Trade Marks & Copyright 2026 Comparisons

Trade Marks

Trade marks (including trade marks, service marks, collective marks and certification marks) are governed by the following statutes in Jamaica:

• Trade Marks Act No 32 of 1999 (principal Act) (the “Trade Marks Act”);
• Jamaica Intellectual Property Office Act No 25 of 2001;
• Trade Marks Amendment Act No 17 of 2013;
• Trade Marks (Amendment) Act No 11 of 2021 (as of 30 June 2021);
• Trade Marks Rules, 2001 (as of September 2021);
• Trade Marks (Amendment) Rules, 2021; and
• Trade Marks (Amendment) Rules, 2022 (as of 30 September 2023).

Common Law Trade Mark Rights

Unregistered trade marks are protected through passing off, which requires: a misrepresentation made in the course of trade, likely to mislead consumers, and resulting in damage to the claimant’s goodwill.

Under the Trade Marks Act, earlier users of an unregistered mark retain priority. A registered proprietor cannot stop someone who has continuously used an identical or similar unregistered mark for the same goods or services before registration, nor prevent that earlier user from registering their own mark.

Copyright

Copyright is a purely statutory right, which is governed by the following statutes in Jamaica:

• Copyright Act No 4 of 1993 (principal Act) (the “Copyright Act”);
• Copyright (Amendment) Act No 29 of 1999;
• Copyright (Amendment) Act No 13 of 2015;
• Copyright (Amendment) Act No 9 of 2023; and
• Copyright (Amendment) Act No 17 of 2023.

The international treaties and conventions listed below are not self-executing in respect of Jamaica and must be implemented by national legislation.

Trade Marks

Jamaica is a member of the following international treaties and conventions related to trade marks:

• WIPO Convention, since 25 December 1978;
• Nairobi Treaty on the Protection of the Olympic Symbol, since 17 March 1984;
• WTO and signatory to the TRIPs Agreement, since March 1995;
• Paris Convention on Industrial Property, since 24 December 1999;
• Nice Agreement, since 7 February 2006;
• Vienna Agreement establishing an International Classification of the Figurative Elements of Marks, since 7 February 2006; and
• Madrid Protocol concerning the International Registration of Marks, since 27 March 2022.

Copyright

Jamaica is a member of the following international treaties and conventions related to copyright and related rights:

• Berne Convention for the Protection of Literary and Artistic Works, 1886 (as revised 1971);
• International Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, 1961 (the “Rome Convention”);
• WIPO Copyright Treaty, 1996;
• WIPO Performances and Phonograms Treaty, 1996;
• Brussels Convention Relating to the Distribution of Programme-Carrying Satellite Signals, 1974;
• Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, 1971;
• World Trade Organization and by extension the TRIPS Agreement, 1995;
• Beijing Treaty on Audio Visual Performances, 2012 (signatory since 26 June 2012); and
• Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled, 2013 (accession 28 May 2024) (in force 28 August 2024).

Definition of a Trade Mark

Under the Trade Marks Act, a trade mark is any sign capable of graphic representation and able to distinguish the goods or services of one undertaking from another.

Types of Marks

The Act protects trade marks for goods and services, as well as certification and collective marks. Geographical indications receive protection under the Protection for Geographical Indications Act (2004, amended 2018). A protectable sign may be any of the following:

• word;
• name;
• design;
• letter;
• numeral;
• colour;
• combination of colours; or
• the shape of goods or packaging.

Once they are distinctive and graphically representable, protection also extends to:

• 3D;
• colour;
• sound;
• smell;
• motion;
• touch;
• taste;
• pattern;
• hologram; and
• multimedia marks.

Industrial Designs

Industrial designs are protected under the Patent and Designs Act (2020). Designs may also be protected under the Trade Marks Act if they function as source identifiers and are aesthetic rather than functional.

Olympic Symbol and Other Symbols

As a member of the Nairobi Treaty, Jamaica must protect the Olympic Symbol from unauthorised commercial use. The Registrar cannot register trade marks containing armorial bearings, state emblems, national flags or official hallmarks of a Convention country without authorisation. Similar restrictions apply to emblems of international organisations. Where a mark contains a national flag or emblem, proof of consent is required.

Famous Marks

Section 49 of the Trade Marks Act protects well-known marks under the Paris Convention, even if the proprietor has no business or goodwill in Jamaica. The mark must be well known locally and have an established reputation. Owners of well-known marks may restrain unauthorised use through injunctions.

Geographical Indications

The Protection of Geographical Indications Act sets rules for conflicts between trade marks and GIs. A trade mark containing a foreign GI may be refused or revoked if it misleads about origin. However, trade marks applied for or used in good faith, or those with rights acquired before 1 January 1995, are protected.

To qualify for trade mark protection, a mark must be capable of distinguishing goods or services and be capable of graphic representation. Distinctiveness may be inherent or acquired. To show acquired distinctiveness, an applicant must provide evidence that consumers recognise the mark as indicating commercial origin, and that this recognition was gained through use before the filing date.

There is no fixed period of use required, but case law shows the use must be long-standing and intensive.

Relevant factors include:

• market share of the mark;
• intensity, geographic scope, and duration of use;
• investment in promoting the mark;
• consumer recognition of the mark as indicating origin; and
• supporting statements from trade or professional groups.

A registered proprietor has the exclusive right to use or authorise use of the mark for the goods/services covered and may prevent confusingly similar use. Marks with a reputation may also be protected against use on dissimilar goods. Rights persist through registration and renewal. Unregistered marks may be protected through passing off.

Anything done in the course of trade that links a trade mark to goods or services qualifies as use. This includes:

• using the mark in advertising or on business papers;
• placing it on goods or packaging;
• selling or marketing goods under it;
• supplying services; and
• importing or exporting marked goods.

Use in a form that does not alter the mark’s distinctive character counts, and affixing a mark to goods in Jamaica for export also qualifies as use.

The symbol ® may be used only for a registered trade mark, and proprietors are encouraged to use it with their marks to signal registration. There are no penalties for failing to provide notice. However, using the ® symbol with an unregistered mark is a criminal offence under the Trade Marks Act. Any word or symbol implying registration is treated as a claim of registration unless it refers to a foreign registration that genuinely exists. If a trade mark application includes the ® or TM symbol, the Registrar will require proof of foreign registration or the symbol must be removed.

Trade Mark and Copyright Overlaps

Trade marks that take the form of musical, artistic or literary works may also receive copyright protection if they meet the requirement of being the author’s own intellectual creation. While single words are not protected by copyright, original jingles or slogans may qualify. Logos and design marks can also gain copyright protection if they contain original artistic elements.

