criteria of distinctiveness.);
marks that function principally as geographic location names (but not geographical indications or appellations of origin).

Geographical indications (GIs) are protected in this jurisdiction.

GIs are protected by way of:

special laws for the protection of geographical indications or appellations of origin;

trademark laws, in the form of collective marks or certification marks;

laws against unfair competition;

consumer protection laws.

The following products or categories are subject to GI protection in this jurisdiction:

Jamaican Jerk; Jamaican Rum; Demerara Rum.

B. Searching

While conducting a private pre-filing search is not mandatory, it is recommended in that it can:

save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights.

The national office is not accessible online.

C. Use

An applicant benefits from pre-filing use of a trademark.

The benefits of pre-filing use are:

Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

 The first person to use a mark has the ultimate right to such a mark, even if another party subsequently registers it. Prior use of a mark is, however, not a requirement for filing.

When a mark is not registered, use of that mark may provide the following benefits:

Courts may protect unregistered trademarks in some exceptional cases.

Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

Famous and/or well-known marks are protected via the following mechanism(s):

a determination by the court resulting from an action for infringement;

a determination by the court (other than one resulting from an action for infringement).

D. International Treaties

This jurisdiction is a member of the following international treaties relating to intellectual property:

Paris Convention;

Nairobi Treaty;

Madrid Protocol;

Nice Agreement;

Vienna Agreement.

III. Filing

A. Requirements

If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

Joint applicants are permitted in this jurisdiction.

Either actual use or intent to use is required for application.

The following information is required to COMPLETE an application:

name and address of applicant;

state or country of incorporation;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services

(Class headings are no longer permitted.);

official filing fee;

priority claim, where priority of an earlier application is claimed.

While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

name and address of applicant;

state or country of incorporation;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

statement of use;

statement of intention to use;

official filing fee.

The list of goods and services in this jurisdiction may specify:

a list of names commonly used in the trade for the specific goods or services of interest.

 With respect to the specification of goods, on February 4, 2015, the Jamaica Intellectual Property Office (JIPO) issued a practice direction on class headings, which became effective on March 4, 2015. The effect of the practice direction is to prohibit the filing of trademark applications that designate international class headings and/or vague terms as specifications of goods or services. Accordingly, a trademark applicant is now required to provide the specific goods or services for which trademark protection is being sought.

The following number of copies of the trademark must be submitted:

no additional copies need to be submitted other than the original representation of the mark.

Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:

if there is a change of attorney.

In this jurisdiction, the following types of registration are available:

local (e.g., state);

national;

international.

This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.

This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

No (other) multinational regional registrations are available in this jurisdiction.

An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

Applications cannot be filed online.

The official file cannot be accessed online.

Applications are officially searched as to prior trademarks.

Searching takes three months.

B. Priority

If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

C. Classification

This jurisdiction uses the Nice Classification System.

If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

For a multi-class application, the applicant must pay class fees on a per-class basis.

D. Representation

An application to register a trademark may be filed directly in this jurisdiction by:

the applicant, but only if a citizen of or domiciled in the jurisdiction.

a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

The filing particulars of an application are made available to the public.

 However, the details of an unpublished application are not available through general proprietor searches.

The filing particulars are made available to the public:

through publication.

The following application details are made available to the public:

mark;

name of applicant;

address of applicant;

state or country of incorporation of applicant;

citizenship of applicant;

application number;

application date;

goods/services;

priority claim information;

representation of trademark.

 This only occurs after publication, and only if revealed in a clearance search.

B. Examination

Applications are examined in respect of:

formalities: i.e., for compliance with the filing requirements;

classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

clarity: i.e., that descriptions are clear and understandable;

descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;

deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);

conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

The existence of a valid coexistence agreement between the applicant and the cited registrant will be accepted as evidence permitting registration of the application.

(A Letter of Consent will be required.)

This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

The order of the application process is as follows:

examination, publication, registration.

C. Prosecution

Accelerated examination may be requested,

but currently it is at the discretion of the TMO. Under the Trade Mark Amendment Rules 2022 (not yet in force as of this writing), accelerated examination will be available.

A reason for acceleration is not required.

A reason for accelerated examination will not be required under the Trade Mark Amendment Rules 2022, which are pending implementation.

A fee for acceleration is required.

A fee will apply once the Trade Mark Amendment Rules 2022 are in force.

The following rights are established by a pending application:

the filing date of the application establishes a home filing date for purposes of priority;

the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

Opposition is available.

Opposition is conducted pre-grant.

The following can be grounds for opposition:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

the mark is functional;

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark consists of a geographical indication;

the mark is against public policy or principles of morality;

rights in a company name;

unauthorized use of specially protected emblems or national insignia.

An application is published for opposition purposes after formal examination of the application.

The opposition period begins on the following date:

the date of publication of the Trade Marks Journal in which the application appears.

The opposition period ends on the following date:

two months from the date of publication of the Trade Marks Journal in which the application appears.

Anyone may initiate an opposition.

Oppositions cannot be filed online.

E. Proof of Use

Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

An application can be assigned.

A registration can be assigned.

An assignment of an application can be made for a portion of the territory covered by the application.

An assignment of a registration can be made for a portion of the territory covered by the registration.

An assignment of an application can be for some or all of the goods or services listed in the application.

An assignment of a registration can be for some or all of the goods or services listed in the registration.

Goodwill need not be included in an assignment of an application.

Goodwill need not be included in an assignment of a registration.

An assignment document for an application requires:

name of assignor;

address of assignor;

citizenship of assignor;

name of assignee;

address of assignee;

citizenship of assignee;

details of the trademark being assigned;

territory being assigned;

effective date of the assignment;

signature by assignor;

consideration (either actual or nominal)

(The consideration must be the amount agreed to by the parties.).

An assignment document for a registration requires:

name of assignor;

address of assignor;

citizenship of assignor;

name of assignee;

address of assignee;

citizenship of assignee;

details of the trademark being assigned;

territory being assigned;

effective date of the assignment;

signature by assignor;

signature by assignee;

consideration (either actual or nominal)

(The amount does not have to be stated; the expression "good and valuable" consideration is acceptable.).

Legal verification of a written assignment document of an application is required by:

notarization.

Legal verification of a written assignment document of a registration is required by:

notarization.

An assignment of an application must be recorded to be effective.

If the assignment is not recorded within six months of the assignment, the assignee is not entitled to damages in respect of an infringement occurring after the transaction and before the registration. This will not apply if the infringer knew of the assignment.

An assignment of a registration must be recorded to be effective.

If the assignment is not recorded within six months of the assignment, the assignee is not entitled to damages in respect of an infringement occurring after the transaction and before the registration. This will not apply if the infringer knew of the assignment.

B. Licensing

Use of a mark that is the subject of an application cannot be licensed.

Use of a registered mark can be licensed.

In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

 In this jurisdiction the legislation speaks only to the recordal of a licensee.

A license of a registration can be made for a portion of the territory covered by the registration.

