INTELLECTUAL PROPERTY RIGHTS IN JAMAICA
First Renewal Term
Subsequent Renewal Term
The Houses of Parliament (House of Representatives and Senate) and the Jamaica IP Office regulate trademark law and the trademark registry.
The Trademarks Act 1999, as amended by the Trademarks (Amendment) Act 2013, and the Trademarks Rules 2001, as amended by the Trademarks (Amendment) Rules 2011, are the primary laws governing trademark registration and protection in Jamaica.
Ownership of a trademark in Jamaica is determined on a ‘first-to-use’ basis.
Multi-class applications are permissible; however, an additional fee is admissible for each additional classification mentioned.
Jamaica follows the 11th edition of Nice Classification.
Any person may file an opposition against a trademark application within two (02) months following its publication. Once the opposition is filed and received by the applicant, he or she has two (02) months to file a counter-statement. Parties can also mutually agree to a further period of two (02) months, called the ‘cooling-off period,’ for filing the counter-statement.
The term of trademark protection is ten (10) years from the date of filing. Thereafter, registered trademark can be further renewed indefinitely for successive periods of ten (10) years each.
A request for renewal is required to be made to the Registrar in the prescribed form and accompanied by the prescribed renewal fee paid and should be made before the expiry of the registration.
There is no grace period to renew a registered trademark after the date of expiry.
The act provides that a trademark will not be revoked for non-use if use of the mark is resumed or commenced after the expiry of three (03) years, but before the application for revocation is made. However, any such commencement or resumption shall be disregarded unless preparations for the commencement or resumption began before the owner becameaware that the application might be made.
Jamaica is a member of the Paris Convention for the Protection of Industrial Property.
The long-awaited Patents and Designs Act was finally approved by the Senate in Jamaica on 23rd January 2020. This law, once it becomes effective, will repeal the current Patent Act of 1857 and Designs Act of 1937.
A Jamaican patent will last for twenty (20) years from the filing date.
Some of the most significant provisions of the new Act include: A requirement of absolute novelty of inventions will be introduced – conversely, only local novelty is required under the current Act. An invention must satisfy the requirements of novelty, inventiveness, and industrial applicability, to be patentable. Excluded from patentability will be inventions relating, inter alia, to mathematical formulae, plant and seed varieties, methods of surgical or therapeutic treatment and of diagnosis applied to the human body or to the bodies of animals, the human body in all its developmental stages, and scientific theories and aesthetic creations.
The Jamaica Intellectual Property Office will serve as the designated, elected, and receiving Office, and the Registrar will be required to process international applications in accordance with the PCT and to apply the provisions of the Jamaican Act when the national phase of a PCT application begins.
By virtue of the New Act, for the first time, inventors will be able to obtain utility model protection (also known as 'petty patents' or 'minor patents').
An application for a patent may be converted by the applicant, into an application for a utility model any time before the grant or refusal of a patent. Similarly, an application for a utility model may be converted by the applicant, into an application for a patent. A utility model certificate will last for ten (10) years from the date of filing, and utility model applications will not undergo substantive examination as required for patents nor will they be subject to annuities.
Annuities will be payable within ninety (90) days of each anniversary of the filing date falling after the grant of the patent. A further grace period of ninety (90) days will be provided for in the Act upon payment of a late fee. Failure to pay annuities under the Act will result in the patent ceasing to have effect.
The primary legislations dealing with the registration and protection of Industrial designs are The Designs Act No. 32, July 1937, The Designs (Amendment Act) No. 9-75, March 1975, The Designs Rules, September 1937, and The Designs (Amendment) Rules No. 171, December 1983
The Designs Act of 1937 falls below the standards set by the TRIPS Agreement and the Paris Convention.
The Designs Act is administered by the Trade Marks and Designs Directorate of Jamaica Intellectual Property Office (JIPO).
The types of industrial design applications that can be filed in Jamaica include Non-Convention Application and Convention Application.
The application for registration of an industrial design must be filed with the Jamaica Intellectual Property Office. The application must contain the particulars of the applicant, along with three (03) copies of the design itself, showing the different perspective views. The application must state what the design is applied to, and should identify the classes in which registration is sought.
The registered proprietor of a design has copyright in the design for fifteen (15) years from the registration of the design. There are no renewal periods or annuities for designs.
The long-awaited Patents and Designs Act was finally approved by the Senate in Jamaica on 23rd January 2020. This law, once it becomes effective, will repeal the current Designs Act of 1937.
For obtaining registered design protection under the New Act, industrial designs must be new and possess an individual character. This concept of 'individual character' is new to Jamaica's design law, but is a requirement under the Economic Partnership Agreement (EPA) between the European Community and CARIFORUM states to which Jamaica is a party. Registered designs will be protected for five (05) years with the possibility of further renewal for two (02) consecutive terms of five (05) years each, which accords with international norms as TRIPS requires a minimum duration of ten (10) years while the EPA sets a maximum of twenty-five (25) years.
The current Jamaican Copyright Act was enacted in 1993, in the same year that the country acceded to the Berne Convention. Jamaica has been a member state of the WIPO (World Intellectual Property Organization) since 1978.
Jamaica seeks to lead Caribbean countries on copyright-related matters, and the Jamaica Intellectual Property Office (JIPO) is the government agency responsible for both national and regional activities.
The JIPO copyright registration system is voluntary. Registration is not a condition for obtaining copyright protection. Copyright protection is automatic as long as the work qualifies for protection under the Copyright Act.
There is also no requirement for a work to be deposited at JIPO to obtain protection. To secure proof of authorship in the work, creators can mail a copy of the work to themselves (in a sealed self-addressed envelope) by a registered mail through the post-office. The unopened envelope containing a copy of the work can be submitted in Court of Law as evidence linking the work with the person claiming authorship. This an internationally accepted procedure used in countries that are members of the Berne Convention for the Protection of Literary and Artistic Works.
Copyright in literary, dramatic, musical, and artistic works lasts for the lifetime of the author plus ninety-five (95) years after the death of the author.
In cable programmes and broadcasts, copyright lasts for ninety-five (95) years from the end of the year in which the programme was included in a cable programme service or the year in which the broadcast was made.
Copyright in a typographical arrangement of a published edition lasts for fifty (50) years from the year in which the edition gets published first.