PROTECTION OF GEOGRQ PHICA L INDICA TIONS I

THE PROTECTION OF GEOGRAPHICAL INDICATIONS
ACT

PART I. Preliminary

I. Short title.

2. Intetpretation.

PART II. Protection of Geographical lndicafianr

3. Application to Court to prevent misleading use of geographical
indication.

4. Protection of geographical indication.

5. Homonymous geographical indications.

6. Geographical indications excluded h.om protection.

7. Offences.

PART I I I. Registration of Geogrqhical lndicatioas

8. Registrar.

9. Application far regisbation.

10. Regishation.

I I. Right to use geographical indication.

12. Rectification of Register.

13. Cancellation of registration.

14. Procedure under section I2 or 13.

15. Appeal h.om decision of Registrar.

16. Regulations.

PART IV. Special Provisions Reluting to Trade Murk

17. Misleading trademark.

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2 PROTECTlON OF GEOGRQPHICAL INDICA TIONS

I$. Trademarks conflicting with geographical indications for wines and
spirits.

19. Exceptions.

PROTECTION OF GEOGRAPHICAL INDICA TIONS 3

THE PROTECTION OF GEOGRAPHICAL INDICATIONS Act
ACT 5 of 2004.

[sl" ~une, 2009.1
PART I. Prelimfnary

1. This Act may be cited as the Protection of Geographical sha(citls.
Indications Act.

2.--( 1) In this Act-
tiQn

"Court" means the Supreme Court;

"geographical indication" means an indication which
identifies a good as originating in the territory of a
country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of the
good is essentially attributable to its geographical origin;

"good" means any natural or agricultural product or my
product of industry or handicraft,

"interested party" includes any person who is-

(a) a producer, manufacturer or merchant, engaged in
the production or manufacture of or trade in goods;
and

(6) established in-

(i) the locality falsely indicated as the source of
such goods or in the region where such
locality is situated; or

(ii) the country so falsely indicated or in the
country where such false indication is d,

"producer" means-

(a) a producer of agricultural products;

(6) a person who exploits natural products;

(c) a manufacturer of products of industry or handicraft,
or

PROTECTION O F GEOGRAPHICAL INDICA TlONS ,

Application to
courl to
pment mis-
leading use of
d i d
indFon.

(d) a person who deals or trades in products referred
to in paragraphs (a), (b) and (c);

"Registrar" means the Registrar of Industrial Property
appointed under the Jamaica Intellectual Property
Office Act.

- . PART I I. Protection of Geographical Indications

3.-41) Any interested party may apply to the Court to
prevent, in respect of a geographical indication-

0

(a) the use of any means in the designation or presentation
of a good that indicates or suggests that the good
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 good; or

(b) any use which constitutes an act of unfair competition
within the meaning of the Fair Competition Act; 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 w h e e

(i) the true origin' of those wines or spirits is
indicated; or

(ii) the geographicall indication is used in trans-
lation or accompanied by such expressions as
"kind", "type", "style", "imitation", "com-
parable to" or other similar expressions.

(2) The Court may, in proceedings under this section,
grant an injunction, award damages or grant such other remedy
as it considers appropriate.

4.-41) Protection of a geographical indication Shall be
available under this Act-

(a) subject to subsection (2), whether or not the geographical
indication is registered;

(b) against a geographical indication which, although litedly

PROTECTION OF GEOGRAPHICAL INDICA TIONS 5

true as to the territory, region or locality in which the
good originates, falsely represents to the public that the
good originates in another territory.

(2) A geographical indication that is registered under
section lO(8) (a) shall, in any proceedings under section 3, be
presumed, by virtue of its registration, to be a geographical

a indication as defined in section 2, unless the contrary is proved.
5 . 4 1 ) Subject to section 4(1Xb), protection shall be accor- H ~ Y -

rnws geo- ded to homonymous geographical indications which relate to m,i,
wines. indications.

(2) Where concurrent use of homonymous geographical
indications is permitted, the Registrar shall determine the
practical conditions under which those geographical indications
shall be differentiated from each other, taking into account the
need to ensure equitable treatment of the producers concerned
and that consumers are not misled.

6. No protection shall be available under this Act in respect G-
of- && indimions

(a) indications which- excluded h~
lection.

(i) do not fall within the definition of "geo-
graphical indication" in section 2; or

(ii) are contrary to public order or public morality;
or

(b) geographical indications which, in their country of
origin, are not or have ceased fo be protected or have
fallen into disuse.

-a 7 . 4 1 ) Any person who knowingly or wilfully uses a OEM. geographical indication in a manner specified in section 3 (1) (a)
or (c), commits an offence and, subject to subsection (2), is
l i a b l e

.
(a) on summary conviction in a Resident Magistrate's Court

to a fine n o t ' exceeding one million dollars or to
imprisonment for a term not exceeding twelve months or

6 PROTECTION OF GEOGRAPHICAL INDICATIONS

to both such fine and imprisonment;

(6) on conviction before a Circuit Court to a fine or to
imprisonment for a tenn not exceeding five years or to
both such fine and imprisoment.

(2) where the Court is satisfied that any benefits were
I derived by or accruing to the person convicted from the
1 commission of the offence, the Court may order the person
I convicted to pay to the Crown such pecuniary penalty as the

Court determines to be equivalent to the total value of such
benefits.

PART 111. Registration of Geographical Indications
m. 8.-41) The Registrar shall keep a register to be known as the

Register of Geographical Indications--

(a) in which shall be entered such matters as may be
prescribed; and

(6) which shall be open for inspection to the public during
business horn and from which extracts may be
obtained on payment of the prescribed fee.

(2) The Registrar may correct any error of translation or
transcription or any error contained in any application for the
registration of a geographical indication, any document filed
with him or in the Register.

(3) The Registrar-

(a) may, on receiving an application in writing and, if the
circumstances of. the case so merit, extend the time
upon such terms as he may specifL for doing any act or
bringing any proceedings under this Act; and

(6) shall give notice of such extension to all the persons
concerned with the doing of the act or the bringing of
proceedings, even though the time for doing the act or
bringing the proceedings has expired.

(4) The Registrar shall publish in the prescribed manner

PROTECTION OF GEUGRAPHICAL INDICATIONS 7

a list of the geographical indications registered under this Act.

9.-(1) The persons specified in subsection (2) may apply to APPI-
the Registrar, in the prescribed manner, for registration of a E-
geographical indication.

(2) The persons r e f d to in subsection ( I ) are-
(a) any producer or group of producers carrying on an

activity in the geographical area specified in the
application with respect to the goods so specified;

(6) my competent authority.

(3) An application shall contain the following
information-

(a) the name, address md niionality of the applicant;

(6) the capacity in which the applicant is applying for
registration;

(c) the geographical indication for which registration is
sought;

(4 the geographical area to which the geographical
indication applies;

(e) the good to which the geographical indication applies;

V) the quality, reputation or other characteristic of the
good in relation to which the geographical indication is
used.

(4) Every application shall be accompanied by the
prescribed application fee.

(5) In subsection (2) (6) "competent authority" means
my association of persons recognized in the prescribed manner.

10.-(1) Upon receipt of an application under section 9(1), ~egisve
the Registrar shall examine the application to determine whether lion.
the conditions specified in subsection (2) are satisfied.

(2) The conditions referred to in subsection (I) are that-

(a) the applicant is a person referred to in section 9(2);

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8 ; PROTECTION OF GEOGRAPHICAL INDICA TIONS
i

(b) the geographical indication is not excluded from
protection by virtue of section 6; and

(c) the application-

(i) contains the information required by section
9(3); and

(ii) complies with any regulation made hereunder in
relation thereto.

(3) Where the Regism ascertains that the conditions
specified in subsection (2) are satisfied he shall cause the
application to be published in the prescribed manner.

(4) Where an application is published pursuant to
subsection (9, a person having an interest in the geographical
indication (hminaffer referred to as the objector) may, within
the prescribed time and in the prescribed manner, give notice to
the Registrar of his opposition to the registration of the
geographicxi indication on any of the grounds specified in
subsection (5).