A license of a registration can be for some or all of the goods or services listed in the registration.

A license of a registration can be exclusive (only one licensee, with the owner excluded).

A license of a registration can be sole (only one licensee and the owner).

A license of a registration can be non-exclusive (multiple licensees and the owner).

Use by a related company of a registered mark need not be licensed.

A license of a registration can be made with or without a time limitation.

A license document for a registration requires:

name of licensor;

address of licensor;

citizenship of licensor;

name of licensee;

address of licensee;

citizenship of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

territory of the license;

simple signature by licensor (see below for execution requirements)

(Where the licensor/grantor is a company, a representative of the company may simply affix the company seal to the document.).

A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

The license for a renewed registration need not be re-recorded.

Legal verification of a written agreement to license a registration is not required.

C. Other Changes to Trademark Records

The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

deed of assignment, legalized by the respective consulate/apostille

(Deed of assignment, stating the consideration for the assignment in monetary terms, signed by both parties or the assignor alone, and the signatures must be notarized.);

certificate of merger, without further formalities

(certified copy of certificate of merger).

The requirements regarding the recordal of updated addresses on trademark records are as follows:

No documentary evidence is required to update the address.

The requirements for recording liens against trademark records, such as security interests, are as follows:

 Security interests against trademarks are registered in a special registry known as the National Security Interests in Personal Property Registry of Jamaica (NSIPP). The registry was created by the Security Interests in Personal Property Act, 2013. Once it is established that a security interest has been created in personal property under the Act, the following is required for recordation: the particulars of the debtor; the particulars of the creditor; description of the trademark; principal indebtedness, i.e., the amount secured; date when security interest will terminate.

VI. Registration

A. Requirements

A fee is required for issuance of the registration.

The following documentation is required for issuance of the registration:

none.

B. Rights

The following rights are established by registration:

the exclusive right to use the registered trademark;

the right to oppose subsequent conflicting applications;

the right to bring a cancellation action against a subsequent conflicting registration;

the right to sue for infringement against confusingly similar third-party trademark use;

the right to license third parties to use the trademark;

the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;

the right to obtain damages for infringement.

The Roman alphabet is used to represent the official language(s) of this jurisdiction.

A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

never.

The territorial limit of registration is:

Jamaica.

C. Term

The initial term of a registration is:

10 years.

The beginning of the term of a registration is calculated from:

the application date.

D. Marking Requirements

Marking is not compulsory for registered trademarks, but is advisable because:

 it puts the public on notice that the trademark is registered, leaving no scope for a defense that the person did not believe or did not have reasonable grounds to believe that the trademark was registered.

Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

TM;

®.

The use of ® is legally recognized.

The legal consequences of false or misleading marking are:

A person guilty of false marking would be liable to summary conviction before a Resident Magistrate for a fine not exceeding 250,000 Jamaican dollars or to a term of imprisonment not exceeding six months.

VII. Post-Registration

A. Use Requirements

Attack on the ground of non-use is available.

To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 five years from the date of entry of the trademark on the Trade Marks Register.

To satisfy the use requirement, the amount of use:

 the use can be minimal but must be genuine.

Use of the trademark must occur in:

this jurisdiction.

The consequences of a trademark's not being used are as follows:

It can be revoked.

Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

An action for non-use of a trademark can be brought by:

any interested third party.

Non-use can be excused under the following circumstances:

import restrictions;

other government policies;

 proper reasons for non-use. Proper reasons encompass reasons based on the existence of obstacles to use of the trademark unconnected to the trademark owner, for example: force majeure, import restrictions, trade embargo, or government regulations. Whereas circumstances associated with commercial difficulties such as recession or temporary stoppage would not qualify.

Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

filed an action for cancellation of the trademark on the ground of non-use.

Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

Cancellation is available.

The following can be grounds for cancellation:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

the mark is functional;

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark consists of a geographical indication;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith.

There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

Anyone may bring a cancellation action.

Cancellation actions cannot be filed online.

C. Renewal

The following documentation is required for renewal:

none.

The first renewal date of a registration is:

10 years from the application filing date.

Subsequent renewals last for the following period of time:

10 years from the renewal date of the registration.

The renewal pre-payment period is:

no more than the following number of months before the renewal date:

 six months.

There is a grace period for renewing registrations once the renewal date has expired.

The grace period after the renewal date has expired is:

6 months.

The penalty for late renewal is:

a fine.

If the registration is renewed within the grace period, then an additional sum is payable. If the registration is not renewed within the grace period, then the registration will be removed from the Register.

Renewal cannot be effected online.

At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

While there is no official mechanism for recordal, we can notify Jamaica Customs and request that they open a file for the trademark and monitor any activity concerning the mark.

IX. Domain Names

A. Domain Names

Any domain name may be protected as a trademark.

The following approved registrars can register a domain name in this jurisdiction:

Mona Information Technology Services.

Availability of domain names in this jurisdiction can be searched through the following website(s):

Obtain the information from the Mona Information Technology Services: https://www.mona.uwi.edu/mits/

The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.jm

To obtain a domain name under the ccTLD in this jurisdiction, the following is required:

 At the time of filing, current information is to be obtained from Mona Information Technology Services.

Domain name registrations can be assigned.

Information can be obtained from Mona Information Technology Services.

Domain name registrations can be licensed.

Information can be obtained from Mona Information Technology Services.

A domain name registration may be contested in this jurisdiction through the following mechanisms:

a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see        http://www.icann.org/en/help/dndr/udrp).

Information can be obtained from Mona Information Technology Services.

One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:

World Intellectual Property Organization (WIPO).

 Information can be obtained from Mona Information Technology Services.

If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 Information can be obtained from Mona Information Technology Services.

The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

Information can be obtained from Mona Information Technology Services.

An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes.

TRADEMARK OPPOSITION PROCESS IN JAMAICA

I. Availability

A. Pre- or Post-Grant

Opposition is available.

Opposition is conducted pre-grant.

Opposition is available for either all or part of the goods/services covered by a trademark application or registration.

B. International Registrations

This jurisdiction is expected to become a member of the Madrid Agreement and/or the Madrid Protocol. Jamaica's government has conditioned accession on the passage of amendments to the Trade Marks Act and Rules. It is not possible to predict when this will be accomplished. Work on required amendments is in progress.

C. Collective Marks and Certification Marks

Collective marks are registrable. Collective marks are treated like ordinary trademarks but are subject to some special provisions, including the requirement to file regulations relating to the use of the mark prior to the mark's being considered for registration. See Trade Marks Act Section 3 and the First Schedule.

Opposition to an application for a collective mark is available.

Opposition to a registration for a collective mark is not available.

Certification marks are registrable. Certification marks are treated like ordinary trademarks but are subject to some special provisions, including the requirement to file regulations relating to the use of the mark prior to the mark's being considered for registration. See Trade Marks Act Section 3 and the Second Schedule.

Opposition to an application for a certification mark is available.