Earlier Rights Protected

The Trade Marks Act prevents registration of a trade mark if its use would infringe earlier copyright or design rights in Jamaica.

Surnames as Trade Marks

A personal name can function as a trade mark, and individuals may use their own names as a defence to infringement when done in line with honest commercial practices. JIPO registers trade marks consisting of surnames when no identical or confusingly similar earlier mark exists. However, a mark will be refused if it disparages a person or falsely suggests a connection, and proof of a legitimate connection may be required. Surname trade marks do not infringe copyright moral rights.

The Copyright Act sets out the categories of works protected in Jamaica. These include:

• original literary, dramatic, musical and artistic works;
• sound recordings, films, broadcasts and cable programmes; and
• the typographical arrangements of published editions.

Software and data compilations qualify as literary works. Choreographic works, including dance and mime, are protected as dramatic works. Artistic works include:

• graphic works;
• paintings;
• drawings;
• diagrams;
• maps;
• charts;
• engravings;
• etchings;
• lithographs;
• photographs;
• sculptures;
• collages; and
• architectural works such as buildings and models.

Performances are protected as neighbouring or related rights.

Industrial Designs

Certain industrial designs may also receive copyright protection if they contain original artistic elements. However, there are key limitations for design documents, models and designs applied industrially. Copyright is not infringed if someone makes or copies an article from a design document or model where the design is not an artistic work or typeface. Additionally, when a design is applied industrially with the copyright owner’s consent, copyright protection ends 25 years after the first marketing of articles made to that design.

Conditions of Protection

To be eligible for copyright protection, a literary, musical and dramatic work must be original and fixed in some tangible form. Artistic works are by their nature already fixed.

A database is protected if it constitutes an original intellectual creation by reason of the selection and arrangement of its contents. Sound recordings, broadcasts and cable programmes must not have been copied from another such work.

Qualification for Protection

A work qualifies for copyright protection if:

• the author was qualified at the time the work was made/created; or
• the work was first published in Jamaica or a specified country.

A specified country is a member of either the Berne Convention, the Rome Convention, the WTO TRIPS Agreement or any other treaty country that may be specified by the copyright legislation.

Authorship

Authorship is defined by the Copyright Act according to the type of work. The author of a computer program is the programmer; of a musical work, the composer; of an artistic work (other than a photograph), the artist; of a photograph, the photographer. For a sound recording or film, the author is the person who arranged its creation. The publisher is the author of the typographical arrangement of a published edition. For broadcasts, authorship lies with the person making the broadcast, including the originator of a relayed broadcast. For cable programmes, the author is the service provider.

Works for Hire

Works created by persons employed or engaged by the Crown are initially owned by the Crown unless otherwise agreed. For non-Crown works, the author is the first copyright owner, even if created in the course of employment or on commission, unless a written agreement assigns ownership. Copyright transfers only through a written assignment.

Artificial Intelligence

Although AI is not expressly addressed under the Copyright Act, the closest relevant concept is that of a computer-generated work which is defined as a work created without a human author. Authorship is attributed to the person who undertook the arrangements necessary for its creation.

Joint Authorship

A work is of joint authorship when two or more authors collaborate and their contributions are inseparable. Joint authors co-own the copyright, and each must consent to licensing or dealing with the work.

Economic Rights

Subject to some exceptions, the Copyright Act grants copyright owners exclusive rights to, or authorise others to:

• reproduce the work;
• distribute copies to the public;
• perform, play or show the work publicly (including sound recordings, films, broadcasts, cable programmes);
• broadcast the work or include it in a cable programme service;
• make adaptations and exercise all rights in the adapted work; and
• make the work available to the public by any means, including on demand access.

These rights apply to the whole work or any substantial part.

Moral Rights and Related Rights

Subject to some exceptions, independently of economic rights, authors of literary, dramatic, musical and artistic works, and film directors, have moral and related rights. These rights last for the duration of copyright and may be waived, but cannot be assigned.

Right of paternity (identification)

Authors have the right to be clearly identified when their work is commercially published; publicly performed; or broadcast or included in cable programming distributed via film or sound recording. This applies to the whole or any substantial part.

Right of integrity

Authors may object to distortion, mutilation, modification, or other derogatory treatment prejudicial to their honour or reputation. This applies to literary, dramatic, musical and artistic works, and films.

Exceptions include translations, simple musical key changes, computer programs, computer-generated works, fair dealing for reporting current events, and certain newspaper/periodical uses.

For artistic works, this applies when published, exhibited, broadcast, or included in films; for architecture, it applies to graphic representations.

Right against false attribution

Authors can object to being falsely identified as creators of works or directors of films.

Right of privacy

Individuals commissioning photographs/films for private use hold privacy rights in respect of the photographs/films.

Duration of Copyright

The terms of protection are as follows:

• literary, dramatic, musical and artistic works – author’s life plus 95 years;
• computer-generated works – 95 years from creation;
• anonymous works – 95 years from the year first made available;
• typographical arrangements – 50 years from the year made; and
• sound recordings, films, broadcasts and cable programmes – 95 years from the end of the year of creation.

Unless challenged, copyright cannot be terminated before expiry.

Collective Management Organisations (CMOs)

Jamaica has three nationally recognised CMOs.

• JAMCOPY administers reproduction rights for authors and publishers of literary, artistic, musical and dramatic works published in print.
• JACAP administers public performance rights for composers, lyricists and publishers of musical works.
• JAMMS administers the rights of record producers in sound recordings, especially broadcasting and public performance rights, and also represents performers.

These CMOs operate as licensing bodies under the Copyright Act 1993.

The Copyright Tribunal

Established by the Copyright Act, the Tribunal regulates licensing and licensing schemes administered by CMOs. It resolves disputes between CMOs and prospective users regarding licence terms. A person may apply to the Tribunal for a licence if the CMO refuses or fails to grant one within a reasonable time.

Creative works and performances at events designated under the Copyright (Designation of National Cultural Events) Order 2003 are subject to royalty rates set by the Tribunal. CMOs administering public performance rights must not negotiate royalties directly with organisers of these events. The Tribunal also sets royalty rates when parties cannot reach agreement.

JIPO

Following the 2015 Copyright Act amendments, CMOs must obtain a certificate of registration from JIPO to operate as licensing bodies. Applications must be made to the Executive Director of JIPO with the prescribed fee. Although formal procedures are not yet finalised, the draft Copyright (Licensing Bodies) Regulations will require CMOs to submit constitutive documents and comply with disclosure obligations.

Registration is not required for copyright protection. Copyright arises automatically once originality (for literary, dramatic, musical and artistic works) and fixation (for literary, dramatic and musical works) are satisfied. Registration is not needed to bring an infringement action and does not affect available remedies, including damages.

