WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IPINI1!JAMITI1 
17 June 2002 
(02-3351 ) 
Original: Englishl 
anglaisl 
ingh~s 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
JAMAICA 
The present document reproduces the textl of Trade Marks Act, as notified by Jamaica 
under Article 63.2 of the Agreement (see document IPIN/I/JAM/2). 
Conseil des aspects des droits de proprh!te 
inteUectuelle qui touchent au commerce 
PRlNCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRlETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
JAMAIQUE 
Le present document contient le textel de la Loi sur les marques de fabrique ou de commerce, 
notifiee par la Jama'ique au titre de l'article 63:2 de J'Accord (voir le document IPINI1/JAM/2). 
Consejo de ios Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRlNCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO:2 DEL ARTicULO 63 DEL ACUERDO 
JAMAICA 
En el presente documento se reproduce el texto1 de la Ley de Marcas de Fabrica 0 de 
Comercio, que Jamaica ha notificado en virtud del parrafo 2 del articulo 63 del Acuerdo (vease e! 
documento IPINllIJAM/2). 
1 In English only.!En anglais seulement.lEn ingh§s solamente. lP/Nil 
Page 2 
THE TRADE l'vlARKS ACT 
ARRANGBMENT OF SECTIONS 
PART 1. Preliminary 
L Short title and commencement. 
2. Interpretation. 
PART n. Property Rights in Registered Mark 
3. Collective marks; Certification marks. 
4. Property right in registered trade mark. 
5. Rights conferred. 
6. Joint proprietors. 
7. Property right in application for registration of trade mark. 
S. Duration of rights. 
9. Acts of infringement. 
10. Limitation of rights. 
PART HI. Registration of Trade Marks 
Disqualificatioll frol/l Registration 
11. Non-registrable marks. 
12. Protected emblems. 
13. Existence of earlier mark. 
14. Meaning of earlier trade mark. 
15. Honest concurrent use of mark:. 
ApplicatioH for Registration oj Mark 
16. Application. 
J 7 Date of filing. 
IS. Classification of goods and services. 
19. Right to priority. 
:::0. Claim of priority by overseas applicant. 
Registratiol1 Proccd/(re 
2 L Examination 'Of application. 
22. Publication, opposition etc. 
23. Actions by applicant respecting application, 
24. Registration. 
25. Furlher provisions re registration. 
26. Registration subject 10 disclaimer. PARr IV. Dealings with Registered Trade it1arks 
Assignment and Transmission 
27. Assignment etc. of trade mark. 
Licensing 
28. Provisions as to licences. 
29. Rights of exclusive ]Iicensee. 
Registration of Trallsaction 
30. Registrable transactions. 
PART V. Il1frillgement Proceedings 
31. Infringement actiQnahle by proprietor. 
32. Meaning of infringing goods etc. 
33. Special provisions re exclusive licensees. 
34. Rights of olher licensees in infringement proceedings. 
35. Order for erasure etc. of sign. 
36. Order for delivery up, etc. 
37. Limitation of time for order for delivery up. 
38. Order for disposal. 
39. Burden of proving use of mark. 
PART VI. Actions A(Jeclillg Registered Trade Mark 
40. Renewal. 
41. Alteration of registered trade mark. 
42. Surrender of registered trade mark. 
43. Grounds for revocation. 
44. Application for revocation. 
45, Grounds ror invalidity. 
46. Application for declaration of invalidity. 
47. Effect of al.:quiescence. 
PART VU. Provisions to Implement lnternatiollai 
COllventions 
The Paris Convenfion: Supplemelltary Prol'iS'iolls 
4~. Paris COllvention. 
49. Well-known marks. Page 3 IP/Nil/JAM/T/l 
Page 4 
50. National emblems of Convention countries. 
51. Other state emblems. 
52. Emblems of international organizz!tions. 
53. Aots of agents. 
The Madrid Protocol: il1lematiollal Registration 
PART VIII. Adf.'!inislratiol! 
FUllctions of the R ef{istrar 
54. Forms. 
55. Supply of informal ion. 
56. Evidence to award costs, etc. 
57. Evidence before Register. 
58. Exclusion of liability. 
59. Registrar's appearance in proceedings. 
60. Appeal against decisions of Registrar. 
The Register 
G J . Register to be kept. 
62. Correction of register. 
63. Adaptation of entries to new register. 
64. Registration prima facie evidence. 
65. Contested registTation: certificate of validity. 
PART IX. General Provisions 
Power of Commissioner of Customs Respecting Infringing Goods 
66. Prohibited goods. 
67. Power of Commissioner to make regulations. 
68. Disclosure of informa tion. 
Offences 
69. Unathorized use of trade mark. 
70. Falsification of entry. 
71. Falsely representing trade mark as registered trade mark. 
72. Forfeiture. 
7 J. Offence by partnership; body corpora !c. SlI/Jplemnzlary Pri)visiOl1s 
74. Costs. 
75. Trusts and equities. 
76. Trade mark agents. 
77. Jamaican waters incIuded. 
78. Rlues. 
79. Fees. 
80. Exemption from stamp duty. 
81. Motliikation of Jaws. 
81. Repea! and Transitional provisions. 
SCHEDULES. IP/NI1/JAM/TI 1 
Page 5 IP/NI1 /JAMiT 11 
Page 6 
Interl'rcta­
·!ion. JAMAICA 
No. ~-1999 
r assent, 
(L.s.] 
Gopcrnor- Gencral 
iT. I 
AN ACT to Repeal the Trade Marks Act and to make 
new prOVISIOn for the proteotion of registered trade 
marks and for connected matters. 
[ 
BE IT ENACTED 'by The Queen's Most ExceHent IvIajesty, 
by and with the advice and consent of the Senate and 
House of Representatives of Jamaica, and by the authority 
of the same, as follows:-
1. This Act may be cited as the Trade Marks Act, 1999, 
and shaH come into operation on a day to be appointed 
by the Minister by notice published in the Gazette. 
PART I. Prelirnirlary 
2.--( In this Act-
"appointed day" means the day' appointed under 
section 1; 
"business" includes trade or profession; 
"certification mark" means a mark incUcating that the 
goods or services in connection with which it is 
used are cel'tified by the proprietor of the mark 
in respect of origin, material, mode of manufacture 
of goods or performance services, quality, accuracy 
or other characteristics; Short title 
and com­
mencement. "collective mark" means a mark distinguishing the 
goods or services of members of the association 
which is the proprietor of the mark from those of 
other undertakings; 
"Court" means the Supreme Court; 
"exclusive licence" means a licence, whether general or 
limited, authorizing the licensee to the exclusion 
of all other persons, including the person granting 
the licence, to use a registered trade mark .in the 
manner authorized by the licence; and the expres­
sion "exclusive licensee" shall be construed accord­
ingly; 
"infringing proceedings" in relation to a registered 
trade mark includes proceedings under seoUon 36: 
["prescrlbed" means prescribed by rules made under 
this Act;} 
"publish" means making available to the public; 
HRegistrar" means the Registrar of Companies; 
"register" means the register referred to in section 61; 
"registered trade mark" means a trade mark that .is 
aotually on the register; 
"sign" includes a word (including a personal name, 
design, letter, numeral, colour, combination of 
colours or a combination of the foregoing or the 
shape of goods or their packaging; 
"trade" includes any business or profession; 
"trade mark" means any sign that is capable of being 
graphically represented and capable of distinguish­
ing the goods or services of one underLaldng from 
those of another undertakIng. 
(2) References in this Act to use (or any particular 
description of use) of a trade mark or of a sign identical 
with or simj,lar <to or likely ,DO be mistaken for a trade mark. 
include use or that description of use, otherwise than by 
means of a graphic represent8tion. 
PART H. Property Rights in Registered lv/orks JPINI 
3. Unless the context otherw.ise requires, references in Collective 
this Act to a trade mark includes references to a collective ~~~i~~atioll 
mark and a certific~tion mark; and the provisions of t his marks. 
Act shaH apply to collective marks, subject to the pro-
visions of the First Schedule and to certification marks, ~~hs~du!e. 
subjeot to the provisions of the Second Schedule. Second 
Sohedule. Page 7 IP/N/!!JAJ\;1!T/l 
Page 8 
Ri l,'ih ts 
Gonferred. 
Joint 
l'lropdetors. 4.-0) The registration of a trade mark under this Act 
confers a property right on the proprietor of the trade mark 
who is entitled to the rights and remedies provided by 
this Act. 
(2) Registration of a trade mark shall be in accord­
ance with the provisions of Part HL 
(3) Proceedings ma)! not be instituted under lhis Act 
to prevent. the infringement of an unregis'tercc1 trade mark 
or to recover damages in respect of such infringement but 
nothing in this Act shall be cons{ruecl to alIect the la\v 
relating to passing off. 
5.-(1) Subject to section 10, the proprietor of Cl regis­
tered trade mark has exclusive rights in the trade mark; 
and any use of the mark in Jamaica without the proprietor's 
consent, constitutes an infringement of such rights, as 
specified in section 9. 
(2) The rights of the proprietor have effect from the 
date of registration' (which is the date of flling in accordance 
with section 24 (4) but-
(a) no infringement proceedings may be begun before 
the date on which the trnde mark is in fact 
registered; and 
(b) no o1Ience under section 70 is committed by any­
thjng done before the date on which it W8S in fact 
registered. 
6.-( 1) Where two or more persons are registered joint 
proprietors of a trade mark, each of them is entitled to an 
equal undivided share in' the registered trade mark, unless 
there is an agreement to the C0'l1trary. 
t2) Where two or more persons are .registered as joint 
proprietors, the foHowing provisions of this section shaH 
apply. 
(3) Unless there is an agreement to the contquy, each 
joint proprietor by himself or his agent, and without the 
consent of the other joint proprietors or any obligation to 
account to them, is entitled to do any act which would 
otherVlise amount to an infringement of tht registered trade 
mark. 
(4) A joint proprietor shall not, without the consent 
of the other joint proprietor or proprietors-
(a) grant a licence to use the registered trade mark; or 
(b) assign or charge his slwre in the registered trade 
mark. Property 
right in 
registered 
trade marks. (5) One joint proprietor mayinstilute infringement 
proceedings in relation to a registered trade mark, but he 
shall not, without the leave of the Court, proceed with the 
action unless the other proprietor or each of the other 
proprietors, as the case may be, is joined as a plaintiff Or 
added as a defendant. 
(6) Unless he takes part in the proceedings, Lt joint 
proprietor who is added 'as a defendant shall not be made 
liable for any costs in the action. 
(7) Nothing ill this sec;tion alTect,s-
(a) the gran ting of interlocutory relief on the appl ica­
bon 'Of one joint proprietor; or 
(b) the mutual rights or obligations of trustees or 
personal representa;Ljvcs or their rights and obliga­
tions in those capacities, lP/Nil 
7. The proviSions of section 4 (which relate to property r:rzpe;rty 
, ngut lfi right in a registered trade mark) shall apply vl1th necessary a1'pliC'll;~on 
d't]' , l' l' , . f 1 't fur regutra-mo 11catlOns, m re atwn to an app Icatwnor t le reg1s ra-tlollof 
tion of a trade mark, as it applies to a registered trade mark .tJrade mark. 
8. A trade mark shall be registered for a period of ten !?Ilfhattlon of , ng s, 
years from the date of registration and may be renewed in 
accordance with section 40. 
9.-(1) References in this Act to the infringement of a {\clf ~ of , . k f h . f . f 1:11 rmge-regIstered trade mar. are re .erences to t e 111 nngement o' m.ent, 
the rights of the proprietor ,the trade mark. 
(2) A registered trade mark is infringed by a person 
who, not being the proprietor of the trade mark or a perSOn 
authorized by him, uses in the course of trade a sign that 
is identical with the trade mark. in relation to goods or 
services that are identic::il with the goods or services for 
which the trade mark is registered, 
(3) A registered trade mark is infringed by a person 
who, ilot heing the proprietor of the trade mark or a perflOn 
authorized by him, uses in the course of trade a sign which 
is likely to deceive or confuse the puhlic for the reason 
that-
(a) the sign is identical with the trade mark and is 
used, the sign is used in relation to goods or 
services that are similar to the goods or services 
for which the, trade mark is registered; or 
(b) the sign is similar to the regiskred trade mark and 
is used in relation to goods or services that are 
identical with or similar to the goods or services 
for which the trade mark is registered, Page 9 WIN/1 
Page 10 
(4) A registered trade mark is infringed by ~_ny person 
who, not being the proprietor of the trade mark or a person 
authorized by him, uses in the course of trade, a sign that 
is identical with or similar to the registered trade mark in 
the circumstances referred to in subsection (5). 
(5) The circu.mstances mentioned in subsection (4) 
are that-
(a) in relation to goods or services that are not similar 
to the goods or services for which the trade mark 
is registered; and 
(b) the sign has a 'reputation in ,l8.maiea and the use 
of the sign, being without due cause, takes unfair 
advantage of, or is detrimental to, the distinctive 
character or the reputation of the trade mark. 
(6) For the purposes of this section, a person uses a 
sign if he does anything which associates or purports to 
associate the sign with any goods or services, .in particu18r 
if he-
(a) affixes it to goods or the packaging thereof; 
(b) offers or exposes goods for sale, puts them on the 
market or stocks them for those purposes under 
the sign or offers or supplies services under the 
sign; 
(c) imports or exports goods under the sign; or 
(d) USes the sign on business papers or in advertising. 
