New Trademark Rules in Jamaica

• Jamaica’s Trade Marks (Amendment) Rules 2022 came into effect on September 30, 2023

• New rules outlining the procedures to be followed in respect of IRs

• Official fee increases for national applications across the board but fees still competitive

• Expedited examination now available upon payment of extra fees

• Updated formality requirements for non-traditional marks

• More non-registrable marks defined, such as signs and symbols relating to Jamaica and other countries

The Jamaican Trade Marks (Amendment) Act came into force on June 30, 2021, making way for the country’s participation in the Madrid Protocol for the International Registration of Marks (the Protocol). Jamaica became a signatory to the Protocol just under six months later on December 27, 2021, and the Protocol took effect on March 27, 2022. 

The corresponding Trade Marks (Amendment) Rules 2022 came into effect on September 30, 2023, enabling locally based applicants to file international applications through the Jamaican IP Office (JIPO), based on a Jamaican filing or registration. Brand holders have been able to designate Jamaica (JM) within their international applications since the Protocol took effect in March. 

The key changes from the new Act and Rules are as follows:

International Registrations (IRs)

The Rules outline the procedures to be followed in respect of both international trademarks designating Jamaica and for which Jamaica is the Country of Origin. The rules also specify certain deadlines in the prosecution process relating to international registrations and set out the process for both the division and merger of IRs, among other aspects. New forms are now in use and replace older forms. 

It is worth reiterating that Jamaica has opted for the 18-month notification period for provisional refusals, while holders of IRs designating JM must respond to refusals within two months. Local agents must be appointed by those holders that wish to respond but do not have a local address for service.

Increases to Official Fees

Official fees for filing and prosecution of national applications increased as of September 30, 2023. By way of an example, the filing fee for a new application is up by around 35% for the first class, and 50% for the additional class as part of the same application. Similar increases apply across the board, but the fees are still very reasonable comparably-speaking, with the application fee for the first class still under USD 100. 

Expedited Examination

The new rules allow for expedited examination of applications upon payment of an additional fee. At around an additional USD 200 for an expedited examination of an application relating to one class, this represents an extra 200% over the standard official filing fee, and further special fees will apply to the processing of an expedited application that passes the examination; it is too soon to know the exact “expedited” timeframes, but it is worth pointing out that currently applications are taking around six months from filing to examination. These amendments require JIPO to periodically publish on its website the current expedited examination period. Electing expedited examination will result in deadlines for the Applicant running from the date of sending rather than the date of receipt.

What Can and Cannot Be Registered?

Non-traditional trademarks now have updated and much more defined formality requirements, such as the acceptance of audio files to support sound mark applications, video files for hologram mark applications, and audio-visual files for multi-media marks. The Rules state that applications for smell and taste marks may include chemical formulas, while applicants claiming color as a distinctive feature of their trademark must specify this by reference to an internationally recognized color identification system, such as Pantone. 

Trademarks which misrepresent or misappropriate the traditional knowledge or traditional cultural expressions of indigenous or local communities in Jamaica are also unregistrable. It is unique within the region to see protection of indigenous rights incorporated into local laws.

Madrid 

The main development from both the Act and the Rules is undoubtedly the provision for Madrid designations, and it remains to be seen how the arrival of these will affect the Jamaican trademark system. The ease in adding “JM” to an international filing should mean an increase in the volume of applications to be processed by the JIPO staff. However, compared to its regional neighbors, Jamaica has historically managed a relatively high volume of matters efficiently, particularly as it is a preferred country for stealth filings. In addition, it has generally set itself apart regionally as an uncomplicated, modern, and efficient system for trademark applicants, without the need for burdensome documentation. Furthermore, a four to six-month examination turnaround is way ahead of many developed countries, and generally the JIPO has managed to find a good balance between the overly narrow or lenient application of grounds for refusal. Local practitioners remain optimistic that any impacts will be minimal.