On 27 March 2022, Jamaica became the 110th member state to join the Madrid trade mark system. Jamaica joins fellow Caribbean territories, namely, Antigua and Barbuda, Bonaire, Sint Eustatius and Saba (aka the Caribbean Netherlands or the BES Islands), Cuba, Curaçao, Sint Maarten, and Trinidad and Tobago.
The Madrid trade mark system is an international treaty that allows for international trade mark applications to be filed. An applicant using the system can file one application with the national IP office of a member state to seek trade mark protection in one or more of a number of territories around the world, the territories of interest being designated when the application is filed, or later on as subsequent designations. The Madrid system is a cost-effective way of obtaining trade mark protection in multiple territories.
Trade mark owners can now designate Jamaica as one of the territories covered by an international application. Additionally, it is possible for proprietors of existing international trade mark registrations to seek to extend the coverage of their registrations to include Jamaica by way of a subsequent designation.
Jamaica’s accession follows its passing of the Trade Marks (Amendment) Act in 2021, which came into force on 27 March 2022.
When Jamaica deposited its instrument of accession on 27 December 2021, this was accompanied by a declaration which has the effect of extending the time limit to examine an application and notify the applicant of a provisional refusal of protection from 12 to 18 months. This means that once a Madrid Protocol application designating Jamaica is received by the Jamaica Intellectual Property Office, the Office has a period of 18 months in which to examine the application and, if necessary, issue an examination report (or provisional refusal). If an examination report/provisional refusal is not issued within 18 months, the applicant can assume that protection for the trade mark has been granted in Jamaica.
Jamaica’s amended legislation also suggests that international applications will be advertised for opposition once received, as opposed to following examination.
Wilson Gunn has extensive experience in trade mark matters, including filing and managing international trade mark applications.
If filing a new international application or expanding the coverage of an existing application or registration to include Jamaica is of interest (or indeed any other country that is party to the system), please do not hesitate to get in touch with your usual contact at Wilson Gunn. Alternatively, feel free to contact one of our trade mark attorneys.