Marcus Goffe, LL.B., LL.M., Attorney-at-Law
Trademarks, Designs & Geographical Indications Manager
Jamaica Intellectual Property Office
Ground Floor, JAMPRO Building
18 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 Property
Trade Marks
Patents
Industrial Designs
Geographical Indications
Copyright and
Related Rights
Role of IP in Branding
 Protects creativity / invention/ investment
 More than one form of IP may be involved in branding
 Copyright
 Designs
 Patents
 Trade secrets/ Confidential Information
 Trade 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 Marks
 Service marks
 Word marks
 Figurative marks
 Mixed marks
 Colour marks
 Collective marks
 Certification marks
 Sound marks
 Smell 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 Marks
 Communicator to consumers
 Indicator of origin/source
 Distinguishes goods/services
 Indicator of quality
 Develop/maintain reputation/goodwill
 Assets in their own right
 Can be valued, bought, sold, licensed, willed - with or
without the business
Unregistered Trade Marks
 Protected by the common law of Passing Off
 No formal registration required
 In order to obtain redress for infringement, must
prove:
 Goodwill
 Misrepresentation
 Damage
Registered Trade Marks
 Protected by the Trade Marks Act
 Formal registration required at JIPO
 Registration valid for 10 years, renewable indefinitely
 In order to obtain redress for infringement, must
prove:
 Use of identical or similar mark
 In relation to identical or similar goods or services
 Likelihood of confusion (unless identical)
Do you Recognize these Trademarks ?
Top 10 Global Brands, 2008, US$
 Coca-cola $66.7 billion
 Toyota $34 billion
 IBM $59.03 billion
 Intel $31.2 billion
 Microsoft $56 billion
 McDonald’s $31 billion
 General Electric $53
 Disney $29.2 billion
billion
 Nokia $35.9 billion
 Google $25.5 billion
Trade /Service Marks
any 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 & Merchandising
Image – 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 Industries
 Well 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 character
 Consists 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’d
 Shape of goods
 Contrary to public policy or to accepted principles of
morality
 Of 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’d
 Disparages persons (living or dead) or institutions or
beliefs
 Falsely suggests a connection with such persons,
institutions or beliefs
 Consists 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’d
 Consists 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;
AND
 likelihood of confusion on the part of the public,
including the likelihood of association with the earlier
trade mark.
 Passing off
 Earlier right, in particular, copyright or design
Registration Procedures
 Applicant’s name and address (+ for service)
 a statement of the goods or services in relation to
which (Nice Classification)
 A representation of the trade mark
 Examination by JIPO
 Publication in JIPO Journal
 Observations
 Oppositions
Registration Fees
 The 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 Protocol
 Allows 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:
Jamaica Intellectual Property Office
Ground Floor, JAMPRO Building
18 Trafalgar Road
Kingston 10
Telephone: 946-1300 / 946-0789
QUESTIONS?