Significant changes to BVI trade mark laws

The Trade Marks Act and the Trade Marks Rules brings the British Virgin Islands (BVI) registration and protection of trade marks in line with other jurisdictions across the world and marks a significant step forward for the BVI in the intellectual property arena.

WHAT ARE THE KEY CHANGES?

Abolishment of the dual filing system

Under the old legislations, trademark owners could file an application in one of two ways namely: (1) re-register a United Kingdom mark registration pursuant to the Trade Marks Act (Cap.157) for which protection was available for both goods and services; or (2) file a fresh application in the BVI pursuant to the Trade Marks Act (Cap.158) for which protection was available for goods only. Effective 1 September 2015, it is no longer possible to register marks in the BVI on the basis of an existing United Kingdom registration. The Trade Marks Act and Trade Marks applebyglobal.com 2 Rules allows for a single path to filing a new application in the BVI and protection is now available for goods or services. This is possibly the most significant change.

Trademark classification

Under the Trade Marks Act (Cap.158) all goods were classified according to an antiquated British classification system. The Trade Marks Act and the Trade Marks Rules alters this significantly by providing protection in relation to goods or services in accordance with the International Classification of Goods adopted under the Nice Agreement.

Wider definition of trademark

Under the Trademark Act a trademark is defined as “any sign that is capable of (a) being represented graphically, and (b) distinguishing the goods or services of one person from those of another person, and includes a certification trade mark and collective trade mark, unless otherwise specifically excepted”. The definition of trademark has been expanded to include service marks, certification of trademarks and collective trademarks. A sign now includes a brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word and “numeral” and “word” in this regard include a foreign numeral and foreign script or word and any combination of signs.

Registration of well-known trademarks

A well-known trademark is a trade mark that is defined in the Trade Marks Act as a mark that “(a) is well known in the Virgin Islands; and (b) is the trade mark of a person who: (i) is a national of or is domiciled or ordinarily resident in a Paris Convention country or WTO member; (ii) is a belonger or resident in the Virgin Islands; or (iii) has a real and effective commercial or industrial establishment in a Paris Convention country, a WTO member or the Virgin Islands, whether or not that person carries on business in the Virgin Islands or owns any goodwill in a business in the Virgin Islands”. This is an extremely significant change in trademark protection in the BVI. Under the old legislation a well-known trademark could not be protected in the BVI.

Registration by Trade mark agent

Under the Trade Marks Act an application for the registration of a trade mark may only be made by an approved registered trade mark agent.

Priority

The Trade Marks Act allows a person who has duly filed an application for the registration of a trademark in a Paris Convention country or WTO member, or his successor in title, a right of priority, for the purposes of registering the same trade mark under the Trademarks Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application.