Most significant changes occurred in the last two years

Durrant Pate/Contributor

Intellectual property (IP) practitioners in Jamaica have arguably witnessed more significant changes in the IP legal landscape in the last two years than they have two decades prior.

That’s the words from noted IP attorney, Dianne Daley McClure, a founding partner in the St Andrew law firm of Foga Daley, where she heads its IP Department. 

In an article contributed to CCJ Academy for Law, which is a not-for-profit legal entity in Trinidad and Tobago, the seat of the Caribbean Court of Justice (CCJ), Daley McClure detailed Jamaica’s IP development over the years.

The mission of CCJ Academy for Law is to support the work of the CCJ by playing a catalytic role in the further development of Caribbean jurisprudence through the non-judicial process. In the published article, Daley McClure wrote that 2020 heralded a new law on patents and designs, with the Patents and Designs Act being the first law to be enacted in Jamaica that year.

It was not until two years later, on February 11, 2022, that the Patents and Designs Act came into effect, making monumental changes to the laws. In the area of trademarks, significant amendments came into effect on June 30, 2021, through the Trade Marks (Amendment) Act which has imposed new conditions of protection and made way for Jamaica’s implementation of the Madrid Protocol for the International Registration of Marks (the Protocol).

Major changes in Patents, Designs and Trademark protection:

Patent updates

The new Patents and Designs Act No. 1 of 2020 came into effect on February 11, 2022, completely overhauling the systems that prevailed under the Patent Act of 1857 and the Designs Act of 1937 and repealing those laws in its wake. Jamaica also acceded to the Patent Cooperation Treaty (PCT) on November 10, 2021, which came into effect February 10, 2022.

The new law has modernised the patent system by raising the criteria of protection to international standards and implementing the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement on patents and designs as well as the PCT. Under the new law, patents are available for inventions in all fields of technology provided they are new, involve an inventive step and are capable of industrial application and don’t fall within the excluded subject matter.

Novelty

Under the new law, absolute novelty is required, not local novelty as obtained under the old law. The invention must not have been made available to the public anywhere in the world, whether by means of written or oral description use or any other means, prior to the filing date. There is a grace period of 12 months within which certain disclosures will not erode the novelty of the invention.

Inventions by Employees

The old law was silent on entitlements in inventions made by employees in the course of their employment. However, the new law outlines circumstances wherein employees would either own their inventions outright or be entitled to compensation in respect of the inventions they create for their employers.

Where an invention is made in the course of the employee’s normal duties or in the course of specifically assigned duties, the law is clear that the employer would own it but only where the invention might reasonably be expected to result from the carrying out of the duties.

Designs update

Industrial designs are now protected at the standard outlined by the WTO TRIPS Agreement and the Paris Convention. The Haque Agreement Concerning the International Registration of Designs (1999 Act & 1960 Act) and the Locarno Agreement Establishing an International Classification for Industrial Designs (1968) also apply.

Under the new law, absolute novelty is required and a design must have individual character. Designs are protected for five years and renewable for two consecutive five-year periods, while under the old law designs were protected for 15 years non-renewable.

Consistent with the government’s policy to protect and safeguard its nation brand (Brand Jamaica) from appropriation and improper use, designs which involve the use of a representation of the Coat of Arms of Jamaica, national flag of Jamaica, armorial bearings, official signs or hallmarks, or other national symbol or emblems and the like, are now excluded from protection unless the government grants consent. Similarly, designs which use the country name of Jamaica or abbreviations or homonyms thereof, the map of Jamaica or national colours of Jamaica, in a misleading manner are not afforded design protection.

Designs, which make use of the traditional knowledge or traditional cultural expressions of indigenous or local communities, without authorisation from the relevant community or otherwise misleading uses, are also excluded. Interestingly, although there is no statutory image right per se, the new law stipulates that designs which use the image or likeness of an individual without consent, will not be registered. Further, designs which use third party copyright or trademarks without consent will not be protected under the new law.

Trademark updates

The Trade Marks (Amendment) Act 2021 gives the Registrar power to impose conditions or limitations on trademarks containing country names, maps, colours, emblems and symbols. Trademarks containing the Jamaican Coat of Arms, flag, emblems and other national symbols are unregistrable without the consent of the Government of Jamaica. This aligns with the government of Jamaica’s policy to protect Brand Jamaica from appropriation and improper use.

Similarly, in an effort to safeguard Jamaica’s traditional knowledge, the amended law renders unregistrable, trademarks which misrepresent or misappropriate the traditional knowledge or traditional cultural expressions of indigenous or local communities in Jamaica. After decades of national consultations and consequent on the passage of the Trade Marks (Amendment) Act, Jamaica acceded to the Madrid Protocol for the International Registration of Marks (the Protocol) on December 27, 2021, six months after the 2021 Act came into effect.

The Protocol took effect on March 27, 2022, and since then, hundreds of foreign-based proprietors have been opting to designate Jamaica in their international applications, taking advantage of the relatively modest individual fees (188 Swiss francs for one class of goods or services and 25 Swiss francs for each additional class and 304 Swiss francs for collective and certification marks).

Prior to accession, it was unclear to what extent local proprietors would utilise the Protocol and questions were raised as regards whether incoming international filings would put a strain on the national trademark system. While these remain largely unanswered, local proprietors have not been rushing to file international applications and the incoming international applications have yet to be published in Jamaica, fuelling speculation that the increased delays being experienced by trademark practitioners in the processing of national applications, may be at least partly attributable to the influx of international filings.

The Jamaica Intellectual Property Office (JIPO) has 18 months from the date of filing to refuse or grant an international registration. The next eight months, which would mark 18 months since the implementation of the Protocol, should paint a clearer picture of how well JIPO has been managing the new regime.