THE TRADES MARK ACT

16th August 2001

Preliminary

1. These Rules may be cited as the Trade Marks Rules. 2001.

 
2.-(1) In these Rules unless the context otherwise requires- 

"appointed day" means the 24th day of August. 2001. 

"Convention Country" means a country other than Jamaica which is a party to the Paris Convention for the Protection of Industrial Property. March 20. 1883 as revised or amended from time to time: 

"former Act" means the Trade Marks Act in force immediately before the 3rd day of September 2001: 

"the office" means the Office of the Registrar of Companies: 

"the old law" means the former Act and any other enactment or rule of law applying. immediately before the appointed day. to trademarks registered under the former Act: 

"proprietor" means the person registered as the proprietor of a trademark; 

"specification" means the designation of goods or services in respect of which a trademark. or a licensee of a trademark. is registered or proposed to be registered. 

(2) In these Rules, references to the filing of any application notice or other documents shall be construed as references to their being sent or delivered to the Registrar at the Office

3.-(1) The fees to be paid in respect of applications, registrations or other matters under these Rules shall be those specified, in relation to such matter. in the First Schedule.  

(2) Any form required to be filed with the Registrar in respect of any specified matter shall be subject to the payment of the fee (if any) specified, in respect of that matter, in the First Schedule. 

4. The forms referred to in these Rules are those contained in the Second Schedule and shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases

Registration 

5.(1) An application for the registration of a trademark shall be filed on Form TMI and fees therefor paid in the manner specified in the First  Schedule. 

 (2) Where an application relates to a trademark which- 

(a) is three dimensional. the application shall contain a description of the mark in graphic form or 

(b) has color. the application shall contain a description of the color and a specimen thereof shall be submitted with the application.

(3) An application to register a word as a trademark shall be treated as an application to register that word without regard to its graphic form shown in the application unless the application includes a statement that the application is for registration of the word in the graphic form.

 6.-(1) Where. pursuant to section 19 of the Act. a right to priority is claimed by reason of an application for protection of a trademark duly filed in a Convention country. particulars of that claim shall be included in the application for registration under rule 5. 

(2) There shall be filed with the application a certificate by the registering or other competent authority of a Convention country certifying, or verifying to the satisfaction of the Registrar- 
(a) the date of the filing of the application in that country; 

(b) the registering or competent authority;

(c) the representation of the mark, and 

(d) the goods or services covered by the application 

8.-(1) An application may be made for registration in more than one class specified in the Fourth Schedule.

(2) Every application shall specify the class or classes in the Fourth Schedule to which it relates and the specification shall-

1. (a)  set out the class or classes in consecutive numerical order; and

2. (b)  list and each class the specific goods or services appropriate to that class for which protection is sought.

(3) If the specification lists goods or services by reference to a class in the Fourth Schedule in which they do not fall, the applicant may request, by filing Form TM2, that his application be amended to include the appropriate class for those goods and services, and upon the payment of the appropriate class fee specified in the First Schedule the Registrar shall amend his application accordingly.

9. (1) For the purposes of any proceedings before the Registrar under these Rules or any appeal from a decision of the Registrar under the Act or these Rules, an address for service in Jamaica shall, subject to the provisions of this rule, be filed on Form TM3 by-

1. (a)  every applicant for the registration of a trademark;

2. (b)  every person opposing an application for registration of a trade

   mark;

3. (ii) under &on 46 of the Act for the invalidation of the registration of
   (i) under section 44 of the Act for the revocation of the registration of a trademark;
   (c)  every applicant applying to the Registrar-trade mark, or
   a

(iii) under section 62 of the Act for the correction of an error or omission in the register;

(d) every person granted leave to intervene under rule 26 (5) (the intervener); and

(e) every proprietor of a registered trade mark which is the subject of an application referred to in sub-paragraph (c).

(2) Theaddressforserviceofanapplicantforregistrationofatrade mark shall, upon registration of the mark, be deemed to be the address for service of the registered proprietor, subject to any filing to the contrary under paragraph (1) or rule 33(2).

(3) Whereanapplicantisrequiredtofileanaddressforserviceand such requirement is made pursuant to the directions of a form requiredby the Registrar pursuant to section 54 of the Act, the applicant shall file the address on that form.

(4) Anythmg sent to any applicant, opponent, intervener or registered proprietor at his address for service shall be deemed to be properly sent.

(5) TheRegisuarmay,wherenoaddressforserviceisfiled,treatas the address for service of the person concemed, his trade or business address in Jamaica, if any.

(6) AnaddressforserviceinJamaicamaybefiledatanytimebythe proprietor of a registered trade mark and by any person having an interest in or charge on a registered trade mark.

(7) Where an address for service is not filed as required by paragraph (1) and there is no trade or business address in Jamaica, the Registrar shall send the person a concealed notice to file an address for service within two months of the date of the notice and if that person fails to do so-

(a) in the case of an applicant referred to in paragraph (1) (a) or (c), the application shall be treated as abandoned;

(b) in the case of a person referred to in paragraph (1) (b) or (4, he shall be deemed to have withdrawn from the proceedings; and

(c) in the case of the proprietor referred to in paragraph (1) (e), he shall not be permitted to take part in any proceedings.

10.-(1) Where an application for registration of a trade mark does not satisfy the requirements of section 16(2) or (3) of the Act or rule 5 or 8, the Registrar shall send notice thereof to the applicant to remedy the deficiencies or where the deficiency relates to the non-payment of fees, to make the payment.

(2) If, within two months of the date of the notice, the applicant-

(a) fails to remedy any deficiency notified to hm in respect of section 16(2); or

(b) fails to remedy any deficiency notified to him in respect of rule 5 or 8(2) or fails to make the required payment. the application shall be treated as abandoned; 

(13) Where in opposition proceedings any extension of time is granted to any party, the Registrar may thereafter, if he thinks fit without giving that party a hearin& grant any reasonable extension of time to any other party in which to take any subsequent step.

(14) Where a party giving notice of opposition under paragraph (1) or an applicant send a counter-statement under paragraph (3) neither resides nor carries on business in Jamaica, the Registrar may-

(a) require him to give security,in such form as the Regism may deem sufficient, for the costs of the proceedings before the Registrar, for such amount as the Registrar may deem fit; and

(6) at any stage in the proceedings, require further security to be given at any time before giving his decision in the case.

(15) Intheeventofanapplicantfailingtofileacounter-statement in accordance with paragraph (3), the Registrar, in deciding whether costs should be awarded to the opponent, shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.

---