Court of Appeal of Jamaica [2017]: 3M Company v. Manufacturera 3M SA DE CV [2017] JMCA Civ 21
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 1: Emerging Issues in Trademarks
Court of Appeal of Jamaica [2017]: 3M Company v. Manufacturera 3M SA DE CV [2017]
JMCA Civ 21
Date of judgment: July 21, 2017
Issuing authority: Court of Appeal of Jamaica
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civin( �br> Subject matter: Trademarks
Plaintiff: 3M Company
Defendant: Manufacturera 3M SA de CV
Keywords: Trademark registration, Bad faith, Likelihood of confusion
Basic facts: 3M is an American Company and proprietor of the trademark “3M”, which has been registered in Jamaica since 1971 in respect of numerous classes, including class 7 (various types of agricultural equipment), class 11 (various types of food processing and sanitary equipment) and class 12 (various types of vehicles) under the Trade Marks Act, 1999 (TMA) and the Trade Mark Rules, 2001. The registered mark of 3M is shown below:
M3M is a company incorporated in Mexico that manufactures machinery and spare parts used in the sugar industry. M3M sought to register the following “3M & Device” mark
M3M’s application was initially refused but subsequently granted by the Registrar of Industrial Property (registrar). 3M lodged an objection, but the registrar ruled in favor of M3M’s mark, and 3M initiated proceedings in the Supreme Court of Jamaica.
At first instance, Sykes J (now Chief Justice), relying on decisions of the Court of Justice of the European Community and the 1988 First Council Directive, ruled in favor of M3M’s registration. 3M appealed to the Court of Appeal.
Held: The Court of Appeal overturned the decision of the Supreme Court. Hilary Phillips JA, who delivered the judgment of the Court, also relied on a number of European cases to rule that registration should be refused.
Relevant holdings in relation to emerging issues in trademarks [specifically, bad faith trademark filings]:
1. Due to the marks of 3M and M3M being aurally identical or highly similar and the respective goods being identical or similar, there was a likelihood of confusion. Additionally, the 3M mark was well-known and there was a potential dilution and tarnishing of the reputation of the mark.
2. M3M’s knowledge of 3M’s earlier registered mark, and the repeated opposition by 3M to M3M’s application to register the “3M & Device” mark in other jurisdictions (where the oppositions were upheld against M3M), illustrate that there was no honest concurrent use of the mark “3M & Device”. M3M could therefore not rely on s. 15 of the TMA to register its mark.
3. For the same reasons, M3M’s application was made in bad faith, and M3M was debarred from registering its mark by s. 11 of the TMA.
Relevant legislation:
Trade Marks Act, 1999, and the Trade Mark Rules, 2001