Registration provides an evidentiary benefit: a certificate of registration issued by JIPO is presumed authentic and is admissible in legal proceedings as prima facie evidence of ownership unless disproved. JIPO maintains a public copyright register. Anyone may register a work; foreign applicants must use a local address or agent (not necessarily an attorney).

Formalities and Presumptions

No copyright notices are required, but using ©, the owner’s name, and the year of creation or publication is advisable. In infringement cases, courts apply presumptions of authorship and ownership based on names appearing on originals or published copies. Similar presumptions apply to sound recordings, computer programs and films, with label information treated as accurate unless rebutted.

Registration Process

To register copyright with JIPO, the applicant must complete, sign and submit the application for registration form prescribed in the First Schedule to the Copyright (Amendment) Act. The original signed form must be submitted and witnessed by a justice of the peace, attorney at law, minister of religion or medical doctor. The applicant must also complete and sign a declaration, which must be witnessed by a justice of the peace. A digital copy of the work, in an approved format, must be deposited with the application.

Registration Fees

Fees vary by type of work (in Jamaican dollars).

• Lyrics, poetry, short stories: JMD1,500 for 1–10 works.
• Books/manuals: under 100 pages, JMD2,000; 101–250 pages, JMD3,000; over 250 pages, JMD250 per additional 50 pages.
• Sound recordings: JMD2,000 for 1–15 works.
• Artistic works: JMD1,200 (black & white); JMD1,250 (colour).
• Computer software: JMD2,000.
• Films: JMD4,000 per 15-minute segment.

The Copyright Act does not expressly state the circumstances under which a copyright registration application may be refused. However, it is reasonable to conclude that an application could be denied if the applicant fails to meet the procedural requirements set out in the legislation or accompanying regulations.

The Act also does not provide any guidance on an appeals process for applicants whose registration has been refused. However, the Act expressly states that entries in the copyright register may be amended.

Copyright works may also receive trade mark protection if they meet trade mark registration requirements, meaning a single work can qualify for both forms of protection depending on its features and use.

Copyright can protect the artistic elements of device marks and logos and the musical elements of sound or multimedia marks, provided they meet the originality standard. In such cases, one creative work may function simultaneously as a copyrighted work and a trade mark. However, certain elements commonly used in trade marks cannot be protected by copyright: names, and generally slogans or short phrases, unless they reflect the author’s own intellectual creation.

Trade mark law does not limit copyright simply because a work is used as a trade mark, though earlier copyright or design rights may restrict trade mark registrability.

Unregistered Rights

Trade mark rights may be established through local use and are primarily protected under common law through actions such as passing off.

Registered Rights and Benefits

A registered trade mark gives its proprietor a legal presumption of ownership and validity. Only owners of registered marks can sue for trade mark infringement. They may also obtain remedies available for other property rights, including damages, injunctions and accounts of profits.

Owners of unregistered marks must instead rely on passing off, which requires a higher standard of proof. The claimant must show goodwill among Jamaican consumers, a misrepresentation likely to mislead the public, and resulting or likely harm.

Registration Standards

Under the Trade Marks Act, all marks – words, logos or non-traditional marks including shapes – must be capable of distinguishing one trader’s goods or services from another’s. Shape marks face stricter scrutiny and cannot consist solely of shapes arising from the nature of the goods, shapes needed for a technical result, or shapes giving substantial value. Non-distinctive shape marks may still be registered if the proprietor proves they have acquired distinctiveness through use.

Jamaica maintains a Trade Marks Register kept by the Registrar of Industrial Property at JIPO. It must be maintained in accordance with the Trade Marks Rules, which provide for public access and for issuing certified or uncertified copies or extracts upon payment of the prescribed fee. The Register is not divided into principal or supplementary parts.

Pre-clearance searches are commonly conducted to identify earlier registered marks that may bar acceptance or registrability. Searches for unregistered marks are less common because sources are broader and the risk of missing relevant marks is higher.

Searches of the JIPO Register have limitations. Access to the eJIPO online database is restricted to local agents and persons in Jamaica, and only limited search functions are available. Both manual and online searches reveal only pending and unpublished applications. Applicants should therefore note that pre-clearance searches cannot identify unpublished marks that may later pose obstacles.

For unregistered rights, additional searches of the Companies Office databases and Yellow Pages directories are necessary.

Duration of Trade Mark Registration

A registered trade mark is valid for ten years and may be renewed for additional ten-year periods upon filing a renewal request and paying the required fees.

Renewal of Registration

A proprietor may renew no earlier than six months before expiry. If the deadline is missed, a six-month grace period allows late renewal with additional fees. Failure to renew within this period results in removal from the Register.

Requirements for Renewal

There are no substantive requirements for renewal. The proprietor is not required to prove use of the mark to maintain registration.

Restoration of Registration

If a mark is removed, it may be restored within six months of removal, provided the proprietor gives justifiable reasons for failing to renew.

Copyright

Copyright lasts for a fixed, non-renewable duration.

Procedures for Registration of a Trade Mark

Applicants must file Form TM1 in the format required by the Trade Marks Rules and pay the prescribed fees. TM1 must include:

• the applicant’s name, address, country of incorporation or nationality, and Tax Registration Number for local applicants;
• a description and illustration of the mark;
• a precise list of goods or services (class headings or overly broad descriptions are not accepted);
• an indication of whether the mark is ordinary, collective or certification;
• any colour claims;
• a local address for service; and
• agent details, if applicable.

If an agent is used, Form TM3 and its fee must be submitted. TM3 must state the agent’s name and contact details and may be signed and submitted in scanned form.

Additional Material

An illustration of the mark is required. For manual filings, seven copies must be submitted. No technical drawings or specimens are required. Multi-class applications are permitted.

Filing Fees

Fees include:

• one mark in one class – JMD13,700;
• acceptance – JMD13,700;
• publication – JMD4,200;
• each additional class – JMD4,200; and
• Form TM3 – JMD4,200.

Applicants for Registration

Any natural or legal person may apply.

Representation Requirements

All applicants must provide a local address for service, typically through a trade mark attorney. Responses to provisional refusals must be filed through a Jamaica domiciled agent. Regulations on trade mark agents, which are pending, will require foreign applicants to use a registered trade mark agent.

There is no legal requirement that an applicant use a mark in commerce prior to registering the mark. Applications can be made based on a bona fide intention to use the mark and can proceed to registration without proving that the mark has actually been used.

The examiner assesses prior rights, including earlier registered marks, unregistered marks with passing off potential, and existing design or copyright rights.

Refusals may be overcome by submitting a letter of consent from the earlier rights holder or by making legal arguments showing the refusal is unsupported.

