- TABLE OF CONTENTS
- Short Title and Commencement
- PART I PRELIMINARY
- PART II PROPERTY RIGHTS IN REGISTERED MARKS
- PART III REGISTRATION OF TRADE MARKS
- Non-Registrable Marks
- Protected Emblems
- Existence of Earlier Mark
- Meaning of Earlier Trade Mark
- Honest Concurrent Use of Mark
- Application for Registration of Mark
- Application
- Date of Filing
- Classification of Goods and Services
- Right of Priority
- Claim of Priority by Overseas Applicant
- Registration Procedure
- Examination of Application
- Publication, Opposition, etc.
- Actions by Applicant Respecting Application
- Registration
- Further Provisions Re Registration, Series, etc.
- Registration Subject to Disclaimer
- PART IV DEALINGS WITH REGISTERED TRADE MARKS
- Assignment and Transmission
- Assignment etc. of Trade Mark
- Licensing
- Provisions as to Licences
- Rights of Exclusive Licensee
- Registration of Transactions
- Registrable Transactions
- PART V INFRINGEMENT PROCEEDINGS
- Infringement Actionable by Proprietor
- Meaning of Infringing Goods, etc
- Special Provisions Re-Exclusive Licensee
- Rights of Other Licensees in Infringement Proceedings
- Order for Erasure, etc. of Sign
- Order for Delivery Up, etc.
- Limitation Time for Delivery Up
- Order for Disposal
- Burden of Proving Use of Mark
- PART VI ACTIONS AFFECTING REGISTERED TRADE MARK
- PART VII PROVISIONS TO IMPLEMENT INTERNATIONAL CONVENTIONS
- The Paris Convention: Supplementary Provisions
- Paris Convention
- Well-known Marks
- National Emblems of Convention Countries
- Other State Emblems
- Emblems of International Organizations
- Act of Agents
- PART VIII ADMINISTRATION
- Functions of the Registrar
- Forms
- Supply of Information
- Power to Award Costs, etc.
- Evidence before Registrar
- Exclusion of Liability
- Registrar’s Appearance in Proceedings
- Appeal Against Decisions of Registrar
- The Register
- Register be Kept
- Correction of Register
- Adaptation of Entries to New Register
- Registration Prima Facie Evidence
- Certificate of Validity by Court
- PART IX GENERAL PROVISIONS
- Powers of Commissioner ofCustoms Relating to Infringing Goods
- Prohibited Goods
- Power of Commissioner
- Disclosure of Information
- Offences
- Unauthorized Use of Trade Mark
- Falsification of Entry
- Falsely Representing Trade Mark as Registered Mark
- Forfeiture
- Offence by Partnership; Body Corporate
- Supplementary Provisions
- Costs
- Trusts Equities
- Trade Mark Equities
- Jamaican Waters Included
- Rules
- Fees
- Exemption from Stamp Duty
- Modification of Laws
- Repeal and Transitional Provisions
- FIRST SCHEDULE
- SECOND SCHEDULE
- THIRD SCHEDULE
The Trade Marks Act, 1999
TABLE OF CONTENTS
Article
Short Title and Commencement.................................... 1 Part I: Preliminary Interpretation................................................................. 2 Part II: Property Rights in Registered Marks Collective Marks; Certification Marks......................... 3 Property Right in Registered Trade Marks.................... 4 Rights Conferred........................................................... 5 Joint Proprietors............................................................ 6 Property Right in Application for Registration of Trade Mark.................................................................... 7 Duration of Rights......................................................... 8 Acts of Infringement ..................................................... 9 Limitation of Rights...................................................... 10 Part III: Registration of Trade Marks Disqualification from Registration Non-Registrable Marks ................................................. 11 Protected Emblems........................................................ 12 Existence of Earlier Mark ............................................. 13 Meaning of Earlier Trade Mark..................................... 14 Honest Concurrent Use of Mark ................................... 15 Application for Registration of Mark Application.................................................................... 16 Date of Filing ................................................................ 17 Classification of Goods and Services............................ 18 Right to Priority ............................................................ 19 Claim of Priority by Overseas Applicant ...................... 20 Registration Procedure Examination of Application .......................................... 21 Publication, Opposition, etc. ......................................... 22 Actions by Applicant Respecting Application .............. 23 Registration................................................................... 24 Further Provisions Re Registration.. ............................. 25 Registration Subject to Disclaimer................................ 26 Part IV: Dealings with Registered Trade Marks Assignment and Transmission Assignment etc. of Trade Mark..................................... 27 Licensing Provisions as to Licences .............................................. 28 Rights of Exclusive Licensee ........................................ 29 Registration of Transactions Registrable Transactions ............................................... 30 Part V: Infringement Proceedings Infringement Actionable by Proprietor ......................... 31 Meaning of Infringing Goods, etc. ................................ 32 Special Provisions Re-Exclusive Licensee.................... 33 Rights of Other Licensees in Infringement Proceedings................................................................... 34 Order for Erasure, etc. of Sign ...................................... 35
