JAMAICA
[L.S.]
No. 11 -2013
I assent,
AN ACT to Amendthe Trade Marks Act; and for connected matters.
[3t-ff- dog o/~~.fi-~1.3] BE IT ENACTED by The Queen's Most Excellent Majesty, by and
with the advice and consent of the Senate and House of Representatives of Jamaica, and by the authority of the same, as follows:-
1. This Act may be cited as the Trade Marks (Amendment)Act, Short title. 2013.
2. --{1) Theprovisionsofthe enactmentsspecified inthe firstcolumn Amendment ofenactments
ofthe Schedule are amended in the manner specified in the respective and amendments in the second columnthereof. construction.
~ulc.
(2) Each amendment shall be construed as one with the en- actment specified in relation thereto.
2 [No. ] The Trade Marks (Amendment) Act, 2013
FirstColumn
Provision
Trade Marks Act
Section 2 (1)
SCHEDULE
Amendment ofEnactments
Second Column
Amendment
1. Insert the following definitions in their appropriate alphabetical sequence-
"Convention country" means a country, other than Jamaica, that is a party to the Paris Convention;
"the Paris Convention" means the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised or amended from time to time;
"Trade Marks Journal" means·the Ttade Marks Journal published by the Jamaica Intellectual Property Office; and
"WTO Agreement" means the Agreement establishing the World Trade Organization signed at Marrakesh onApril15, 1994.
· 2. In the definitionof"sign"-
(a) insert a closing bracket immediately after the word ''name"; and
(b) delete the bracket appearingafterthe word ''packaging''.
The Trade Marks (Amendment) Act, 2013 [No. ] 3
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Provision Amendment
Section 6 Delete-
Section 7
Section9
Section 10
(a) from subsection (1 ), the words "registered joint proprietors of a trade mark" and substitute therefor the words "joint proprietors of a registered trade mark";
(b) subsection (2).
Delete the section and substitute therefor the following-
"Application 7. The provisions of of the "registered sections 4, 6, 27,30 and 75 trade mark (which relate to a registered as property" d k b' f provisions. tra e mar as an o ~ect o
property) shall apply, with the necessary modifications in relation to an application for the registrationofa trade mark as they apply in relation to a registered trade mark.".
1. Delete from subsection (S)(b) the word "sign" wherever it appears and substitute therefor in each case the words "the trade mark".
2. Delete from subsection (7) the word "partly" and substitute therefor the word "party".
Insert next after subsection (2) the following as subsection (3}-
" (3) Nothing in this Act shall be construed as entitling the proprietor ofa registered trade mark to--
(a) interfere with or restrain the use by any person of an un-
4 [No. ] The Trade Marks (Amendment) Act, 2013
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Amendment
registered trade mark that is identical with ornearlyresem- bling such registered trade mark, in relation to goods or services in connection with which that person or his pre- decessor in title has continu- ously used that unregistered trade mark, from a date prior to--
(i) the use ofthe reg- istered trade mark in relation to those goods or services bythe proprietoror a predecessor in title ofhis; or
(ri.) the registration of the registered trade mark in respect of those goods or ser- vices inthe name of the proprietor or a predecessor in title ofhis,
whichever is earlier; or
(b) object (on such use, as described in paragraph (a), being proved) to that person being put on the Register for that unregistered trade mark, inrespectofthose goods.".
The Trade Marks (Amendment) Act, 2013 [No. ] 5
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Provision
Section 12(1)
Section 14
Section 16
Section22
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Amendment
Insert immediately after the word "registered" the words ", unless the Registrar is satisfied that consent has been given by or on behalf of the Government".
1. Delete from paragraph (b) of subsection-(!) all the words appearing after the words ''the application" and substitute therefor the words ", was entitled to protection, under the Paris Convention or the World Trade OrganizationAgreement, as a well- known trade mark; or".
2. In subsection (2) delete the words "as defined in subsection (l)(b) whose registration expires" and substitute therefor the words "referred to in subsection (1)(a), the registration ofwhich expires,".
In subsection (1) delete the word "accompanies" and substitute therefor the word "accompanied".
Delete subsection (1) and substitute therefor the following-
" (1) On acceptance of the application along with the specified registration fee and advertisement fee, the Registrar shall cause the application to be published in the Trade Marks Journal in such manner as may
6 [No. ] The Trade Marks (Amendment) Act, 2013
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Section30
Section38
Section43
Second Column
Amendment
be prescribed, and the date ofpublication shall be reckoned as the date of acceptance.".
In subsection (1) insert immediately after the words "this Act" the words "and shall be construed as notice to the Registrar ofthose particulars".