(7) A person who applies a registered trade mark to 
material intended to be used for labelling or packaging 
goods, as a business paper, or for advertising goods or 
services shall be treated as a party to any use of the material 
which infringes t~e registered trade mark if, when he applied 
the mark, he knew or had reason to believe that the applica­
tion of the mark was not duly authorized by the proprietor 
or a licensee. 
(8) Nothing in the foregoing provisions of this section 
shall be construed as preventing the use of a registered 
trade mark by 8.ny person for the purpose of identifying 
goods or .services as those of the proprietor or a licensee, so, 
however, that any such use othelwise than in accordance 
with honest practices in industrial or commercial matters, 
shall be treated as infringing the rights ill the registered 
trade mark jf the use without due cause takes unfair 
advantage of, or is detrimental to, the distinctive character 
or the reputation of the trade mark. lP/Nil 
10.-(1) Subjeot to section 46, registered trade mark is Llf·mi.tll.htioll 
. 0 ng ts. not infringed by the use of another registered trade mark in 
relation to goods or services for whIch the latter (HIde 
mark is registered. 
(2) A registered trade mark is not jnfringed by the 
use of the mark in any of the following circumstances, so 
long as such use is in accordance with honest practices in 
industrial or commercial matters, that is to say-
(a) the use by a person of his own name or address; 
(b) the use of indications concerning (he kind, quality, 
quantity, intended purpose, value, geographical 
origin, the time of production of goods or of 
rendering of services or other chanlOteristics of 
goods or services; or 
(c) the use of the trade mark where it is necessary 10 
indicate the intended purpose of a product or 
service, in particular, as (lccessories or spare paris, 
PART Ill. Registration of Tmde }Harks 
Disqualification frorn Registration 
~~'{ee~~·rks. 11.-(1) Subjeot to subsection (2) the following are not 
registrable under this Act-
(a) signs ,which do not satisfy the definition of "trade 
mark" appearing in section 2 0); 
(b) trade marks which are devoid of any· distinctive 
character; 
(c) trade marks which consist exclusively of signs or 
indications which rnay serve in trade, to designate 
the kind, quality, quantity, intended purpose, value, 
geographicaJl origin, the time of production of 
goods or of rendering of services or other character­
istics of goods or services; 
(d) trade marks which consist exdLlsively of signs or 
indications which have become customary in the 
current language or in the bona fide and established 
practices of the trade. 
(2) A trade mark shaH not be refusee! registration 
by virtue of paragraph (b), (c) or (cl) of subsection 0) if, 
before the da'te of application for regis,tration, it has in 
fact acqtlired a distinctive character as a result of the lIse 
made of it. Page 11 IP/N/1 
Page 12 
(3) A sign shall not be registered as a trade mark 
if it consists exclusively of--
(a) the shape which results from the nature of the 
goods themselves; 
(b) the shape of goods which is necessary lo obtain a 
technical result; or 
(c) the shape which gives substantial value to the goods. 
(4) A trade mark is not registrable 
(a) it is contrary to public· policy or to accepted 
principles of morality; 
(b) it is of such a nature as to deceive the public as 
to the nature, quality or geographical origin of the 
goods or services or otherwise; 
(c) it is a trade mark to \vhich section 12 refers; 
(cl) its use is prohibiled in Jamaica by any law; 
(e) the application is nlade in bad faith; 
~O it is of such a nature as to-
m disparage persons (living or dead) or institu­
tions or beliefs; or 
(ii) falsely suggest a connection with such 
persons, institutions or beliefs. 
12.-(J) A trade mark which consists of or contains a Protected 
t t· fIe ' f A f J. . 1 fl emblems. represen a 1011 0 t 1e oat o. rms 0, ammca, natlOna . ag 
of Jamaica and other national symbols shan not be regjs~ 
tered. 
(2) A trade mark shaH nol be registered in the cases 
specified in sections 50 and Si. 
13.-( 1) A trade mark shall noL be registered 
(a) it is identical with an earlier trade mark; and 
(b) the goods or services for which the trade mark is 
applied for are identical with the goods or services 
for which the earlier trade mark is protected. 
(2) A trade mark shall not be registered if----
(a) it is identical with an earlier trade mark and the 
goods or services in relation to which application 
for registration is made are similer to those for 
which the earlier trade mark is registered; or Existence of 
earlier mark. IP/N/l/JAM/T/l 
Page 13 
(b) it is similar to 'an earlier trade mark and the goods 
or services in relation to which application for 
registration is made are identical with or similar 
to those for which the earlier trade mark IS 
protected, 
and there exists a likelihood of confusion on the part of 
the public, including the likelihood of association with the 
earlier trad~ mar]{~ 
(3) A trade mark 'Which is identical with or similar 
to an earlier trade mark and is to be registered in relation 
to goods or services that are not similar to those for which 
the earlier trade mark is protected, shall not be registered 
if, or to the extent that, the'earlier trade mark has a reputa­
tion in Jamaica and the use of the later mark, WWlOut clue 
cal1se, would take unfair advantage of, or be detrimental to, 
the distinctive character or the reputation of the earlier 
trade mark. 
(4) A trade mark shall not be registered if, or to 
the extent that, its use in Jamaica is liable to be prevented-
(a) by virtue of any law (in particular the law of 
. passing off) protecting an unregistered trade mark 
or other sign used in the course of trade; or 
(b) by virtue of an earlie\' right other than those 
referred to in subsections (1) to (3) or paragraph 
(a) of this subsection, in particular, by virtue of 
the law relating to copyright or rights in designs, 
(5) A person who is entitled under this seoUm1 to 
prevent the use of a trade mark is referred to 111 this Act 
as the proprietor of an earlier right in relation to the trade 
mark. 
(6) Nothing ip this section prevents the registration 
of a trade mark where the proprietor of the earlier trade 
mark or other earlier right consents to the registration. 
14.-·(1) In this Act "earlier trade mark" means-­
(a) a registered trade mark; or 
(b) a trade mark which, at the date of application for 
registration of the trade mark in question or (where 
appropriate) of the priority claimed in respect of 
the app,Jication was entitled to protection under the 
Paris Convention as a well known tmde mark; or Meaning of 
(larlier 
trade mark. rp/Nil 
Page 14 
(c) a trade mark in respect of which an application for 
registration has been made and which, if registered, 
would be an eJrjier tmc1e mark by virtue of para­
graph (b), subject to its beinrr so registered. 
(2) A trade mark as defined in subseotion 0) (b) 
whose regisLration expires shall continue to be taken into 
account in deterrnining the registrability of a later mark 
for a period of one year after the cxpjry, unless the Registrar 
is satisfied that there was no bona fide nse of the mark 
during the two years im !nediately preceding the expiry. 
15. Where on an application for the registration of 
h;ade mark it appears to the Registrar that-'1 
<. Ho[!e~t coo' 
current 
use of 
(a) there is an earlier trade m8 to whidl sec( 13 mark. 
0), (2) or (3) applies; or 
(b) there is an earlier right in relation to which section 
13 (4) applies, 
then, unless the proprietor of the earlier trade mark or 
other right raises objection on any SL1ch ground in opposi­
tion proceedings, the Registrar shall not refuse the applica­
tion by reason of the earlier trade mark or earlier right, 
if the applicant satisfies the Registrar that there has been 
honest concurrent use of the trade mark for which registra­
tion is sought. 
Application for Registration of i\1ark 
~plioation. 16.-0) An application for registration of a trade mark 
shall be made. to the Registrar in such form as may be 
required pursuant to section 54 and be accompanied by the 
prescribed fees. 
(2) The app1ication shall contain-
(a) the name and address of the applicant; 
(b) a request for registration of a trade mark; 
(c) a statement of the goods or services in relation to 
which registration 'of the mar).;: is sought; 
(cl) a representation of the trade mark; and 
(e) such other particulnrs ElS may be prescribed. 
(2) The application shaH state that the trade mark 
is being used by the applicant or with his consent in relation 
to the goods or services or tllat he has a bona fide intention 
that it should be so used. Da!e of 
filing. lP/Nil 
17.-(]) The date of filing of an application for registra­
tion of a' trade mark is the date on which the applicant 
furnishes the docurnBnts containing everything required 
under sectIon J <1; and where docltments are furnished on 
different clnys, the date of nIing is the last of those dates. 
(2) References in this AcUo the date of application 
for Jegistration are to the date of filing of the application. Page 15 
18.---(1) For the purposes of the registration of trade 9lassifica­
marks; goods and services shaH be classified in accordance ~g~d~~nd 
with the prescribed system of classification. services. 
(2) Any qtlestion arising as to the class within which 
any goods or services faH shaH be determined by the 
Registrar, whose decision shall be final. 
19,--(1) A person who has duly fiLed an application for Rightof 
! . f t 1 k . C t' t (" ptforily. tlle protechon 0 a faCIe mar m a onvenlon conn ry a 
COnyelltion application") or his successor 1n title, has a 
right to priority for the purposes of registering the same 
trade mark under this Act for some or all of the same goods 
or services, for a period of six months from the date of 
filing of tIle first such application. 
(2) If the application for registration uncler this Act 
is made within that six-month period-
(a) tbe relevant date for the purposes of eSUlblishing 
W11ich rights take precedence shaH be the elate of 
fiLil1~ of the first Convention application; and 
(b) th-e registrability of the trade mark .shall not be 
affected by any use of the mark in Jamaica in the 
period between that date and the d~lte of the 
application under this Act. 
(3) Any filing wllich, in a Convention country is 
equi valent to a regular national filing under its domestic 
legislation 'Or an international agreement, shall be treated 
as giving rise to the right, of priority. 
(4) A subsequent application concerning the same 
subject as the first convention applicatiqn, filed in the same 
Convention country, shall be considered the llrst Conven­
tion applic.ation (of which the filing date js the starting 
date of the period of priuriLy) if at tlL: time (he. ~;u:J:se> 
quent Jpplication-
(<1) the previous application has been withdrawn, aban­
doned or r0fuscd wiLhout having been laid open 
to public inspection and without le8ving any rights 
O1.l~standil1g; and IP/N/llJAM/TI1 
Page 16 
Claim of 
priority by 
CiVerseas 
applicant. (b) it has not yet served as a bDSis for claiming Cl 
right ef priority, 
(5) A right of priority an~)ll1g as a result of a 
Convention application may be assigned cr oth~nvise trFns­
mitted, either with the ap'p:Hcatio:l or incl',,;p::::.nciently; and 
the reference in subsection (1) to the app1icant~s successor 
111 title shaH be construed accordingly. 
(6) Provision may be made by rules a.s to the manner 
of claiming a right to priority on the basis of a Convention 
:1. pplication. 
(7) In this sectiol1-
(a) "Convention country" means a country, other than 
Jamaica, which is a party to the Pads Convention 
as described if: section 48; and 
(b) "regular nntional filing"', means a fi ling which is 
adequate to establish the d2te on which the 
appJ:ication was filed in that country, '\vh8.\ever m8Y 
be the subsequent fate of the application, 
20.-0) The Minister may by order, suh1'::ct to negrlive 
resolution, make provision for conferring on a person who 
has duly filed an application in a specified country for the 
protection of a trncle mark in reI8tion to goods 8. nd f;ervic~s) 
a right of priority for the purpose of regist~y-ji1 g the same 
trade mark under this Act for some or 2H of 811Ch G<l111e 
goods or services, 'for a specified peri od from the da le of 
filing that applic(1lion. 
(2) An order made under subsection (!) may make 
provision corresponding to that made under section 48 in 
relation to Convention countries or sud1 olher provision as 
appears to the Minister to be appropriate. 
Regisfralion Procedure 
21.--( 1) The Regis1trar shaH examine whether an applica­
tion for registration of 11 trade mark salisfies the require­
ments of the Act' and rules, and for that purpose shall carry 
out a search of earlier trade marks to such extent as the 
Registrar considers necessary. 
(2) Where it appears to the Registrar that the 
requirements for registration are Iwt met, th~ Registrar 
shall inform the applicant and give him an opportunity, 
within such period (being not less than thirty days) as the 
Reg.istrar may specify, to make representations or to amend 
the application. 
(3) \Vhere {he applic"mt-Examination 
of applica­
tion. Actions by 
I1!Pplioollt 
respecting 
application. (a) fails to satisfy the Registrar that those requirements 
are met or to amend the application so as to 
meet them; or 
(b) fails to respond before the end of the specifled 
period, 
the Registrar shall refuse to accepL the application. 
(4) The Registrar sball accept the application if it 
appears to him that the requirCn1'3nts for registwtion are 
met. rp/N!] 
Page 17 
22.-(1) On the acceptance of an appiicatjon, the Publication, 
Registrar shaH cause it to be published in the Gazette or opposition, etc, in such other manner as may be prescribed. 
(2) Any p;;rson may, within the prescribed time from 
the date of the publica,tion of the application and in the 
prescribed manner, give to the Registrar wfiUcn notice of 
opposition to the registration, statlng the grounds of 
opposition. 
(3) Where an applioation has been published, any 
person may, at any time before the registration of the trade 
mark, make observations in writing to the Registrar as to 
whether the trade mark should be registered; and the 
Registrar shaH inform the applicant of any sLlch observa­
tions. 
(4) A person who makes observations does not 
thereby become a party to~ the proceedings on the applica­
tion. 