Order for Delivery Up, etc. ........................................... 36 Limitation of Time for Order for Delivery Up .............. 37 Order for Disposal......................................................... 38 Burden of Proving Use of Mark.................................... 39 Part VI: Actions Affecting Registered Trade Mark Renewal ........................................................................ 40 Alteration of Registered Trade Mark ............................ 41 Surrender of Registered Trade Mark............................. 42 Grounds for Revocation ................................................ 43 Application for Revocation........................................... 44 Invalidity of Registration Grounds for Invalidity................................................... 45 Application for Declaration of Invalidity...................... 46 Effect of Acquiescence ................................................. 47 Part VII: Provisions to Implement International Conventions The Paris Convention: Supplementary Provisions Paris Convention........................................................... 48 Well-known Marks........................................................ 49 National Emblems of Convention Countries................. 50 Other State Emblems..................................................... 51 Emblems of International Organizations....................... 52 Act of Agents ................................................................ 53 Part VIII: Administration Functions of the Registrar Forms ............................................................................ 54 Supply of Information................................................... 55 Evidence to Award Costs, etc: ...................................... 56 Evidence before Registrar ............................................. 57 Exclusion of Liability.................................................... 58 Registrar’s Appearance in Proceedings......................... 59 Appeal Against Decisions of Registrar ......................... 60 The Register Register to be Kept........................................................ 61 Correction of Register................................................... 62 Adaptation of Entries to New Register.......................... 63 Registration Prima Facie Evidence ............................... 64 Contested Registration: Certificate of Validity ........... 65 Part IX: General Provisions Powers of Commissioner of Customs Respecting Infringing Goods Prohibited Goods .......................................................... 66 Power of Commissioner to Make Regulations.............. 67 Disclosure of Information ............................................. 68 Offences Unauthorized Use of Trademark ................................... 69 Falsification of Entry..................................................... 70 Falsely Representing Trade Mark as Registered Mark.. 71 Forfeiture ...................................................................... 72 Offence by Partnership; Body Corporate ..................... 73 Supplementary Provisions Costs ............................................................................. 74 Trusts and Equities........................................................ 75 Trade Mark Agents ....................................................... 76 Jamaican Waters Included............................................. 77 Rules ............................................................................. 78 Fees ............................................................................... 79 Exemption from Stamp Duty ........................................ 80
First Schedule Collective Marks
Second Schedule Certification Marks
Third Schedule
Modification of Laws.................................................... Repeal and Transitional Provisions............................... 82.
SCHEDULES *
Articles
Signs Comprised in Collective Marks........................... 1 Indication of Geographic Origin ................................... 2 Restriction on Registration............................................ 3 Regulations Re Use of Mark ......................................... 4 Approval of Regulations ............................................... 5 Power of Registrar Relating to Regulations .................. 6 Publication of Regulations, Opposition, etc. ................. 7 Regulations Open to Inspection .................................... 8 Amended Regulations to be Filed ................................. 9 Authorized User: Rights Re Infringement.................... 10 Grounds of Revocation ................................................. 11 Grounds of Invalidity.................................................... 12
Signs Comprised in Certification Marks ....................... 1 Indication of Geographic Origin ................................... 2 Restriction of Registration ............................................ 3 Regulations Re Use of Mark ......................................... 4 Approval of Regulations ............................................... 5 Power of Registrar Relating to Regulations .................. 6 Publication of Regulations Opposition, etc................... 7 Regulations Open to Inspection .................................... 8 Amended Regulations to be Filed ................................. 9 Consent of Registrar Required ...................................... 10 Authorized User: Rights Re Infringement.................... 11 Grounds of Revocation ................................................. 12 Grounds of Invalidity.................................................... 13
Interpretation................................................................. 1 Existing Registered Marks ............................................ 2 Application of Provisions Relating to Rights................ 3 Infringing Material, etc. ................................................ 4 Rights and Remedies of Authorized Users.................... 5 Joint Proprietorship....................................................... 6 Assignment, etc............................................................. 7 Licences ........................................................................ 8 Pending Applications for Registration .......................... 9 Conversion of Application ............................................ 10 Old Classification of Trade Mark.................................. 11 Priority Claim: Convention Country ............................ 12 Duration ........................................................................ 13 Pending Application: Alteration of Mark..................... 14 Removal of Mark from Register ................................... 15 Application for Correction of Register.......................... 16 Certification Mark: Regulation .................................... 17 Certificate of Validity ................................................... 18 Trade Mark Agents ....................................................... 19
An Act to Repeal the Trade Marks Act and to make new provision for the protection of registered trade marks and for connected matters.