1. Delete subsection (6) and substitute therefor the following-
" (6) Ifthe Court decides that an order shall not be made under this section, the person who was in possession, custody or control ofthe goods, material orarticles before they were delivered up, is entitled to regain possession.".
2. Insert in subsection (7), immediately after the words "the CopyrightAct" the words "or any other law as it relates to intellectual property, in force for the time being".
1. Delete subsections (1) and (2) and substitute therefor the following-
" (1) The registration ofa trade mark may be revoked on any ofthe following grounds-
(a) within the period offive years prior to the date ofapplication for revocation, the trade mark has not been used for bona fide purposes in Jamaica in relation to the goods or services for which the trade
The Trade Marks (Amendment) Act, 2013 _[No. ] 7
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Amendment
mark is registered and there are no proper reasons put forward by the proprietor for its non-use;
(b) the bonafide use ofthetrade mark has been suspended for a continuous period of five years prior to the date ofthe applicationforrevocation, and there are no proper reasons put forward by the proprietor for its disuse;
(c) as a result ofthe act or failure to act on the part of the proprietor, the trade mark has become the commonname in the trade for a product or service inrespect ofwhich the trade mark is registered; or
(d) the trade mark is likely to deceive orconfuse the public as to the nature, quality or geographical origin ofgoods or services or on account of its use by the proprietor, or with his consent, inrelation to the goods or services for which it is registered.
(2) For the purposes ofsubsection (1}-
(a) ''use ofa trade mark" includes use in a form differing in
8 [No. ] The Trade Marks (Amendment) Act, 2013
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Provision
Section 44(2)
Section46
Second Colwnn
Amendment
elements whichdo not alterthe distinctive character of the mark in the form in which it was registered; and
(b) "use in Jamaica" includes affixing the trade mark to goods or to their packaging in Jamaica where those goods are solely for export.".
2. In subsection (3)-
(a) insert immediately after the words "subsection (l)(a)" the words "or (b)".
(b) delete the words-
(i) "three years" and substitute therefor the words "five years"; and
(Ii) "threeyearperiod" andsubstitutethere- for the words "five year period".
Delete the words "and where" and substitute therefor "and if in ~y other case".
Delete the section and substitute therefor the following-
"Application for declaration ofinvalidity.
46.-(1) Subject to sub- 1section (2), an application for
adeclarationofinvaliditymay be made by any person to the Registrar or the Court.
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(2) Ifproceedings are pending inCourtconcerning the trade mark in question, an application under this section shall be made to the Court and ifinany othercase theapplicationismadetothe Registrar, he may at any stage refer any matter arising from the application, to the Court.
(3) Where the grmmds ofinvalidity exist in respect ofonly some ofthe goods or services for which the trade mark is registered, the trade markshallbedeclared invalid as regards those goods or services only.
(4) The Registrar may apply to the Court for a declarationofthe invalidityof the registration of a trade mark in the case ofbad faith or error in the registration.
(5) Where the regis- tration of a trade mark is declared invalid to any extent, then the registration shall, to that extent be deemed to have never been made, but without prejudice to any transaction past and closed.".
10 [No. ] The Trade Marks (Amendment) Act, 2013
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Section48 Delete subsection (1) and renumber subsections (2) and (3) as subsections (1) and (2), respectively.
Section 49(2) Delete the subsection and substitute therefor the following-
" (2) A trade mark is entitled to protection under the Paris Convention if it is well known in Jamaica as being the mark ofa person who is-
(a) a citizen of a Convention country; or
(b) habitually resident in, or has a real and effective industrial or commercialestablishment in, a Conventioncountry,
whether or not that person carries on business or has any goodwill in Jamaica and any reference to the proprietor of such a mark shall be construed accordingly.".
Section 58(3) Delete the words "Office ofthe Registrar of Companies" and substitute therefor the words "JamaicaIntellectual Property Office".
Section 59(2)(c) Delete the words "Office ofthe Registrar of Companies" and substitute therefor the words "Jamaica Intellectual Property Office".
Section 78(g) Delete the words "Office ofthe Registrar of Companies" and substitute therefor the words "Jamaica Intellectual Property Office".
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New section 81 The principalAct is amended by renumbering section 81 as section 82 and inserting next after section 80, the following as section 81-
"Minister may amend monetary penalties.
81. The Minister may, by order, subject to affirmative resolution, amend the monetacypenalties specified in thisAct.".
Third Schedule 1. Delete paragraph 2(1) and substitute therefor the following-
" (1) All existing registered marks registered in PartAorB ofthe old register shall be deemed to have been transferred to the Register on the appointed day and shall have effect, subject to the provisions ofthis Schedule, as ifregistered under thisAct.".
2. In paragraph 9(2) delete the number "79" and substitute therefor the number "78".
3. In paragraph 13(1) and (2) delete the number "7" wherever it appears and substitute therefor in each case the number "8".
4. Delete paragraph 15(2) and substitute therefor the following-
" (2) An application under section 43(1 )(a) or (b) ofthis Act may be made at any time after the appointed day, in relation to an existing registered mark other than an existing registered mark
12 [No. ] The Trade Marks (Amendment) Act, 2013
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Provision
TradeMarks Rules,2001
Rule2(1)
Rule 12
Second Column
Amendment
registered by virtue ofsection 29 ofthe 1958Act.
5. In paragraph 18, delete the number "66" and substitute therefor the number "65".
Delete from the definition of''the Office" the words "Office ofthe Registrar ofCompanies" and substitute.therefor the words "Jamaica Intellectual Property Office".
1. Insert next afterparagraph(3) the following as paragraph (3A)-
" (3A) At any time before the two month period referred to in paragraph(3) expires, the parties may agree to a two month extensionoftime for the filing of FonnTM5 (hereinafterinthis rule referred to as the "cooling-offperiod").".
2. Delete paragraph(4) and substitute therefor the following-
"
First Schedule.
(4) At any time before the expiry of the cooling- off period, the Registrar may, as he sees fit; grant such further extensions of time as may be-
(a) requested inwriting by the applicant accompanied by the paymentbythe applicant of the cooling-off fee prescribed in the First Schedule; and
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Rule26(2)
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Amendment
(b) agreed to inwriting by the opponent, up to a period of six months follow- ingontheexpiration of the cooling-off period.".
3. Renumber paragraphs (5) to (16) as paragraphs (7) to (18) and insert the following as paragraphs (5) and (6}--
" (5) Within one monthofthe expiryof the cooling-off period, the applicant may submit acounter-statementonForm TM5, to the Registrar who shall send a duplicate ofthe counter-statement to the opponent.
(6) If the applicant fails to file a counter-statement referred to in paragraph (5) within one month after the expiry of the cooling-off period, his application for the registrationofthe trade mark shall be deemed to be withdrawn.".
Delete the paragraph and substitute therefor the following-
"/ (2) Where any application is made under paragraph (1) by a person other than the proprietorofthe registered trade mark-
(a) it shallbe accompaniedbytwo copies ofthe application and statement; and
14 [No. ] The Trade Marks (Amendment) Act, 2013
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Rule26(3)
Rule 30(2)
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Amendment
(b) the copies referred to in sub- paragraph (a) shall be transmitted forthwith by the Registrar to the registered proprietor.".
Delete the paragraph and substitute therefor the following-
" (3) Within two months ofthe date of receipt ofthe application and statement by the proprietor, the proprietor may file in duplicate a counter-statement together with Form TM5 and the Registrar shall send the duplicate thereofto the applicant.".
Delete the paragraph and substitute therefor the following-
" (2) An application made under paragraph (1) shall-
(a) where the transaction is an assignment, be signed by or on behalfofthe parties to the assignment; or
(b) where the transaction is within the scope of sub- paragraph (b), (c) or (d) of paragraph (1), be signed by or on behalfofthe grantor ofthe licence or security interest,
and be accompanied by such supporting documentation as the Registrar considers to be sufficient to verify the transaction.".
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Provision Amendment
Rule 39(3)(f) Delete the nwnber"41" and substitute therefor the nwnber "40".
Rule 52
Rule 53
Delete the rule and substitute therefor the following-
"Correction of irregularities in procedure.
52. Subject to rule 54, any irregularity inprocedure in or before the Office or the Re~~rrmyberectifiedon such terms as the Registrar may direct.".
Delete the rule and substitute therefor the following-
"Excluded days.
53.-(1) The Registrar shall, where the time for doing anything under these Rules expiresonan excluded day, extend that time to the next following day not being an excluded day.
(2) In this Rule "ex- cluded day" means a day on which-
(a) the Office is not open; or
(b) there is a general interruption and subsequent dis- location of the postal services ofJamaica".
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Rule 54 Delete the rule and substitute therefor the following---
"~tter~ti~nor 54. ---(1) The times or t1me hm1ts or • cis- periods peno upon ) 'b d brequest, etc. (a prescn e y
these Rules, other than times or periods pres- cribed by the rules mentioned inparagraph(6); or
(b) specified by the Registrar for do- ing any act or taking any pro- ceedings,
may, at the written request of the person or party con- cerned, or on the initiative of the Registrar, be extended by the Registrar as he thinks fit anduponsuchterms ashemay direct.