23.-0) The applicant may at any lime withdraw his 
application or restrict the goods or services covered by the 
application; and if the application has been published, sllch 
withdrawal or restriction shall be published in like manner. 
(2) An application may be amended otherwise than 
under subsection (1), at the request of the appl icant, bu t 
only by the correction of-
(a) the name Or address of the applicant; 
(b) errors of wording or of copying; or 
(c) obvious mistakes, 
and so long as the correction does not substantially alTect 
the identity of the trade mark or extend the goods or 
services covered by .the application. lP/Nil 
Page 18 
(3) Rules may make provision for the publication of 
any amendment affecting the representation of the trade 
mark or the goods or services covered by the application and 
the making of objections by any person claiming to be 
affected by the amendment. 
24.--0) Where an application has been made for the Registration, 
registration of a trade mark and-
(a) 110 notice of opposition is given witliin the period 
referred to in section 22 (2); .01' 
(b) all opposition proceedings are withdrawn or decided 
in favour of the applicant, 
the Registrar shall register a trade ~lark unless it appears 
to the Registrar, having regard to rhaUers coming to the 
Registrar's notice since the acceptan:ce of the application, 
that it was accepted in error or unless the prescribed fee 
has not been paid within the presc:dbed period. 
(2) Where the prescribed fee is not paid within the 
prescribed period, the application shall be deemed to be 
withdrawn. 
(3) Where the registration uf a trade mark is not 
completed within six months from lhe date of the applicalion 
by reason of default on the part of the applicant, the 
Registrar may, . after giving notice of Ithe non-completion to 
the applicant in writing in the prescl)bed manner, treat the 
application as abandoned unless it is completed within the 
time specified in the notice. 
(4) The registration of a tradq mark shall take eJlect 
as of the date of filing of the application for registration, 
and that date shall be deemed for th~ purposes of this Act 
to be the date of registration. 
(5) On the registration of a trade mark, the Registrar 
shall issue to the applicant a certificate of registration which 
shaH be in the prescribed form. 
25.-(1) Rules may make provisiml with respec~ to­
(a) the division of an applic,ltiQI1 for the registration 
of a trade mark into sever~l applications; 
(b) the merging of separa1e applic,1tions or registra­
tions; 
(c) the registration of a series of trade rl1(uks. Further 
provisions 
re registra­
tion, 
series, etc. Registration 
subject to 
disclaimer. IPINIl 
(2) The rules may include provlsIOn as Lo-
(a) the circumstances in which and the conditions sub­
ject to which division, merger or registration of Cl 
series is permitted; and 
(b) the purposes for which an application to wbich 
the rules apply is to be treated as a single 8ppJica­
tion and those for 'Nhich it is to be treated as a 
number of separate applications. 
(3) A sei-ies of trade marks means a nnmber of trade 
marks which resemble each other as to their ma<terial parti­
culars and differ only as to matters of a non-distinctive 
character not s:"1l:stantially affecting the idclltity of the trade 
mark. 
26.--(1) If a trade mark-
(a) contains any part not separately registered by the 
proprietor as a trade mark; or 
(b) contains any matter common to the trade or other­
wise of a non-distinctive character, 
the Registrar or the Court, in deciding whether the trade 
mark shaH be entered of'8ha11 remain on the Register: act . ~ . 
in accordance with subsection (2). 
(2) The Registrar or the Court may require, 3S a 
condition of the trade mark being on the Register, that the 
proprietor-
(a) shaH disclaim any right to the exclusive use of any 
part of the trade mark or any portion of any 
matter referred to in sub~~ectjon (D, to the e?c]ll­
sive use of which they hold him not to be entitled; 
(b) shaH make such other disclaimer as they consider 
necessary for the purpose of defining the pro­
prietor's right under the registration: 
Provided that no disclaimer shaH affect any rights of 
the proprietor of a trade mark except such as arise out of 
the registration of the trade mark in respeot of which the 
disclaimer is made. 
(2) An applicant for registration of a trade mark 
or the proprietor of a registered trade mark may by notice 
in writing given to the Registrar-
(a) disclaim any right to the exolusive use of any 
specified element of the trade mark; or 
(b) agree that the rights conferred by the registra­
tion shall be subject to a specified territorial or 
other limitation. Page 19 lP/Nil 
Page 20 
(3) Where the registration of a trade mark is subject 
to a disclaimer or limitation, the rights conferred by section 
5 are restricted accordingly, and a disclaimer properJy made 
may not be revoked. 
(4) Rules shall provide for the publication and entry 
in the register of a disclaimer or limitation. 
PART IV. Dealings 'rvitlz Registered Trade Marks 
Assignment and Transmission 
27.-(1) A registered trade mark is transmissible by Assignment 
assignment, testamentary disposition or operation of law in ~:~d~~ark. 
the same way as other personal or moveable property, and 
is so transmissible either in conneotion with the goodwill of 
a business or otherwise. 
(2) An assignment or other transmission of a regis­
tered trade mark may be partial, that is, limited so as to 
apply relation to-
(a) some but not all of the goods or services for which . ~ 
it is registered; or 
(b) use of the trade mark in a particular manner or a 
particula~r locality. 
(3) Notwithstanding anything in subsection 0) or 
(2), but subject to subsection (4), a registered trade mark 
is not transmissible where its transmission would be likely 
to deceive or confuse the public by reason of the conferment 
of exclusive rights on more than one person, to use identical 
or similar trade marks in relation to identical or similar 
goods or services. 
(4) An assignment of a registered trade mark is not 
effective unless it is in writing ·signed by or on behalf of 
the assignor, or, as the case may be, a personal representa­
tive; and where the assignor or personal representative is 
a body corporate, this requirement may be satisfied by the 
affixing of its seal. 
(5) The foregoing provisions of this section and such 
provisions as may be prescribed apply to assignment by way 
of security as in relation to any other assignment. 
(6) A registered trade mark may be the subject of a 
charge in the same way as other personal or moveable 
property. 
(7) An assignment may be registered as provided in 
section 30. I P(~/l /JAIV1/T 11 
Page 21 
(8) Rules may make provision in relation to the 
assignment of a trade mark and as respects any trade mark 
which is or is to be the subject of a charge, 
(9) Nothing in this Act shall be construed as affect­
ing the assignment or other transmission of an unregistered 
trade mark as part of the goodwill of a business, 
Licensing 
28.-0) A licence to use a registered trade mark may be P'r<.»visinrmu 
1 I, 't d d j' 't d l' 1 ' to IicerJ.r.:es general or unte; an a I1mle lcence may apply, III 
particular, in relation to-
(a) some but not aU of the goods or services for which 
the trade mark is registered; or 
(b) use of the trade mark in a particular manner or 11 
particular locality. 
(2) A licence is not effeotive unless it is in writing 
signed by or on behalf of the grantor; and where the grantor 
is a body corporate, this requirement may be satisfied by 
the affixing of its seal. 
(3) Unless the licence otherwise provides, it is bind­
ing on a successor in title to the grantor's interest; and 
references in this Act to the doing of anything with or 
without the consent of the. proprietor of the registered trade 
mark shall be construed accordingly. 
(4) A licensee may grant a sub-licence jf the licence 
so permits; and references in this Act to a licence or licensee 
shall include a SUb-licence or sub-licensee. 
29.-0) An exclusive licensee has the pame rights against Rlgn~ of 
. '1 1 'b d b th I' I h exc1uswv-o a successor 111 tIt e w 10 IS OUlF y. e H.:ence as 1e as UCe>llSM. 
against the person granting the licence, 
(2) An exclusive licence may provide that, in relation 
to any nlU!tter occurring after the grant of the licence, the 
licensee shaH have, to the extent specified in the licence, 
the rights and remedies which would apply if the licence 
had been an assignment. 
(3) Where provision is made in an exclusive licence 
pursuant to subsection (2), then,' subject to the provisions 
of the licence, subsection (4) and section 33, Lhe licensee 
is entitled to bring infringement proceedings in his own 
name against any person other than the proprietor. l/JAM/TIl 
Page 22 
RelZj,(erable 
traiis­
action. (4) The rights and remedies available to an exclusive 
licensee pursuant to this section are concurrent with those 
of the proprietor of the registered trade mark; and references 
to the proprietor of a registered trade mark in the pro­
visions of this Act relating to infringement shall be construed 
accordingly. 
Registration 0/ Transactions 
30.-(1) The following are registmble transactions for the 
purposes of this Act-
(a) an assignment of a registered trade mark or any 
right in it; 
(b) the grant of a licence under a registered trade mark; 
(c) the granting of any security interest (whether fixed 
or floating) over a registered trade mark or any 
right in or under it; 
(d) the making by personal representatives of an assent 
in relation to a registered' trade mark or any right 
in or under it; 
(e) an order of a court or oiher competent authority 
transferring a registered trade mark or any right 
in or under it. 
(2) Any peDson claiming to be entitled to an interest 
in or under a registered trade mark arising from a regiSltrable 
transaction, or any other person claiming to be affected by 
such a transaction, may apply to the Registrar for the entry 
on the regiSlter of the prescribed parti<.,'Uwars of the trans­
action. 
(3) Until an application has been made under sub~ 
section (2)-
(a) the transaction is ineffective as against a person 
acquiring a conflicting interest in or under the 
regiSltered trade mark without knowledge of the 
transaction; and 
(b) a person claiming to be a licensee, by vifltue of the 
transaction does not have the protection of section 
33 or 34. 
(4) Subjeot to subsection (5), where, by virtue of a 
registrable transaction a person becomes the proprietor or 
a licensee of a registered trade mark, then, unless he applies 
for the registration of the prescribed particulars of the 
transaotion within a period of six months of the date of the 
transaction or such later period thereafter as appears to the 
Court reasonable in the circumstances, he shall not be 
entitled to damages or an account· of profits in respect of 
any infringement of the registered trade mark occurring 
after the d::l'te of the transaction and before the registration 
of the prescribed particulars. Infringemmt 
actionable 
by proprie­ror. 
Meanlingof 
infrlng,ing 
goods, etc. (5) Subsection (4) shall not apply if the proprietor 
or licensee can show that the person who infringed the 
registered trade mark had actual knowledge of the regis­
trable transaction. 
(6) Rules may provide for-
(a) the amendment of registered pa.rticulars relating to 
a licence so as to reflect any alteration of the 
terms of the licence; 
(b) the removal of .such particulavs from the register­
-(1) where it appears from the registered parti­
culars that the licence was granted for a 
fixed period and that period has expired; or 
(iD where no such period is indicated and, after 
such period -as may be prescribed, the 
Registrar has notified the parties of the 
Registrar's. intention to remove the parti­
culars from the register; 
(c) the amendment or removal from the register of 
particulars relating to a security interest, on the 
application of, or wh'h the consent of, the person 
entitled to the benefit of that interest. 
PART V. Infringement Proceedings 
31.-(1) An infringement of a regis{ered trade mark is 
actionable by the proprietor of _ the trade mark 
(2) In an action for infringement all such relief by 
ways of damages, injunctions, accounts Of otherwise is avail­
able to him as is available in respect of the infringement of 
any other property right. 
32.-(1) In relation to a registered trade mark, goods 
are infringing goods under this Act where they or their 
packaging bear a sign that is identical with or similar to 
the registered trademark and-
(a) the application of the sign to the goods or their 
packaging was an infringement of the registered 
trade mark; or 
(b) tJ;1e goods are proposed to be imported into Jamaica 
and the application of the sign in Jamaica to them 
or their packaging would be an infringement of 
the registered trade mark; or 
(c) the sign has otherwise been used in relation to the 
goods in such a way as to infringe the registered 
trade mark. 
(2) In relation to a registered trade mark, material 
is infringing material if it bears a sign identical with or 
similar to the registen!d trade mark and either-Page 23 lP/Nil 
Page 24 
(a) it is used for labelling or packaging goods, as a 
business paper, or for advertising goods or services, 
in such a way as to infringe the registered trade 
mark; or 
(b) it is intended to be so used and such use would 
infringe the registered trade mark. 
(3) In relation to a registered trade mark, articles 
are infringing articles jf they-
(a) are specifically designed or adapted for making 
copies of a sign identical with or similar to the 
registered trade mark; and 
(b) are in the possession, custody Of control of a 
person who knows or 11as reason to believe that 
the articles have been or are to be used to produce 
infringing goods or material. 
33.-(1) a11 action brought by an exclusive licensee by Special 
virtue of seotion 29, a defendant ~l1aY avail himself of any r:e~~f~~~e 
defence which would have been available to him if the lic.ensee. 
action had been brought by the proprietor of the registered 
trade mark. 
(2) Where proceedings for infringement of a regis­
tered' trade mark brought by the proprietor or an exclusive 
licensee rela,te wholly or partly to an infringement in respect 
of which they have concurrent rights of aotion, the pro­
prietor or, as the case may be, the exclusive licensee may not, 
without the leave of the Court, p~oceed with the action unless 
the other is either joined as a plaintiff or added as a defen­
dant. 
(3) The provisions of sub~ection (2) do not affect the 
granting of interlocutory reUef oh an application by a pro­
prietor or exclusive licensee alone., 
(4) A person who is added as a defendant as men­
tioned in subsection (3) shall not be made liable for any 
costs in the action unless he takes part in the proceedings. 
