On 1 September 2015 the Trade Marks Act, 2013 (the "Act") and the Trade Marks Rules, 2015 (the "Rules") were promulgated into law. The Act is aimed at simplifiying and modernising trade mark protection in the British Virgin Islands (the "BVI") by introducing two significant changes:
- adopting the international classification of goods and services provided by the Nice Agreement (the "Nice Classification"), which is used by more than 150 countries; and
- allowing service marks to be registered directly in the BVI.
The Act will replace the following statutes that have historically governed trade mark registration in the BVI:
- The BVI Trade Marks Act (Cap 158), which had an outdated classification system that permitted trade mark registration for goods, but not for services; and
- The Registration of United Kingdom Trade Marks Act (Cap 157), which allowed United Kingdom ("UK") registered trade-marks to be re-registered in the BVI. A re-registered trade mark had the same rights and privileges attached to it in BVI as it had in the UK (for as long as it remained registered in the UK). This enabled service marks to be registered in the BVI through the “back door”.
Features and characteristics of the Act
In terms of the Act, a registered trade mark is regarded as personal property that is acquired by registration of the trade mark under the Act.
The Act has broadened the formal definition of a “trade mark” so as to include the following:
1. Any sign that is capable of:
- being represented graphically; and
- distinguishing the goods or services of one person from those of another person (to include a certification trade mark and a collective trade mark).
2. The definition of “sign” includes:
- brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word (“numeral” and “word” are construed to include a foreign numeral and foreign script or word); and
- any combination of signs.
3. A collective trade mark is defined by the Act as a sign that is capable of:
- being represented graphically; and
- distinguishing the goods or services of members of the collective association that is the owner of the sign from those persons who are not members of the collective association.
4. A certification trade mark means a sign that is capable of:
- being represented graphically; and
- distinguishing, in the course of trade, (a) goods that are certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods that are not so certified; or (b) services that are certified by any person in respect of quality, accuracy, performance or other characteristic from services that are not so certified.
Registration of trade marks
The Act specifically provides that only a registered trade mark agent may apply for the registration of a trade mark (A trade mark agent must be registered by the BVI Financial Services Commission to act as a trade mark agent). This differs from the previous legislation where an application could be made by any person claiming to be the owner of a particular trade mark.
An application to register a trade mark must be in the prescribed form and submitted to the BVI Registrar of Trade Marks, Patents and Copyright (the "Registrar"). The Registrar then considers the application for approval pursuant to the requirements of the Act. Applications may be made electronically. Once approved by the Registrar, a trade mark is registered as of the date of the filing of the application for registration.
Approved trade mark applications are registered for a period of 10 years from the date of registration, with the option to renew (subject to specific requirements being met) for a further 10 years.
Infringement and grant of security
The owner of a trade mark enjoys the rights and remedies provided by both by the Act and common law.
The Act provides that the owner of a registered trade mark has the exclusive right to:
- use the registered trade mark
- authorise any other person to use the registered trade mark (please see “licensing” below)
- assign or transmit the registered trade mark (either in connection with the goodwill of a business, or otherwise), and
- give a valid receipt for any consideration for the assignment or transmission of the trade mark.
The owner of a registered trade mark may take action against any person who has committed an infringement of that trade mark. A person infringes a trade mark if:
- the trade mark is entitled to protection under the Paris Convention as a well known trade mark, and
- the use of the infringing sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
Where a question arises as to the use to which the registered trade mark has been put, the burden of proving that use lies with the owner of the trade mark. Where a license has been granted over the trade mark (please see below) and the owner of the trade mark is not a party to the proceedings, the licensee has the burden of proving the use of the trade mark.
The Act provides that a registered trade mark may be the subject of a charge in the same way as other personal or moveable property. In circumstances where a BVI Business Company is the registered owner/licensee of a trade mark registered under the Act, details of any charge or encumbrance registered over that trade mark may in turn be filed with the Registrar of Corporate Affairs in the British Virgin Islands pursuant to the relevant provisions of the BVI Business Companies Act.
Where a registered trade mark is subject to a charge or other encumbrance, the Rules provide that the following information will need to be entered in the trade mark register:
- the name and address of the grantee
- the nature of the interest (whether fixed or floating), and
- the extent of the security and the right in or under the trade mark or application that is secured.
Assignment, transmission and licensing
A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. A registered trade mark is transmissible either in connection with the goodwill of a business, or independently of the business itself. Nothing contained in the Act may be construed as affecting the assignment or transmission of an unregistered trade mark as part of the goodwill of a business.
An assignment of a registered trade mark, or an assent relating to a registered trade mark, must be made in writing and signed by or on behalf of the assignor, or his personal representative.
An application for the registration of a license over a registered trade mark may be made to the Registrar, and may include registration of the commercially agreed terms and conditions of the licence.
Existing trade marks
From 1 September 2015 all trade marks that were registered under the old BVI Trade Marks Act (Cap 158), are deemed to be transferred to the new Register with effect from the date of their original registration in the BVI. If required, the Registrar can re-classify the goods that the trade mark was originally registered under, to comply with the Nice Convention.
From 1 September 2015 all trade marks that were registered under the old Registration of United Kingdom Trade Marks Act (Cap 157) are deemed to be transferred to the new Register with effect from their original registration date in the UK. However any trade mark infringement claim made in the BVI (rather than the UK) can only relate to infringements occurring on or after 1 September 2015.