The examiner will also refuse registration where the mark misrepresents or misappropriates the traditional knowledge or cultural expressions of indigenous or local communities.

Withdrawal of Application

It is possible to withdraw an application at any stage of the application process.

Amendment of Application

An application may be amended, but only for the following:

• to narrow the scope of the goods and services;

• to reclassify in the correct class;
• to correct the name or address of the applicant;
• to correct errors of wording or of copying; or
• obvious mistakes.

Request to enter an amendment to an application

In order to amend an application, the applicant must make a formal request to amend by filing the prescribed form TM2 (reclassifying in the correct case) or Form TM6 (other amendments), or as the case may be, and paying the prescribed fee.

The correction cannot substantially alter the material identity of the mark itself or extend the goods or services covered by the application.

The applicant may request division of an application at any time before registration, splitting it into separate applications and specifying the goods or services for each.

Division is commonly used when the Registrar issues a partial acceptance, allowing uncontested goods or services to proceed while others face refusal.

Applicants may divide by filing Form TM7 and paying the required fee, enabling accepted classes to advance to registration while they address the provisional refusal of rejected classes.

If an applicant has provided incorrect information in connection with a trade mark application, the Registrar may request that the applicant correct the information. Alternatively, the applicant may file a request to amend or change the details on an application. JIPO would determine such issues. Only certain types of incorrect information may be corrected. As mentioned at 4.7 Revocation, Change, Amendment or Correction of an Application, such errors can be corrected by submitting a request to JIPO on Form TM2 or TM6 depending on what details require correction. 

Refusal of Registration on Absolute Grounds

Under the Trade Marks Act, a mark is refused registration if it:

• does not satisfy the definition of a trade mark – ie, cannot be represented graphically or distinguish one trader’s goods or services from another;
• is inherently non-distinctive;
• is descriptive;
• consists exclusively of signs customary in language or established trade practice;
• is a shape mark consisting exclusively of a shape resulting from the nature of the goods, a shape necessary to achieve a technical result, or a shape giving substantial value to the goods;
• is contrary to public policy or morality;
• is deceptive;
• uses signs prohibited by Jamaican law;
• was applied for in bad faith;
• disparages persons, institutions or beliefs, or falsely suggests a connection with them;
• misrepresents or misappropriates traditional knowledge or cultural expressions of indigenous or local communities; or
• contains Jamaican national symbols or emblems (eg, Coat of Arms, national flag) without government consent.

Where a mark includes the name, map, national colours or national symbols of Jamaica or another country, the Registrar may require a condition that the goods or services originate in that country.

Overcoming Objections by the Office

Applicants may challenge objections by submitting evidence as follows.

• For marks said not to meet the trade mark definition – evidence that the sign functions as a trade mark.
• For non-distinctive, descriptive or customary signs – evidence that the mark acquired distinctiveness through use before the filing date.
• For shape marks – evidence that the shape is non-functional and capable of acting as a trade mark.
• For marks refused on public policy, morality, deceptiveness, illegality, disparagement or misappropriation grounds – evidence rebutting the finding.
• For bad faith objections – evidence countering the allegation; the party asserting bad faith must prove it, but the applicant must still rebut the claim.
• For marks containing Jamaican national symbols – proof of consent from the government of Jamaica.

Jamaica acceded to the Madrid Protocol on 27 December 2021, effective 27 March 2022, but JIPO did not properly process incoming or outgoing international applications until the Trade Marks Rules, 2022 took effect on 30 September 2023.

When WIPO notifies JIPO of a designation, the Registrar must publish it and conduct substantive examination. Any opposition or provisional refusal must be sent to WIPO within 18 months, or the mark is automatically protected in Jamaica.

International applicants need not provide a local address for service, but a local agent is required when:

• responding to refusals;
• handling oppositions;
• filing subsequent designations; or
• making requests to the Registrar.

Any person may file an opposition within two months from the date the mark is published in the Intellectual Property Journal.

Extensions of Time to File an Opposition

The opposition deadline cannot be extended.

Cooling-Off Periods

The applicant must file a counterstatement within two months of receiving the Notice of Opposition. Before this period expires, the parties may agree to a two-month cooling-off period to pursue settlement. They may jointly request extensions, up to a maximum of six months. Both parties must consent in writing.

Statutory Limitations or Time Periods

A cancellation or invalidation action may be filed at any time. However, revocation for non-use is allowed only where the mark has not been used for a continuous five-year period, unless the proprietor shows valid reasons for non-use.

Copyright

Revocation or invalidation procedures do not apply to copyright. Copyright validity may instead be challenged during infringement or declaratory proceedings before the Supreme Court.

Grounds for Filing an Opposition

Oppositions and invalidations generally rely on the same absolute and relative grounds used to refuse registration. Absolute grounds include that the mark:

• does not meet the definition of a trade mark;
• lacks distinctiveness;
• is descriptive or generic;
• consists exclusively of a shape resulting from the nature of the goods, necessary for a technical result or giving substantial value;
• is contrary to public policy or morality;
• is deceptively misdescriptive;
• uses signs prohibited by Jamaican law;
• was applied for in bad faith;
• disparages or falsely suggests a connection with persons, institutions or beliefs; or
• misappropriates traditional knowledge or cultural expressions.

Relative grounds include that the mark:

• is identical to an earlier registered mark for identical goods/services;
• is identical or similar to an earlier mark for identical or similar goods/services, creating a likelihood of confusion;
• takes unfair advantage of or harms the reputation or distinctiveness of a well-known mark; or
• conflicts with earlier rights protected by copyright, design law or passing off.

Grounds for Invalidation

A mark may be invalidated or cancelled on any ground available in an opposition.

Grounds for Revocation (Non-Use)

A mark may be revoked if:

• it has not been used in Jamaica for five years prior to the revocation application;
• use has been suspended for five continuous years;
• it has become generic; or
• it is likely to deceive or confuse the public regarding the nature, quality or geographical origin of the goods/services.

Consequences of Invalidation and Revocation

An invalidated mark is treated as if never filed, without affecting past transactions. A revoked mark loses protection from the date of the revocation application or an earlier date set by the Registrar. Decisions may be appealed to the Supreme Court.

Copyright

Copyright cannot be revoked or invalidated, but its validity may be challenged in infringement or declaratory proceedings before the Supreme Court.

Opponents

Any interested person or entity may file an opposition, invalidation or revocation action. The opponent does not need to own a trade mark registration to initiate proceedings.

Representation

A party bringing an opposition, invalidation or revocation action must provide a local address for service. Local individuals or companies may represent themselves before the Registrar, though this is rare in practice. Foreign applicants must appoint a local agent to act before JIPO in these proceedings.

Costs

Costs vary widely. Professional fees are typically charged at a flat rate for initial filings, followed by hourly rates for evidence stages and hearings.

Revocation/Cancellation Proceedings

Any interested person may file for revocation or cancellation, regardless of whether they own an earlier mark or prior right.

Opposition Procedure

Oppositions proceed through six stages.

• Filing the opposition – The opponent must file a notice of opposition and statement of grounds within two months of the mark’s publication in the Intellectual Property Journal. These must be served on JIPO and the applicant.
• Counterstatement – The applicant has two months from service to file a counterstatement. Failure to file results in the application being treated as withdrawn. Before the deadline, the parties may agree to a two-month cooling-off period to explore settlement.
• Opponent’s evidence – After receiving the counterstatement, the opponent has two months to file evidence by statutory declaration/affidavit or indicate that no evidence will be filed and abandon the opposition.
• Applicant’s evidence – Within two months of the opponent’s evidence, the applicant must file and serve its own statutory declaration/affidavit in support of its application.
• Opponent’s reply evidence – The opponent has two months to file reply evidence strictly addressing the applicant’s evidence. Extensions of time are permitted in the three evidence stages. No further evidence is allowed afterwards unless the Registrar grants leave.
• Hearing and decision – When evidence closes, the Registrar sets a hearing date. The hearing may be oral or by written submissions (if both parties agree). The Registrar then issues a written decision.

At all stages, parties must file proof of service, stating the date, time, method, person served, whether service was personal, and the address used. Failure to comply may result in the party being treated as not wishing to be heard.

Invalidation/Revocation/Cancellation Actions

These actions may be filed before the Registrar or the court. If related court proceedings are already pending, the application must be made to the court.

Partial invalidation or revocation is possible where grounds apply only to certain goods or services.

Any decision of the Registrar may be appealed directly to the Supreme Court of Jamaica and such appeal must be made within 28 days of the Registrar’s decision.

Where the Registrar has issued a decision on any matter that does not include reasons for the decision, any party may, within one month of the date of the Registrar’s notice, request that the Registrar provide a statement of the reasons for the decision. The date on which the statement of reasons is sent is the date of the Registrar’s decision for the purposes of an appeal against it.

Every application to the Court must be served on the Registrar.

Amendments in invalidation or revocation proceedings may be possible in limited circumstances. The Registrar is granted discretion in determining whether to allow an amendment and, in most cases, the other party must be given notice of the amendments, and they must generally be made with the consent of the other party.

If an irregularity, or a potential irregularity, arises under the following circumstances then the Registrar may permit the irregularity to be remedied in whatever manner they specify:

• it involves a failure to comply with any required timelines;
• it has occurred, or appears likely to occur, unless the Registrar issues a direction under the Rules; or
• it is due, whether fully or partly, to an error, default or omission by JIPO or the Registrar, and the Registrar considers that it should be corrected.

Revocation and invalidation actions are usually brought before the Registrar, while infringement proceedings are heard in the courts. However, if court proceedings concerning a mark are already pending, any revocation or invalidity application relating to that mark must be filed with the court. Such applications are often raised as defences in infringement actions. Nothing prevents revocation or invalidation proceedings from being heard together with infringement proceedings, provided the same parties and the same trade mark are involved.

The Trade Marks Act does not set out special procedures for revoking or cancelling marks that were filed fraudulently. The appropriate ground to challenge fraudulent filings in an opposition, revocation or invalidation action is that the mark was applied for in “bad faith”. For bad faith allegations, the party asserting bad faith has the burden of proving on a balance of probabilities that the application was filed in bad faith.

While a finding of bad faith requires evidence of the applicant’s subjective motivation, such as a dishonest or otherwise improper motive, and generally involves conduct that departs from accepted ethical standards or honest commercial practices, fraud is widely recognised as conduct that can constitute bad faith.

Bad faith is understood as the opposite of good faith. It generally involves, though is not limited to:

• actual or constructive fraud;
• an intention to mislead or deceive; or
• any other improper motive.

In essence, bad faith reflects a dishonest intention on the part of the trade mark applicant at the time of filing.

Trade Marks

A trade mark assignment – whether for a registered or a pending mark – is only effective if in writing and signed by or on behalf of the assignor. It must identify:

• the parties;
• the marks being assigned; and
• the effective date.

Assignments are registrable transactions and, before filing with JIPO, the Deed of Assignment must be stamped by the Tax Administration of Jamaica (TAJ). Stamp duty is based on the assignment’s value; if no value is stated, TAJ will assess one.

Assignments may be partial, applying to:

• only some goods or services; or
• use of the mark in a specific manner or locality.

As personal and moveable property, trade mark rights may pass by will or by operation of law, but not where transmission would likely deceive or confuse the public.

Copyright

There are no formal recordation requirements for copyright assignments. Copyright, like trade marks, may be transferred by:

• assignment;
• testamentary disposition; or
• operation of law.

A copyright assignment must be in writing and signed by the assignor. Assignments may be partial, applying to specific exclusive rights or part of the copyright term.

Assignments of future copyright are permitted. When the work comes into existence, the copyright vests automatically in the assignee (or successor) if they would be entitled to require such vesting as against all others.

Trade Marks

A trade mark licence is only effective if in writing and signed on behalf of the grantor; companies may satisfy this by affixing the company seal.

A licence agreement must state:

• the licensee’s name and address;
• whether the licence is exclusive or non-exclusive (a sole licence is not recognised);
• any limitations; and
• the duration, if for a fixed period.

Licences may be exclusive or non-exclusive, perpetual or limited, and may cover marks in pending applications.

Copyright

Copyright licences have no procedural formalities – no approval or recordal at JIPO is required. However, to be enforceable in court, a licence must be in writing, signed and stamped. Licences may be exclusive or non-exclusive, but sole licences are not recognised.

An exclusive licensee enjoys rights and remedies equivalent to those of an assignee (except against the copyright owner), and their rights run against successors in title. Both the owner and exclusive licensee may enforce rights concurrently.

Copyright licences may be partial, covering:

• one or more but not all exclusive rights; or
• part of the copyright term.

Licences may also be perpetual, lasting the full copyright duration.

Nothing in copyright law prevents licensing of archival, preservation or back-up rights; statutory exceptions do not restrict a rights-holder’s ability to authorise more extensive archival use.

Trade Marks

Assignments and licences must be filed with JIPO to be effective against third parties without notice. Registration of a licence also grants the licensee infringement-related rights: the licensee may require the proprietor to sue, and, if the proprietor fails to act within two months, the licensee may bring proceedings in their own name.

Copyright

Copyright licences require no JIPO filing, but to be enforceable in court must be written, signed and stamped.

