Registering your brand Adrienne Thompson Manager, Trade Marks, Designs & Geographical Indications
Why is Intellectual Property Crucial for Marketing the Products or Services of Your Business? A marketing strategy should establish a clear link between your products/services and your small and medium-sized enterprise (SME), as the producer or provider of such products/services. Customers should be able to distinguish, at a glance, between your products or services and those of your competitors and associate them with certain desired qualities. Intellectual property is an important tool in: creating an image for your business in the minds of your current and potential customers positioning your business in the market.
Intellectual Property Rights and Marketing Trade Marks “Any sign that is capable of being graphically represented and capable of distinguishing the good or services of one undertaking from those of another undertaking” – The Trade Marks Act 1999 A well-crafted trade/ service mark is often a decisive tool for the success of a SME in the market place. Enable consumers to distinguish products or services of your SME from those of your competitors and to associate your products or services with desired qualities. Furthermore, it may play an important part in the ability of your product or service to penetrate a new market.
Trade Marks
Why are Trademarks Relevant to the Success of Your Business? Your trademarks are in many ways the face of your business. They are also seen as a guarantee of consistent quality. A customer who is pleased with the quality of your product or service will continue to purchase it based on the quality expectations associated with the known trademark
TM in a global context Choose names that are appealing Create unique names Avoid generic, misleading names Avoid descriptive, obscene names Research names – internet search, TM registry search
Trade Mark Registration Register in Jamaica first Seek legal advice for each jurisdiction
Trade Mark Registration Protection is Jurisdictional Seek registration in other countries through: Individual Country Registration Regional Registration (where available) International Registration: Madrid Protocol (Jamaica is not yet a signatory)
Selecting & Registering Trademarks locally An application to register a Trade Mark must be filed at Jamaica Intellectual Property Office (JIPO), via form ‘TM1’. The application must contain: a clear representation of the Mark including any colours, forms, or three-dimensional features acceptable and specific descriptions of the goods and/or services to which the Mark will apply we classify goods and services based on the Nice Classification of goods and services Name, address and telephone number of applicant The Mark must fulfill all the requirements under the Trade Marks Act, 1999, Trade Marks Rules 2001 and The Trade Marks Amended Rules 2011, in order for it to be protected as a Trade Mark including as a Collective or Certification Mark.
Cost to register A Trademark in Jamaica The fee is payable in two stages: Application to register $7,800 Each additional class $ 2,200 Acceptance of the mark for registration $ 7,800 Publication of the mark in the Trade Marks Journal $ 2,200
Benefits of Registration Trade Mark Registration (Protection) Ownership License Transfer of ownership Legal action, i.e. Enforcement Consumer confidence Assist in overseas registration Needed for Madrid Protocol Relative grounds of refusal
International Registration Individual Countries Normally through a local agent Apply directly (online where available) Foreign fees Mark must meet requirements
International Registration Individual Countries United States: USPTO https://www.uspto.gov/trademark UK https://www.gov.uk/government/organisations/int ellectual-property-office Australia https://www.ipaustralia.gov.au/ Japan http://www.jpo.go.jp/
International Registration Regional Registration Systems CTM (Europe) 28* EU States ARIPO (African Reg. Ind. Property Org.) 18 States OAPI (African Intellectual Property Org.) 17 States Apply directly Regional office Need representative Applicable fees Must meet requirements for registration
UK direct filing UK IPO: https://www.gov.uk/government/organisations/intellectual-property-office
The Madrid system Jamaica USA MARID System UK Japan China
Madrid Protocol International registration of Trade Marks Avoid individual filing Avoid agents in each country* (refusals) Designate the countries for registration Individual country fees & examination Easier to manage (Changes, renewals, etc.) Dependent on basic application or registration 99 Member States, 115 Countries International Application submitted to WIPO through Member State IP Office*
Madrid Protocol costs The cost of an international trademark registration includes the basic fee (653 Swiss francs*), plus additional costs depending on the nature of your mark, where you want to protect it, and how many classes of goods and services will be covered by your registration. For example, to register a trademark in both India and the European Union, with no color elements and for one class of goods, the total cost will be 1'612 Swiss francs [653 basic fee + 62 (one class in India) + 897 (one class in the European Union)]. * 1 Swiss franc = 1.03 US Dollars Fee calculator: http://www.wipo.int/madrid/en/fees/calculator.jsp
Thank You! Jamaica Intellectual Property Office (An agency of the Ministry of Industry, Commerce, Agriculture & Fisheries) 18 Trafalgar Road Kingston 10. (876).946.1300 / 946-0789 Website: http://www.jipo.gov.jm Email: info@jipo.gov.jm