(5) The grounds referred to in subsection (4) are that-
f (a) the geographical indication is excluded from protection

by virtue of the provisions of section 6;

(b) the applicant is not entitled to apply for registration of
the geographical indication; or

(c) the information required under section 9(3) has not been
finished or is incorrect,

and the objector shall state, in relation to-

(i) ' paragraph (a), the ground of exclusion;

(ii) paragraph (b), the reason the applicant is not
entitled to apply for registration;

(iii) paragraph (c), details of the information that has
not been fiunished or is incorrect.

(6) The registrar shall, on receipt of a notice under
subsection (4), send a copy thereof to the applicant who shall

PROTECTION OF GEOGRAPHICAL INDICA TIONS

send to the Registrar within the prescribed time and in the
prescribed manner, a counter-statement of the grounds on which
he relies for his application.

(7) Where the applicant sends a counter-statement, the
Registrar shall-

(a) h i s h a copy thereof to the objector;

(b) if requested, give the applicant and the objector the
opportunity to be heard in the prescribed time; and

(c) decide whether or not to register the geographical
indication.

(8) The Registrar shall-

(a) register a geographical indication if he is satisfied that
the applicant has coniplied with subsection (2) and -

(i) the registration has not been opposed within the
prescribed time; or

(ii) where it has been so opposed, the opposition has
been resolved in the applicant's favour;

(b) refuse to register the geographical indication if he is
not so satisfied.

(9) The Registrar shall publish in the Gazette and a
daily newspaper circulating in the island, a notice of the
registration of the geographical indication and shall issue to the
applicant a certificate of registration in the prescribed form.

(10) If an applicant does not send in a counter-
statement within the prescribed time in accordance with
subsection (6), the applicant shall be deemed to have abandoned

a the application. 11. Any producer carrying on an activity in a geographical Righttouse
geographical area specified in the Register has the right, in the course of

trade, to use a registered geographical indication in relation to
the goods so specified if those goods possess the quality,
reputation or other characteristics specified in the Register.

12.-(1) Any person who has an interest in a geographical Rectification
of Register.

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10 PROTECTION OF GEOGRAPHICAL INDICA TIONS

indication may apply to the Registrar for rectification of the
Register on any of the grounds specified in subsection (2).

(2) The grounds referred to in subsection (1) are that-

(a) the geographical area specified in the Register does not
correspond to the geographical indication;

(b) the indication of the good for which the geographical
indication is used is missing or unsatisfactory;

(c) the indication of the quality, reputation or other
characteristic of the good is missing or unsatisfactory. .

(3) The Registrar shall rectify the Register in relation to
an application under subsection (1) if he is satisfied that such
rectification is necessary.

cancellation 13.--(1) A person who has an interest in a geographical
or registration. indication may request the Registrar to cancel the registration

thereof on the ground that it does not qualify or no longer
qualifies for protection by virtue of the provisions of section 6.

(2) Where the Registrar cancels the registration of a
geographical indication under this section, he shall remove from
the Register the entry relating thereto.

procedure 14.+1) Where an application is made under section 12 or
under section
12,or 13. 13-

1 (a) a copy thereof shall be served on the person who
applied for registration of the geographical indication to
which the application relates;

(b) notice thereof shall be given in the prescribed manner
and within the prescribed time to all persons, who,
pursuant to section 11, have the right to use that
geographical indication.

(2) A person referred to in subsection (l)(b) and any
other interested party may apply to the Registrar to be joined in
the matter and such application shall be made within such period
as the Registrar shall specify.

PROTECTION OF GEOGRAPHICAL INDICATIONS I I

15.-41) Any person who is aggrieved by a decision of the APV~I from
Registrar may, within two months of that decision, appeal to a @i:Ef
Judge in Chambers.

(2) The Judge in. Chambers may in relation to such
appeal-

(a) confirm the Registrar's decision; or

(b) revoke that decision, and in such a case may-

(i) award damages to the appellant; and

(ii) make an order directing the Registrar to take
such action as the Judge deems necessary.

