Protecting your brand in Jamaica
However, counterfeiting is not only one of the largest and most profitable illicit businesses in the world; it is also one of the potentially most dangerous, given its reported links to organised crime and terrorism. The World Customs Organization estimates the international sale of counterfeit goods at $600 billion, which represents 5 to 7 percent of total world trade.
Intellectual property (IP) rights owners are forced to invest significant sums of money to fight against counterfeiting which, if unchallenged, can have a negative impact on the revenue of a business and ultimately jeopardise the viability of a brand.
In Jamaica, illicit CDs and DVDs are readily available and are displayed for sale as a matter of course in major cities and towns. The proliferation of fake designer perfumes, handbags and other articles of clothing is testament to the fact that counterfeiting is a significant problem. The cost-conscious consumer is happy to purchase these ‘designer’ items at far less than half the price of the genuine articles.
The unfortunate truth is that IP theft is rampant in Jamaica. Fortunately, this problem is countered by a strong legal landscape with common law and statute both providing criminal and civil remedies to address the problem.
Legislative framework
Though not encapsulated in a single comprehensive statute, there are several legal remedies available to IP rights owners to fight the problem of counterfeiting. The main statutory avenue of protection is the Trade Marks Act (based largely on the Trade Marks Act, 1994, UK).
The prudent trademark owner will protect his asset through registration under the Trade Marks Act, as this is the most effective means of protection from counterfeiters. Registration under this act confers a proprietary right, which takes effect from the date of filing.
Once registered, this right may last indefinitely provided there is continued usage and that the mark is renewed every 10 years. Registering a trademark under the Trade Marks Act heightens the protection the trademark receives, deters others from using it and increases the remedies available should someone infringe upon the trademark.
The Trade Marks Act prohibits the unauthorised use of a sign that is identical with, or similar to, a registered trademark in relation to goods or services that are identical with, or similar to, goods for which the trademark is registered. For the purposes of the Trade Marks Act, “use of a sign” includes:
