By Stephen D. Wilson | January 12, 2022
Effective March 27, 2022, U.S. brand owners will have an additional option to protect trademarks in Jamaica under international intellectual property (IP) treaties.
Over a century ago, 9 countries collaborated to create an international trademark registration system, which is now known as the Madrid System for the International Registration of Marks (Madrid System). The Madrid System has expanded to include more than 100 members and cover over 125 countries, representing more than 80% of world trade. The Madrid System is governed by the Madrid Agreement of 1891 (Madrid Agreement) and the Madrid Protocol of 1989 (Madrid Protocol), as those treaties have been amended over many years (including revisions to the Madrid Agreement in 1900, 1911, 1925, 1934, 1957, 1967, and 1979, and amendments to the Madrid Protocol in 2006 and 2007). The Madrid Union is made up of Contracting Parties to the Madrid Agreement and the Madrid Protocol. The Madrid System offers important benefits and strategic advantages, as well as potential pitfalls and tradeoffs relative to other trademark protection options under international laws, which an experienced trademark attorney can help brand owners navigate.
On December 27, 2021, the Government of Jamaica deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, becoming the 110th member of the Madrid System. The Madrid Protocol will enter into force for Jamaica on March 27, 2022.
In addition to Jamaica, the Madrid System also encompasses a number of other Caribbean territories, including Contracting Parties and their commonwealths, crown dependencies, departments, possessions, and territories. The Madrid System also includes certain territories outside the Caribbean Sea that the United Nations (UN) groups in the Caribbean, or that are Members or Associate Members of the Caribbean Community (CARICOM), as well as other nations bordering the Caribbean Sea (such as Columbia and Mexico). These Contracting Parties and their territories include Anguilla, Antigua and Barbuda, Aruba, Bermuda, the BES islands of the Caribbean Netherlands (Bonaire, Sint Eustatius, and Saba), British Virgin Islands, Cayman Islands, Cuba, Curaçao, French Guiana, Guadeloupe, Jamaica, Martinique, Montserrat, Puerto Rico, Saint Martin, Saint Barthélemy (also known as St. Barts or St. Barths), Sint Maarten, Trinidad and Tobago, Turks and Caicos Islands, and the U.S. Virgin Islands.
Global Brand Protection
In an increasingly global economy, brand owners who wish to protect their trademark rights internationally should consult with experienced trademark counsel to develop and implement a global brand protection strategy. Many foreign countries have first-to-file trademark regimes that favor the party who wins the race to file a trademark application, and trademark squatters and copycat competitors have become an increasing concern for brand owners who may wish to expand into new markets and territories, so delay in filing could jeopardize valuable IP rights and opportunities.
Beggs & Lane assists clients worldwide with global IP protection and brand portfolio management, including U.S. and international trademark registrations, licensing, and enforcement, customs and border protection, and other IP matters.