RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/266/Add.2
11 October 2001
(01-4955)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Jamaica to questions posed by Canada,
the European Communities and their member States and the United States
Addendum
By means of communications from the Permanent Delegation of Jamaica dated
1 October 2001, the Secretariat has received the following responses to questions posed by Canada,
the European Communities and their member States and the United States as circulated in documentsIP/C/W/261/Add.1, 274 and 268, respectively.
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CANADA
3. We understand that efforts are underway to revise and enact legislation on patent and
industrial designs, geographical indications, and plant varieties.
(a) When is such legislation likely to be effectively implemented?
(b) What are the key improvements introduced by such legislation in respect of TRIPS
obligations?
The Trade Marks Act 1999 came into force 3rd September 2001.  The pending legislation in
respect of Patents & Designs Act, Geographical Indi cations Act should be tabled in Parliament during
this present session.  The Bill related to Plant Varieties is being prepared for consideration.
Our obligations under the TRIPS Agreement were token into consideration in the drafting of
our new Intellectual Property Legislation.  These include:
- Term of protection
- Requirement re-use- Requirements related to border measures
- Patentable subject-matter
- Term of protection
                                                     
1 Jamaica's earlier responses to initial questions pos ed by Canada, the European Communities and their
member States and the United States were circulated in document IP/C/W/266/Add.1.IP/C/W/266/Add.2
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EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
B. C OPYRIGHT AND RELATED RIGHTS
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
See Section 146(2) of the Copyright Act which provides for copyright to continue to subsist
whence an original literacy, dramatic, musical or artistic work is first published by or under the
direction or control of an international organization in such circumstances that copyright would not,
except by virtue of this subsection, subsist in the work immediately for the first publication thereof.
C. T RADEMARKS
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
Section 2(2) of the Trade Marks Act states that:
"References in this Act to use ( or any particular description of use) of a Trademark or of a
sign identical with or similar to or likely to  be mistaken for a Trademark include use or that
description of use otherwise than by means of a graphic representation".
See also Section 43(1)(a) which states that a Trademark may be revoked on the ground
inter alia:
"that within the period of 3 years following the date of completion of the registration
procedure and up to one month before the date of application for revocation, the Trademarkhas not been put to bona fide use in Jamaica by the proprietor or with his consent, in relation
to the goods or services for which it is registered, and there are no proper reasons for non-
use".
Section 43(2) states that for the purposes of subsection (1) use of a Trademark includes use in
a form differing in elements which do not alter the distinctive character of the mark in the form in
which it was registered, and use in Jamaica includes affixing the Trademark to goods or to theirpackaging in Jamaica solely for export purposes.
NB: There is no requirement as a condition for renewal of mark that it is being used.
13. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
See Section 2(2) of the Trade Marks Act.
Section 16(2) provides that an application for registration of a Trademark shall state that the
Trademark is being used by the applicant or with his consent in relation to the goods or services orthat he has a bona fide intention that it should be so used.IP/C/W/266/Add.2
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See also Section 11(2) which states that evidence of use must relate to use before the date of
filing of the application.  In practice continuous use over a period of at least 3 years within Jamaica
together with turnover and the nature of advertising is usually required.
I. E NFORCEMENT
49. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
Section 31 (2) of the Trademarks Act provides for relief by way of injunctions inter alia.
Section 80 of the proposed Patents and Designs Act.  In proceedings by a patentee, in respect
of any act alleged to infringe a patent an injunction restraining the defendant from any acts ofinfringement inter alia is available.
This remedy is also available to the registered owner of a design.  See Section 72.
UNITED STATES
D. GEOGRAPHICAL INDICATIONS
N B: The Legislation relating to Geographical Indications is still in Bill form and not yet passed by
Parliament.
10. Please describe in detail how the laws of Jamaica provide for the recognition and protection
of geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications so protected.