Opposition to a registration for a certification mark is not available.

II. Effect on Registration Rights

A. Effect on Registration Rights

An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant.

III. Grounds

A. Absolute, Relative and Other Grounds

The following grounds are admissible for opposition:

relative grounds (based on conflicting prior application(s)/registration(s) or based on conflicting prior rights in unregistered marks);

absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, non-distinctiveness, descriptiveness or deceptiveness);

bad faith issues (e.g., wrongful claim to ownership or lack of intention to use);

conflicting copyright or design rights;

rights under Article 6bis of the Paris Convention or the equivalent thereto (notorious or well-known marks);

rights under Article 6septies of the Paris Convention or the equivalent thereto (registration in the name of an agent or other representative of the proprietor of the mark);

rights in a locally registered company name (where the company name is used as a trademark);

rights in a foreign registered company name (where the company name is used as a trademark);

rights under Article 8 of the Paris Convention or the equivalent thereto (trade names) (where the trade name is used as a trademark or service mark);

rights under Article 6ter of the Paris Convention or the equivalent thereto (prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations);

offenses against public policy or principles of morality.

B. First to Use or First to File

In an opposition involving conflicting trademark registrations or applications, a later filing date prevails over an earlier use date (i.e., this is a first-to-file jurisdiction). However, the following conditions must be established: An earlier user would prevail if it is established that his trademark had reputation and goodwill in Jamaica prior to the date of filing of the opposing mark and that use of the opposing mark is liable to be prevented by virtue of the law of passing off. Further, by virtue of the Trade Marks (Amendment) Act, 2013, a registered proprietor cannot stop an earlier user of an unregistered trademark (identical or very similar to his) in relation to goods/services for which it has been continuously used by the person or a predecessor in title if the mark was used before the registered proprietor started using his mark or before his mark was registered. Additionally, the registered proprietor cannot object to that person's being put on the Register for that unregistered trademark in respect of those goods/services. Hence, both marks can coexist on the Register. A trademark that is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trademark would be considered an earlier mark even if it is unregistered or was filed for after the opposing mark. Again, in case of a dispute, it would have to be established that the "well known" mark has a reputation in Jamaica.

IV. Forum

A. Forum

The opposition authority is part of the Trademarks Registry/Office.

V. Costs and Fees

A. To Initiate

The government/official fees for filing an opposition based on a single prior registration are: the same as for an opposition based on multiple prior registrations, i.e., JMD 4,500 (approx. USD 32). An additional USD 32 is required for the filing of evidence in support of the opposition.

The approximate range of attorney fees for filing an opposition based on a single prior registration is: USD 600 to 1,500.

A listing of government/official fees for oppositions can be found online at: http://www.jipo.gov.jm.

The website listing of government/official fees for oppositions is presented in the following language(s): English.

B. Monetary Bonds or Surety from Foreign Opponent

Provisions requiring monetary bonds or other surety from a foreign opponent are as follows: This is in the Registrar's discretion, as outlined in Trade Marks Rule 12(14). There is currently no practice note or form that outlines what the Registrar would deem sufficient for the purposes of security. However, the Registrar may be guided by the Civil Procedure Rules.

VI. Burden of Proof

A. Burden of Proof

The burden of proof is neutral; i.e., both parties must prove any grounds, facts, allegations and defenses on which they rely in the opposition.

VII. Substantive Examination

A. Substantive Examination

The trademark registration process includes an official, substantive examination.

This system includes an official, substantive examination of an application on:

both absolute and relative grounds.

The official, substantive examination of an application is conducted before publication for opposition.

Examination of an application on relative grounds includes an official search for conflicting prior applications and registrations, and the examiner has the right of objection and refusal based on cited marks.

Any official, substantive examination report is not open to public inspection before the end of the official opposition term.

Opposition is not considered part of the official, substantive examination and is decided in a separate proceeding.

An official, substantive examination will not be conducted after an opposition proceeding has been concluded or after an opposition has been withdrawn.

VIII. Standing and Other Opponent Issues

A. Valid Opponent/"Person" and/or "Interested Person" Defined

Standing to oppose extends to:

any person. Legal interest is not required. It is, however, usually a person with a legal interest, i.e., someone with an earlier or similar mark or someone using the mark as a generic term, that seeks to oppose.

For purposes of standing, "person" is defined as:

both natural and juridical persons.

B. On Basis of Grounds

Where opposition is based on relative grounds (i.e., a prior registered or unregistered right), then:

the owner or a licensee of the prior right can use that right as a ground of opposition.

Relevant prior rights need not be locally established rights (e.g., local national registration rights, applicable regional rights or relevant International Registration extensions, or local rights in unregistered marks).

If prior rights are not established locally, prior rights established in other jurisdictions may be sufficient for purposes of establishing standing under the following circumstances: Prior rights may also include: (1) copyright, which is recognized in Jamaica in respect of all members of the Berne Convention; (2) unregistered signs or names used in the course of trade; and (3) marks entitled to protection as well-known trademarks under the Paris Convention. For unregistered signs or names, passing-off actions usually are applicable where the business in question has goodwill associated with reputation in the relevant jurisdiction.

C. Assignees and Licensees

An unregistered assignee of a relevant prior right may be a valid opponent. However, if the assignment is not registered, the assignee will not be entitled to any damages. In infringement proceedings, for example, with respect to acts occurring before the assignment is registered, the assignee may not be entitled to damages or an accounting of profits where the assignment was not registered within six months of the date of the assignment.

A registered licensee of a relevant prior right may be a valid opponent.

An unregistered licensee of a relevant prior right may be a valid opponent. However, without registration of the license, he/she would not be entitled to damages and other benefits in proceedings for infringement.   

D. Concealing Identity of Opponent

An opposition filed in the name of the legal representative for purposes of concealing the identity of the principal is considered validly filed if the opponent meets all the other criteria.

E. Joint Opponents

Two or more opponents may jointly file a single opposition. (If the parties co-own prior rights or if one party is the proprietor and the other the licensee or partial assignee of rights in the mark, this should be allowable. There is nothing in the Trade Marks Act that expressly provides for joint oppositions, and presumably nothing precludes the same. The Trade Marks Rules do not expressly address this scenario. However, where two or more parties oppose the same application, in practice the Registrar has conducted the opposition hearing jointly.)

A parent company and its trading subsidiary may be indicated together as opponents in a single joint opposition.

Two otherwise-unrelated companies may not file a single joint opposition. Although not specifically prohibited by the Trade Marks Act, this is not done in practice, and the Trade Marks Rules and forms appear to accommodate only one opponent. However, the Registrar has conducted a joint hearing where two or more parties have opposed the same application.

F. Foreign Opponent

Oppositions cannot be filed from abroad; they must be filed by a local attorney or an agent with a local address for service.

G. Opponent's Prior Rights and Use

If an opponent relies on a prior registration, the applicant or the opposition authority:

cannot require the opponent to provide proof of use of the earlier-registered mark. However, if the opponent is also alleging use and reputation in respect of the registered mark, the opponent can be put to proof.

IX. Term and Extension

A. Opposition Term: National Applications/Registrations

The system provides a fixed initial term within which an opposition may be filed. The 2013 amendment of the Trade Marks Rules allows for an extension of the initial two-month period after publication in the Trade Marks Journal for any person to file an opposition. Prior to the amendments, it was not possible to extend the two-month period. The extension request must be made prior to the expiration of the initial two-month period.

For national applications, the initial opposition term begins:

on the date that the details of the application are published for opposition in the local official IP bulletin, journal or gazette. This publication is called: the Trade Marks Journal, published by the Jamaica Intellectual Property Office (JIPO). This is not an online publication.

For national applications, the initial opposition term expires the following number of days or months after the date on which the opposition term begins (as mentioned above): 60 days from publication in the Trade Marks Journal. For example, if publication is on September 30, 2018, the opposition term will expire on November 30, 2018.

C. Deadline Not on Normal Business Day

An opposition deadline that does not fall on a normal business day or that falls on a local public holiday or other officially excluded days may be met by action on the next business day.

Normal business days of the week are:

Monday through Friday.

D. Extensions

The initial opposition term is extendable on request before it expires. The request for extension must be made at the following time: prior to the expiration of the initial two-month period. If it is made after the expiration of the period, the Registrar will grant it only if satisfied with the reason given for the delay in making the application.

Extension of the initial opposition term is not available as of right; reasons for the request must be fully explained and considered acceptable.

The applicant's consent is not required for an extension of the initial opposition term. However, the opponent must send a copy of the extension request to the applicant.

After the initial extension, the following number of additional extensions is available: The number of extensions is at the discretion of the Registrar.  

Any additional extension requests are subject to the same requirements as a first extension request.

It is likely that each subsequently requested extension will become progressively more difficult to obtain.

The length of the initial extension is: The length is not specified in the Rules.

The length of each additional extension is: The length is not specified in the Rules.

X. Filing Requirements

A. Minimum Filing Requirements

The minimum filing requirements to initiate an opposition (i.e., to obtain a filing date) are:

opposition form indicating the following information: a Notice of Opposition stating (1) the grounds of opposition and (2) if the registration is opposed on the ground that the mark resembles marks already on the Register, the numbers of those trademarks and their date of publication;

official fee.

The following additional actions or documentation is required to complete the required filing formalities (i.e., to shift the burden of action to the registration applicant) and will be accepted after the opposition deadline has expired:

power of attorney (required only where there is a change of the agent already on record for the opponent. The power of attorney is to be filed in the prescribed form (Change/Authorisation of Agent Form) and need not be notarized or legalized.);

opposition form indicating the following information: A duplicate of the Notice of Opposition with the Statement of Grounds of Opposition must be sent to the applicant.

B. Payment of Official Fees

Opposition fees can be paid using the following payment modes:

money transfer (Bank name and details can be obtained only from the Jamaica Intellectual Property Office, as the details change from time to time.);

cheque or cash.

C. Public Inspection of Documents

Documentation submitted in an opposition is not open to public inspection.

D. Additional Grounds

Additional grounds of opposition may be introduced into an opposition after the opposition has been filed by way of an amendment to the Statement of Grounds of Opposition, which also must be served on the applicant.

The deadline for introducing additional grounds is: There is no specified deadline within which to introduce additional grounds.

E. Representation

The opponent is required to act through a locally authorized representative during the entire proceeding if the opponent is foreign-based.

F. Language and Translations

Opposition documents must be submitted in the following local official language(s): English.

Opposition documents may not be submitted in a language (or languages) other than the one(s) listed above.

XI. Post-Filing Stages and Procedures

A. Sequence and General Considerations

Depending on the jurisdiction, opposition proceedings generally involve a number of stages between the filing of the opposition and the official decision or judgment. Typically, the post-filing stages will require either that alternating actions be taken by one party after the other in consecutive steps or that actions be taken concurrently by both parties.

In this jurisdiction, opposition proceedings require alternating action by one party after the other. There is a general period of two months between each action. The initial two-month period for the filing of the opposition is non-extendable. The subsequent two-month periods are extendable on application by the affected party. In relation to the Counterstatement, which is due two months after the opposition has been filed and served, either party may apply for a "cooling-off period" of a further two months to facilitate settlement. The cooling-off period will be granted by the Registrar upon an application supported by a declaration that the other party has agreed to it. The cooling-off period may be extended by the Registrar for up to six months after the expiration of the two-month period upon application by the applicant supported by a declaration that the opponent has agreed to it. If the applicant does not file the Counterstatement within one month of the expiry of the cooling-off period, the trademark application shall be deemed to be withdrawn.

A full discussion of the opposition stages is beyond the scope of this publication. Please consult a local attorney for specifics about the general sequence of stages from the filing of the opposition until the official judgment or decision and the duration of and requirements for each.

B. Length of Opposition Procedure

The approximate length of time from the filing of an oppostion to an official decision concluding the opposition procedure is: 14 months.

C. Monetary Awards

The opposition authority has the power to make a formal monetary award to the successful party. The award includes the following specific costs, official or attorney fees, or other compensation: The opposition authority may seek security for costs if the opponent resides abroad and may award the successful party costs in the proceedings, including legal costs but not compensation. The opposition authority may also make formal monetary awards to both parties when each has partially succeeded.

To receive a formal monetary award, the successful party in an opposition does not need to file a separate application. There is no requirement under the Trade Marks Rules for the filing of a separate application to claim a monetary award of costs, which leaves it open for applications to be made even orally to the Registrar in any proceedings before him under the Trade Marks Act.

The amount or basis for calculating a typical monetary award is: The amount or basis for calculating a typical monetary award is not prescribed by the Trade Marks Rules, and there is no established practice of claiming monetary awards and, by extension, calculating such awards. Rule 48 provides that "the Registrar may, in any proceedings before him under the Act or these rules, by order award to any party such costs as he may consider reasonable, and direct how and by what parties they are to be paid." This gives the Registrar a very wide discretion to make such awards, although, as a matter of practice, the Registrar may look to the courts for guidance in the calculation of costs.

D. Withdrawal of Oppositions or Applications

Withdrawal of an opposition with or without the agreement of the applicant/registrant to the terms of the withdrawal automatically terminates the proceedings.

Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal can have the following consequences with regard to the award of costs: The Registrar has powers under the Rules in any proceeding before him to award costs to either party. It would be within the discretion of the Registrar whether the applicant is entitled to costs consequent on a withdrawal of the opposition, and this may depend on at what stage during the proceedings the withdrawal is done. If it is done, for example, after the applicant files a counterstatement and evidence or after the hearing has begun, the withdrawal may attract an award of costs if the applicant requests it.

Withdrawal of an opposed application with or without the agreement of the opponent to the terms of the withdrawal automatically terminates the proceedings.

Withdrawal of an opposed application without the agreement of the opponent to the terms of the withdrawal can have the following consequences with regard to the award of costs: The Registrar has powers under the Rules in any proceeding before him to award costs to either party. It would be within the discretion of the Registrar whether the opponent is entitled to costs consequent on a withdrawal of the opposed application, and this may depend on at what stage during the proceedings the withdrawal is done. If it is done, for example, after the opponent files evidence or after the hearing has begun, the withdrawal may attract an award of costs if the opponent requests it.

Withdrawal of an opposition or of an opposed application outside this jurisdiction (with or without the agreement of the other party to the terms of the withdrawal) has no effect on opposition or other proceedings in this jurisdiction.

If the opponent has withdrawn the opposition, the opposition authority cannot reject the opposed application on any of the opposition grounds.

A formal basis is not required for withdrawal of an opposition.

The limitation or restriction of the applicant's goods/services, with or without a written settlement agreement, is commonly a basis for withdrawal of the opposition.

The terms of a settlement agreement need not be disclosed to the opposition authority.

The opposition authority need not approve any settlement reached and/or formal withdrawal of the opposition.

XII. Appeals

A. Availability/Deadline

An opposition decision may be appealed.

The following party or parties may file an appeal: any party to the opposition proceeding.

The deadline for filing an appeal is: 28 days from the date that the Registrar's decision (including a statement of reasons) was sent to the affected party.

B. Forum

There is a single appeal authority, the name of which is: the Supreme Court of Judicature of Jamaica.

The following appeal authority/authorities is/are independent of the Trademarks Registry/Office: the Supreme Court of Judicature of Jamaica.

C. Cost/Monetary Bonds or Surety

The government/official fees for filing an appeal are: JMD 2,000 (approx. USD 15) to stamp the document.

The approximate range of attorney fees for filing an appeal is: Attorney fees can vary significantly depending on the firm/attorney. Fees for filing the appeal can range between USD 500 and 2,000 or more.

The government/official fees for prosecuting an appeal to conclusion are: JMD 2,000 (approx. USD 15) to stamp each document filed.

The approximate range of attorney fees for prosecuting an appeal to conclusion is: Attorney fees can vary significantly depending on the firm/attorney and the time spent on the matter. Fees can range between USD 2,000 and 10,000 or more.

Monetary bonds or other surety may be required of foreign appellants. Security for costs is an application where a defendant gives the court an estimate of its legal costs to defend the claim and asks the court to order the claimant to pay, usually two-thirds of that amount, into court or into an interest-bearing bank account in the joint names of the claimant and the defendant’s attorneys-at-law.

D. Higher Appeals: Availability/Monetary Bonds or Surety

An appeal decision is not final; higher appeals are possible and can be made to: the Court of Appeal and thereafter to the Judicial Committee of the Privy Council, which sits in the UK.

On higher appeal, there are provisions requiring monetary bonds or other surety from a foreign appellant, as follows: Monetary bonds or other surety may be required of foreign appellants.

E. Other Circumstances

Important circumstances of appeal that are not mentioned above include: None.

XIII. Other Issues

A. Subsequent Infringement Proceedings

It is not known whether, in subsequent equivalent infringement proceedings, an opposition decision is binding on the court.

B. Local Requirements/Perspectives

Particular local requirements that are not covered above and that are not common in other jurisdictions or familiar to foreign practitioners include: None.

C. Anticipated Revisions of the Law

Important changes in relevant law are not anticipated in the near future.

XIV. Alternatives

A. Cancellation

There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed).

These procedures are known (or translate into English) as:

revocation;

invalidation.

Revocation usually applies where actions post-registration such as non-use or use in a deceptive manner justify revocation. Invalidity is based on the ground that the registration should not have been granted in the first place, such as that the mark was applied for in bad faith or it did not qualify for registration.

The grounds to initiate a cancellation are:

the mark is descriptive; A registration can be declared invalid on all the absolute grounds including, that the mark is descriptive.

the mark is misleading and/or deceptive; A registration can be declared invalid on the ground that it is misleading or deceptive. It can also be revoked on the grounds that it is likely to deceive or confuse the public on account of its use in relation to the goods or services for which it is registered.

the mark lacks distinctiveness; Invalidation

the mark is generic; Invalidation and revocation. A registration can be revoked on the ground that the mark has become generic.

the mark consists of a geographical indication; Invalidation. Although the Trade Marks Act does not expressly refer to geographical indications a registration is not granted where a mark is solely comprised of a place or country name or where it denotes the origin of the product or service.

the mark is functional; Invalidation

the mark is against public policy or principles of morality; Invalidation

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention; Invalidation

the mark includes a badge or emblem of particular public interest; Or a National symbol. Invalidation.

the mark is used in a misleading and/or deceptive manner; Revocation or Invalidation.

the mark is prohibited in this jurisdiction; The use of the mark is prohibited by any law in Jamaica. invalidation.

the application for or registration of the mark was made in bad faith; Invalidation.

there is an earlier application or registered mark; Invalidation. A registration can be invalidation on any of the relative grounds.

there are earlier use-based rights in an unregistered mark; Invalidation.

the mark is covered by a copyright; Invalidation.

the mark is a company name; A person claiming earlier rights could use this ground if the company name was being used and known as a trademark. Invalidation.

the mark is notorious or well known (Article 6bis of the Paris Convention); Invalidation.

the mark is a trade or business name; A person claiming earlier rights could use this ground if the trade or business name was being used or known as a trademark. Invalidation.

The grounds to initiate a revocation are:

the mark is generic (As a consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered.);

the mark is used in a misleading and/or deceptive manner (by the proprietor or with his consent);

the mark is not used for bona fide purposes in Jamaica in relation to the goods/services for which it is registered within five years prior to the date of an application for revocation and there are no proper reasons put forward by the proprietor for its non-use; or the bona fide use of the mark has been suspended for a continuous period of five years prior to the date of an application for revocation and there are no proper reasons put forward by the proprietor for its disuse.

The grounds to initiate an invalidation are:

the mark is descriptive;

the mark is misleading and/or deceptive;

the mark lacks distinctiveness;

the mark is generic;

the mark consists of a geographical indication;

the mark is functional;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading and/or deceptive manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith;

there is an earlier application or registered mark;

there are earlier use-based rights in an unregistered mark;

the mark is covered by a copyright (or rights in designs);

the mark is a company name (if the company name acquired a reputation by virtue of use in the course of trade);

the mark is notorious or well known (Article 6bis of the Paris Convention);

the mark is a trade or business name that acquired a reputation by virtue of use in the course of trade.

The grounds to initiate the other procedure listed above are:

To compare the grounds for the above procedures to the grounds for opposition, please see Section III. Grounds: A. Absolute, Relative and Other Grounds.

The burden of proof is on both parties to prove the allegations and defenses on which they rely in the cancellation action. Where a registration is being revoked on the basis of non-use, the burden is on the registrant to prove use. If no proof of use is filed, the registrant may be deemed to have withdrawn the registration.

The burden of proof in an opposition is the same as it is for a cancellation. The general rule is that he who asserts must prove. Where the applicant for a revocation or invalidation alleges that the application was filed in bad faith, the burden of proving bad faith lies with the person requesting the revocation/invalidation.

It cannot be said that cancellation or equivalent proceedings are or are not preferable to opposition proceedings in some circumstances, as they seek different results and are not alternatives to one another.

B. Observations and Letters of Protest

There are procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.), and these will be reviewed and result in official objection if well based.

The deadline for raising such objections is: at any time after publication of the application and before the grant of registration.

Such objections must be made to the Trademarks Registry/Office.

The legal representative need not identify his client in such objections. Any person may make observations in respect of the registration of a mark.

The following grounds may be raised in such objections:

the Trade Marks Act does not specify or restrict the grounds on which such objections may be made.

TRADEMARK CANCELLATION PROCESS IN JAMAICA

I. Availability

A. Availability

Cancellation of a trademark is available for:

national marks;

This jurisdiction is not a member of the Madrid System; we have no international marks. However, the Jamaican Government has committed to ratifying the Madrid Protocol by July 2021.

This jurisdiction is not a member of the European Union; we have no European Union Trade Marks.

"Cancellation" is not defined by legislation. The Trade Marks Act, 1999 (the "Act"), does not use the terminology "cancellation" but refers to two actions that are of that effect, being actions for "revocation" and "invalidity." Neither "revocation" nor "invalidity" is defined per se, though the legislation sets out the grounds for each action.

Cancellation actions cannot be filed online.

II. Grounds

A. Absolute Grounds

The following absolute grounds may be raised in cancellation proceedings:

the mark is descriptive;

the mark is misleading and/or deceptive;

the mark lacks distinctiveness;

the mark is generic;

the mark consists of a geographical indication;

the mark is functional;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading and/or deceptive manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith.

B. Relative Grounds

The following relative grounds may be raised in cancellation proceedings:

there is an earlier application or registered mark;

there are earlier use-based rights in an unregistered mark;

the application for or registration of the mark was made in bad faith;

the mark is covered by a copyright;

the mark is a company name;

the mark is notorious or well known (Article 6bis of the Paris Convention);

the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

the mark is a trade or business name;

the mark is a domain name.

C. Grounds Other Than Absolute, Relative or Non-Use

Other than the absolute or relative grounds listed above and/or the non-use grounds listed below, there are no other grounds that may be raised in cancellation proceedings.

D. Non-Use Grounds

Non-use may be raised as a ground in cancellation proceedings. Non-use may be raised in an action for revocation, though not for invalidity.

In relation to cancellation for non-use, "use" is defined as: The Act does not define "use," though it can be discerned from the stated ground for revocation's being "the trade mark has not been put to bona fide use in Jamaica by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use."

The definition of "use" provided above is derived from statute, regulation or administrative rule: the Trade Marks Act, 1999.

Use by a licensee or with the consent of the proprietor constitutes use by the proprietor.

The time frame within which a mark must be used in order to avoid cancellation runs from:

the date of filing of the application for registration.

Counting from the above date, to avoid cancellation for non-use, the mark must be used within: five years prior to the date of application for cancellation for non-use.

There are no consequences to the interruption of use.

E. Multiple Grounds

An application for cancellation may be based on multiple grounds (i.e., on a combination of absolute, relative and non-use grounds). While this is technically true, an application combining absolute, relative and non-use grounds would really amount to a joint application for invalidity and/or revocation.

The advantages of filing an action based on multiple grounds are as follows: If the application fails on the absolute grounds, the Registrar would then be open to weigh the application on the relative grounds.

If an action is based on multiple grounds and the action could be disposed of on one ground, the other grounds will nevertheless be considered. This is really at the discretion of the Registrar or, if on appeal, the court, which could choose (having decided the matter on one ground) not to consider the other grounds. If the decision on the first ground is marginal, the Registrar/court could move on to consider the other grounds.

G. Introduced Later in Proceedings

Additional grounds for cancellation may be introduced at a later stage in the proceedings. The deadline for introducing additional grounds is: within the discretion of the hearing officer or the court.

III. Forum

A. Forum

The forum for cancellation proceedings is the same, regardless of the grounds for cancellation.

Cancellation proceedings based on all grounds may be brought before the following administrative body: the Jamaica Intellectual Property Office, with a right of appeal to the Supreme Court of Jamaica.

The administrative body/bodies listed above is/are not independent of the trademark registry. The Supreme Court is independent of the trademark registry, but the Registrar of Industrial Property is not.

IV. Standing

A. On Basis of Grounds

The following parties have legal standing to apply for cancellation, regardless of the grounds for cancellation:

any interested person. Legal interest is required.

B. Person/"Interested Person" Defined

For purposes of standing, a “person” is defined as:

both natural and juridical persons.

For purposes of standing, an “interested person” is defined as:

someone who believes he is being damaged by the registration;

someone who has filed an earlier, pending application to register a conflicting trademark;

someone who owns an earlier conflicting trademark registration;

someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;

someone who owns rights in a conflicting trademark that were acquired through use;

someone who is a licensee of any conflicting trademark or other intellectual property right;

someone who owns a company name that conflicts with the mark that is the subject of the trademark application;

someone who is of the opinion that the mark was not registrable.

C. Domestic/Foreign Applicant

The legal standing criteria for domestic and foreign applicants are the same, regardless of the grounds for cancellation.

D. Multiple Applicants

More than one applicant may apply jointly for cancellation, regardless of the grounds for cancellation.

E. Infringement Defendant as Applicant

In a court action for trademark infringement, cancellation of the plaintiff's trademark registration may be sought by a defendant.

V. Representation

A. Qualifications

The applicant can choose whether to appoint a representative (attorney, agent or other legal representative) in cancellation proceedings.

The representative must be domestic, i.e., with an office in the jurisdiction.

There are no additional professional qualifications that are required of a representative in cancellation proceedings.

B. Power of Attorney-- Notarization/Legalization Requirements

A signed power of attorney need not be provided to a representative by an applicant in cancellation proceedings.

There are no notarization/legalization requirements for a power of attorney form in cancellation proceedings.

VI. Commencement

A. Timing

Cancellation proceedings that are independent of opposition proceedings may never be commenced before a mark is registered.

B. Deadline

There is never a deadline for bringing cancellation proceedings, regardless of the grounds for cancellation.

C. Statute of Limitations

There is no statute of limitations or acquiescence provision that would prevent cancellation, regardless of the grounds for cancellation.

VII. Partial Cancellation

A. Partial Cancellation

Partial cancellation of a registration is possible, regardless of the grounds for cancellation.

For single-class registrations and for multiclass registrations, it is possible to apply for cancellation of some of the goods either within the single class or within a given class, as appropriate, without applying for cancellation of all of the goods within the class.

