Intellectual Property Week 2021

‘Paving the path to growth and development through the protection of Intellectual Property Rights’ DON’T FORGET THE DESIGNS! New design law highlights J AMAICA’S DESIGN system is on the verge of a major overhaul pending the coming into force provisions on the Patents and Designs Act 2020 (the Act). Upon becoming operative, the act will repeal the Designs Act of 1937, which was last amended in 1975; provide a foundation for the modernisation of the local design landscape; and enable Jamaica’s signing on to The Hague System for the International Registration of Industrial Designs. Some noteworthy features of the act include new requirements for design protection and a new design classification system. The 1937 act permitted the registration of designs in Jamaica once the design was new in Jamaica. In order to obtain registered design protection under the new act, industrial designs must be new and have individual character. A design will be new only where it has not been disclosed or made available to the public anywhere or at anytime, not just in Jamaica, but worldwide. The concept of ‘individual character’ is new to Jamaica’s design law. A design has individual character if the overall impression it produces on an informed user, differs from other designs previously known to the public. The act bars from registration designs that contain national symbols or emblems of Jamaica, unless consent is obtained from the Government of Jamaica. Therefore, local designers who frequently wish to use the Jamaican flag or images of the doctor bird in their designs, are encouraged to obtain permission from the Office of the Prime Minister before applying for design registration at the Jamaica Intellectual Property Office. Importantly, designs that feature the use of someone else’s intellectual property, whether that be a trademark, a copyright work, names of international organisations or even the image or likeness of a person, will not be registered unless consent is ob- tained from the owner of the intellectual property. In keeping with the best practices of modern design systems world- wide, the act also introduces use of the Locarno Classification for Industrial Designs, thereby allow prevents local design applications from needing substantial reclassification when designers seek protection for their designs internationally. It is expected that the coming into force of the act will coincide with Jamaica becoming a party to The Hague System for the International Registration of Industrial Designs. The Hague System is a fast-track route for local designers to secure international protection for their designs in multiple jurisdictions. Rather than having to file separate applications with different fees, currencies and languages in all the countries where design protection is needed, under the Hague system a single international application can be used to register designs in up to more than 90 countries. Whereas under the 1937 act designs are granted for 15 years, designs registered under the new law will be valid for five years in the first instance, with the right to renew the design registration twice consecutively for five years each time. The act also introduces to the local design frame- work provisions on the ownership of design rights in relation to employers and employees, priority claims under the Paris Convention, deferred publication of designs, and proceedings to oppose design registrations on specified grounds. While the most of the buzz around the Patents and Designs Act is centred around the new patent regime for protecting inventions, it is clear that the reforms to Jamaica’s designs landscape are also very significant and noteworthy, particularly for micro, small and medium-sized enterprises in Jamaica. ADRIENNE THOMPSON, Manager, Trademarks, Designs and Geographical Indication XI