The Trade Marks (Amendment) Act, no. 17 of 2013

Section2 (1) 1. Insert the following definitions in their appropriate alphabetical sequence— “Convention country” means a country, other than Jamaica, that is a party to the Paris Convention; “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised or amended from time to time; “Trade Marks Journal” means the Trade Marks Journal published by the Jamaica Intellectual Property Office; and “WTO Agreement” means the Agreement establishing the World Trade Organization signed at Marrakesh on April 15, 1994. ' 2, Inthe definition of “sion” — (a) insert a closing bracket immediately after the word “name”; and (b) delete the bracket appearing after the word “packaging”. The Trade Marks (Amendment) Act, 2013 [No. ] 3 First Column Second Column Provision Amendment

Section 6 Delete— (a) from subsection (1), the words “registered joint proprietors of a trade mark” and substitute therefor the words “joint proprietors of a registered trade mark”; (b) subsection (2).

Section 7 Delete the section and substitute therefor the following— “Application 7. The provisions of crepiatered sections 4, 6, 27, 30 and 75 trade mark (which relate to a registered provisions, trade mark as an object of property) shall apply, with the necessary modifications in relation to an application for the registration ofa trade mark as they apply in relation to aregistered trade mark.”

Section 9 1. Delete from subsection (5)(b) the word “sign” wherever it appears and substitute therefor in each case the words “the trade mark”. 2. Delete from subsection (7) the word “partly” and substitute therefor the word “party”.

Section 10 Insert next after subsection (2) the following as subsection (3)}— *“ (3) Nothing in this Act shall be construed as entitling the proprietor ofa registered trade mark to— (a) interfere with or restrain the use by any person of an un- [No. ] The Trade Marks (Amendment) Act, 2013 First Column _ Second Column Provision Amendment registered trade mark that is identical with or nearly resem- bling such registered trade mark, in relation to goods or services in connection with which that person or his pre- decessor in title has continu- ously used that unregistered trade mark, from a date prior to— (i) _ the use of the reg- istered trade mark in relation to those goods or services by the proprietor or a predecessor in title ofhis; or (ii) the registration of the registered trade mark in respect of those goods or ser- vices in the name of the proprietor ora predecessor in title of his, whichever is earlier; or (b) object (on such use, as described in paragraph (a), being proved) to that person being put on the Register for that unregistered trade mark, in respect of those goods.”. The Trade Marks (Amendment) Act, 2013 [No. ] 5 First Column Second Column Provision Amendment

Section 12(1) Insert immediately after the word “registered” the words “, unless the Registrar is satisfied that consent has been given by or on behalf of the Government”.

Section 14 1. Delete from paragraph (b) of subsection (1) all the words appearing after the words “the application” and substitute therefor the words “, was entitled to protection, under the Paris Convention or the World Trade Organization Agreement, as a well- known trade mark; or”. 2. In subsection (2) delete the words “as defined in subsection (1)(b) whose registration expires” and substitute therefor the words “referred to in subsection (1)(a), the registration of which expires,”.

Section 16 In subsection (1) delete the word “accompanies” and substitute therefor the word “accompanied”.

Section 22 Delete subsection (1) and substitute therefor the following— “ (1) On acceptance of the application along with the specified registration fee and advertisement fee, the Registrar shall cause the application to be published in the Trade Marks Journal in such manner as may [No. } The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment be prescribed, and the date of publication shall be reckoned as the date of acceptance.”,

Section 30 In subsection (1) insert immediately after the words “this Act” the words “and shall be construed as notice to the Registrar of those particulars”.

Section 38 1. Delete subsection (6) and substitute therefor the following— “ (6) Ifthe Court decides that an order shall not be made under this section, the person who was in possession, custody or control of the goods, material or articles before they were delivered up, is entitled to regain possession.”. 2. Insert in subsection (7), immediately after the words “the Copyright Act” the words “or any other law as it relates to intellectual property, in force for the time being”.

