marcus goffe, ll.b., ll.m., attorney-at-law trademarks, designs & geographical indications...

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?