An Introduction to Intellectual
Property: Jamaica and St.
Christopher (Kitts) & Nevis
by Gyan Robinson
Introduction
This article seeks to give a broad non-exhaustive introduction to Intellectual Property in
Jamaica and the Federation of St. Christopher (Kitts) & Nevis (hereinafter referred to as
“SKN”).
What is Intellectual Property (“IP”)
Simply put, IP refers to creations of the mind. Examples of IP are: inventions, literary and
artistic works, designs, symbols, names and images used in commerce. When someone
invents or creates something, the creator/inventor receives certain exclusive rights to the
creation/invention and as such, IP law seeks to protect those exclusive rights of the creator or
inventor.
Brief History of IP
IP Law is often times referred to incorrectly as a new area of law especially within the
Caribbean region. This may be because IP as an area of practice within the Caribbean legal
profession is relatively new compared to other jurisdictions with long standing laws
dedicated to the protection of IP rights. IP Law’s genesis is attributed to an Act of the
Parliament of England called the Statute of Monopolies 1623 which provided for inter alia
the protection of letters patent. The Parliament of England then passed the Statute of Anne
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1710 also know as the Copyright Act of 1709 which provided for the copyright regulations.
Since the Statute of Monopolies and the Statute of Anne, IP Law has evolved and branched
off into new areas offering wider protection of IP rights whether by legislation or common
law.
Types of IP
IP is divided into the follow six (6) categories:
- Copyright
- Patents
- Trademarks
- Industrial Designs
- Geographical Indications
- Confidential Information
Copyright
Copyright is the right conferred on a creator/author to stop the copying and distribution of his
literary and artistic works. Under the SKN Copyright Act Cap 18.08 (“SKN Copyright Act”)
a copyright is defined as:
“a property right which…may subsist in any of the following categories of work, that is to
say,
(a) original
(i) literary
(ii) dramatic
(iii) musical, or
(iv) artistic works;
(b) sound recordings, films’ broadcasts or cable programmes
(c) typographical arrangements of published editions;
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and the copyright may subsist in a work irrespective of its quality or the purpose for which it
was created. ” 1
Similarly, Section 6 of the Jamaican Copyright Act as amended provides:
(1) Copyright is a property right which…may subsist in the following categories of work –
(a) original literary, dramatic, musical or artistic works;
(b) sound recordings, films, broadcasts or cable programme;
(c) typographical arrangements of published editions,
and copyright may subsist in a work irrespective of its quality or the purpose for which it was
created.
Copyright protection is automatic which arises on creation of the work and therefore requires
no formal procedures to be satisfied by the creator of the work to be afforded protection
under the Jamaican Copyright Act or the SKN Copyright Act. For the work to be afforded
protection under the respective Acts, however, the work must be original, recorded in
permanent form, the author/creator must be qualified person and the work must first be 2
published in Jamaica or St. Christopher and Nevis respectively . 3
Duration of protection (SKN and Jamaica)
The duration of copyright protection varies depending on the category of work.
(a) Original literary, dramatic, musical or artistic works expires at the end of fifty (50) years
from end of the calendar year in which the author dies or if the author is not known, fifty
(50) years from the end of the calendar year the work was first made available to the
public ; 4
Section 6 of the Copyright Act 1
Section 2 of the Copyright Act “qualified person means (a) in the case of an individual, a person who is a citizen of, or whose 2
habitual residence is in, Saint Christopher and Nevis or a specified country; and (b) in the case of a body corporate, a body
incorporated or established under any enactment in force in Saint Christopher and Nevis or specified country;” See Section 2 of
Jamaican Copyright Act.