Section 43 1. Delete subsections (1) and (2) and substitute therefor the following — “ (1) The registration of a trade mark may be revoked on any of the following grounds— (a) within the period of five years prior to the date of application for revocation, the trade mark has not been used for bona fide purposes in Jamaica in relation to the goods or services for which the trade The Trade Marks (Amendment) Act, 2013 [No. ] 7 First Column Second Column Provision Amendment mark is registered and there are no proper reasons put forward by the proprietor for its non-use; (b) the bona fide use of the trade mark has been suspended for a continuous period of five years prior to the date of the application for revocation, and there are no proper reasons put forward by the proprietor for its disuse; (c) asaresult of the act or failure to act on the part of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which the trade mark is registered; or (d) the trade mark is likely to deceive or confuse the public as to the nature, quality or geographical origin of goods or services or on account of its use by the proprietor, or with his consent, in relation to the goods or services for which it is registered. (2) For the purposes of subsection (1)— (a) “use ofa trade mark” includes use in a form differing in [No. ] The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment elements which do not alter the distinctive character of the mark in the form in which it was registered; and (b) “use in Jamaica” includes affixing the trade mark to goods or to their packaging in Jamaica where those goods are solely for export.”. 2. In subsection (3) — (a) insert immediately after the words “subsection (1)(a)” the words “or (b)”. (b) delete the words— (i) “three years” and substitute therefor the words “five years”; and (ii) “three year period” and substitute there- for the words “five year period”.

Section 44(2) Delete the words “and where” and substitute therefor “and if in any other case”.

Section 46 Delete the section and substitute therefor the following— “Application 46.—(1) Subject to sub- declaration Section (2), an application for | ofinvalidity. a declaration of invalidity may be made by any person to the Registrar or the Court. The Trade Marks (Amendment) Act, 2013 [No. } 9 First Column Second Column Provision Amendment (2) Ifproceedings are pending in Court concerning the trade mark in question, an application under this section shall be made to the Court and if in any other case the application is made to the Registrar, he may at any stage refer any matter arising from the application, to the Court. (3) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. (4) The Registrar may apply to the Court for a declaration of the invalidity of the registration of a trade mark in the case of bad faith or error in the registration. (5) Where the regis- tration of a trade mark is declared invalid to any extent, then the registration shall, to that extent be deemed to have never been made, but without prejudice to any transaction past and closed.” 10 [No. J The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment

Section 48 Delete subsection (1) and renumber subsections (2) and (3) as subsections (1) and (2), respectively.

Section 49(2) Delete the subsection and substitute therefor the following— “ (2) A trade mark is entitled to protection under the Paris Convention if it is well known in Jamaica as being the mark ofa person who is— (a) a citizen of a Convention country; or (b) habitually resident in, or has a real and effective industrial or commercial establishment in, a Convention country, whether or not that person carries on business or has any goodwill in Jamaica and any reference to the proprietor of such a mark shall be construed accordingly.”

Section 58(3) Delete the words “Office of the Registrar of Companies” and substitute therefor the words “Jamaica Intellectual Property Office”.

Section 59(2)(c) Delete the words “Office of the Registrar of Companies” and substitute therefor the words “Jamaica Intellectual Property Office”.

Section 78(g) Delete the words “Office of the Registrar of Companies” and substitute therefor the words “Jamaica Intellectual Property Office”. The Trade Marks (Amendment) Act, 2013 {[No. ] 11 First Column Second Column Provision Amendment New section 81 The principal Act is amended by renumbering section 81 as section 82 and inserting next after section 80, the following as section 81— “Minister 81. The Minister may, by may amend : : monetary Order, subject to affirmative penalties. resolution, amend the monetary penalties specified in this Act.” Third Schedule 1. Delete paragraph 2(1) and substitute therefor the following— 6s (1) All existing registered marks registered in Part A or B of the old register shall be deemed to have been transferred to the Register on the appointed day and shall have effect, subject to the provisions of this Schedule, as if registered under this Act.” 2. In paragraph 9(2) delete the number “79” and substitute therefor the number “78”. 3. In paragraph 13(1) and (2) delete the number ‘*7” wherever it appears and substitute therefor in each case the number “8”. 4. Delete paragraph 15(2) and substitute therefor the following— ee (2) An application under section 43(1)(a) or (b) of this Act may be made at any time after the appointed day, in relation to an existing registered mark other than an existing registered mark 12 [No. J The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment registered by virtue of section 29 of the 1958 Act. 5. In paragraph 18, delete the number “66” and substitute therefor the number “65”. Trade Marks Rules, 2001

Rule 2(1) Delete from the definition of “the Office” the words “Office of the Registrar of Companies” and substitute therefor the words “Jamaica Intellectual Property Office”.