Limitation Periods for Trade Marks and Copyright Claims

Neither the Trade Marks Act nor the Copyright Act sets its own limitation period for civil infringement proceedings. In the absence of a specific statutory period, the Limitation of Actions Act applies, providing a six-year limitation period for tort actions, including trade mark and copyright infringement. Given that both infringements are treated as civil wrongs for the purpose of damages, this six-year period generally governs such claims.

The Copyright Act further provides that claims for delivery up of infringing material must be brought within six years from the date the infringing copy, article or recording was made. The Act also recognises circumstances that pause or extend the limitation period.

• Disability – If the applicant was under a legal disability, they may file within six years after the disability ends.
• Fraud or concealment – If fraud or concealment delayed discovery of the infringement, a claim may be made within six years from when the facts could reasonably have been discovered.

The Trade Marks Act contains similar rules for delivery-up applications. The ordinary limitation period is six years, running from:

• the date the infringing goods or packaging were marked;
• the date the infringing material bore the mark; or
• the date the infringing articles were made.

Exceptions apply where the proprietor was under a legal disability or where fraud or concealment prevented discovery; in both cases, the proprietor may act within six years of the disability ending or the facts being discoverable.

Equitable Defences

Defendants in trade mark or copyright infringement actions may rely on equitable defences, such as laches, which may bar relief even within statutory time limits if the claimant’s delay makes enforcement unfair. Given that IP infringements are often ongoing, prolonged inaction may be treated as acquiescence.

Under the Trade Marks Act, if a registered trade mark is used in Jamaica for three continuous years with the knowledge and acquiescence of the owner of an earlier right, the earlier owner cannot challenge the later mark’s validity or use (unless the later mark was registered in bad faith). After this period, the later owner also cannot object to the continued use of the earlier mark.

Criminal Offences

Under the Copyright Act, criminal prosecutions must be commenced within five years of the offence or within one year of its discovery, whichever is later, balancing fairness with effective enforcement in cases involving concealed infringement.

Trade Marks

Primary claim (infringement)

Infringement claims may be brought in the following circumstances:

• identical mark/identical goods or services (strict liability);
• identical or similar mark/similar goods or services with likelihood of confusion; and
• identical or similar mark on dissimilar goods or services where the earlier mark has a reputation and the use takes unfair advantage of or dilutes/tarnishes its distinctiveness or reputation without due cause.

Passing off (common law) – available for registered and unregistered marks

Complementary claims include:

• misleading advertising;
• false endorsement; and
• unfair competition.

Remedies (also available to unregistered marks via passing off) are as follows:

• interim/permanent injunctions;
• declaratory orders (including invalidity);
• damages;
• account of profits; and
• seizure/delivery up/destruction or other disposal of infringing goods.

Copyright

Registration is not required and does not change available claims or remedies.

Primary claims

The following claims may be brought:

• breach of copyright – direct infringement of any economic right (copying, distribution, public performance, adaptation, broadcasting, making available), plus secondary/contributory and vicarious/inducement liability;
• breach of moral rights – attribution/false attribution, integrity, privacy (photos/films);
• breach of rights in performances;
• breach of licence/contract/confidence (fact-dependent); and
• TPM circumvention (criminal offences that may surface in civil matters).

Remedies

The following remedies are available:

• interim/permanent injunctions;
• declaratory orders (eg, ownership);
• damages;
• account of profits; and
• seizure/delivery up/destruction or other disposal of infringing copies/articles/illicit recordings.

Trade Mark Infringement – Types, Proof, Defences

The types of infringement are as follows.

• Direct infringement – unauthorised use in the course of trade of the scenarios listed above.
• Secondary/contributory – knowledge (actual/constructive) and material contribution/facilitation (statutory primary liability; secondary grounded in case law/tort).
• Passing off (unregistered marks) –
1. goodwill;
2. misrepresentation causing consumer confusion; and
3. damage/likelihood of damage.

To succeed (registered marks), the following must be proved:

• valid title (proprietor/exclusive licensee);
• use in trade of an identical/similar sign without consent; and
• meeting a statutory ground (identity, confusion, or unfair advantage/detriment for reputed marks).

The available defences are:

• not in the course of trade;
• descriptive/necessary/informational use;
• genuine goods;
• honest commercial practices; and
• for dilution, legitimate use.

Copyright Infringement – Types, Proof, Defences

The following apply to copyright infringement.

• Direct infringement – doing a restricted act without licence (whole or substantial part; quality over quantity; intent not required for liability).
• Secondary infringement – dealing in infringing copies (sell/import/distribute), providing means, possessing for commerce, renting premises for infringing events (requires knowledge or reason to believe).
• Elements – protectable work; ownership/exclusive licence; access (where relevant); and copying of a substantial part without authorisation.
• Defences/exceptions – fair dealing (private study/research, criticism/review, reporting current events) and other statutory limits.

Border Enforcement (Criminal)

Customs actions (through criminal courts) are as follows:

• detention;
• seizure of counterfeit/infringing imports; and
• forfeiture of goods (applies to both trade marks and copyright).

Trade Marks

The factors that must be considered in determining whether use of trade mark constitutes infringement are established by the Trade Marks Act and include the following:

• The allegedly infringing mark is identical or similar to the claimant’s mark.
• The infringing mark was used in commerce.
• The use was unauthorised.
• The use does not fall within any of the statutory exceptions.
• Where the use relates to identical or similar marks in relation to similar goods/services, a likelihood of confusion exists.
• Where the use relates to dissimilar goods/services, the allegedly infringing sign takes unfair advantage or is detrimental to the reputation or distinctive character of the earlier registered mark.

Copyright

The factors that must be considered in determining whether use constitutes copyright infringement are established by the Copyright Act and include the following.

• The claimant’s work is protected by copyright.
• The action done by the alleged infringer is one of the acts restricted by copyright.
• The alleged infringer had access to the claimant’s protected work.
• The infringer copied/used a substantial part of the claimant’s work without authorisation.
• The use does not fall within any statutory exceptions (eg, fair dealing with the work for private study or research, criticism or review, reporting of current events).

In relation to a trade mark infringement action, the trade mark must be registered at the time of initiating the action. There are no other prerequisites. In relation to copyright infringement actions there are no prerequisites such as registration or formal demand letters. There are no legal restrictions such as groundless threats provisions to filing a claim alleging trade mark or copyright infringement.

Trade mark and copyright infringement proceedings must be brought before the Supreme Court of Judicature of Jamaica (Commercial Division).

Pre-filing costs typically include:

• legal fees to prepare warning letters or notices;
• costs for verifying and stamping documents to be relied on in the suit;
• stamping fees for the Claim Form and related filings; and
• legal fees for preparing and filing the Fixed Date Claim Form, Statement of Case and supporting affidavits.