Section 8 of the Copyright Act; See Section 8 of Jamaican Copyright Act. 3
Section 10 of the Copyright Act; See Section 10 of Jamaican Copyright Act. 4
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(b) Sound recordings and films expires at the end of of fifty (50) years from the end of the
calendar year in which it was made or where it was made available to the public before
the end of the period, fifty (50) years from the end of the calendar year in which it is so
made available ; 5
(c) Broadcast and cable programmes expire at the end of a period of fifty (50) years from the
end of the calendar year in which the broadcast was made or the programme was included
in a cable programme service6;
(d) Typographical arrangements of a published edition expires at the end of twenty-five (25)
years from the end of the calendar year in which the edition was first published . 7
Patents
The Jamaican Patent Act does not define a patent, however, under the SKN Patents Act Cap
18.25 (“Patents Act”) a patent is defined as “a title granted to a patentee by the Registrar,
which protects the patentee’s rights in an invent.8” This definition under the Patents Act does
not offer much clarity to the question “what is a patent” and therefore a more palatable
definition is required for understanding. In essence, a patent is an exclusive right granted for
an invention which is a process or product that provides, in general, a new way of doing
something, or offers a new technical solution to a problem9. Consequently, in order for an
invention to be patented under the SKN Patents Act the invention must be new, involves an
inventive step and is capable of industrial application . An invention is considered new if the 10
invention does not form part of a ‘prior art’ . Some inventions under the SKN Patent Act, are 11
however, excluded from patent protection12:
Section 11 of the Copyright Act; See Section 11 of the Jamaican Copyright Act; 5
Section 12 of the Copyright Act; See Section 12 of the Jamaican Copyright Act; 6
Section13 of the Copyright Act: See Section 13 of the Jamaican Copyright Act; 7
Section 2 of the Patents Act 8
World Intellectual Property Organization What is Intellectual Property? WIPO Publication No. 450(E) 9
Section 8 of the Patents Act 10
Section 9 of the Patents Act. The ‘prior art’ is all the information that available to the public before the 11
application for registration of a patent is made.
Section 10 of the Patents Act 12
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(a) a discovery, scientific theory or mathematical method;
(b) a scheme, rule or method for doing business, performing a mental ac of playing a game;
and
(c) methods for the treatment of the human or animal body by surgery or therapy, as well as
diagnostic methods practised on the human or animal body
In Jamaica, under its Patent Act an invention, discovery and improvement are defines as “any
manner of new manufacture or new mode of manufacture” . In order to be granted a patent 13
for an invention in Jamaica, the petition for a patent must allege that the petitioner:
“invented or discovered some new and useful art, machine, manufacture, or composition of
matter, not heretofore known or used within this Island, or some improvement in any such
invention invention or discovery, and praying to obtain an exclusive property in such new
invention and discovery or improvement..”14
In order for the inventor’s exclusive right to be recognised for an invention, the inventor must
apply to the SKN Registrar of the Intellectual Property Office for registration of a patent or 15
in the case of Jamaica the petitioner must make petition to the Governor General, however,
the petition is filed with Jamaica Intellectual Property Office (“JIPO”). The patent confers
exclusive rights on the patentee to use and or dispose of the product or invention and gives
the patentee the power to enforce his rights against others who infringe upon those rights.
Duration of protection (SKN)
Once the patent application is granted to the inventor/patentee for his invention the patent
will be registered by the Registrar and the registration of the patent will last for twenty (20)
Section 2 of the Jamaican Patent Act 13
Section 3 of the Jamaican Patent Act 14
Section 16 of the SKN Patents Act 15
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years from the date of filing the application . A patent may be renewed for an additional 16
twenty (20) years upon the payment of a renewal fee.
Duration of protection (Jamaica)
Once a patent is granted by the Governor General, the patent remains valid for fourteen (14)
years from the date of the grant of patent. If the Governor General considers it expedient a
patent may be extended for another seven (7) years . 17
Trademarks
A trademark is a distinctive sign or symbol associated with particular goods or services of an
individual or company. Under the SKN Marks, Collective Marks and Trade Names Act Cap
18.22 (“SKN Trademark Act”) a trademark is defined as “any visible sign capable of
distinguishing the goods (“trademark”) or services (“service mark”) of an enterprise”18.
Under the Jamaica Trade Marks Act a trademark is defined as “any sign that is capable of
distinguishing the goods or services of one undertaking from those of another
undertaking” . Essentially, a trademark distinguishes one product from another and enables 19
consumers to choose between competing brands.