(2) The following provisions apply where a request for the extension of a time or period prescribed by these Rules has been made-
(a) ifthe request is filed after the application has been published under rule 12, it
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Amendment
Second Schedule.
shall be onFonn TM25 in the Second Sched- ule, and shall in any other case be on that form if the Registrar so directs;
(b) ifthe request is sought inrespect ofa time or pe- riods prescribed by rule 12(1), 12 (3), 12(4), 14, 19, 21(1), 24 or 26(3), the party seeking the extension shall send a copy of the re- quest to each af- fected person.
(3) Subject to para- graph (4), a request for ex- tension underparagraph (1), shall be made before the expirationofthe time period inquestion.
(4) Where a request for extension is made after··
18 [No. ] The Trade Marks (Amendment) Act, 2013
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the time period referred to in paragraph (3 ), the Registrar may extend such time period ifthe Registrar is satisfied with the reason given for the delay in requesting the extension.
(5) Where-
(a) the period in which any party to any proceed- ings before the Registrar may file evidence un- der these Rules is to begin upon the expiryofany period in which any other party may file evi- dence;and
(b) that other party notifies the Reg- istrar that he does not wish to file any, or any further, evi- dence,
the Registrarmay direct that the period within which the firstmentionedpartymayfile evidence shall beginon such date as may be specified in
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First Schedule
Second Schedule
Second Column
Amendment
the direction and shall notify allparties to the proceedings ofthat date.
(6) The rules ex- cepted from paragraph (1) are rules 9(7), 10 and 25.".
Renumber items 1(b) to (d) as items 1(c) to (e) and insert in the appropriate columns the following as item 1(b}-
"(b) coolingoffperiod ... 12(4) $6,000.00"
1. Delete the words "Full name, address and postcode of the applicant" wherever they appear and substitute therefor, in each case, the words "Full name, address, Taxpayer RegistrationNumber (TRN) (in the case where the person is resident in Jamaica) and postal code ofthe applicant".
2. In Form TM1-
(a) delete from item 6 the third column headed "Being used/Bona Fide intention to use"; and
(b) insert in item 10 immediatelybefore the word "Signature" the words-
"I hereby declare that the trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or
20 [No. ] The Trade Marks (Amendment) Act, 2013
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there is a bonafide intention that it will be so used.".
3. In Form TM3-
(a) in the heading delete the words "Request to appoint an agent or to enterchange ofaddress for service" and substitute therefor the heading, "Request to appoint or change an agent or enter or change an address for service"; and
(b) delete item 4 and substitute therefor the following-
"4. On behalfofthe propri- etor, licensee or opponent, II we notify you that I am/we are-
(a) 0 authorized to. . receive service at my/our ad- dress;
(b) 0 the authorized agent.
(Indicate as appropriate).".
4. In item 6 ofForm TM6, insert next after sub-paragraph (b) the following as sub- paragraph (c)-
"(c) obvious mistakes".
The Trade Marks (Amendment) Act, 2013 [No. ] 21
Form1M25 Insert next after FormTM25 the following-
" Form TM25A TRADEMARKS ACT
Requestfor a Cooling-offPeriod
1. Trade Mark number
2. Opposition~umber 3. Full name ofperson
orcompanymaking this request
4. TaxpayerRegistration Number
5. Is this the applicant or the opponent?
6. Name and address (including postcode) ofthe agent (ifany)
7. Declaration
Your signature
Date
8. Name and daytime phone number ofthe person we should contact m case ofquery
9. Your Reference
Number ofsheets attached to this form
I confirm that the other party to these proceed- ings has agreed to this request for a cooling-off period.
Note: You shall get the other party's written agreement to this request before yousign the declaration inquestion 6. Please attach the agreement to this Form.".
22 [No. ] The Trade Marks (Amendment) Act, 2013
Fourth Schedule Insert next after Class 42 the following-
"Class 43 Services for providing food and drink; temporary accommodation.
Class 44 Medical services; veteri- nary services; hygienic and beauty care for human beings oranimals; agricul- ture, horticulture and forestry services.
Class 45 Legal services; security services for the protection ofpropertyand individuals; personaland social services rendered by others to meet the needs ofindividuals.".
Passed in the House ofRepresentatives this 16thday ofJuly 2013.
Passed in the Senate this 26th day ofJuly 2013.
MICHAEL A. PEART Speaker.
FLOYD E. MORRIS President.
This printed impression has been carefully compared by me with the authenticated impression of the foregoing Act, and has been found by me to be a true and correct printed copy ofthe said Act.
Clerk to the Houses ofParliament.