(5) Where an action for infringement of a registered 
trade mark is brought which relates wholly or partly to an 
infringement in respect of which the proprietor and an 
exclusive licensee have Of. have had concurrent rights of 
action-
(a) in assessing damages [,he Count shall take into 
account the terrnsof the licence and any pecuniary 
remedy already awarded or available to either of 
them in respect of, the infringement; (b) no account of profits shall be directed if an award 
of damages has been made, or an ac~ount of profi ts 
has been directed, in favour of the other of them 
in respeot of the infringement; and 
(c) the Court shall, if an acc,ount of profits is directed, 
apportion the profits between them as the Court 
considers just, subject to any agreement between 
them. 
(6) Subsection (5) shall apply whether or not the 
proprietor and the exclusive licensee are both parties to the 
action; and if they are not both parties the Court may 
give such directions as it thinks fit as to the extent to which 
the party to the proceedings is to hold the proceeds of any 
pecuniary remedy on behalf of the order. 
(7) The proprietor of a registered trade mark shaH 
notify any exclusive licensee who has a concurrent right of 
action before applying for an order under section 38; and 
the Court may on application of the licensee make such 
order under that section as it thinks fit, having r~gard to 
the terms of the 'licence. 
(8) The provisions of subsections (2) to (7) have 
effect subjeot to any agreement to the oontrary between the 
exclusive licensee and the proprietor. 
(9) Where and to the extent that an exclusive licensee 
has the rights and remedies of an assignee by virtue of 
section 33, then the provisions of thi,s section shaH apply 
as if he were the proprievor of the registered trade mark. Page 25 
34.-0) Subject to the provisiom; of this section, unless !U::llts of 
his licence or' any licence thrcugb which his licr;:J1c~ is fi~!~~ees in 
derived IJfovides otherwise, Cl liC8PSC3 is entitled to call. on infringment proceedings. 
the proprietor of ,the registered trade m:u'k to t8ke infringe-
ment proceedings in resp;~ct of any maltler which ,1ITccts 
his interests. 
(2) If the proprietor refuses 10 take infringement 
proceedings or fails to do so within two months after bdng 
called upon, the licensee m a)! bring the proceedings in his 
own name as if he were the proprietor. 
(3) Where infringemen~ proceedings are brought by 
a licensee by virtue of this section, the licensee may not, 
without the leave of the Court, proceed with the aotion 
unlcss,the proprietor L) either joined as a pJ.8intiff or added 
as a defendant. lP/Nil 
Page 26 
Order for 
'>l'!l~\JI'e, etc, 
of sign. 
Order for 
delivery up, 
etc. (4) The provlslons of subseci ion (3) do not aJTect 
the granting of interlocutory relief on an arlpLication rru,cle 
by a licensee aJone. 
(5) A proprietor villa is added as Cl defendant as 
required under subsection (3) shall not be made linblc [or 
any costs in the action unless he takes P,Ht in l1J~ procc8d­
ings, 
(6) Where infringement proceedings are taken by a 
proprietor of a registered trade mark, any loss sllfIered or 
likely to be sufTered by licensees sh;111 be wk:sn into acCCllnt 
such proceedings; and the Court ID2~Y give ,;uch direct ion:> 
as it thinks fit as to the extent to 'vvhieh the plaintiII is le 
hold the proceeds of any pecuniary lcmedy on behalf of 
licensees. 
(7) This seotion shall not apply where or tr: the 
extent that a licensee has a right to bring prcceedin. Il1 
his own name. 
35.--(1) The Court may make an order reqHiring the 
person who is found to have infringed a registered trade 
mllrk-
(a) to cause the offending sign to be erased, removed or 
obliterated from any infringing goods, materials or 
articles in his possession, custody or contTol; or 
(b) where it is not reasonably practicable for the 
oiIending sign to be erased, removed or oblit­
. erated, to secure the destruction of the infringing 
goods, material or articles. 
(2) an order under subsection (1) is not complied 
with or it app:::ars to the Court likely that such an order 
would not be complied with, the Cour{ may order that lhe 
infringing goocis, material or articles be delivered to such 
person as the Court may direct for erasure, removal or 
obliteration of the sign or for destruction, as the case Flay 
be. 
36.-0) The proprietor of a registered trade mark may 
apply to the Court for an order for the delivery up to him 
or to such other person as the Court may direct, of any 
infringing goods, material or articles which a perso.ll has in 
his possession, custody or control in the course of business. 
(2) An application shall not be made after the end 
of the period specified In section 37 and no order shall be 
made unless the Court also makes or it appears to the Court 
that there are grounds for making, an order under section 38. (3) A person to whom any infringing goods, mnterial 
or articles are delivered up in pursmmce of an order under 
this section shall, if an order under section 38 is not made, 
retain them pending the makin£r, of an order, or the decision 
not to make an order under t hat section. 
(4) Nothing in this section aITects any other power 
of the Court. lP/NI J /JAM IT/ 1 
Page 27 
37.-(1) Except in the circlIms.tances specified of in sub- l;,imi~ation 
, (2) 1" f' ! i • time .or section ,an app lcatlOl1 or an orc er unCLcr sectIOn 36 delivery up. 
mny not be made after the period of six years from-
(a) the date on which the trade ma~'k was applied to 
the goods or their packnging, in the case of infring­
ing goods; 
(b) the dale on which the trade mark was applied to 
the material, in the case of the infringing material; 
or 
(c) the date on which lhe artio!es were made, In the 
case of infringillg articles. 
(2) during the whole or part of such period the 
proprietor of the registered trade mark was-
(a) under a disability; or 
(b) prevented by fraud or concealment from discover­
ing the facts entitling him to apply for an order, 
he may make an application at any time before 
the end of the period of six years from the date 
on which he ceased to be under a disability or, 
as the case may bc, could with reasonable diligence 
have discovered those facts, ". 
33.--{ l) An application may be made to the Courl--
(a) for an order that infdnging goods, materinJ or 
articles delivered up pursuant to an order under 
section 36 be destroyed or forfeited to sllch p':fson 
as the Court may think fit; or 
(b) for a decision that no such order shoul.d be rnade, 
(2) In determining ,>vhat order (jf Hny) should be 
made, the Court shall consider whether other remedies 
. (;v(lilable in an action foril1fringement of the 
trademark would be adequate to compelrmte th~ proprietor 
·and !.tt1Y lioOiW!O!''l'!' !Hid fo pt'oU:;ot their illterests. Order for 
dj;;posal. lP/NIl!J AMIT!1 
Page 28 
Burden of 
proving use 
of mark. (3) Pro'.ision shall be made by rule'; of court as to 
the service of notice on persons having an interest in goods, 
material or articles and any such p:::rson is entitlecl-
(a) to appear in proceedings for an order under this 
section, whether or not he was served with notice; 
and 
(b) to appeal against any order m8de, wh:::ther flr ne! 
he appeared. 
(4) An order made under subsection Cl) shaH llot 
tak~ effect until the end of the period within which notice 
of an appeal may be given Of, if before the end of that 
period notice of appeal in duly giv:;)n, until the final deter· 
mination Of abandonme:1t of the proceedings on the appe8: 
(5) Where there is more than onc personinl-erested 
in the goods, materia,] or 8rticles, the Court shall make 
such order as it thinks just. 
(6) If the Court decides that no order should be 
made uncl~r this section, the person who possession, custody 
or control the goods, material or articles before the~J 1Y:"Tt: 
being de1ivef'::,d up is entitled to their return. 
(7) References in l-h is section to a r)';]"soJ] having (J J1 
interest in goods, material or articles include 2ny rer.s!:n 
in whose favour an order could be made under this section 
or II nder section 137 of the Copyrigh t Act. 
39. In any civil proc~eding.'l, if n qw:;stion anses of as 
to the use to which a regist(';red trade mark has bCfCm put, iL 
is for the proprietor to show what use has been made of it. 
PART VI. /lcII0;1s _AfJeeting Registered Trade lVlork 
40.~~,,~(l) On the expiration of the initial period of registra- Renewal. 
lion of CL trade mark as specified in seotion 8, the registnilion 
may be renewed for periods of ten years; and the renewal 
shall take effect from the expiration of the previous registra-
tioll. 
(2) A request for renew:::l shall be made to the 
Registrar in the prescribe form and accompanied by the 
prescribed renewal fee paid and shall be made before the 
expiry of the registration, failing which-
(a) the request may be made and the fee paid within 
such further period as may be prescribed, being 
not more than six months; and 
(b) a prescribed additional renewal fee shall also be 
paid within that period. Surrender of 
registered 
trade mark. 
Grounds for 
revocation. (3) Where the registration of a trade mark is not 
rcne\ved as proviueJ in the foregoing provisions of thi~' 
section, the Registrar shall remove the trade mark from lk 
register. 
(4) Rules may make provision for the restoration of 
the registration of a trade mark which has been removed 
from the register, subject to such conditions, including the 
payment of fees, as may be prescribed. 
(5) Rules shall make pr~vision for the Registrar to 
inform the proprietor of a registered trade mark, before 
the expiry of the registration, of the date of expiry and the 
manner in which the registration may be renewed. 
(6) The renewal or ,restoration of the registration 
of a trade mark shall be published in the prescribed manner. I/JAM/TJ1 
Page 29 
41.-(1) A registered trade mark shall not be altered in Alteration of registered the register during the period of registration or on renewal. trade mark. 
(2) N ol withstandil1P: subsectiu1l (I), the P.erdstra r 
~ ~ 
may~ at the request of the 'proprietof, allow.the alteration 
or it registered trade 1I1£dk where the mark includes the 
proprietor's name or address and the altenl.tion i.'l limiterJ 
lo the alteration of thnt name Of address and does not 
substantially alTect the identity of the mark. 
(3) Rules shall make provision for the publication 
of any alteration allowed and for the making of objections 
by any person claiming to be aJTccted by it. 
42.-0) A regis;tered trade mark may be surrendered by 
the proprietor in respect of some or all of the goods or 
services for which it is registered. 
(2) Rules may make provision as lo-~ 
(a) the nUl1111I':f and effect of a surrender; and 
(b) for pro!ecling the interests of other persons having 
a right in the registered trade mark. 
43.-(1) The registration of Cl trade mark may be revoked 
on any of the following grounds--
(a) that wHhin the period of three years following the 
date of completion of the registration procedure 
and up to one month before the date of application 
for revocation, the trade mark has not been put to 
bona fide use in Jamaica by the proprietor or with 
his consent, in rel.a,tjon to the goods or services for 
which it is registered) and there are no prorcr 
reasons for non-use; IP/N/1/JAM/T/l 
Page 30 
(b) t11at in consequence of acts or inactivity of the 
proprietor the trade mark has becofn e the common 
name in the trade for a product or service in 
respect of which the trade mark is registereel; 
(c) that the trade mark is likely to decejve or confuse the 
public on account of .its use by the proprietor or 
with his consent in reJaUon to the goods or services 
for which it is registered. 
(2) For lhe p1.lrpOSes of subsection 0) use of a trade 
mark includes use in a form differing in elements which do 
not alter the distinctive charader of the mark in the form 
in which it was registered, and use in J arnaica includes 
aHbdng the trade· mark to goods or to tbeir packaging in 
Jamaica solely for export purposes. 
(3) The registration of a trade mark shall not be 
revoked on the ground mentiuned in subsection (1) (b) if 
use of the mark is resumed or conunenc-ec1 after the expiry 
of three yeclrs but before the application for registration is 
made, except that, any such commencement or resumpLion 
of use after the expiry of the Live year period but within 
the period of three months before the making of the applica­
tion shall be disregarded unless preparations for the com­
mencement or resul1lption begaa before the proprietor 
became aware that the application might be made. 
(4) The registration of a trade mark shall not be 
revoked where the Registrar is satisfied that the proprietor 
intends to use the trade mark before the expiration of the 
period for which it is registered. 
44.-(1) Subject to subsection (2), an applic::1tioll for AppUcatioll . , I '13' for revo-revocatIOn may be made by any person w L 1C "eglsj rar catioll. 
or the Court. 
(2) If proceedings ,are pending in Court concerning 
the trade mark in question, an application under this section 
shall be made to the Conrt, and where the applir::ation is 
made to the Registrar, he may at any stage refer the applica­
tion to the Court. 
(3) \Vhere grounds for revocatioil exist in respect 
of ,only some of the goodD or services for vvhich the tr8c1e 
mark is registered, revocation shall reJate to those goods 
or services only. 
(4) \Vhere th~ registration of a trade mark is revoked 
to any extent, the rights of the proprietor shall be c:eemeJ 
to have ceased to that extent as ffOln1--
(a) the date of the application for revocation; or 
(b) at ,an earlier date, if the R::gistrar or Court is 
satisfied that the grounds for revocation existed 
at that earlier date. Grounds 
invalidity. 
hp plica don 
for declara­
tion of 
invalidity. Invalidity of Registralion 
45.-(1) Subject to subsection (2) the registration of a 
trade mark may be declared jnvnliU on the ground that-
(a) it was disqualified from registration under section 
11 or any of the provisions referred to in that 
section; 
(b) there is an earlier trade mark in relation lo which 
the conditions specified in section 13 (1), (2) and 
(3) obtain or an earlier right in relation to which 
the conditio.rls set out in section 13 (4) sre satisfied, 
and the proprietor of that earlier trade mark or 
earlier right has not consented to the registration. 
(2) Where a trade mark was registered despite being 
disqualified under section 11 (1) (a) (b) or (c), it shall not 
be declared invalid if through use, it has acquired a distinc­
tive character in relation to the goods or services for which 
it is registered. 