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:—
Short Title and Commencement
1. This Act may be cited as the Trade Marks Act, 1999, and shall come into operation on a day to be appointed by the Minister by notice published in the Gazette.
PART I PRELIMINARY
Interpretation
2.—(1) In this Act—
“appointed day” means the day appointed under section 1;
“business” includes trade or profession;
“certification mark” means a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance services, quality, accuracy or other characteristics;
“collective mark” means a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings;
“Court” means the Supreme Court;
“exclusive licence” means a licence, whether general or limited, authorizing the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorized by the licence; and the expression “exclusive licensee” shall be construed accordingly;
“infringing proceedings” in relation to a registered trade mark includes proceedings under section 36;
[“prescribed” means prescribed by rules made under this Act;]
“publish” means making available to the public;
“Registrar” means the Registrar of Companies;
“register” means the register referred to in section 61;
“registered trade mark” means a trade mark that is actually on the register;
“sign” includes a word (including a personal name, design, letter, numeral, colour, combination of colours or a combination of the foregoing or the shape of goods or their packaging;
“trade” includes any business or profession;
“trade mark” means any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one undertaking from those of another undertaking.
(2) References in this Act to use (or any particular description of use) of a trade mark or of a sign identical with or similar to or likely to be mistaken for a trade mark, include use or that description of use, otherwise than by means of a graphic representation.
PART II PROPERTY RIGHTS IN REGISTERED MARKS
Collective Marks; Certification Marks
3. Unless the context otherwise requires, references in this Act to a trade mark includes references to a collective mark and a certification mark; and the provisions of this Act shall apply to collective marks, subject to the provisions of the First Schedule and to certification marks, subject to the provisions of the Second Schedule.
Property Right in Registered Trade Marks
4.—(1) The registration of a trade mark under this Act confers a property right on the proprietor of the trade mark who is entitled to the rights and remedies provided by this Act.
(2) Registration of a trade mark shall be in accordance with the provisions of Part III.
(3) Proceedings may not be instituted under this Act to prevent the infringement of an unregistered trade mark or to recover damages in respect of such infringement, but nothing in this Act shall be construed to affect the law relating to passing off.
Rights Conferred
5.—(1) Subject to section 10, the proprietor of a registered trade mark has exclusive rights in the trade mark; and any use of the mark in Jamaica without the proprietor’s consent, constitutes an infringement of such rights, as specified in section 9. Joint Proprietors
6.—(1) Where two or more persons are registered joint proprietors of a trade mark, each of them is entitled to an equal undivided share in the registered trade mark, unless there is an agreement to the contrary. Property Right in Application for Registration of Trade Mark Duration of Rights Acts of Infringement
9.—(1) References in this Act to the infringement of a registered trade mark are references to the infringement of the rights of the proprietor in the trade mark. Limitation of Rights
10.—(1) Subject to section 46, registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter trade mark is registered. PART III REGISTRATION OF TRADE MARKS
Disqualification from Registration
11.—(1) Subject to subsection (2) the following are not registrable under this Act— Protected Emblems
12.—(1) A trade mark which consists of or contains a representation of the Coat of Arms of Jamaica, national flag of Jamaica and other national symbols shall not be registered.
(2) A trade mark shall not be registered in the cases specified in sections 50 and 51.
Existence of Earlier Mark
13.—(1) A trade mark shall not be registered if—
(a) it is identical with an earlier trade mark; and Meaning of Earlier Trade Mark
14.—(1) In this Act “earlier trade mark” means—
(a) a registered trade mark; or of one year after the expiry, unless the Registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry.
Honest Concurrent Use of Mark
15. Where on an application for the registration of a trade mark it appears to the Registrar that— then unless the proprietor of the earlier trade mark or other right raises objection on any such ground in opposition proceedings, the Registrar shall not refuse the application by reason of the earlier trade mark or earlier right, if the applicant satisfies the Registrar that there has been honest concurrent use of the trade mark for which registration is sought.
Application
16.—(1) An application for registration of a trade mark shall be made to the Registrar in such form as may be required pursuant to section 54 and be accompanied by the prescribed fees. Date of Filing
17.—(1) The date of filing of an application for registration of a trade mark is the date on which the applicant furnishes the documents containing everything required under section 16; and where documents are furnished on different days, the date of filing is the last of those dates.
(2) References in this Act to the date of application for registration are to the date of filing of the application.
Classification of Goods and Services
18.—(1) For the purposes of the registration of trade marks, goods and services shall be classified in accordance with the prescribed system of classification.