There are two ways of protecting a trademark: by registration under a the jurisdiction’s
relevant trademark legislation or an action in tort for passing off. A trademark in Jamaica or
SKN may be registered by applying to the Registrar of the Intellectual Property Office (JIPO
in case of Jamaica) for registration . If the application for registration is granted, the owner 20
Section 27 of the SKN Patents Act 16
Section 3 of Jamaican Patent Act 17
Section 2 of the SKN Trademark Act 18
Section 2 of the Jamaican Trademark Act 19
Section 5 of the SKN Trademark Act. See Section 16 of the Jamaican Trade Marks Act. 20
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of the trademark will be given the exclusive right to prevent others from using the trademark
unless they have the owner’s authorisation to do so . 21
Duration of protection (SKN)
Registration of a trademark will last for ten (10) years from the filing date of the application
for registration. A trademark may be renewed for an additional ten (10) years upon the
payment of a renewal fee . 22
Duration of protection (Jamaica)
Registration of a trademark will last for ten (10) years from the date of registration. A
trademark may be renewed indefinitely for an additional ten (10) years upon the payment of a
renewal fee.23
Passing Off
Registering a trademark, however is not compulsory. In such circumstances an unregistered
trademark is offered protection under the common law by means of an action in the tort of
passing off. The generally accepted ingredients of passing off are stated by Lord Oliver in
Rickett & Colman v Borden . To be successful, the claimant (owner of the trademark) must 24
prove that:
(a) his name, trademark, logo or other visual symbol has, through use, acquired a reputation
which has generated business goodwill;
(b) the defendant, by using this symbol, has made a misrepresentation in the course of trade
to customers that his goods or services are in some way ‘connected with’ the claimant;
(c) the claimant has suffered or will suffer damage to his business goodwill as a result.
Section 9 of the SKN Trademark Act. See Section 5 of the Jamaica Trade Mark Act as amended. 21
Section 10 of the SKN Trademark Act. 22
Section 8 and 40 of the Jamaican Trade Mark Act as amended. 23
[1990] 1 WLR 491 (HL) 24
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All three ingredients must be proved or else the action for passing off will fail. With that said,
owners of trademarks are encouraged to registered their trademark rather than rely on a
passing off action to protect their rights to a trademark. As well, unlike a registered
trademark, an unregistered trademark has no duration of protection protecting the owner of
the trademark rights. The owner of the trademark will have to institute a passing off action in
every instance of infringement.
Industrial Designs
An Industrial Design or Design refers to the ornamental or aesthetic aspect of an article . 25
Under the Jamaican Designs Act (“Designs Act”) a design is defined as:
“any design applicable to any article of manufacture, or to any substance artificial or
natural or partly artificial and partly natural, whether the design is applicable for the
pattern, or for the shape or configuration or for the ornament thereof or for any two to more
such purposes, and by whatever means it is applicable, whether by printing, painting,
embroidering, weaving, sewing, modelling, casting embossing, engraving, staining, or any
other means whatever, manual, mechanical or chemical, separate or combined.” 26
The law of industrial designs therefore is concerned with how the article looks as opposed to
the article itself and gives the designer the exclusive right to use that design of the article in
question. For example, if Company A manufactures a fan and Company B manufactures a fan
and the only distinguishing feature of Company A’s fan is the way its fan looks when
compared to Company B’s fan, then Company A can seek to prevent Company B from
manufacturing fans that look like (or are designed like) Company A’s fans.
In Jamaica a design may be protected on application for registration by the proprietor of the
design to JIPO upon payment of the prescribed fee . Registration of a design ensures the 27
World Intellectual Property Organization What is Intellectual Property? WIPO Publication No. 450(E); 25
Section 2 Designs Act as amended; 26
Section 5 of the Designs Act as amended. 27
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exclusive use of the design by the proprietor. Additionally, the proprietor will have copyright
to the design for fifteen (15) years from the date of registration of the design . 28
In SKN there is no specific legislation dealing with the protection of industrial designs.
Arguably, however, an industrial design maybe protected in SKN under the Patent Act as a
‘design patent’ or under the Copyright Act as an ‘artistic work’ . 29
Duration of protection (SKN)
If capable of registration as a design patent under the Patent Act then the design patent will
last for twenty (20) years from the date of filing the application for registration. A patent may
be renewed for an additional twenty (20) years upon the payment of a renewal fee.