Parties in trade mark or copyright litigation must be represented by an attorney-at-law called to the Jamaican Bar.

Foreign rights-holders may file infringement actions in Jamaica.

For trade mark infringement, the mark must be registered in Jamaica; for passing off, registration is not required. For copyright infringement, registration is not required. The work must originate from a qualified author – a Jamaican or treaty-country national/resident, or a corporation incorporated in Jamaica or a treaty country – or, if published, be first published in Jamaica or a treaty country.

An alleged trade mark or copyright infringer may seek a declaration from the court: for example, a declaration that a trade mark or copyright is invalid, or an order revoking a registered trade mark. The trade mark or copyright owner may defend those proceedings and counterclaim for their own relief.

An alleged infringer may also apply to have the infringement claim struck out or seek summary judgment on the basis that the claimant has no real prospect of success in proving the alleged infringement.

There is no alternative venue to the Supreme Court at first instance, whereby small trade mark or copyright infringement claim can be heard.

JIPO does not make any decisions on copyright actions. All infringement actions are heard by the Supreme Court. JIPO has jurisdiction to hear and determine trade mark oppositions, revocation and invalidation matters, and then the decision is subject to appeal to the Supreme Court.

Both the Trade Marks Act and the Copyright Act treat counterfeiting, piracy and bootlegging as criminal offences in addition to civil infringements.

Trade Marks – Counterfeiting

Counterfeiting occurs where a person uses a registered trade mark without permission, intending to gain financially or cause financial loss. Goods produced in this manner are counterfeit, and the behaviour constitutes both infringement and a criminal offence.

Under Section 69 of the Trade Marks Act, a person commits an offence if they:

• apply a fake or imitation mark to goods or packaging;
• sell, offer for sale, rent, distribute or possess such goods in business with intent to sell or distribute;
• apply a fake or similar mark to labels, packaging, business papers or advertising; or
• use or possess these materials in business intending to use them or allow others to use them.

The Merchandise Marks Act (1888) – still in force – also imposes penalties for trade mark forgery and false descriptions.

Copyright – Piracy and Bootlegging

Under the Copyright Act, piracy includes manufacturing, importing, distributing or selling infringing copies. Bootlegging refers primarily to unauthorised recordings of movies or performances but covers the production of any illicit copies.

A person commits an offence if they make, import (other than for private use), sell, offer for sale, hire, distribute or possess in business any article they know or have reason to believe is an infringing copy. Such copies constitute pirated or bootlegged works.

There are no special procedural provisions for trade mark or copyright proceedings. Likewise, there are no specialised intellectual property courts.

All intellectual property infringement cases are dealt with in the Commercial Division of the Supreme Court. All IP offences are dealt with in the Criminal Division of the Court. Cases are determined by a judge only and the parties have no influence on who is making the decision.

Trade mark infringement is only actionable by the proprietor of a registered trade mark. Copyright registration is purely voluntary and provides prima facie evidence of a claim to copyright.

Presumptions

Certificates of registration issued by JIPO are presumed to be authentic for all purposes and are admissible in evidence in any legal proceedings. Hence the certificate of registration will be deemed evidence of ownership of copyright unless the contrary is proved.

In actions for infringement of copyright, moral rights or related rights, the court applies certain evidentiary presumptions already outlined in 3.7 Copyright Registration.

Trade Marks

For a trade mark offence to be committed, the offending goods must be goods in respect of which the trade mark is registered, or the trade mark in question must be one which has a reputation in Jamaica and the use of the offending sign takes, or would take unfair advantage of, or is or would be detrimental to the reputation of the registered trade mark.

For a trade mark infringement it is not necessary for an alleged infringer to be using a mark for the same goods and services as those listed in the trade mark registration. It will suffice if the infringer is using the mark on similar goods or services, or, in relation to a registered mark with reputation, the infringer is using the mark on dissimilar goods and the use of the offending sign takes, or would take unfair advantage of, or is or would be detrimental to the reputation of the registered trade mark.

It is difficult to estimate the total cost of bringing a trade mark or copyright infringement action to conclusion at first instance because the overall expense depends on several factors. These include the complexity of the case – which may require preparing, filing and serving a greater number of documents or more substantial documents – as well as various administrative and procedural costs.

Additionally, depending on the matter, costs may increase significantly if an application for security for costs is made against the claimant and the application is successful.

Some typical costs are associated with the following actions.

• Verifying and stamping documentation to be relied on at the suit.
• Stamping costs for the Claim Form and other documents to be filed.
• Preparation and filing of a Fixed Date Claim Form, Statement of Case and affidavits in support.
• Attendance at hearings including interlocutory proceedings and case management conferences.
• Preparation of witness statements, arguments, submissions and orders, etc.
• Service of documents on affected parties.

The Trade Marks Act provides several statutory defences to infringement, supplemented by equitable doctrines such as limitation, laches, estoppel and acquiescence, which may completely bar liability. Under Section 10, a registered mark is not infringed where the use – made in accordance with honest practices – involves:

• use of a person’s own name or address;
• descriptive indications (eg, kind, quality, quantity, purpose); or
• use necessary to indicate the intended purpose of a product or service, such as accessories or spare parts.

A proprietor of an earlier mark is deemed to have acquiesced to a later registered mark if it has been on the Register for over three years and the earlier proprietor knew of it – unless the later mark was registered in bad faith.

A defendant may also challenge the validity of the claimant’s mark. Grounds rendering a mark unregistrable include:

• prohibition under Jamaican law;
• bad-faith filing; or
• marks that disparage persons, institutions or beliefs.

If proven, this can defeat the infringement claim.

As with all civil claims, he who asserts must prove. The claimant must establish every element of infringement.

Fair Dealing Exceptions

The Copyright Act provides fair dealing exceptions which apply to specific purposes if certain factors are met.

Fair dealing applies to the following purposes:

• use of a literary, dramatic, musical or artistic work for private study or research;
• criticism and review of the protected work or another work; and
• reporting of current events – sufficient acknowledgement is required except where the work is used in connection with the reporting of current events by means of a sound recording, film, broadcast or cable programme.

Factors

The Copyright Act outlines certain factors to be considered in the determination of fair dealing. These are all factors which appear to it to be relevant, including:

• the nature of the work in question;
• the extent and substantiality of that part of the work affected by the act in relation to the whole of the work;
• the purpose and character of the use; and
• the effect of the act upon the potential market for, or the commercial value of, the work.

There is no statutory exception to copyright infringement based on satire or parody. There is also no statutory exception to copyright or trade mark infringement on the basis of freedom of speech or information.