VIII. Length of Proceedings

A. Length of Proceedings

The average duration of cancellation proceedings is: two years.

After final arguments have been made and/or oral hearings have taken place, a decision will be rendered within the following time frame: This depends completely on the hearing officer. There is no prescribed time frame.

IX. Costs and Fees to Initiate

A. Costs and Fees to Initiate

The following costs and fees are associated with initiating cancellation proceedings:

attorney fees;

statutory or regulatory fees.

No official fees are refundable if an application for cancellation is withdrawn, regardless of the grounds for cancellation.

If an application for cancellation is based on multiple grounds, no additional official fees are due.

X. Documentation-- Notarization / Legalization Requirements

A. Documentation-- Notarization / Legalization Requirements

The following documents must be notarized in cancellation proceedings, regardless of the grounds for cancellation: Statutory declarations filed by parties to the cancellation proceedings will require notarizing.

The documentation that must be submitted and the procedures necessary to initiate cancellation proceedings are the same, regardless of the grounds for cancellation, and are as follows: One must complete and submit Form TM16 under the Trade Marks Act, accompanied by a statement of case setting out the grounds for revocation or invalidity.

XI. Discovery

A. Interrogatories

No party may request that any other party answer written questions, under oath ("Interrogatories"). The Trade Marks Rules, 2001 (the "Rules"), prescribe that the evidence admitted by the Registrar must be in the form of a statutory declaration or affidavit. The Registrar is also empowered, in any particular case, to take oral evidence in lieu of or in addition to such evidence and shall, unless he otherwise directs, allow any witness to be cross-examined on his statutory declaration, affidavit or oral evidence.

B. Document Requests

No party may request that any other party produce documents in response to written document requests ("Document Requests"). The Rules state that "the Registrar may at any stage of any proceedings...direct that such documents, information or evidence as he may reasonably require shall be filed within such period as he may specify." Thus, a party would have to apply to the Registrar to require another party to produce documents, and the Registrar would prescribe the terms for doing so in each particular case.

C. Depositions

No party may request that one or more witnesses for any other party appear in person to be cross-examined under oath ("Depositions"). A party requiring a witness to be cross-examined on the evidence given in his statutory declaration or affidavit, or orally, would have to apply to the Registrar to do so, and the Registrar would prescribe the terms for the cross-examination of the witness in each case.

XII. Burden of Proof

A. Burden of Proof

The burden of proof can shift to the other party during the course of cancellation proceedings under the following circumstances: Once the party applying for cancellation establishes its case by way of evidence, the burden of proof would shift to the registered proprietor to refute.

XIII. Written Arguments

A. Requirement/Deadline

Written arguments are optional.

There are no deadlines for submitting written arguments in cancellation proceedings. While there are no statutory or regulatory deadlines specified for submitting written arguments in cancellation proceedings, if either party intends to rely on written arguments, the hearing officer will require that they be lodged with the Jamaica Intellectual Property Office prior to the hearing date and also served on the other party.

XIV. Oral Hearings

A. Oral Hearings

Oral hearings are permitted in cancellation proceedings.

The determination of whether oral hearings will take place is made by: The Rules require the Registrar to give a party to any proceedings before him an opportunity to be heard before making any decision on any matter that either is or may be adverse to the party.

XV. Evidence

A. To Establish Absolute Grounds

The following types of evidence may be submitted to establish absolute grounds: evidence that the mark is descriptive or inherently non-distinctive.

Evidence must be submitted to: the Registrar.

Evidence must be submitted by the following deadline: The applicant for cancellation must file its evidence in support within two months of receiving the proprietor's counterstatement to the cancellation proceedings. On receiving the applicant's evidence, the proprietor must file its evidence within two months. Evidence strictly in reply may be filed by the applicant within two months of receiving the proprietor's evidence. No further evidence may be submitted by either party without leave of the Registrar.

B. To Establish Relative Grounds

The following types of evidence may be submitted to establish relative grounds: evidence that the mark infringes an earlier trademark, an unregistered mark that is protected by the law of passing off, an earlier right protected by copyright, or rights in designs.

Evidence must be submitted to: the Registrar.

Evidence must be submitted by the following deadline: The applicant for cancellation must file its evidence in support within twp months of receiving the proprietor's counterstatement to the cancellation proceedings. On receiving the applicant's evidence, the proprietor must file its evidence within two months. Evidence strictly in reply may be filed by the applicant within two months of receiving the proprietor's evidence. No further evidence may be submitted by either party without leave of the Registrar.

C. To Establish Non-Use Grounds

The following types of evidence may be submitted to establish non-use grounds: An allegation of non-use could be supported by survey or market evidence; however, in effect the matter could proceed without such evidence based only on the allegation.

Evidence must be submitted to: the Registrar.

Evidence must be submitted by the following deadline: The applicant for cancellation must file its evidence in support within two months of receiving the proprietor's counterstatement to the cancellation proceedings. On receiving the applicant's evidence, the proprietor must file its evidence within two months. Evidence strictly in reply may be filed by the applicant within two months of receiving the proprietor's evidence. No further evidence may be submitted by either party without leave of the Registrar.

E. Applicant's Proof of Use

The applicant is not required to submit proof of use of the mark on which the cancellation is based.

F. Applicant's Extensions of Time

Extensions of time available for the applicant's submission of evidence are the same, regardless of the grounds for cancellation. Extension is possible for: A reason for the delay must be provided, acceptability being within the discretion of the hearing officer or the court.

Official fees payable to obtain an extension for submitting evidence are as follows: USD 20.

G. Additional Evidence

Additional evidence may be submitted at a later stage in the cancellation proceedings. The deadline for submitting additional evidence is: within the discretion of the hearing officer or the court.

H. Evidence in Reply/Deadline and Extensions

Evidence in reply is mandatory.

Evidence in reply must be submitted by the following deadline: within two months of the filing and receipt of the petitioner/applicant's evidence.

The following extensions of time for the respondent's submissions are available: A reason for the requested extension must be provided and will be allowed within the Registrar's discretion.

The official fees payable to obtain these extensions are: USD 20.

Petitioner can demand that respondent provide additional particulars relating to the respondent's proffered evidence, using the following procedure: by applying to the Registrar for leave.

I. Proof of Respondent's Use

The respondent may submit the following kind of evidence to prove use:

invoices;

catalogues;

evidence of turnover;

packaging;

labels;

price lists;

advertisements;

written statements;

market surveys;

use of the mark on the Internet;

maintenance of a website (The website need not be interactive. However, there must be indication on the website that it is specifically targeted to use of the mark in Jamaica.);

use of the mark on a social media site;

for well-known marks under the Paris Convention not being used in Jamaica, evidence to support the well-known status of the mark, such as proof of use and registration in many countries worldwide.

In assessing whether "use has been made," sufficient use is demonstrated by: The requirement is for "bona fide" or genuine use. Sufficiency is a factor that would be considered only in deciding whether use is genuine. There is no requirement that use must be substantial. Once use is established and if the genuineness of the use is not in question, sufficiency is not a relevant factor.