46.-(1) An application for (l declaration of invalidity 
may be made by any person to the Registrar or the Court. 
(2) If proceedings are pending in Court concerning 
the trade mark in question, an application under this section 
shall be made to the Court and where the application iil 
made to the Registrar, the Registrar may at any stage of 
the proceedings refer to the Court any matter arisinr, from 
the application which involves a question of law of public 
importance. 
(3). The Registrar may apply to the Court for a 
declaration of the invalidity of the registration in the case 
of bad faith or error in the registration. 
(4) Where the grounds of invallc1ity 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. 
(5) Where the registration of a trade mark is declared 
invalid to any extent, then the registration shaH, to thal 
extent be deemed never to have been made, but without 
prejudice to any transaction past and closed. IPIN/] 
Page 31 IP/NiliJAM/T/l 
Page 32 
47.-0) V/here a registered trade mark has been used in 
Jamaica for a continuous period of three years with the 
knowledge and acquiescence of the proprietor of an earlier 
trade mark or other earlier right, then, unless the registra­
tion of the later trade mark was applied for in bad faith, 
such proprietor shall not be entitled to apply for a declara­
tion that the registration of the }qJer trade mark is invalid 
or to oppose the use of the later trade mark in conneotion 
with the goods or services in relation to whkh it has been 
used. 
(2) In the circumstances specified subsection (1), 
the proprietor of the later trade mark is not entitled to 
oppose the use of the earlier trade mark, or as the case 
may be, the exploitation of the earlier right, notwithstanding 
that the earlier trade mark or right may no longer be 
invoked agajnst his later trade mark. 
PART VII. Provisions to Implement International 
Conventions 
The Paris Convention: Supplementary Provisions 
48.-( 1) In this Act-
(a) "the Paris Convention" means the Paris Conven­
tion for the Protection of Industrial Pronertv of 
March 20, 1883, as revised or amended from time 
,to 'time; and 
(b) "Convention country" means a country, other than 
Jamaica, which is a' party to that Convention. 
(2) The Minister may by order make such amend­
ments to this Act and rules as appear to him appropriate 
on account of any revision or amend.ment of the Paris 
Convention· occurring after the 'appointed, day. 
(3) An order made under subseotion 0) is subject 
to affirmative resolution. 
49.-(1) The proprietor of a welI:-known'mark which is 
entitled to protection under the Paris Convention; as 
mentioned in' subsection (2), is entitled to restrairi' by in­
junction the-use -ill Jamaica ofa trade mark which, or 
the essential: part of which, is identical with or similar to 
his mark iri relation-to identical or similar goods or services', 
where the' use of the-mark is likely to cause-confusion;· 
(2) A trade mark· is. entitled to protection under the 
Paris Convention if it is well known in Jamaica as being the' 
mark of a person who is-
(a) a citizen of a Convention country; or ElTect 'of 
acquie­
scence. 
Paris 
Con,vention. IP/N/l/JAM/TIl 
Page 33 
(b) . is habitually resident, or has:a reaL and; effective 
industrial or commercial establishment in,'. a Con q 
vention. country, whether or not that person carries 
on business or has ·any' goodwill in rJ amaioa; and 
references to the proprietor of such a rnark shaH 
be construed accordingly .. 
(3) The right conferred by subsection (1) is subject 
to section 47. 
(4) Subsection (1) shall not be construed to affect 
the continuation of any bona fide use of a trade mark, 
begun before the appointed day. 
50.-0) The Registrarshali not :register a ,irade·'mark :::;~::of 
cortsi.~tihgof or containing the,11ag of a Convention country, Ooll':1tiOl1 
. h 1 1" f hI' f ClJ>UIJ: e$. WIt out t le aut 10nzabon 0 t e competent aut lOnty 0 
that country, unless it appears to the Registrar, that use of 
the flag in the manner proposed is permitted without such 
authorization. 
(2) . The Registrar shaH not register a trade mark 
consisting of or containing the armorial bearings or any 
other state. emblems of a Convention country which is 
protected under the Paris Convention, without .the author­
ization of the competent authorities of that country. 
(3) Where a {rade mark consists of or oontains an 
official sign ,or' hallmark adopted by a Convention country 
and indicating control and warranty, being a sign or hal1-
mark protected under the Paris Convention, .the Registrar 
shall not register the trade mark in. relation t? goods or 
services of the same or a similar kind as those in relation 
to which the sign or hallmark indicates control or warranty, 
without the authorization of .the competent authority of the 
country. concerned. 
(4) The provisions of this section as to nMional 
flags, armorial 'bearings and 'other state emblems and official 
signs or hallmarks, apply equally to anything, the hera'ldic 
elements bfwhich, in the opinion of the Registrar, imitates 
any such flag, 'armorial ,bearings )or other emblem or sign· 
or hallmark. 
(5) This seotion does not prevent the registration 
of a trade :markon the application of a' national of a 
country who is authorized to make use of a state emblem, 
or official sign or hallmark of that country, notwithstanding 
thatit is sim ilar to that of another country. 
:(6) The competent,· authorities whose authoriza.tion 
for registration of a trade mark is or would· be required 
under this section may restrain by injun~tion any use of 
the mark in Jamaica without their authorization. IP/N/l/JAM/TI1 
Page 34 
Other state 
emblems. 51,-(1) For the purposes of ,section 50 state emblems of 
El Convention country (other than the national flag) and 
olher official signs or hallmarks, shaH be regarded as pro­
tected under the Paris Convention only if or to the exlent 
that-
(a) the country in qllestionhas notified the Govern­
ment of Jamaica in accordance with Article fiter 
(3) of the Convention. that it desires to protect 
that emblem, sign or hallmark; 
(b) the notification remains in force; and 
(c) the Government of Ja:maica has not objected to 
it in accordance with Article 6ter (4) or any 811ch 
objection has been withdrawn, 
(2) For the purposes of section 52 the emblems, 
abbreviations and names of all illternationaJ organization 
shaH be regarded as protected under the Paris Convention 
only if or to the extent that-
(a) the organization in question has notified the 
Government of Jamaica in accordance with Article 
6ter (3) of the Convention that it desjres to protect 
that emblem, abbreviati011 or name; 
(b) the notificaHon remains jn force; and 
(c) the Government of Jamflica has not objected to it 
in accordance with Article 6ter (4) or any sllch 
objection has been withdrawn. 
(3) Notification under Article 6ter (3) of the Paris 
Convention shall have effect only in relation to applications 
for registraticirl made more than two months after the receipt 
of the notification, 
(4) The Registrar shaH keep and make available for 
public inspection by any person, at all reasonable hours and 
free of charge, a liSJt of-
(a) state emblems and official signs or hallmarks; and 
(b) the emblems, abbreviations and names of inter­
national organizations which arc for the time being 
protected under the Paris Convention by virtue of 
notification under Article 6ter (3). 
52 () Th I) . . t 1 1 Embltlll5 of .. -1 ,e "eglstrar shall not reglser a trae e mar ( inter-
consisting of or containing any emblem to which this section ~:gaonJ~' 
applies, without the authorization the international tion. 
organization concerned, unless it appears to the Registrar 
that the use of the symbol in the manner proposed-Acts (jf 
agents, (a) is not such as to suggest to the public that a con­
nection exists between the organization and the 
trade mark; or 
(b) is not likely to mislead the public as to the 
existence of a conneotion between the user and the 
organiza ti on. 
(2) The emblems to which this section applies are­
(a) the armorial bearing, flags or other emblems; imd 
(b) the abbreviations and names of international inter­
governmental organizations of which one or more 
Convention countries are member$. 
(3) The provisions of this section as to emblems 
apply equally to anything, the heraldic elements of which, 
in the opinion of the Registrar, imitate any such emblem. 
(4) The international organization whose authoriza­
tion for registration of a trade mark is or would be required 
under this section may restrain by injunction any use of the 
mark in Jamaica without its authorization. 
(6) In, subsection (5), the specified date means the 
person whose bona fide use of the trade mark in question 
began before the specified date. 
(5) Nothing this section affects the rights of '3 
date when the relevant provisions of the Paris Convention 
enter into force in relation to Jamaica. 
53.-(1) The provisions of this section apply where an 
application for registration of a trade mark is made by a 
person who is the agent or representative of the proprietor 
of the mark in a Convention country. 
(2) The Registrar shalll refuse to register the tn{de 
mark if the proprie'tor opposes the application. 
(3) If the application (not being so opposed) is 
granted, the proprietor may-
(a) apply for a declaration of the invalidity of the 
registfaJtion; or 
(b) apply for the rectification of the register so as to 
substitute his name as the proprietor of the 
registered trade mark. 
(4) The proprietor of a trade mark may (notwith­
standing the rights conferred by this Act in relation to a 
registered trade mark) by injunction restrain any use of the 
trade mark in Jamaica which is not authorized by him. IP/N/ I /JAM/TIl 
Page 35 lPINl1 
Page 36 
(5) Subsections (2), (3) and (4) do not apply if, or 
,to the extent that the agent or representatives justifies his 
aotion. 
(6) An application under subsection (3) (a) or (b) 
must be made within three years of the proprietor becoming 
, aware of the registration; and no injunotion shaH be granted 
under subseotion (4) in respect of a use in which the pro­
prietor acquiesced for a continuous period of ,three, years 
or more. 
PART VIII. Administration 
Functions of the Registrar 
54. The Registrar may require the use of such forms as Forms. 
he may direct for any purpose relating to the registration 
of a trade mark or any olher proceeding before hi,m under 
this Act and shall' cause the forms and directions for their 
use to be published in the prescribed manner. 
55.-(1) Subject to such restrictions as may be prescribed, ~t~~Il~fon, 
after the pUblication of an applica,tion for registration of 
a trade mark, the Registrar shall. provide information relat-
ing to the application to any person who makes a request 
in. the prescribed manner: and'pays the prescdbedfee (if 
any) and shall permit him to inspect any documents relating 
to the application or to any registered trade mark resulting 
from it, as may be 'specified 'in the request. 
(2) The, Registrar shall ~not publish any documents 
or communicate any information relating to an' application 
for registr,ation of a trade mark beforecthe'publication of 
the application' except-' 
(a) in such, cases and to such, extent as may be 
prescribed; 
(b) with the consent of the applicant; or 
(c) in the circumstances set out in subsection (3). 
(3) Where a person has been notified that an appli­
cation for registration of a trade mark has been made and 
that the applicant wiLl, if the application is granted, bring 
proceedings against him in respeltts ofl acts done' after 
publication:oftthe application, he may make a request.under 
subsection (1) notwithstanding that the application: nas not 
been published; and subsection'(l} shall'apply accordingly. Po\\,cr ld 
award costs, 
etc. 
Evidence 
beoofe 
Regis trn r. 
Exclusion 
of liabHity. lP/Ni I 
56.-(1) Rules may make provision-
(a) empowering the Registrar in any proceedings before 
the Registrar-
(i) to award any party such costs as he may 
consider reasonable and Lo direct how and 
by what parties they are to be paid; 
(i1) in such cases as may be prescribed, to 
require a party to proceedings before him 
to give security for costs, in relation to 
those proceedings or to proceedings on 
appeal; and 
(b) as to the consequences if security is not given. 
(2) An order under subsection (1) (a) is enforceable 
III the same way as an order of the Court. 
57.-(1) Rules may make provision for~ 
(a) the giving of evidence in proceedings before the 
Registrar under this Act by affidavit or statutory 
declaration; 
(b) the conferment on the Registrar of the powers to 
examine witnesses pn oath and to require the 
discovery and production of documents; 
(c) the attendance of witnesses in proceedings before 
the Registrar. 
58.-(1) The Registrar sl1aJl not be taken to warrant the 
validity of the registration of a trade mark under this Act 
or under any treaty, convention or arrangement to which 
Jamaica is a party. 
(2) The Registrar is not subject to any liability by 
reason of, .or in connection with, any examination required 
or authorized by this Act, 01' any such treaty, convention 
or arrangement or any report or other proceedings conse­
quent upon such examination. 
(3) No proceedings shall lie against an oHlcer of 
the Omce of the Registrar of companies in respect of any 
matter for which, by virtue of this section, the Registrar 
is not liable. Page 37 
59.-(1) The Registrar is entitled to appear ~nd .be heard ~;~!!~:~~sc 
in the proceedings before the Court in an app11catlO11 for--in proceOO­Ings. 
(a) the revocation of the registration of a trade mark; 
(b) a declaration of the invalidity of tbe registration 
ofa trade mark; or IP/N/l/.JAM/T/l 
Page 38 
Register 
be kopl. (c) the rectification of the register, 
and shaH appear if the Court so directs. 
(2) Unless otherwise directed by the Court, the 
Registrar may, instead of appearjng, submit to the Court a 
statement in writing signed by him giving particu18tS of--
(a) any proceedings before him relation to the 
matter in issue; 
(b) the grounds of any decision given by him affecting 
it; 
(c) the practice of the Office of the Registrar of 
Companies in like cases; or 
(d) such matters relevant to the issues and within his 
knowledge, as the Registrar thinks fit, 
and the statement shall be deemed to form part of the 
evidence in the proceedings. 
(3) Anything required to be done by the Registrar 
under this section may be done by an offi.cer authorized by 
him. 