Rule 12 1. Insert next after paragraph (3) the following as paragraph (3A)— “« (3A) At any time before the two month period referred to in paragraph (3) expires, the parties may agree to a two month extension of time for the filing of Form TMS (hereinafter in this rule referred to as the “cooling-off period”).”. 2. Delete paragraph (4) and substitute therefor the following— (4) At any time before the expiry of the cooling- off period, the Registrar may, as he sees fit; grant such further extensions of time as may be— (a) requested in writing by the applicant accompanied by the payment by the applicant of the cooling-off fee prescribed in the First Schedule. First Schedule; and The Trade Marks (Amendment) Act, 2013 [No. ] 13 First Column Second Column Provision Amendment (b) agreed to in writing by the opponent, up to a period of six months follow- ing on the expiration of the cooling-off period.”. 3. Renumber paragraphs (5) to (16) as paragraphs (7) to (18) and insert the following as paragraphs (5) and (6)}— “ (5) Within one month of the expiry of the cooling-off period, the applicant may submit a counter-statement on Form TMS, to the Registrar who shall send a duplicate of the counter-statement to the opponent. (6) If the applicant fails to file a counter-statement referred to in paragraph (5) within one month after the expiry of the cooling-off period, his application for the registration of the trade mark shall be deemed to be withdrawn.”.

Rule 26(2) Delete the paragraph and substitute therefor the following— “~ (2) Where any application is made under paragraph (1) by a person other than the proprietor of the registered trade mark— (a) it shall be accompanied by two copies of the application and statement; and 14 [No. ] The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment (b) the copies referred to in sub- paragraph (a) shall be transmitted forthwith by the Registrar to the registered proprietor.”.

Rule 26(3) Delete the paragraph and substitute therefor the following— “ (3) Within two months of the date of receipt of the application and statement by the proprietor, the proprietor may file in duplicate a counter-statement together with Form TMS5 and the Registrar shall send the duplicate thereof to the applicant.”.

Rule 30(2) Delete the paragraph and substitute therefor the following— (2) An application made under “ paragraph (1) shall— (a) where the transaction is an assignment, be signed by or on behalf of the parties to the assignment; or (b) where the transaction is within the scope of sub- paragraph (b), (c) or (d) of paragraph (1), be signed by or on behalf of the grantor of the licence or security interest, and be accompanied by such supporting documentation as the Registrar considers to be sufficient to verify the transaction.”’. The Trade Marks (Amendment) Act, 2013 [No. J 15 First Column Second Column Provision Amendment

Rule 39(3)(f) Delete the number “41” and substitute therefor the number “40”.

Rule 52 Delete the rule and substitute therefor the following— “Correction 52. Subject to rule 54, any of irregularities irregularity im procedure i minor procedure. before the Office or the Registrar may be rectified on such terms as the Registrar may direct.”.

Rule 53 Delete the rule and substitute therefor the following— “Excluded 53.—(1) The Registrar days. shall, where the time for doing anything under these Rules expires on an excluded day, extend that time to the next following day not being an excluded day. (2) In this Rule “ex- cluded day” means a day on which — (a) _ the Office is not open; or (b) _ there isa general interruption and subsequent dis- location of the postal services of Jamaica.”. 16 [No. ] The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment

Rule 54 Delete the rule and substitute therefor the following— “Alteration of 54. —(1) The times or time limits or periods periods— upon request, etc. (a) prescribed by these Rules, other than times or periods pres- cribed by the rules mentioned in paragraph (6); or (b) _ specified by the Registrar for do- ing any act or taking any pro- ceedings, may, at the written request of the person or party con- cerned, or on the initiative of the Registrar, be extended by the Registrar as he thinks fit and upon such terms as he may direct. (2) The following provisions apply where a request for the extension of atime or period prescribed by these Rules has been made— (a) if the request is filed after the application has been published under rule 12, it The Trade Marks (Amendment) Act, 2013 [No. ] 17 First Column Second Column Provision Amendment shall be on Form TM25 in the Second Second Sched- ule, and shall in any other case be on that form if the Registrar so directs; (b) ifthe request is sought in respect of a time or pe- riods prescribed by rule 12(1), 12 (3), 12(4), 14, 19, 21(1), 24 or 26(3), the party seeking the extension shall send a copy of the re- quest to each af- fected person. (3) Subject to para- graph (4), arequest for ex- tension under paragraph (1), shall be made before the expiration of the time period in question. (4) Where a request for extension is made after” 18 [No. ] The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment the time period referred to in paragraph (3), the Registrar may extend such time period if the Registrar is satisfied with the reason given for the delay in requesting the extension. (5) Where— (a) the period in which any party to any proceed- ings before the Registrar may file evidence un- der these Rules is to begin upon the expiry of any period in which any other party may file evi- dence; and (b) that other party notifies the Reg- istrar that he does not wish to file any, or any further, evi- dence, the Registrar may direct that the period within which the first mentioned party may file evidence shall begin on such date as may be specified in The Trade Marks (Amendment) Act, 2013 [No. ] 19 First Column Second Column Provision Amendment the direction and shall notify all parties to the proceedings of that date. (6) The rules ex- cepted from paragraph (1) are rules 9(7), 10 and 25.”. First Schedule Renumber items 1(b) to (d) as items 1(c) to (e) and insert in the appropriate columns the following as item 1(b)— “(b) coolingoff period ... 12(4) $6,000.00” Second 1. Delete the words “Full name, address and Schedule postcode of the applicant” wherever they appear and substitute therefor, in each case, the words “Full name, address, Taxpayer Registration Number (TRN) (in the case where the person is resident in Jamaica) and postal code of the applicant”. 2. In Form TM1— (a) delete from item 6 the third column headed “Being used/Bona Fide intention to use”; and (b) insert in item 10 immediately before the word “Signature” the words — “I hereby declare that the trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or 20 [No. J The Trade Marks (Amendment) Act, 2013 First Column Second Column Provision Amendment there is a bona fide intention that it will be so used.” 3. In Form TM3— (a) in the heading delete the words “Request to appoint an agent or to enter change of address for service” and substitute therefor the heading, “Request to appoint or change an agent or enter or change an address for service”; and (b) delete item 4 and substitute therefor the following— “4. On behalf of the propri- etor, licensee or opponent, I/ we notify you that I am/we are— (a) O authorized to receive service at my/our ad- dress; (b) © the authorized agent. (Indicate as appropriate).”. 4. Initem 6 of Form TM6, insert next after sub-paragraph (b) the following as sub- paragraph (c)— “(c) obvious mistakes”. The Trade Marks (Amendment) Act, 2013 [No. ] 21 Form TM25 Insert next after Form TM25 the following — “ Form TM25A TRADE MARKS ACT Request for a Cooling-off Period 1. Trade Mark number 2. Opposition number 3. Fullnameof person or company making this request 4. Taxpayer Registration Number 5. Isthisthe applicant or the opponent? 6. Name and address (including postcode) of the agent (if any) 7. Declaration I confirm that the other party to these proceed- ings has agreed to this request for a cooling-off period. Your signature Date 8. Nameand daytime phone number of the person we should contact in case of query 9. Your Reference Number of sheets attached to this form Note: You shall get the other party’s written agreement to this request before you sign the declaration in question 6. Please attach the agreement to this Form.”. 22 (No. ] The Trade Marks (Amendment) Act, 2013 Fourth Schedule _ Insert next after Class 42 the following— “Class 43 Services for providing food and drink;. temporary accommodation. Class 44 Medical services; veteri- . nary services; hygienic and beauty care for human beings or animals; agricul- ture, horticulture and forestry services. Class 45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.” Passed in the House of Representatives this 16th day of July 2013. MICHAEL A. PEART Speaker. Passed in the Senate this 26th day of July 2013. FLOYD E. MORRIS President. This printed impression has been carefully compared by me with the authenticated impression of the foregoing Act, and has been Sound by me to be a true and correct printed copy of the said Act. Clerk to the Houses of Parliament.