(2) Any question arising as to the class within which any goods or services fall shall be determined by the Registrar, whose decision shall be final.
Right of Priority
19.—(1) A person who has duly filed an application for the protection of a trade mark in a Convention country (“a Convention application”) or his successor in title, has a right to priority for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application. Claim of Priority by Overseas Applicant
20.—(1) The Minister may by order, subject to negative resolution, make provision for conferring on a person who has duly filed an application in a specified country for the protection of a trade mark in relation to goods and services, a right of priority for the purpose of registering the same trade mark under this Act for some or all of such same goods or services, for a specified period from the date of filing that application.
(2) An order made under subsection (1) may make provision corresponding to that made under section 48 in relation to Convention countries or such other provision as appears to the Minister to be appropriate.
Examination of Application
21.—(1) The Registrar shall examine whether an application for registration of a trade mark satisfies the requirements of the Act and rules, and for that purpose shall carry out a search of earlier trade marks to such extent as the Registrar considers necessary. (b) fails to respond before the end of the specified period,
the Registrar shall refuse to accept the application.
(4) The Registrar shall accept the application if it appears to him that the requirements for registration are met.
Publication, Opposition, etc.
22.—(1) On the acceptance of an application, the Registrar shall cause it to be published in the Gazette or in such other manner as may be prescribed. Actions by Applicant Respecting Application
23.—(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application; and if the application has been published, such withdrawal or restriction shall be published in like manner.
(2) An application may be amended otherwise than under subsection (1), at the request of the applicant, but only by the correction of— and so long as the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.
(3) Rules may make provision for the publication of any amendment affecting the representation of the trade mark or the goods or services covered by the application and the making of objections by any person claiming to be affected by the amendment.
Registration
24.—(1) Where an application has been made for the registration of a trade mark and— the Registrar shall register a trade mark unless it appears to the Registrar, having regard to matters coming to the Registrar’s notice since the acceptance of the application, that it was accepted in error or unless the prescribed fee has not been paid within the prescribed period. Further Provisions Re Registration, Series, etc.
25.—(1) Rules may make provision with respect to— Registration Subject to Disclaimer
26.—(1) If a trade mark— the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain on the Register; act in accordance with subsection (2). PART IV DEALINGS WITH REGISTERED TRADE MARKS
Assignment etc. of Trade Mark
27.—(1) A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property, and is so transmissible either in connection with the goodwill of a business or otherwise. Provisions as to Licences
28.—(1) A licence to use a registered trade mark may be general or limited; and a limited licence may apply, in particular, in relation to— Rights of Exclusive Licensee
29.—(1) An exclusive licensee has the same rights against of a successor in title who is bound by the licence as he has against the person granting the licence. Registrable Transactions
30.—(1) The following, are registrable transactions for the purposes of this Act— PART V INFRINGEMENT PROCEEDINGS
Infringement Actionable by Proprietor
31.—(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark.
(2) In an action for infringement all such relief by ways of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.
Meaning of Infringing Goods, etc.
32.—(1) In relation to a registered trade mark, goods are infringing goods under this Act where they or their packaging bear a sign that is identical with or similar to the registered trade mark and— Special Provisions Re-Exclusive Licensee
33.—(1) In an action brought by an exclusive licensee by virtue of section 29, a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark. Rights of Other Licensees in Infringement Proceedings
34.—(1) Subject to the provisions of this section, unless his licence or any licence through which his licence is derived provides otherwise, a licensee is entitled to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests. Order for Erasure, etc. of Sign
35.—(1) The Court may make an order requiring the person who is found to have infringed a registered trade mark— Order for Delivery Up, etc.
36.—(1) The proprietor of a registered trade mark may apply to the Court for an order for the delivery up to him or to such other person as the Court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of business. (4) Nothing in this section affects any other power of the Court.
Limitation Time for Delivery Up
37.—(1) Except in the circumstances specified of in subsection (2), an application for an order under section 36 may not be made after the period of six years from— Order for Disposal
38.—(1) An application may be made to the Court— Burden of Proving Use of Mark
39. In any civil proceedings, if a question arises of as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.
PART VI ACTIONS AFFECTING REGISTERED TRADE MARK
Renewal
40.—(1) On the expiration of the initial period of registration of a trade mark as specified in section 8, the registration may be renewed for periods of ten years; and the renewal shall take effect from the expiration of the previous registration. Alteration of Registered Trade Mark
41.—(1) A registered trade mark shall not be altered in the register during the period of registration or on renewal. Surrender of Registered Trade Mark
42.—(1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered. (b) for protecting the interests of other persons having a right in the registered trade mark.