60.-(1) Except where otherwise expressly provided by ArJJ.leal 
rules, an appeal lies to the Court from any decision of the d~~l~i~~s 
Registrar under this Act and any such appeal the Court ~~.egis. 
shall have and exercise the' same discretionary powers as 
are'conferred on, the· Registrar under this Act) 
(2) For the purpose of this seotion "decision" in­
cludes any aot done by the Registrar in exercise of a,discre­
tion vested in him by or under this Act. 
The Register 
61.-(1) The Registrar shall maintain a register of trade 
mark in which shall be entered in accordance with this Act~ 
(a) registered trade marks; 
(b) such particulars as may be prescribed of regis1.rable 
transactions affecting the registered trade mark; 
and 
(c) such other matters relating ,to the registered trade 
marks as may be prescribed. 
(2) The register shall be kept in such manner as 111 ay 
be prescribed and provision shall be made by rules for 
public inspection of the register and the supply of certified 
or uncertitled copies or extracts of entries in the register, 
upon payment of the prescribed fee. Corredion 
of register. JP/N/l/JAM/TIl 
Page 39 
62.-(1) The proprietor, a licensee or any other person 
having a sufficient interest, may ap'ply in the prescribed 
manner for the correction of an error or omission in the 
register, but an application under this section may not be 
made in respeot of a matter affecting the validity of the 
registrati on. 
(2) An application under subsection 0) may be made 
either to the Registrar or the Court, except that-
(a) if proceedings concerning, the trade mark in q ues .. 
tiol1! are pendingdI11the Court the application shall 
be made to the Court; and 
(b) if in any' other case, the application is made to the 
Registrar, the' Registrar may-
(i) at ,any stage of; the proceedings refer the 
application to the Court; or 
(iD after hearing the parties, detennine the 
question between them, subject to appeal 
to the Court. 
(3) Except where the Registrar or the Court direcLs 
otherwise, the effect of the correction of the register is that 
the error or omission in question shall be deemed never to 
have been made. 
(4) The Registrar may, on request made in the 
prescribed manner' by ,a proprietor of a regis:tered trade 
mark or a licensee, enter any change in his name, address or 
description as appears on the register. 
63.-( 1) Rules may be made empowering the Registrar 
to do such things as the Registrar considers necessary to 
implement any amended or substituted classification of 
goods or services for the purposes of the registration of 
trade marks. 
(2) The rules may provide, in. particular for the 
amendment of existing. entries on the register so as to 
accord with the new classification. 
(3) The Registrar shall not exercise the power of 
amendment so as to ex~end the rights conferred by the 
registration, except· where it appears to the Registrar that 
compliance with this requii-ement would involve undue com­
plexity and that any extension would not be substantia.l 
and would not adversely affect the rights of any person, 
(4) The rules may empower the Registrar---
(a) to require the proprietor of a registered trade mark 
within such tjme as may be prescribed, to file a 
proposal for amendment of the register; and Adaptation 
of entries 
to new 
register. llJAM/TIl 
Page 40 
Registrmtion 
prima facie 
evl,<lence. 
Certificate 
of validity 
by Court. to cancel or refuse to renew the rcgistcnr;;,\i! 
trade mark in the event of his [<li1ing to. do so. 
(5) A proposal filed under subsection (4) shall be 
ad vertised and may be opposed in such manner as may be 
prescribed. 
64. In all legal proceedings relating to a registered trade 
mark, including proceedings for the correotion of the register, 
the registration of a person as a proprietor of a trade mark 
shall be prirna facie evidence of the validity of the originaL 
registration and of any subsequent assignment or other 
transmission of it. 
65.-(l) If in proceedings before the Com~t the 'V[ulidity 
of the registration of a trade mark is contested and the 
Court finds that the trade mark is validly registered, the 
Court may give a certificate to that effeot: 
(2) If the Court gives such a certificate and in subse· 
quent proceedings-
(a) the validity of the registration is again questioned; 
and 
(b) the proprietor obtains a final order or judgment 
in his favour, 
he is entitled to his costs as between attorney-at-law and 
client, unless the Court directs otherwise. 
(3) Subsection (2) does not extend to the costs of 
an appeal in any proceedings mentioned in that subsection. 
PART IX. General ProFisions 
Powers of Commissioner of Customs Relating 
to Infringing Goods 
Prohibited goods. 66.-(1) The proprietor of a registered trade mark or a 
licensee, may give notice in writing to the Comm issioner 
of Customs-
(a) that he is the proprietor or, as the case may bc, a 
licensee of the registered trade mark; 
(b) that, at the time and place specifi~d in the notice, 
goods which are infringing goods in relation to 
that registered trade mark are expeoted to arrive 
in Jamaica; and 
(0) that he requests the Commissioner to treat them 
as prohibited goods under the Customs Act. Disclosure 
'Of inlonma-
000. (2) 'vVhen a notice is in force under this section, the 
importation of the goods to which the notjce relates, other­
wise than by a person for his private and domestlc use, is 
prohibited; but a person is not, by reason of the prohibition, 
liabLe to any penalty under the Customs Act other than 
forfeiture of the goods ]P/NI1/JAM/TIl 
Page 4] 
67. The Commissioner may make regulations subject to ~~:lh: 
afIimlative resolution in respect of the following matters- slODer. 
(a) prescribing the form in which notice is to be given 
under section 66; and 
(b) requiring the person giving notice to give such 
evidence as may be prescribed in the regulations 
at the time or times so prescribed; and 
(c) requiring that person to comply with any pre­
scribed conditions, in particular-
(i) to pay the prescribed fees in respect of the 
giving of the notice; 
(ii) to give security in respect of any liabili Ly 
or expense which the Commissioner may 
incur in consequence of the notice by reason 
of the detention of any goods or anything 
done to goods detained; 
(iiD to indemnify the Commissioner d '" 
such liability or expense whether security 
has been given or not, 
and regulations may make ,different provisions as respects 
different classes of case to which they apply and may include 
such incidental and supplementary provisions as the Com­
missioner considers necessary or desirable. 
68. When information relating to infringing goods, 
material or articles (as defined in seotion 32) has been 
obtained by the Commissioner for the purposes of or 
connection with the exercise of his function in relation to 
imported goods, the Commissioner may authorize the dis­
closure of that information for the purpose of facilitating 
the exercise by any person of any funotion in connection 
with the investigation or prosecution of an offence under 
section 69 or any other law relating to such investigation 
. . 
or prosecution. lP/N/1 
Page 42 
Unauthor­
ized use 01 
UJ.d C Inn rle. Offences 
69.-(1) Subject to subsection (4), a person commits an 
offence if with intent to gain for himself or another, or 
with intent to cause loss to another, and without the consent 
of . the proprietor oj' the trade mark he-
(a) applies to, goods a sign identical with or likely to 
. be mistaken for, a registered trade mark; or 
(b) seJls or lets for hire, offers or exposes for sale 
or: hire or distdbutes' goods which bear, or the 
packaging of which -bears, such a sign; or 
(c) has in his t)ossession, cUSlludy or control in the 
course of a business any goods referred to in para~ 
. graph (6) with '3 view to' the .doing of anything, 
by himself or an0ther, which would be an offence 
under paragraph (b). 
(2) Subject -to subsection (4), a person commits an 
olIence if, with a view to gain for himself or another, or' 
with intent to cause loss to another, and without the consent 
of the proprietor he-
(a) applies a sign identical to or likely to be mistaken 
for a registered trade mark to material intended to 
be used for labeUing or packaging goods or as a 
business paper in relation to goods or for advertis~ 
ing goods; or 
(b) uses in the course of a business m,aterial bearing 
such a sign for labelling or packaging goods as a 
business paper in relation to goods, or for 
advertising goods; or 
(c) has in his possession, custody or control in the 
course of a business any such material with a view 
to the doing of anything, by himself or another, 
which would be an offence under paragraph (b). 
(3) Subjeot to subsection (4)-a person commits an 
offence who with a view to gain for himself or another or 
with intent to cause loss to another, and without the consent 
of the proprietor he-
(a) makes an article specifically designed or adapted 
for making copies of a sign identical to or likely 
to be mis'taken for a registered trade mark; or Pa15itit'U,. 
d.oo of 
entry. (b) has such an article· in' his possession, custody or 
control in the coarse' of a business, 
knowing or having reason to believe that it has been or is 
to be, used to reproduce goods or material for labelling or 
packaging goods, as a business paper in relation to goods or 
for advertising goods. 
(4) No offence IS committed under this section 
unless-
(a) the goods are goods in respect of which the trade 
mark is registered; or 
(b) the trade mark has a reputation in Jamaica and 
the use of the sign takes, Of would take unfair 
advantage of, Of is or would be detrimental to, the 
distinctive character or the reputation of the trade 
mark. ' IP/N1l 
(5) It is a defence for a person charged with an 
offence under this section to show that he believed on' 
reasonable grounds that the use of the sign in the manner in 
which was used or was to he used was not an infringement 
of the registered trade mark. 
(6) A person who commits an offence under this 
section is liable-
(a) on summary conviction before a Resident Magis­
trate to a fine not exceeding one million dollars 
or to a term of imprisonment not exceeding twelve 
months or to both such fine and imprisonment; 
(b) on conviction before the Circuit Court to fine 
or fo imprisonment not exceeding five years or to 
both such fine and imprisonment. 
70.-(1) A person commits an offence if he makes or 
causes to be made a fals'e entry in the register or makes or 
causes any writing or document purporting to be a copy of 
an entry in the register, or produces or tenders or causes 
to be produced or tender~d in evidence any such writing, 
knowing or having reason to believe that the entry or 
writing to be false. Page 43 IP/N/1 
Page 44 
(2) A person guilty' of an offence under subsection 
( 1) IS liable-
(a) on summary conviction before a Resident Magis­
trnte to a fine not exceeding two hundred and fifty 
thousand dollars or to imprisonment for a term 
not exceeding six months; 
(b) on conviction before a Circuit Courtto a fine or to 
imprisonment not exceeding six years or to both 
such fine and imprisonmerlt. 
71,-(1) A person commits an offence if he-
(a) represents that a mark is a registered trade mark; 
or 
(b) makes a representation as to the goods or services 
for which a trade mark is registered, knowing or 
having reason to believe that the representation is 
false. 
(2) The use in Jamaica .in relation to a trade rnark 
of the word "registered" or of any other word or symbol 
importing a reference (expressed or implied) to registration, 
shall be deemed to be a representation as to registration 
under this Act, unless it is shown that the reference is to 
registration in. another country and that the trade mark is 
in fact, so registered for the goods or services in questiOl1. 
(3) A person guilty of an offence under this secti on 
is liable on summary conviction before a Resident Mngis­
trate to a fine not exceeding two hundred and fifty thous:l ncl 
doBars or to imprisonment for a term not exceeding si" 
months. . ,-Falsely 
re pr esen tin g 
trade mark 
as registered 
ll1l!!rk. 
72.-(1) Where in connection with the jnvestigation or ForfeitUl®. 
prosecution of a relevant offence infringing items have COIN:, 
into the possession of any person, that person may (! pply 
under thlS section for an order for the forfeiture of lhe 
infringing items. 
(2) I\n afJplicntion mrLy be mack--
(a) to the Court before which any proceedings have 
been brought for a relevant offence relating to the 
infringing items; or 
(b) to the Resident Magistrate's Court by way of a 
complaint, if no aprijcation has been made llnc1er 
paragraph (3). lPiN/1/JAMlTll 
Page 45 
(3) A Court shall Hot make an order under this 
section unless it is satisfied that the items are infringing 
items; and the Court may so regard them if it is ;'0.tisfic:l 
that a relevant oifence was committed in r3Jation to Heir's 
which are representative of the infringing items, whether by 
reason of being of the sam.~ design or DllTt of the; same 
consignment or batch, or otherwise. 
(4) Any person aggrieved by an order of the Resi­
dent Magistrate's Court made under this section or a deci­
sion not to make an or,~er may appeal to the Court of 
Appeal and an order so made may provide for delaying 
the coming into force of the order pending the making and 
determination of any appeal. . 
(5) The Court may order that any infringing itfms 
forfeited under this section--
(a) sha11 be destroyed in accordance with the directions 
of the Court; 'Of 
(b) shall be released to such person as the Court rea)' 
specify, on condition that sllch person causes the 
offending sign to be era;;ec1, removed or obliterated 
and complies with any order to pay costs made 
against him in the proceedings for the order for 
forfeiture. 
(6) this section-
(n.) "infringing items" means-
(0 goods which, or the packaging of which 
bear a sign identical to or likoly to be mis­
taken for a' registered trade mark; 
(ii) material bearing such a sigil and intended 
to be used for labelling or packaging goods, 
as a business paper in relation to goods or 
for adverUsing of goods; or 
(iiO articles specifically designed or aclaplcd for 
making copies of such a sigf1; and 
"relevant o[T<;nce" means any offence uadsI' :;;:'Ction 70 
or under any other law relating 10 tmd(; lI18rks 
or any offence involving dishonc'ity or deception. 
73.-(1) VI/he,;;; an offence under this Act is alkged to 
have been committed by a partnership, proc(:,;;dings shall 
be brought agabs.t the par'tnership in the name of the firm 
and not in that of the partners, but withont prejudice to 
any liability of the pOlrtners under subsection (4), Offence by 
partncnl'mp; 
biody corpo­
rate. lP/Nil iJAM/T/l 
Page 46 
(2) Any rules of court rela;ting to the service of 
documents 011 a body corporate shall apply for the purposes 
of any proceedings under sllbsection 0). 