The following factors are considered when determining whether a mark has been sufficiently used:

the nature of the goods or services at issue;

market characteristics;

the scale and frequency of use of the mark;

export use.

Respondent can demand that petitioner provide additional particulars relating to the petitioner's proffered evidence, using the following procedure: by applying to the Registrar for leave to require the petitioner/applicant to provide additional particulars.

J. Consequences of Failure to Respond

The consequences if a respondent fails to file a response or answer to a petition for cancellation are as follows:

Upon the request of the petitioner, the court, other judicial tribunal or administrative body may enter a default judgment in favor of the petitioner.

The court, other judicial tribunal or administrative body may consider and decide the matter on the merits despite such failure.

XVI. Defenses

A. Acquired Distinctiveness

Acquired distinctiveness can be a valid defense in cancellation proceedings based on absolute grounds. The following criteria are used to establish acquired distinctiveness: evidence from the public/persons in the trade that the mark has become known to signify the goods/services of the respondent.

B. Excusable Non-use

Non-use can be excused, thereby avoiding cancellation, if: the proprietor satisfies the Registrar that he intends to use the trademark before the expiration of the period for which it is registered, or if there are proper reasons for non-use, as referred to in Article 19(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which uses the expression "valid reasons based on the existence of obstacles" to genuine use.

XVII. Monetary Awards/Attorney Fees

A. Basis/Amount of Award

A cancellation decision will not include a formal monetary award against the losing party, regardless of the grounds for cancellation.

B. Attorney Fees

The successful party is entitled to recover attorney fees in cancellation proceedings, regardless of the grounds for cancellation.

The award of attorney fees in cancellation proceedings is:

discretionary.

XVIII. Conclusion of Proceedings

A. Effect of Decision

A decision in cancellation proceedings is valid only between the parties to the proceedings, except that the decision will be valid against all third parties if the proceedings were based on the following grounds:

absolute grounds.

A decision ordering cancellation of a mark takes effect: from the date of the decision.

B. Withdrawal or Termination of Proceeding/Costs

Cancellation proceedings can be terminated by withdrawing the cancellation application, regardless of the grounds for cancellation.

Withdrawal of a cancellation application does not require the approval of the court, other judicial tribunal or administrative body; termination is automatic.

Withdrawal of a cancellation application does not require the approval of the other party to the proceedings; termination is automatic regardless of the grounds for cancellation.

When cancellation applications are withdrawn, the cost of the proceedings is borne by: each party, unless the Registrar makes an order as to costs.

XIX. Appeals

A. Availability/Deadline

A cancellation decision may be appealed.

Appeals of cancellation decisions must be brought before the following deadline: 28 days from the date of the sending of the decision.

B. Forum

Regardless of the grounds for cancellation, appeals are heard by

the following court or other judicial tribunal: the Supreme Court of Jamaica.

C. New Evidence

New evidence may not be submitted on appeal unless with the leave of the Court.

D. Representation/Cost/Awards

The approximate cost range of official fees (in local currency) to file an appeal is: USD 2,000.

Specialist counsel is not required, but is recommended, for an appeal of a cancellation decision.

An appeal decision can include a monetary award against the losing party even if the earlier decision did not include a monetary award. The approximate award, in local currency, would be: dependent on the loss proved by the successful party.

E. Scope

An appeal is limited to points of law. An appeal may be based on a point of law, a finding of fact or the exercise of a discretion by the judge or hearing officer. However, appeals against a finding of fact or the exercise of a discretion will be successful only where it is demonstrated that there was no manifest basis for the finding of fact or that the exercise of discretion was patently wrong.

F. Further Appeals/Alternatives to Appeal

Appeal decisions may be further appealed.

Appeal decisions may be appealed to: the Court of Appeal of Jamaica.

There is no alternative procedure to an appeal.

XX. Consequences

A. Status of Mark After Cancellation

The terminology relating to cancellation proceedings can vary from jurisdiction to jurisdiction. Within jurisdictions, the grounds for cancellation can ultimately influence the legal consequences of the cancellation.

In this jurisdiction, if an applicant is successful in obtaining cancellation, the legal consequences of the cancellation will depend on the grounds for cancellation (see below).

If an applicant succeeds in obtaining cancellation on absolute grounds:

the mark is considered as if it were never registered (referred to locally as invalidation).

If an applicant succeeds in obtaining cancellation on relative grounds:

the mark is considered as if it were never registered (referred to locally as invalidation).

If an applicant succeeds in obtaining cancellation on non-use grounds:

the mark is considered as having been validly registered until the date of the decision to cancel the mark (referred to locally as revocation).

If an applicant succeeds in obtaining cancellation on grounds other than absolute, relative or non-use grounds:

the mark is considered as if it were never registered. Referred to locally as invalidation.

B. Licenses, Assignments, Other Transactions

The consequences for past assignments if a mark is cancelled are: Past assignments of a mark cancelled for invalidity would be of no legal effect, as if the assignments had not occurred; consequently, there could be no reliance on assignments, although there might be liability if a party suffered loss on account of fraud. Past assignments of marks revoked for non-use would remain in effect; consequently, the parties could continue to rely on the transactions.

The consequences for past licenses if a mark is cancelled are: Past licenses of a mark cancelled for invalidity would be of no legal effect, as if the licensing had not occurred; consequently, there could be no reliance on licenses, although there might be liability if a party suffered loss on account of fraud. Past licenses of marks revoked for non-use would remain in effect; consequently, the parties could continue to rely on the transactions.

The consequences for past contracts if a mark is cancelled are: Past contracts relating to a mark cancelled for invalidity would be of no legal effect vis-à-vis the mark, although the contracts could continue to have legal effect if severance were available/possible. Past contracts of marks revoked for non-use would remain in effect; consequently, the parties could continue to rely on the contracts.

XXI. Notification to TM Office

A. Notification to TM Office

There is no requirement to formally notify the Trademark Office following a decision to cancel a mark; cancellation is automatic regardless of the grounds for cancellation.

XXII. Refiling of Identical Mark

A. Refiling of Identical Mark

There are limitations as to when an application to register the mark can be refiled, depending on the grounds for cancellation. An application to register the mark can be refiled only in the case of revocation for non-use.

There are no time limits for refiling following the cancellation of a mark.

XXIII. Collective Marks

A. Collective Marks

Collective marks may be registered in this jurisdiction. A collective mark is defined as: "Collective mark" means a mark distinguishing the goods or services of members of the association that is the proprietor of the mark from those of other undertakings.

The provisions discussed throughout this jurisdictional profile all apply to the cancellation of collective marks.

XXIV. Certification Marks

A. Certification Marks

Certification marks may be registered in this jurisdiction. A certification mark is defined as: "Certification mark" means a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

The provisions discussed throughout this jurisdictional profile all apply to the cancellation of certification marks.

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