Grounds for Revocation
43.—(1) The registration of a trade mark may be revoked on any of the following grounds— Application for Revocation
44.—(1) Subject to subsection (2), an application for revocation may be made by any person to the Registrar or the Court. Grounds Invalidity
45.—(1) Subject to subsection (2) the registration of a trade mark may be declared invalid on the ground that— Application for Declaration of Invalidity
46.—(1) An application for a declaration of invalidity may be made by any person to the Registrar or the Court. Effect of Acquiescence
47.—(1) Where a registered trade mark has been used in Jamaica for a continuous period of three years with the knowledge and acquiescence of the proprietor of an earlier trade mark or other earlier right, then, unless the registration of the later trade mark was applied for in bad faith, such proprietor shall not be entitled to apply for a declaration that the registration of the later trade mark is invalid or to oppose the use of the later trade mark in connection with the goods or services in relation to which it has been used.
(2) In the circumstances specified in subsection (1), the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against his later trade mark.
PART VII PROVISIONS TO IMPLEMENT INTERNATIONAL CONVENTIONS
The Paris Convention: Supplementary Provisions
48.—(1) In this Act— (3) An order made under subsection (1) is subject to affirmative resolution.
Well-known Marks
49.—(1) The proprietor of a well-known mark which is entitled to protection under the Paris Convention, as mentioned in subsection (2), is entitled to restrain by injunction the use in Jamaica of a trade mark which, or the essential part of which, is identical with or similar to his mark in relation to identical or similar goods or services, where the use of the mark is likely to cause confusion. National Emblems of Convention Countries
50.—(1) The Registrar shall not register a trademark consisting of or containing the flag of a Convention country, without the authorization of the competent authority of that country, unless it appears to the Registrar, that use of the flag in the manner proposed is permitted without such authorization. Other State Emblems
51.—(1) For the purposes of section 50 state emblems of a Convention country (other than the national flag) and other official signs or hallmarks, shall be regarded as protected under the Paris Convention only if or to the extent that— Emblems of International Organizations
52.—(1) The Registrar shall not register a trade mark consisting of or containing any emblem to which this section applies, without the authorization of the international organization concerned, unless it appears to the Registrar that the use of the symbol in the manner proposed— Act of Agents
53.—(1) The provisions of this section apply where an application for registration of a trade mark is made by a person who is the agent or representative of the proprietor of the mark in a Convention country. PART VIII ADMINISTRATION
Forms
54. The Registrar may require the use of such forms as he may direct for any purpose relating to the registration of a trade mark or any other proceeding before him under this Act and shall cause the forms and directions for their use to be published in the prescribed manner.
Supply of Information
55.—(1) Subject to such restrictions as may be prescribed, after the publication of an application for registration of a trade mark, the Registrar shall provide information relating to the application to any person who makes a request in the prescribed manner and pays the prescribed fee (if any) and shall permit him to inspect any documents relating to the application or to any registered trade mark resulting from it, as may be specified in the request. Power to Award Costs, etc.
56.—(1) Rules may make provision—
(a) empowering the Registrar in any proceedings before the Registrar— Evidence before Registrar
57.—(1) Rules may make provision for— (c) the attendance of witnesses in proceedings before the Registrar.
Exclusion of Liability
58.—(1) The Registrar shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention or arrangement to which Jamaica is a party. Registrar’s Appearance in Proceedings
59.—(1) The Registrar is entitled to appear and be heard in the proceedings before the Court in an application for— Appeal Against Decisions of Registrar
60.—(1) Except where otherwise expressly provided by rules, an appeal lies to the Court from any decision of the Registrar under this Act and any such appeal the Court shall have and exercise the same discretionary powers as are conferred on the Registrar under this Act.
(2) For the purpose of this section “decision” includes any act done by the Registrar in exercise of a discretion vested in him by or under this Act.
Register be Kept
61.—(1) The Registrar shall maintain a register of trade mark in which shall be entered in accordance with this Act—
(a) registered trade marks; Correction of Register
62.—(1) The proprietor, a licensee or any other person having a sufficient interest, may apply in the prescribed manner for the correction of an error or omission in the register, but an application under this section may not be made in respect of a matter affecting the validity of the registration. Adaptation of Entries to New Register
63.—(1) Rules may be made empowering the Registrar to do such things as the Registrar considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks. Registration Prima Facie Evidence
64. In all legal proceedings relating to a registered trade mark, including proceedings for the correction of the register, the registration of a person as a proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.
Certificate of Validity by Court
65.—(1) If in proceedings before the Court the validity of the registration of a trade mark is contested and the Court finds that the trade mark is validly registered, the Court may give a certificate to that effect. he is entitled to his costs as between attorney-at-law and client, unless the Court directs otherwise.