(3) A fine imposed on a partnership on its convic­
tion in such proceedings shall be paid out of the partner­
shi p assets. 
(4) Where a partnership is guilty of an olTence under 
thiS Act, every partner, other than a partner who is proved 
to have been ignorant of or to have attempted to p1.'event 
the Commission of the offence, is also guilty of tbe offence; 
and liable to be proceeded against and punish accordingly. 
(5) Where an offence under this Act committed by a 
body corporate is proved to have been committed with the 
CQr:l5eO.t or connivance of a director, manager, ut 
other similar ofTicer of the body, or a person purporUng to 
act in any such capacity, he as well as the body corporate 
is guilty of the offence and liable to be proceeded against 
and punished accordingly. 
(6) In this section "director" in relation to a body 
corporate whose affairs are managed by its mem bers, means 
any member of the body. 
Supplernentary Provisions 
Cotl'ttl. 74. In proceedings before the Court under this Act, the 
frusts 
equities 
Trade mark 
equities. 
Jamaican 
waters 
included. costs of the Registrar shall be in the discretion of the Court, 
but the Registrar shaH not be ordered to pay the costs of 
any other of the parties. 
75.-0) There shaH not be entered in the register any 
notice of any trusts express, implied or constructive, nor 
shall any such notice be receivable by the Registrar. 
(2) Subject to the provisions of this Act, equities in 
respect of a trade mark may be enforced in like manner as 
in respect of any other personal property. 
76. Where any act is required to be done under this Act, 
by or to any pe'rson in connection with a trade mark or 
proposed trade mark or any procedure relating thereto, the 
act may be done in accordance with the rules, (or in parti~ 
cub! cases by special leave of the Court) by an agent of that 
person duly authorized in the prescribed manner. 
77. For the purposes of this Act, the archipelagic waters 
and the territorial waters of Jamaica shall he treated as part 
of Jamaica. [P/NIl 
Page 47 
Rulea 78. The Minister may from time to time make such rules 
Repeal and 
transitional 
provisiolOS. subject tD affirmative resolution-
(a) for regulating the practice under this Act including 
the service of documents; 
(h) for classifying goods for the purposes of registra­
tion of trade marks; 
(c) for making or requiring dupUcales of trade marks 
and other documents; 
(cl) Jor securing and regulating the publishing and sell·, 
jng or distri6uting ill such manner as he lllay think 
fit, of copies of trade marks and other documents; 
(c) for the regulation of trade mark agents; 
(0 prescribing fees payable under this Act; 
(g) generally; for regulating the business of the Omce 
of the Registrar of Cornpanies in relation to trade 
marks and all things by this Act placed under the 
direction or control of the Registrar. 
79. There shall be paid in respect of applications and Fees. 
registration and other mallers under this Act such fees as ~ , 
may be prescribed. 
30. All certificates and certified copies given by the Regis- fExcmpUorl 
• ~. • fOOl stamp trar under tfw; A~t slwll be exempt from starnp duty. duty, 
fi 1) The Minister may, by order, with efT-ecl from any 
uate specified in the order, not being em'lier th~lJl the 
appointed day, aIter any enaotment if he comiclers such 
alteration to be necessary or .expedient on account of any­
thing contained in this Act. 
(2) An order made pursuant to subsection (1) shall 
be subject to affirmative resolution. 
(3) In this section-
(a) "alter" includes adapt or repeal; 
Cb) "enactment" inoJudes any instrument having 
fotce of law but does not include this Act. 
32.-(1) The Trade Marks Act is hereby repealed. 
(2) The transitional provisions set out in the Third 
Schedule shall have effect with respect to the matters set out 
in that Schedule. l'Iiodification 
of laws, IP/N/l 
Page 48 
Signs com­
prised in 
collective 
marks. 
Indication 
of geogra­
phic 'Origin. 
J"Zestriction 
'On registra­
tion. 
Regulations 
re use 'Of 
mark. FIRST SCHEDULE 
Collective Marks (Section 3) 
1. In relation to a collective mark. the reference in' the definiti-on of 
"trade mark" (appearing in section 2 0) ) to distinguishing goods or 
services of one undertaking from those or other undertakings shall be 
construed as a reference to distinguishing goods or services of members 
of the association which is the proprietor of the mark from those of 
01 her undentakings. 
2. Notwithstanding section 11 (l) Cc), a collective mark may be 
rcqistered which consists of signs or' indications which may serve in 
trade to designate ,the geographical origin of the goods or services, but 
the proprietor of such a mark is not entitled to prohibit the use of the 
signs or indications in accordance with honest praotices in ind ustria! 
or commercial matters, in particular, by a person who· is entitled to use 
a geographical name. 
3.--{1) A collective mark shall not be registered if the public is likely 
to be misled as regards the character or significance of the mark, in 
particular, if It is likely to be taken to be something other than a 
collective mark. 
(2) The Registrar may require that a mark in respeot of which 
application is made for registra~ioll include some indicatioll that it is a 
collective mark, and notwithstanding sec,tion 23 (2), an application may 
be amended so as to comply with any such requirement. 
4.-{J) An applicant for registr<lJtion of a collective mark shail file 
wHh the Registrar regulations governing the use of the mark; and such 
regulations shall specify-
(a) the persons authorized to use the mark; 
(b) the conditions of membership of the association; and 
Cc) where they exist, the conditions of use or the mark, induding 
any sanc,tions against misuse. 
(2) Provision may be made hy rules for further req uiremenis with 
v/hich tlle regulations have to comply. 
5.~(1) A colleotive mark shall not be registered unless the reguI8tions 
g()verning the use of the mark-
(a) comply with paragraph 4 (1) and any further requirements 
imposed by rules; and 
(b) are not contrary to public policy or ;to accepted prindp!es of 
moralHy. 
. (2) 13efore t~e en~ of the prescribed period after tlle date or the 
apphcallOl1 Jor re~lI;!ratJon of, a collective mark. the applicant sl1a lJ file 
the reguiallons With the RegIstrar and pay the prescribed fee. faWng 
which. the application shaH be deemed to be withdrawn . 
. 6.-(1) If it appears to the Registrar that the requirements spedied 
111 pm·.agra~h 5 (1) arc not met, the Hegis!rar shal! inform the applicant 
und ,1:pve lum an opportunity. withilJ such period as the Registrar luny 
speCIfy, to make representations or to file amended regulations. 
(2) H the applicant fails to satisfy the Registrar drat those re­
quir~melJts are met or fails to lile amended regu.1ations so as to mee'! 
them. or to respond before the eild of the specified period, tlle Registrar 
shuH refuse tlle application. 
(3) The RegiS>trar shall· accept the application if it appears that 
those a.nd all other requirements are met and shall proceed in ac.cord­
ance With section 22. Approval of 
re'gulations. 
Power of 
Registrar 
relating to 
regulations. G'rounds of 
revoca lion. 7. The reguluiions governing the use of the mark shall be published 
and !l0lice of opposition may be givel) and observations may be made, 
relatmg to the matters menti0nedin paragmph 5 (1), in addition to any 
other grounds on which the application may be opposed or observations 
made. lP/N/lIJAM/T/l 
Page 49 
PubJica­
tiOiJ] of 
regulations, 
opposition, 
etc. 
8. The regulations governing the use of a registered collective mark Regulations 
shaH be open to public. inspection in the same way as the register. open to 
inspection. 
9.-{J) An amendment of the regula!ions governing the use of a Amended 
registered collective mark is not eHective unless and until the amended regulations 
regulations are filed with and accepted by the Registrar. to be filed. 
(2) Before accepting any amended regulaHons the Registrar may, 
in any case where it appears to the Registrar expedient to do so, ca use 
them to be published, in which event, notice of opposition may be given, 
and observations may be made relating to the maitters mentioned in 
paragraph 5 (l). 
10.--(1) Sections 8 (6), 38 (2) and 66 apply in rdation to an author- Authorized 
ized user of a registered colleative mark as they apply in relation to user: 
a licensee of a trade mark. rights re 
(2) The following provisions of this paragraph have effect as 
regards the rights of an authorized user in relation to iruringemcrut of 
a registered colleotive mark. 
(3) An authorized user is entilled, subject to any agreement to 
(he cuntrary between him and the pl'opric,tor, 10 call 011 tile prorrietor 
to take infringement proceedings in respect or any matter which alfects 
his interests. 
(4) If the proprietor­
(a) refuses to do so; or 
(b) fails to do so within two months after being called upon, the 
authorized user may bring the proceedings in his own na:me 
as if he were the proprietor. 
(5) Where infringement proceedings are brought by virtue of 
this paragraph, the authorized user may not, without the leave of ~he 
Court, proceed with the action unless the proprietor is either joined 
as piail1'tiff or added as a defendant; but this does not alIecl the granting 
of interlocutory relief on an application by an authorized user alone. 
(6) A proprietor who is added as a defendant as mentioned in 
sub· paragraph (4) shall not be made liable for any costs in the action 
unless he takes part in the proceedings. 
(7) In infringement proceedings brought by the proprietor of 
a registered collective mark-
(a) any loss suffered or likely to be suffered by authorized users 
shall be taken into account; and . 
(b) the Court may give such directions as it thinks fit as to the 
extent to which the plaintiff is to hold the proceeds of any 
pecuniary remedy on behalf of such users. 
11. Apart from the grounds or revocation provided in section 43, 
the registration or a collective mark may be revoked on the ground--
(a) that the manner in which the mark has been used by the pro­
prietor has caused it to become liable to mislead the public 
in the manner referred to in paragraph 3 0); or 
(b) that the proprietor has failed to observe, or to secure the 
observance of, the regulations governing the use of the mark; or 
(c) that an amendment of the regulations has been made so that 
the regulfrtions no longer comply with paragraph 4 (I) and 
any IUJ.1thcr condi,tions imposed by rules or are contrary to 
public policy or to accepted principles of morality. infringe­
ment. 
Grounds of 12. Apart from the grounds of invalidity provided in sec:tion 45, tbe 
invalldlty. registration of a collective mark may be declared invalid on the groumd 
that the mark was registered in breach of the provisiorns of paragraph 
3 (1) or 5 (1). IP/N/1 
Page 50 
Signs com­
prised in 
certification 
marks. 
.F'o,\\·er of 
Registrar 
reJn,Ung i'o 
reg\llll HUll S, SECOND SCllEDOLE (Section 3) 
Certification Marks 
J; In relaition to a certification mark. the reference in the definition 
of "trade mark" (appearing in section 2 (I) ) to distinguishing goods or 
services of one undertaking froul those of other undeltakings shall be 
construed as a reference to distinguishing goods or services which arc 
certified from those which are not:. 
2. Notwithsrtanding section 11 (1) (c), a certification mark may be 
registered which consists of signs or indications which may serve. in 
trade, to designate the geographical origin of dIe goods or services, 
but the proprietor of such a mark is not entitled to prohibit the use 
of the signs or indications in accordance with honest practices in 
industrial or commercial matters, in partkular, by a person who is 
entitled to use a geographical name. Indication 
of ge·og.ra .. 
pflic origlu. 
3. A certification mark shaH not be registered- Restriction 
(a) if the proprietor carries 011 a business involving the supply ~:~ti~~· 
of goods or services of the kind certified; or 
(b) if the public is likely to be misled as regards the character 
or significance of the mark, in particular. i£ it is likely to be 
taken to be something other than a certificaJtioll mark. 
(2) The Registrar may require that a mark in respect of which 
nppIJeaLion is made for feg1i~trallOl1 include some indit:!ltlon that ilt h; 
a certillcation mark, and notwHhstanding section 23 (2), an application 
may be amended so as to comply with any such requirement. 
4.-(1) An applicant for registra,tion 'of a centification mark shall file 
with the Registrar regulations governiJlg the use of the mark; and such 
regulatiol1s shall specify-
(a) the persons authorized to use the mark; 
Cb) the characteristics to be certified by the mark; 
(c) how the certifying body is to test those characteristics and 
to supervise the use of the mark; 
(d) ,the fees (if any) to be paid in connection with the operation 
of the mark; and 
(e) the pr:ocedures for resolving disputes. 
. (2) Provisi<;>11 may be made by rules for further requirements with 
which the regulatIOns have to comply. Hegulalions 
re use of 
mark. 
5.--(1) A certification mark shall not be registered unless the regula- Approval of 
lions governing the use of the mark- regUlations. 
(a) comply witth paragraph 4 0) and any further requiremenls 
imposed by rules, and are not contrary to publjc policy or to 
accepted principles of momlity; and 
(b) the. applicant is competent to certify the goods or services for 
whIch the mark is to be registered. 
(2) Before the end of t.he prescribed period after the date of the 
application for registration of a certification mark, the applicant shall 
file the regulrutions with die Registrar and pay the prescribed fee, failing 
which. the application shall te deemed to be withdrawn. 
. 6.-(1) If it appears to the R:egistrar that those requirements specified 
in paragraph 5 (1) are not met. the Registrar'shall inform the applicant 
and .I~lve him !Hi oppoNunJlly. WlOlill such pCl'lod us l.he Regll'ltt'UT lnny 
speCIfy. to make representations or to: file .amended.regulations. 
, (2) If the applicant fails to satisfy the Regis,t.rar that those require­
ments are met.or fails to file regulations amended so as to meet them or 
to respond before the end of the specified period, the Registrar shall 
refuse the application. Publication 
of regula­
tions. 
opposition, 
etC. 
Regulations 
open to 
inspection. 