Trade Marks

The Trade Marks Act does not provide for the doctrine of first sale, which means trade mark owners do not automatically lose their ability to enforce rights once genuine goods are placed on the market. There is no statutory exhaustion of rights nor is there a statutory provision concerning parallel imports. There is therefore no express prohibition of parallel imports. The prohibition is on importation of infringing goods, ie, goods on which an identical trade mark is applied without the authorisation of the trade mark owner.

Copyright

While the Copyright Act does not expressly codify the doctrine of national exhaustion, the way the provisions are structured implies that exhaustion (or first sale) applies to the distribution right. Once a lawfully made physical copy of a protected work is placed on the market by or with the authorisation of the copyright owner, the owner cannot control the subsequent resale of that physical copy.

Parallel importation, however, is restricted because the Copyright Act expressly prohibits the importation of infringing copies. The first sale doctrine only applies to physical copies and does not authorise the importation of unauthorised reproductions.

Injunctions

Interim and final injunctions are available to both trade mark and copyright owners, provided the requirements for interim relief are satisfied. Judges of the Supreme Court may grant interlocutory injunctions and, where appropriate, freezing orders whenever such relief is just or convenient.

When assessing interim relief, the court applies the American Cyanamid principles. It considers whether there is a serious issue to be tried and whether the claim is frivolous or vexatious. If a serious issue exists, the court examines whether damages would be an adequate remedy for the claimant and whether the defendant could pay them. If damages are inadequate for either party, the court evaluates the balance of convenience, including whether the defendant would be sufficiently protected by the claimant’s undertaking in damages. Delay by the claimant may also weigh against relief.

Defences

A defendant may oppose an injunction by showing the claim is weak or that damages are adequate and payable. They may also argue that the injunction would cause greater harm to them than its refusal would cause the claimant, shifting the balance of convenience.

Defendants may rely on statutory defences – such as fair dealing in copyright, or invalidity or lack of confusion in trade mark cases – and equitable objections including acquiescence, misleading conduct, or bad faith.

Trade mark and copyright owners are entitled to the full range of civil remedies available for torts, including:

• damages;
• injunctions;
• accounts of profits; and
• aggravated damages for wilful infringement.

In copyright cases, the court may award additional damages where infringement is proven or admitted, taking into account:

• any benefit gained by the defendant;
• the flagrancy of the infringement; and
• any other relevant circumstances.

There are no statutory damages for trade mark or copyright infringement in Jamaica.

Damages must be grounded in:

• economic reality;
• fair market licensing practices; and
• proven financial loss.

The proper measure of damages for unauthorised use of copyright material is typically the licence fee that ought to have been paid.

Where both a copyright owner and an exclusive licensee have standing to sue, the court must consider the terms of the licence and any financial relief already awarded to either party. The court will not grant both damages and an account of profits for the same infringement to either party.

If an account of profits is ordered, the court must divide the profits between the owner and exclusive licensee in a fair manner, subject to any agreement between them.

The Civil Procedure Rules indicate that ordinarily the losing party will be ordered to pay the prevailing party’s costs, to include court costs and attorneys’ fees to the extent that they were reasonably incurred and are reasonable. However, should the quantum be in dispute, the matter may proceed to taxation. In that case, some attorneys’ fees may not be reimbursed, based on an assessment of whether the fee was reasonable.

Notwithstanding the aforementioned, the court can make a different order as to costs – for instance, requiring both parties to cover their own costs after considering “all the circumstances”. These include:

• the parties’ conduct (before and during proceedings);
• offers to settle; and
• whether it was reasonable to pursue or contest particular issues.

The Civil Procedure Rules provide a mechanism where applications for interim injunctions can be made without notice. Therefore, a trade mark or copyright owner may be able to rely on this mechanism to seek relief in the Supreme Court without notice being given to the defendant.

Such applications would need to show extenuating circumstances why proceeding without notice is necessary in the interest of justice. Should the court grant the injunction, it would be temporary, for a maximum of 30 days, at which point the court could grant a permanent injunction, having heard the defendant’s case.

Customs’ jurisdiction over trade marks relates specifically to infringing goods. Under the Trade Marks Act, a trade mark proprietor or licensee may request that infringing goods be treated as prohibited goods under the Customs Act. Parallel imports are not infringement, and only infringing goods or infringing activities constitute offences.

For copyright, the owner of a published literary, dramatic or musical work may give written notice to the Commissioner of Customs requesting that infringing printed copies be treated as prohibited goods. The notice must specify a protection period of up to five years, not exceeding the copyright term.

The applicant must also comply with the Copyright (Customs) Regulations, 1995, including:

• providing evidence;
• paying prescribed fees;
• giving security for expenses or liability; and
• indemnifying the Commissioner.

There is no formal recordation system for trade marks or copyright with Customs. Rights-holders are not required to file anything for protection. In practice, however, Customs operates a voluntary system, accepting infringement guides and participating in online training sessions from brand owners to help officers identify infringing products.

A trade mark or copyright infringement decision can be appealed to the Court of Appeal based in Jamaica as outlined in the Court of Appeal Rules. An appeal from the Supreme Court to the Court of Appeal may be brought as of right in respect of most final judgments. Appeals from interlocutory or procedural orders generally require permission from either the trial judge or the Court of Appeal.

Appeals from the Court of Appeal may be made to the Judicial Committee of the Privy Council based in the United Kingdom.

A party may appeal once the judgment is final, or permission has been granted for a non-final order, provided the appeal is filed within the prescribed timelines. A Notice of Appeal must be filed within 42 days of the judgment, and the Record of Appeal must be filed within 21 days of the notice. If these deadlines are not met, an extension of time must be requested, and the applicant must demonstrate both a good reason for the delay and a realistic prospect of success.

There are currently no landmark Jamaican decisions or pending litigation on trade marks or copyright involving artificial intelligence (AI). The Copyright Act recognises computer-generated works, defined as works created by a computer where no human author exists. This is the closest existing category for protecting AI-generated material. However, the provision was drafted for early automated systems, and the law generally remains uncertain and under review. It is not yet clear whether AI-generated (as opposed to AI-assisted) works qualify for protection under this category.

Jamaican courts routinely consider foreign case law as persuasive where legislation is similar. Jamaica’s Copyright Act is derived from the UK Copyright, Designs and Patents Act 1988, making UK and other Commonwealth decisions particularly influential on emerging issues such as AI-generated works. Similarly, Jamaica’s Trade Marks Act is modelled on the UK Trade Marks Act 1994, and Jamaican courts frequently rely on UK jurisprudence when interpreting comparable trade mark provisions.

There are no special trade mark rules for the internet. Under the Copyright Act, an ISP or carrier that knowingly permits or facilitates copyright infringement through its services commits an offence. If an ISP enables infringement through access to special services, the court may also issue an injunction against the provider.