marcus goffe, ll.b., ll.m., attorney-at-law trademarks, designs & geographical indications...
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Marcus Goffe, LL.B., LL.M., Attorney-at-LawTrademarks, Designs & Geographical Indications
ManagerJamaica Intellectual Property Office
Ground Floor, JAMPRO Building18 Trafalgar Road, Kingston 10
www.jipo.gov.jm
What is Branding?The process involved in creating a unique
name and image for a product in the consumers' mind, mainly through advertising campaigns with a consistent theme. Branding aims to establish a significant and differentiated presence in the market that attracts and retains loyal customers.
http://www.businessdictionary.com
What is Intellectual Property? Legal rights that protect the creations of the
human mind. Intangible property rights Separate property rights from the property
rights of the tangible object in which the IP may be embodied or otherwise associated.
Includes copyright, trade marks, designs, patents, geographical indications, plant variety protection, trade secrets/confidential information, traditional knowledge
Intellectual Property
INTELLECTUAL PROPERTY RIGHTS
Industrial PropertyTrade Marks
PatentsIndustrial Designs
Geographical Indications
Copyright and Related Rights
Role of IP in BrandingProtects creativity / invention/ investmentMore than one form of IP may be involved in
brandingCopyrightDesignsPatents Trade secrets/ Confidential InformationTrade Marks – protect the brand/ essential to
branding
What is a Trade Mark?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.
“sign” includes a word, a personal name, design, letter, numeral, colour, combination of colours or a combination of the foregoing or the shape of goods or their packaging
Types of Trade MarksService marksWord marksFigurative marksMixed marksColour marksCollective marksCertification marksSound marksSmell marks
Collective and Certification Marks
"certification mark" - 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'' - a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
Benefits of Trade MarksCommunicator to consumersIndicator of origin/sourceDistinguishes goods/servicesIndicator of qualityDevelop/maintain reputation/goodwillAssets in their own rightCan be valued, bought, sold, licensed, willed -
with or without the business
Unregistered Trade MarksProtected by the common law of Passing OffNo formal registration requiredIn order to obtain redress for infringement,
must prove:GoodwillMisrepresentationDamage
Registered Trade MarksProtected by the Trade Marks ActFormal registration required at JIPORegistration valid for 10 years, renewable
indefinitelyIn order to obtain redress for infringement,
must prove:Use of identical or similar markIn relation to identical or similar goods or
servicesLikelihood of confusion (unless identical)
Do you Recognize these Trademarks ?Do you Recognize these Trademarks ?
Top 10 Global Brands, 2008, US$Coca-cola $66.7
billion
IBM $59.03 billion
Microsoft $56 billion
General Electric $53 billion
Nokia $35.9 billion
Toyota $34 billion
Intel $31.2 billion
McDonald’s $31 billion
Disney $29.2 billion
Google $25.5 billion
Trade /Service Marksany SIGN that is capable of being GRAPHICALLY REPRESENTED and capable of DISTINGUISHING the goods or services of one undertaking from those of another
Personality Rights
TMs & Sports
Image & MerchandisingImage – includes your reputation as an outstanding athlete, as a high achiever
Reputation as a good
sportsman/sportswoman
Personality and fame inside &
outside of the sporting arena. Important for merchandising
TMs & the Creative IndustriesWell Known personalities must also be
concerned about protecting unauthorized use of their image i.e. name, pictures, photographs
This includes Jamaican musicians, entertainers, artists, athletes, actors, dancers
Important for the Creative Industries
Non-registrability: Absolute Grounds
Does not satisfy the definition of "trade mark“Devoid of any distinctive characterConsists exclusively of signs or indications which
may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services
consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
EXCEPTION: Acquired distinctiveness based on use.
Absolute Grounds cont’dShape of goodsContrary to public policy or to accepted
principles of moralityOf such a nature as to deceive the public as
to the nature, quality or geographical origin of the goods or services or otherwise
Bad faith
Absolute Grounds cont’dDisparages persons (living or dead) or
institutions or beliefsFalsely suggests a connection with such
persons, institutions or beliefsConsists of or contains a representation of
the Coat of Arms of Jamaica, national flag of Jamaica and other national symbols
Consists of or contains the flag of a Paris Convention country without authorization
Absolute Grounds cont’dConsists of or contains the armorial bearings
or other state emblems of a country which are protected under the Paris Convention
Consists of or contains an official sign or hallmark adopted by a Convention country
Consists of or contains armorial bearings, flags or other emblems, abbreviations and names of int’l organizations without authorization
Non-registrability: Relative Grounds
Identical mark for identical goods or services; OR
Identical mark for similar goods or services;Similar mark for identical or similar goods or
services; ANDlikelihood of confusion on the part of the
public, including the likelihood of association with the earlier trade mark.
Passing offEarlier right, in particular, copyright or design
Registration ProceduresApplicant’s name and address (+ for service)a statement of the goods or services in
relation to which (Nice Classification)A representation of the trade markExamination by JIPOPublication in JIPO JournalObservationsOppositions
Registration FeesThe Trade Mark fee is payable in two stages:-i. Upon application: $7,800 (application fee
include payment for the first class), plus $2,200 for every additional class.
ii. Upon acceptance of the Mark for registration:$2,200.00 for advertising the Mark in the Trade Mark Journal, and a further $7,800.00 for registration.
For a Certification or Collective Mark, an additional fee of $11,200.00 is required to file regulations governing the use of the Mark.
Madrid ProtocolAllows trade mark registration in multiple
countries via one application in the home country
Facilitates easier global reach of brand to the world
Procedurally easier than filing several national applications worldwide
Cheaper than filing several national applications worldwide
Visit our Website: www.jipo.gov.jm Contact us at:Contact us at:
Jamaica Intellectual Property Office Jamaica Intellectual Property Office
Ground Floor, JAMPRO BuildingGround Floor, JAMPRO Building
18 Trafalgar Road18 Trafalgar Road
Kingston 10Kingston 10
Telephone: 946-1300 / 946-0789Telephone: 946-1300 / 946-0789
QUESTIONS?