Amended 
regulations: ' 
to be filed. 
Consentoi 
Registrar 
required. 
Authorized 
user: 
right r$ In­
fringement. IP/N/1/JAM/T'1 
Page 5J 
(3) The Registrar shall accept the application if it appears that 
those and all other requirements are met and shall proceed in accord­
ance \vi:th section 22. 
7. The regulations governing the use of Lhe mark shall be published 
and notice of. oppositioTh ,may' be given and observations may be made, 
rel3Jting to tlIe matters mentioned in paragraph 5 ([), in' addition to any 
other grounds on. whiGh the application may be opposed or observations 
made. 
8. The regulati.ons. governing .the use of a .registered certification. mark 
shall' be open to public inspection in the same way as the register. 
9.-(1) Arr amendment of, the regulations governing the use of a 
registered ceutiflcrition maI'k: is' not effeoti:ve unless and until the amended 
regulations are filed with and accepted by the Registrar. 
(2) Before accepting any amended regulations the Registrar may, 
in any case where. it appears to the· Registrar expedient !todo so, cause 
them to be published, in which event,. notice of opposition may be given, 
and observations may be made relating. to the'mrutters mentiOjlled in 
paragraph 5 (1). 
10. The assignment or oilier transmission of 'a registered certification 
mark is not effeotive ·without.theconsent of the Registrar. 
11.-(1) Sections 8 (6), 38 (2) and 66 apply in relation: to an authorized 
user of a registered certification mark as they apply in relation to a 
licensee of· a. trade mark. 
(2) In infringement proceedings brought by the proprietor of 
a. registered certification mark, any loss suffered. or likely to be suffered 
by auilioJ.'lized users shall be taken. into account; and the Court may 
give such directions as it thinks fit :as. to the extent to which the plaintill' 
is to hold ilie proceeds of any pecuniary remedy on behalf of such users. 
Grounds or 12. Apart from the grounds of revocation provided in section 43, 
revocatioo. the registration of a certification mark may be revoked on the ground-
(a) that the manner in, which .the mark has be.en used by the pro­
prietor has. caused it. to become liable to mislead the public 
in the manner, referr~dt01n paragraph 30): or 
(b) that the proprietor has failed to observe, or to secure the 
observance of. the regulations governing the use of the mark; 
or 
(c) that an amendment of the regulations has beL'Tl made so that 
the regulations no longer comply with paragraph 40) and 
any further eonditiol1simposed hy rules, or are contrary to 
public policy or to accepted principles of morality. 
13. Apart from the grounds of invalidity provided in section 45, the Grounds 01 
registration of a certification mark may be declared invalid on the' invalidity, 
ground thatlhe mark was, registered in breach of the provisions of 
paragraphs 3 (1) or 50). 
TlJlRD SCHEDULE (Seclion 83) 
1.-(1) In this ScheduJe- Interpreta-
"existing regisfered mark" means a trade mark or certification tion. 
trade 'mark registered under the 1958 Act; 
"the 1958 Act" means the Trade Marks Act, 1958~ 
"old law" means the J958 Act and 'Ray other enactment or rule of 
law applying to exist.ing regis!ercd nUlrks immc.diate1y before 
the appointed 'day; 
"old register" :means the register kept under the j 958 Acl. lP/Nil 
Page 52 
(2) For the purposes of this Schedule--
(a) an applicntion is treated as a pending application on the 
appointed day if it was made but not finally determined beforc 
that day; and 
(b) the darte on which the application was made shall be taken to 
be the date of filing under the 1958 Act. 
2.-(1) All . existing regis,tered 'marksregistered in Parts A and B Existing 
of the olrlregister shaH be registered trade marks for the purposes of registered 
tilis Act. . marks. 
(2) If. two or more trade marks were abtached as associated 
trade marks in the old· register, no equivalent. entry designing them 
as associated trade marks shall be made in the register. 
3.-:(l?The provisiollSof seotions .5, 8 and 10 apply .in relation, to Applka!l~Jn 
an eXIsting reglsteredmark and, subject to sub-paragraph (2),. section ,of p~OVISlOUS 
31 of this Act applies in relation to infringement of an existing regis- r~!htiUg to 
tered mark occurring after the appointed day. ng !s. 
(2) It is not an infringement of-
(a) an existing regis'tered mark; or 
(b) a registered trade mark of which the distinctive elements arc 
the same or subS!tantiaUy the same as those of an existing 
registered mark and which is registered for the same goods, 
to c0ntlnue, after the appointed day, any use which did not amount to 
infringement of the existing regis1tered mark under .the old law. 
(3) The aid law continues to apply in relation to infringements 
occllfring before the appointed day. 
Infringiog 4. Sec~ion 36 applies to infringing gO(lds, ma'lerial or articles whether 
material, etc, made before or after the appointed day. 
Rights IIllld 
remedies of 
authorized 
users. 
Joint pro· 
prietorshi p. 
Assigoment, 
etc. 5.--(1) Section 34 of this Act applies to permitted use of a registered 
trade mark under section 30 of the 1958 Act authorized before the 
appointed day, but only in relation to infringements occurring after that 
day. 
(2) Paragraph 11 (2) of the Second Schedule of this Act applies 
only in relation to infringements occurring after the appointed day. 
6.-(1) Subject to suh-paragraph (2), on and after the appointed day, 
the provisions of secrlion 6 of this Act apply to an existing registered 
mark of which two or more persons were, immediately before the 
appointed day, registered as joint proprielors. 
(2) So long as the relations between the jOint proprietors remain 
such as are described in seotion 61 or the 1958 Act, It will be presumed 
that lhey have agreed to exclude the operation of subsections 0) and 
(3) of section 6 of this Act.. 
7,-0) Sec!tion 27 of this Act applies to transactions and events 
occurring after the appointed day in reia,tion to existing registered 
marks, and the old law continues to apply in· relation to transaction!) 
and events occurring before the appointed day. 
(2) Where an application for regis.tration under section 27 of 
the J 958 Act which is pending before the Registrar on the appointed 
day, it shall be treated as an application for registration under section 
30 of this Act and shall proceed accordingJy. 
(3) The Registrar may require the applicant 10 amend his applica. 
tion so as to conform with the requiremen1tg of this Act. 
(4) Where an application for registration under section 27 of the 
1958 Aot has been determined by the Registrar but not finally deter. 
mined before the appointed day, it shall be dealt with under the old law. Old dnasi· 
fic~ltjon of 
trade mark. lP/Nil 
(5) Where before the apPolnted day a person has become entitled 
by assignment or transmission to an exis ting registered mark: but has 
not registered his title, then, any Ilpplicn tion for registration after the 
appointed day shall be made under sedioll 30 of [his Act. 
(6) Where sub·paragraph (2) or (5) applies, then, as regards the 
consequences of failing to register, section 27 (3) of the 1958 Act con­
tinues to apply (and section 30 (3) and (4.) of tl11s Act do not apply). 
8.--0) Sections 28 and 29 (I) of this A.;;,t appJy only in relation la Licences. 
licences granted after the appointed day-; and the old law continues 
to apply in relation to licences graU!ted before the appointed day. 
(2) Exis,ting entries under section 30 of the 1958 Act shall be 
trallsferredon the appointed day to the mew register and have effect 
as if made under section 30 of this Aot, subject to such rules as may be 
prescribed concerning the putting of sueln entries in the same form as 
is required for entries in the register. 
(3) Where an application fQr registration as a registered user 
under the 1958 Act is pending before the: Registrar on the appointed 
day, it shaH be treated as an 3ppUcatiom for registr:ation of 3 licence 
under section 30 (2) of this Act land &haU 'PlI."oceed accordingly. 
(4) The Registrar may require the ap-plicant to amend his applica­
tion so as to conform with the requirements of this Aot. 
(5) Where an applioattion l(J! regiskation as a registered user 
has been determined by the Regis'!rar but [1,<.l't nnaUy determined before 
the appointed day, it shall be dealt with under the old law; and sub­
paragraph (2) shall apply in relation to any resulting entry on the 
register. 
(6) Any proceedings pending on the appoiated day under section 
30 (8) of the 1958 Act shall be dealt wiJtll under the old Jaw; and any 
necessary alterations made to the register. 
9.-(1) An application for registration of a mark under the 1958 Act 
which is pending on the appointed day s]-!lnll be dealt with under the 
old law, subject as mentioned below, and jf registered, the mark shall 
be treated for the purposes of this Sched lJ!e as all existing registered 
mark. 
(2) The power of the Minister unda section 79 of this Act to 
make mles regulating practice and procoolllIe and as ro matters men­
tioned in subsection (2) of that section, is exercisable in relation to 
such an appl icalti on, and different provision may be made for such 
application from that made for other appiiclRtions. 
(3) Seotion 32 of the 1958 Aot shaR be disregarded in dealing, 
after the appointed day, with an applicatiom for registration. Pending 
applications 
for regis.tra­
tiun. 
10·-0) In the case of a. pending application for registration which Conversion 
has not been advertised under seotion 20 <of the j 958 Act before the of applica­
appointed day, the applicant may give notice to the Regis,trar claiming tion. 
to have tJle registrability of the mark: determined in accordance wHh 
the provisions of this Act. 
(2) The notice shaH be in the prescribed form, accompanied 
by the appropdate fee and be given no later than six months after the 
appointed day. 
(3) Notke duly given is irrevocable and has the effect that the 
npplical!:ion shall be treated as if made immediately after the appointed 
day. 
11 I) The Registrar ma y ex.erci se the powers conferred by rules 
under seotion 64 of ,this Act to secure that ,my existing registered marks 
which do not conform to the system of dassification prescribed under 
section 18 of this Act are brought into conJormi,ty with that system. fP/N/l/JAM/TIl 
Page 54 
Priority 
claim: 
Convention 
oounLry. 
Duration. 
Pending 
a rplication: 
alteration 
of mark. 
Removal of 
mark from 
register. 
Applica:ti:on 
forcorrec­
non of 
register. (2) III par,ticular, sub'-paragraph (l) applies to existing regis­
tered marks classified acco'rding to the pre-1958 classificartion set out 
in the Third Schedule to the Trade Marks Rules, t958. 
1;2. Section 19 of this Act appJ1es to an appJication for registrafion 
under this Act made aliter the appointed day, notwithstanding thR,t the 
convention applica'tion was made before that day. 
13.-(1) Section 7 of this Act applies in rdation to the regis>tmtion 
of a mark in pursuance of an a.pplicwtion made after the appointed day; 
and the old law applies in any o1her case. ' 
(2) Sections 7 and 40 of this Act apply where the renewal falls 
due on or after .the appointed day; and the old law applies in any other 
case. ' 
(3) lit is immaterial when the fee for registration or renewal is 
paid. 
14. An application under seotion 37 of the 1958 Aot for the alteration 
of the registered mark which is pGnding on the appointed day shall be 
dealt with under the old law, and any necessary alterations made to 
the register. 
15.-(1) An application under section 28 or the 1958 Act which is 
penrlingon the appointed day shaH be dealt with under the old Inw 
and any necessary aHerations made to the register. 
(2) No application may be made under section 43 0) (b) ror 
the revocail:ion of an existing mark registered py virtue of section 29 of 
the 1958 Ac~, until more than five years after the appointed day; except 
that no such applic:lltion for the revocation of an existing mark registered 
by virtue of section 29 of the 1958 Act may nut be made until more than 
five years aliter the appointed day. 
16.-(1) Where an application under section 36 of the 1958 Act is 
pending on the appointed day,. it shall be dealt with under the old law, 
and any ,necessary ;alterations made to the register. 
(2) For the purposes of proceedings under section 45 of this 
Aot as it applies to an existing registered mark, the provisions of this 
Act shall be deemed to have been in force at all materia! times; but 
no objection to the validity of the registration of an existing registered 
mark may be taken on the ground specified in section 13 (3). 
J 7.--( I) Regulations governing the use of an existing registered ce~ti­
ficatioll mark deposited with the Office of the Registrar of Compames 
in pursuance of section 9 (7) of the 1958 Act shall be treated on and 
nhe!' the appoiruted day as if they were filed under pru-agraph 4 of the 
Second Schedule to this Act. 
(2) Anv request for amendment of the regulations which was 
pending on the appointed date shall be dealt with under the old Jaw. Certifica tiOl!. 
mark: 
regulation. 
18. A certificate given before the appointed day under section 47 of Certificate 
the 1958 Act shall have eifect as if given under section 66 of this Act. 0<1' validity. 
19.~1) Rules in force immediately be~ore the appointed day un~er Trade mark 
the 1958 Act as to persons whom the Reglstrar may refuse to recogm~e agents. 
as agents for the purpose or busilless under that Act shall continue ill 
force and have eHect as if made under seotion 76 of this Act. 
(2) Rules continued in force uuder this paragraph n!ay be varie;l 
or revoked by further l'ules made under the relevant proVIsions of this 
Act. IP/N/]lJAM/TIl 
Page 55 
Passed in the House of Rerresenlatives this 11 th clay of May, 1999. 
VIOLET NEILSO:r:-J, C.D. 
Speaker. 
Passed in the Senate this 18th clay of J line, 1999. 
SYRINGA MARSHALL-BuRNETT, C.D., 
President. 
This printed impression has been care­
fully compared by me with the authenticated 
impression of lthe foregoing Act, illld has 
been found by me to be a true and correct 
printed copy of the said Act. 
Clerk to the Houses of Parliammi