See Section 3 of Geographical Indications Bill which provides that any person, producers or
group of producers or consumers having an interest in a geographical indication or a product may
apply to the court to prevent in respect of that geographical indication or that product's geographicalindication section 3(1)(a) - (c):
(a) the use of any means in the designation or presentation of the product that indicates or
suggests that the product originates in a geographical area other than the true place of
origin, in a manner which misleads the public as to the geographical origin of the
product; or
(b) any use which constitutes an act of unfair competition within the meaning of
Article 10 bis of the Convention; or
(c) any use which identifies wines or spirits, as the case may be, that do not originate in
the place indicated by the geographical indication as wines or spirits of that origin,even where.
The Court may grant an injunction, award damages and grant such other remedy as it
considers appropriate.
Criminal sanctions are also provided for in section 7.
11. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Ag reement is implemented, citing to the relevantIP/C/W/266/Add.2
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provisions of law or regulation, and provide examples of geographical indications for such products.
Section 18 provides that where a trademark cont ains or consists of a geographical indication
which identifies wines or spirits as originating from a territory, region or locality indicated by a
geographical indication which is not the true place of origin of such wines and spirits, the Registrar onhis own initiative or at the request of a person interested in a trademark may refuse to register that
trademark or may revoke its registration.  Exceptions to this provision are set out in Section 19.
12. Are preexisting trademarks protected, under Jamaican law, against usurpation by
geographical indications?
See Section 19 which provides protection for a geographical indication identifying wines and
spirits in continuous use in Jamaica for at least 10 years prior to 1994 or used in good faith at any timeprior to 1994.
I. ENFORCEMENT
25. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of Jamaica, citing to the relevant provisions of law and regulation, and indicate any
condition under which a right holder may avail itself of those procedures and remedies.
See Section 31-38 of Trade Marks Act 1994.  Relief by way of damages, injunction, account
or otherwise, is available to a proprietor in respect of an infringement of a trademark.  The court may
also order that the offending sign be removed from infringing goods or such goods be delivered to the
proprietor or be destroyed or forfeited.
Sections 66-69 give the Commissioner of Customs power to treat goods as prohibited goods
on notice being given to him of the expected  arrival in Jamaica of infringing goods.
See section 80 of the Patent and Designs Bill which deals with proceedings for infringement.
Relief as in the case of trademarks applies to both patents and designs.
Section 50 of the Copyright Act gives the Co mmissioner of Customs similar power to those
given to him under the Trademarks Act.  Provision is made for a notice to be given to him by the
owner of a copyright in a work, of expected arriva l in Jamaica of infringement copies and for him to
treat such goods as prohibited goods under the Customs Act.
Section 134-135 of the Copyright Act deal with criminal liability for making, dealing with or
using illicit recordings.
Section 137 provides that the Court may order that the infringing copy or article delivered up
be forfeited to the copyright owner or destroyed or otherwise dealt with as the court directs.
See also the Copyright (Customs) Regulations, 1993.
J. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
26. Please describe in detail the procedures under the laws of Jamaica that provide for border
enforcement at least for trademark counterfeiting and copyright piracy, identifying the competent
authority and citing to the relevant provisions of law or regulation.
Please see the response to question 25.
27. Please indicate if border enforcement is avai lable to owners of other forms of intellectualIP/C/W/266/Add.2
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property and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
Please see the response to question 25.
28. Article 58 of the TRIPS Agreement specifies pr ocedures to be followed where the competent
authorities can act ex officio.  Please explain whether the competent authorities in Jamaica are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
Please see the response to question 25.
K. CRIMINAL PROCEDURES
29. Please describe in detail how the laws of Jamaica implement Article 61 of the TRIPS
Agreement that requires Members to have criminal  procedures and penalties, including imprisonment
and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark
counterfeiting and copyright infringement on a commercial scale.  Please cite to the relevantprovisions of law and regulation.
Please see the response to question 25.
L. STATISTICAL QUESTIONS
32. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for 2000, including the number of cases filed;  injunctions issued;  infringing products seized;
infringing equipment seized;  cases resolved (i ncluding settlement); and the amount of damages
awarded.
Approximately four cases involving copyright issues were initiated in the Supreme Court in
2000 and about two cases related to trademark infr ingements were initiated in the Supreme Court.
33. Please provide statistical information related to  criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,
convictions, and the amount of fines and/or jail terms (including whether the fines were paid andwhether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
Statistics relating to criminal enforcement are not readily available at this time.
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