(3) Subsection (2) does not extend to the costs of an appeal in any proceedings mentioned in that subsection.
PART IX GENERAL PROVISIONS
Prohibited Goods
66.—(1) The proprietor of a registered trade mark or a licensee, may give notice in writing to the Commissioner of Customs— but a person is not, by reason of the prohibition, liable to any penalty under the Customs Act other than forfeiture of the goods.
Power of Commissioner
67. The Commissioner may make regulations subject to affirmative resolution in respect of the following matters—
(a) prescribing the form in which notice is to be given under section 66; and (iii) to indemnify the Commissioner against any such liability or, expense whether security has been given or not,
and regulations may make different provisions as respects different classes of case to which they apply and may include such incidental and supplementary provisions as the Commissioner considers necessary or desirable.
Disclosure of Information
68. When information relating to infringing goods, material or articles (as defined in section 32) has been obtained by the Commissioner for the purposes of or in connection with the exercise of his function in relation to imported goods, the Commissioner may authorize the disclosure of that information for the purpose of facilitating the exercise by any person of any function in connection with the investigation or prosecution of an offence under section 69 or any other law relating to such investigation or prosecution.
Unauthorized Use of Trade Mark
69.—(1) Subject to subsection (4), a person commits an offence if with intent to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor of the trade mark he— (b) has such an article in his possession, custody or control in the courser of a business,
knowing or having reason to believe that it has been or is to be, used to reproduce goods or material for labelling or packaging goods; as a business paper in relation to goods or for advertising goods. Falsification of Entry
70.—(1) A person commits an offence if he makes or causes to be made a false entry in the register or makes or causes any writing or document purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing or having reason to believe that the entry or writing to be false.
(2) A person guilty of an offence under subsection (1) is liable— Falsely Representing Trade Mark as Registered Mark
71.—(1) A person commits an offence if he—
(a) represents that a mark is a registered trade mark; or Forfeiture
72.—(1) Where in connection with the investigation or prosecution of a relevant offence infringing items have come into the possession of any person, that person may apply under this section for an order for the forfeiture of the infringing items.
(2) An application may be made— (iii) articles specifically designed or adapted for making copies of such a sign; and
“relevant offence” means any offence under section 70 or under any other law relating to trade marks or any offence involving dishonesty or deception.
Offence by Partnership; Body Corporate
73.—(1) Where an offence under this Act is alleged to have been committed by a partnership, proceedings shall be brought against the partnership in the name of the firm and not in that of the partners, but without prejudice to any liability of the partners under subsection (4). Costs
74. In proceedings before the Court under this Act, the costs of the Registrar shall be in the discretion of the Court, but the Registrar shall not be ordered to pay the costs of any other of the parties.
Trusts Equities
75.—(1) There shall not be entered in the register any notice of any trusts express, implied or constructive, nor shall any such notice be receivable by the Registrar.
(2) Subject to the provisions of this Act, equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.
Trade Mark Equities
76. Where any act is required to be done under this Act, by or to any person in connection with a trade mark or proposed trade mark or any procedure relating thereto, the act may be done in accordance with the rules, (or in particular cases by special leave of the Court) by an agent of that person duly authorized in the prescribed manner.
Jamaican Waters Included
77. For the purposes of this Act, the archipelagic waters and the territorial waters of Jamaica shall be treated as part of Jamaica.
Rules
78. The Minister may from time to time make such rules subject to affirmative resolution— Fees
79. There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed.
Exemption from Stamp Duty
80. All certificates and certified copies given by the Registrar under this Act shall be exempt from stamp duty.
Modification of Laws
81.—(1) The Minister may, by order, with effect from any date specified in the order, not being earlier than the appointed day, alter any enactment if he considers such alteration to be necessary or expedient on account of anything contained in this Act. (b) “enactment” includes any instrument having the force of law but does not include this Act.
Repeal and Transitional Provisions
82.—(1) The Trade Marks Act is hereby repealed.
(2) The transitional provisions set out in the Third Schedule shall have effect with respect to the matters set out in that Schedule.
FIRST SCHEDULE
(Section 3)
Signs Comprised in Collective Marks
1. In relation to a collective mark, the reference in the definition of “trade mark” (appearing in section 2(1)) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
Indication of Geographic Origin
2. Notwithstanding section 11(1)(c), a collective mark may be registered which consists of signs or indications which may serve in trade to designate the geographical origin of the goods or services, but the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.
Restriction on Registration
3.—(1) A collective mark shall not be registered if the public is likely to be misled as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a collective mark.
(2) The Registrar may require that a mark in respect of which application is made for registration include some indication that it is a collective mark, and notwithstanding section 23(2), an application may be amended so as to comply with any such requirement.
Regulations Re Use of Mark
4.—(1) An applicant for registration of a collective mark shall file with the Registrar regulations governing the use of the mark; and such regulations shall specify— Approval of Regulations
5.—(1) A collective mark shall not be registered unless the regulations governing the use of the mark— (2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant shall file the regulations with the Registrar and pay the prescribed fee, failing which, the application shall be deemed to be withdrawn.
Power of Registrar Relating to Regulations
6.—(1) If it appears to the Registrar that the requirements specified in paragraph 5(1) are not met, the Registrar shall inform the applicant and give him an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations. Publication of Regulations, Opposition, etc.
7. The regulations governing the use of the mark shall be published and notice of opposition may be given and observations may be made, relating to the matters mentioned in paragraph 5(1), in addition to any other grounds on which the application may be opposed or observations made.
Regulations Open to Inspection
8. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.
Amended Regulations to be Filed
9.—(1) An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with and accepted by the Registrar.
(2) Before accepting any amended regulations the Registrar may, in any case where it appears to the Registrar expedient to do so, cause them to be published, in which event, notice of opposition may be given, and observations may be made relating to the matters mentioned in paragraph 5(1).
Authorized User: Rights Re Infringement
10.—(1) Sections 8(6), 38(2) and 66 apply in relation to an authorized user of a registered collective mark as they apply in relation to a licensee of a trade mark. Grounds of Revocation
11. Apart from the grounds of revocation provided in section 43, the registration of a collective mark may be revoked on the ground— Grounds of Invalidity
12. Apart from the grounds of invalidity provided in section 45, the registration of a collective mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 3(1) or 5(1).
SECOND SCHEDULE
(Section 3)
Signs Comprised in Certification Marks 3. A certification mark shall not be registered— Regulations Re Use of Mark
4.—(1) An applicant for registration of a certification mark shall file with the Registrar regulations governing the use of the mark; and such regulations shall specify— Approval of Regulations
5.—(1) A certification mark shall not be registered unless the regulations governing the use of the mark— Power of Registrar Relating to Regulations
6.—(1) If it appears to the Registrar that those requirements specified in paragraph 5(1) are not met, the Registrar shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations. Publication of Regulations. Opposition, etc.
7. The regulations governing the use of the mark shall be published and notice of opposition may be given and observations may be made, relating to the matters mentioned in paragraph 5(1), in addition to any other grounds on which the application may be opposed or observations made.
Regulations Open to Inspection
8. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.
Amended Regulations to be Filed
9.—(1) An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with and accepted by the Registrar.
(2) Before accepting any amended regulations the Registrar may, in any case where it appears to the Registrar expedient to do so, cause them to be published, in which event, notice of opposition may be given, and observations may be made relating, to the matters mentioned in paragraph 5(1).
Consent of Registrar Required
10. The assignment or other transmission of a registered certification mark is not effective without the consent of the Registrar.
Authorized User; Right Re Infringement
11.—(1) Sections 8(6), 38(2) and 66 apply in relation to an authorized user of a registered certification mark as they apply in relation to a licensee of a trade mark.
(2) In infringement proceedings brought by the proprietor of a registered certification mark, any loss suffered or likely to be suffered by authorized users shall be taken into account; and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.
Grounds of Revocation
12. Apart from the rounds of revocation provided in section 43, the registration of a certification mark may be revoked on the ground— Grounds of Invalidity
13. Apart from the grounds of invalidity provided in section 45, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraphs 3(1) or 5(1).
THIRD SCHEDULE
(Section 83)
Interpretation
1.—(1) In this Schedule—
“existing registered mark” means a trade mark or certification mark registered under the 1958 Act;
“the 1958 Act” means the Trade Marks Act, 1958;
“old law” means the 1958 Act and any other enactment or rule of law applying to existing registered marks immediately before the appointed day;
“old register” means the register kept under the 1953 Act.
(2) For the purposes of this Schedule— Existing Registered Marks
2.—(1) All existing registered marks registered in Parts A and B of the old register shall be registered trade marks for the purposes of this Act.
(2) If two or more trade marks were attached as associated trade marks in the old register, no equivalent entry designing them as associated trade marks shall be made in the register.
Application of Provisions Relating to Rights
3.—(1) The provisions of sections 5, 8 and 10 apply in relation to an existing registered mark and, subject to sub-paragraph (2), section 31 of this Act applies in relation to infringement of an existing registered mark occurring after the appointed day. Infringing Material, etc.
4. Section 36 applies to infringing goods, material or articles whether made before or after the appointed day.
Rights and Remedies of Authorized Users
5.—(1) Section 34 of this Act applies to permitted use of a registered trade mark under section 30 of the 1958 Act authorized before the appointed day, but only in relation to infringements occurring after that day.
(2) Paragraph 11(2) of the Second Schedule of this Act applies only in relation to infringements occurring after the appointed day.
Joint Proprietorship
6.—(1) Subject to sub-paragraph (2), on and after the appointed day, the provisions of section 6 of this Act apply to an existing registered mark of which two or more persons were, immediately before the appointed day, registered as joint proprietors.
(2) So long as the relations between the joint proprietors remain such as are described in section 61 of the 1958 Act, it will be presumed that they have agreed to exclude the operation of subsections (1) and (3) of section 6 of this Act.
Assignment, etc.
7.—(1) Section 27 of this Act applies to transactions and events occurring after the appointed day in relation to existing registered marks, and the old law continues to apply in relation to transactions and events occurring before the appointed day. Licences
8.—(1) Sections 28 and 29(1) of this Act apply only in relation to licences granted after the appointed day; and the old law continues to apply in relation to licences granted before the appointed day. Pending Applications for Registration
9.—(1) An application for registration of a mark under the 1958 Act which is pending on the appointed day shall be dealt with under the old law, subject as mentioned below, and if registered, the mark shall be treated for the purposes of this Schedule as an existing registered mark. Conversion of Application
10.—(1) In the case of a pending application for registration which has not been advertised under section 20 of the 1958 Act before the appointed day, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act. Old Classification of Trade Mark
11.—(1) The Registrar may exercise the powers conferred by rules under section 64 of this Act to secure that any existing registered marks which do not conform to the system of classification prescribed under section 18 of this Act are brought into conformity with that system.
(2) In particular, sub-paragraph (1) applies to existing registered marks classified according to the pre-1958 classification set out the Third Schedule to the Trade Marks Rules, 1958.
Priority Claim: Convention Country
12. Section 19 of this Act applies to an application for registration under this Act made after the appointed day, notwithstanding that the convention application was made before that day.
Duration
13.—(1) Section 7 of this Act applies in relation to the registration of a mark in pursuance of an application made after the appointed day; and the old law applies in any other case.
(2) Sections 7 and 40 of this Act apply where the renewal falls due on or after the appointed day; and the old law applies in any other case.
(3) It is immaterial when the fee for registration or renewal is paid.
Pending Application: Alteration of Mark
14. An application under section 37 of the 1958 Act for the alteration of the registered mark which is pending on the appointed day shall be dealt with under the old law, and any necessary alterations made to the register.
Removal of Mark from Register
15.—(1) An application under section 28 of the 1958 Act which is pending on the appointed day shall be dealt with under the old law and any necessary alterations made to the register.
(2) No application may be made under section 43(1)(b) for the revocation of an existing mark registered by virtue of section 29 of the 1958 Act, until more than five years after the appointed day; except that no such application for the revocation of an existing mark registered by virtue of section 29 of the 1958 Act may not be made until more than five years after the appointed day.
Application for Correction of Register
16.—(1) Where an application under section 36 of the 1958 Act is pending on the appointed day, it shall be dealt with under the old law, and any necessary alterations made to the register.
(2) For the purposes of proceedings under section 45 of this Act as it applies to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times; but no objection to the validity of the registration of an existing registered mark may be taken on the ground specified in section 13(3).
Certification Mark: Regulation
17.—(1) Regulations governing the use of an existing registered certification mark deposited with the Office of the Registrar of Companies in pursuance of section 9(7) of the 1958 Act shall be treated on and after the appointed day as if they were filed under paragraph 4 of the Second Schedule to this Act.
(2) Any request for amendment of the regulations which was pending on the appointed
date shall be dealt with under the old law.
Certificate of Validity
18. A certificate given before the appointed day under section 47 of the 1958 Act shall have effect as if given under section 66 of this Act.
Trade Mark Agents
l9.—(1) Rules in force immediately before the appointed day under the 1958 Act as to persons whom the Registrar may refuse to recognise as agents for the purpose of business under that Act shall continue in force and have effect as if made under section 76 of this Act.
(2) Rules continued in force under this paragraph may be varied or revoked by further rules made under the relevant provisions of this Act.
Passed in the House of Representatives this 11th day of May, 1999.
Violet Neilson, C.D. Speaker
Passed in the Senate this 18th day of June, 1999.
Syringa Marshall-Burnett, C.D. President
* The Table of Contents of the Schedules has been added by the International Bureau of WIPO. Application for Registration of Mark
Registration Procedure
Assignment and Transmission
Licensing
Registration of Transactions
Invalidity of Registration
Functions of the Registrar
The Register
Powers of Commissioner of Customs Relating to Infringing Goods
Offences
Supplementary Provisions
Collective Marks
Certification Marks