16. The Minister may make regulations, subject to affirms- Regulations.
tive &solution, generally for the better carrying out of the
objects and purposes of this Act and for any matter which is
required by this Act to be prescribed.

PART IV. Special Provisions Relating to Trade Marks

17.-41) This section applies to a trademark that contains or Misleading
consists of a geographical indication relating to a good which uademafk.

does not originate in the temtory indicated by the geographical
indication, if the use of the indication in the trademark for such
product in Jamaica is of such a nature ad to mislead the public as
to the true place of origin.

(2) The Registrar shall-

(a) on his own initiative; or

(b) at the request of any interested party,

refuse to register that trademark, or, as the case may require,
revoke the registration thereof.

(3) Where the Registrar-

(a) refuses to register a trademark, he shall notifj the
proprietor of the trademark of such refusal within the
prescribed time; or

-

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Ttafmarsts
conflicting
wi$ geogra-
phiid indica-
tioris for
wines and
spitits.

Exceptions.

PROTECTION OF GEOGRAPHICAL INDICATIONS

(b) revokes a trademark, he shall cause to be published in
the Gazette and a daily newspaper circulating in the
island, a notice of such revocation.

(4) The protection under this section shall be applicable
against a trademark which, although the relevant geographical
indication is literally true as to the territory, region or locality in
which the good originates, falsely represents to the public that
the good originates in another territory.

r -

IS.+) This section applies to a trademark that contains or
consists of a geographical indication which identifies wines or
spirits, as the case maybe, as originating from a territory, region
or locality indicated by the geographical indications which is not
the true place of origin of such wines or spirits.

(2) The Registrar shall-

(a) on his own initiative; or

(b) at the request of an interested party,

refuse to register that trademark or, as the case may require,
revoke its registration.

PART V. Exceptions

19.-(1) Nothing in this Act shall prevent the continued and
similar use in Jamaica of a particular geographical indication of
a World Trade Organization Member identifying wines or spirits
in connection with goods or services produced by any citizen or
resident of Jamaica who has used that geographical indication in
a continuous manner with regard to the same or related goods or
or services in Jamaica-

(a) for at least ten years preceding April 15, 1994; or

(b) in good faith at any time preceding that date.

(2) Subsection (3) shall apply in any case where an
application has been made for registration of a trademark or a
trademark has been registered in good faith or rights to a
trademark have been acquired through use in good faith-

(a) before the coming into operation of this Act; or

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PROTECTION OF GEOGRAPHICAL INDICA TIONS 13

(b) before the geographical indication in respect to the
trademark is protected in its country of origin.

( 3 ) For the purposes of subsection (2), the provisions of
this Act shall not prejudice the registrability of oi- the validity of
the registration of the trademark, or the right to use a trademark
on the basis that it is identical with or similar to a geographical
indication.

(4) The provisions of this Act shall not apply in respect
of a geographical indication of a World Trade Organization
Member other than Jamaica, as respects-

(a) goods or services for which the relevant indication is
identical with the term customarily used as the
common name for such goods and services in Jamaica;
or

(b) goods of the vine for which the relevant indication is
identical with the customary name of a grape variety
existing in Jamaica as of January I , 1995.

( 5 ) Proceedings under section 3 with respect to the use
or registration of a trademark containing or consisting of a
geographical indication shall, if the conditions specified in
subsection (6) are satisfied, be instituted within five years after
the adverse use of the protected geographical indication has
become generally known in Jamaica or after the date of
registration of the trademark in Jamaica.

(6) The conditions referred to in subsection ( 5 ) are
that-

(a) the trademark is published by the date of registration
referred to in that subsection, if such date is earlier
than the date on which the adverse use became
generally known in Jamaica; and

(b) the geographical indication is not used or registered in
bad faith.

(7) The provisions of this Act shall not prejudice the right
of any person to use, in the course of trade, that person's name

-

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llhe inclusion of (bb pap b rntborited by LS. IU/ZOlll

PROTECTION OF GEOGRAPHICAL INDICATIONS

or the name of that person's predecessor in business, except
where that name is used in such a manner as to mislead the
public.