Where the designer seeks protection of his right to the industrial design under the Copyright
Act the duration of protection will expires at the end of fifty (50) years from end of the
calendar year in which the designer dies or if the designer is not known, fifty (50) years from
the end of the calendar year the design was first made available to the public.
Geographical Indication
The World Intellectual Property Organisation defines a geographical indication (“GI”) as “a
sign used on goods that have a specific geographical origin and possess qualities or a
reputation due to that place or origin”30. In Jamaica, under the Protection of Geographical
Indications Act a geographical indication is defined as:
“an indication which identifies a good as originating in a 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.” 31
Section 7 of the Designs Act as amended. 28
See above protection under Patent Act and Copyright Act above. 29
World Intellectual Property Organization What is Intellectual Property? WIPO Publication No. 450(E) 30
Section 2 of the Protection of Geographical Indications Act as amended; 31
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For example, if SKN or Jamaica is renowned for its high quality coconuts, a sign or symbol
could be placed on the packaging of coconuts from SKN or Jamaica which would indicate
that the coconuts are from SKN or Jamaica.
A GI as defined above may seem similar to a trademark, however, the main difference is the
use of the GI. A trademark may only be used by its owner but a GI may be used by anyone
who produces goods or products specified in the GI registration provided the goods or
products are produced according to the standard required . 32
In Jamaica, a GI is registered on application to JIPO and payment of the prescribed fee.
In SKN there is no legislation dealing specifically with GIs, however, a GI may be registered
under the SKN Trademark Act as a collective mark and registered in the same manner as a 33
trademark . 34
Duration of Protection (SKN)
Registration of a collective mark will last for ten (10) years from the filing date of the
application for registration. A trademark may be renewed for an additional ten (10) years
upon the payment of a renewal fee.
Duration of Protection (Jamaica)
The Protection of Geographical Indications Act as amended does not provide for a limitation
for duration of protection.
Section 11 of the Protection of Geographical indications Act as amended; 32
Section 2 of the Trademark Act “Collective mark” means a visible sign designated as such in the application 33
for registration and capable of distinguishing the origin or other common characteristic, such as the quality, of
goods or services of different enterprises which use the sign under the control of the registered owner of that
sign.
See Trademarks above. 34
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Confidential Information
Confidential information is simply information communicated to another in private. For
example trade secrets are treated as confidential information. Where confidential information
is released to the public or used to ones benefit without authorisation an action for breach of
confidence may lie. An action for breach of confidence is an area of intellectual property
which may protect ideas communicated in private. The requirements for an action for breach
of confidence were established by Meggary J in Coco v A.N. Clark (Engineers) Ltd : 35
(a) the information was of a confidential information;
(b) it was communicated in circumstances importing an obligation of confidence; and
(c) there was an unauthorised use of the information.
Where, however, the information or idea was known to the public then an action for breach of
confidence cannot be invoked.
Summary
To recap, IP refers to creations of the mind. IP law is not a new area of law but has been
around since the Statute of Monopolies 1623 and seeks to protect the exclusive rights of the
owner to his creation. There are 6 categories of IP: copyright, patents, trademarks, industrial
designs, geographical indications and confidential information. In each category of IP, the
exclusive rights of the owner is protected either by legislation upon registration for a limited
duration or by common law action.
We hope that the above information is useful and that questions regarding IP in SKN and
Jamaica have been answered sufficiently.
About the Author: Gyan Robinson is a partner at Westinson Law PE in Jamaica. His main
areas areas of practice are: Intellectual Property, Company Law, Real Estate Development,
[1969] RPC 41 35
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Civil Litigation and Succession. He is called to the Jamaican Bar and St. Christopher (Kitts)
and Nevis Bar and is also a member of the St. Kitts and Nevis Bar Association.
Disclaimer: While every effort has been made to ensure the accuracy of this publication,
it is not intended to provide legal advice as individual situations will differ and should
be discussed with an expert and/or attorney-at-law. For specific technical or legal advice
on the information provided and related topics, please contact the author.
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