A new day is on the horizon for the British Virgin Islands intellectual property industry with the enactment of the new trade mark legislation. A draft of the much anticipated Trade Mark Act, 2013 (the 2013 Act) was circulated to industry practitioners in 2012 for review and has had its final reading in the House of Assembly. The Act will come into force on such date as the Governor of the British Virgin Islands has appointed by proclamation. It is expected that the proclamation will be made in the first quarter of 2014.
This 2013 Act, together with the supporting Rules, will result in the harmonization of BVI law and practice with international standards and bring BVI's registration and protection of trade marks in line with other global intellectual property centres.
The BVI has long been recognised as the preeminent corporate domicile worldwide and it is therefore of little surprise that companies worldwide have sought to register and protect their intellectual property rights in the BVI in their attempts to globally protect these prized rights. Unfortunately, the current "archaic" (as it has often been described) trade mark law in the BVI does not afford the flexibility, the range of registrations and level of protection sought by sophisticated trade mark owners. The failure to modernize the trade mark regime through up to date legislation has resulted in the trade mark registration process not being reflective of the commercial imperatives that intellectual property protection now requires in these modem times and as such has hindered the development of the industry into a true value added sector of the BVI economy.
Currently there are three main pieces of legislation that govern the registration and use of trade marks in the BVI, namely The Trade Marks Act, Cap 158, the Registration of United Kingdom Trade Marks Act, Cap 156 and the Merchandise Marks Act, Cap 154 all of which will be repealed by the 2013 Act.
The Trade Marks Act (TMA) is over a century old being enacted in 1887 and amended in 1956 and 1991. In its current form the TMA is essentially based on the British Trade Marks Act of 1938, although the classification system predates that legislation. This legislation has many shortcomings, the most obvious and perhaps most challenging one being the inability under the TMA to register service marks, as the TMA only provides for registration of marks related to goods. In order to create some form of protection for a service mark in the BVI, the practice developed of registering a design representation of the mark under the class of printed goods, as the representation of the mark would likely be in print form. This of course is far from ideal. Together with the lack of provisions to allow for the registration of well known marks and certification marks and a domestic classification system, which is not in keeping with international classification systems, the registration and protection of marks under the TMA often proves frustrating for both applicants and their service providers.
The Registration of United Kingdom Trade Marks Act (RUTMA), which is also an old act having first been enacted in 1946 and last amended over ten years ago, provided an avenue for marks registered in the United Kingdom to be registered in the British Virgin Islands based on the previous registration. Marks registered under this RUTMA have a shorter registration process, as there is no requirement to advertise, as is the case under the TMA .
The RUTMA is also often used in practice for the registration of service marks, as the registration and protection of such marks is not provided for under the TMA . Applicants with a service mark previously registered in the UK would therefore apply under the RUTMA to register the mark in the BVI and the practice of the Registry over the years has been to allow the registration of UK registered service marks under the RUTMA .
The BVI was therefore in need of a revamp of its trade mark legislation in order to produce an act that was truly reflective of global trends and the modem business environment that the BVI has become. The British Virgin Islands Financial Services Commission, which has the responsibility for intellectual property matters, recognized the need to bring the intellectual property industry in line with its other dynamic and first class service sectors and appointed an eight person focus group comprising of expert practitioners from the private and public sectors to, among other things, review and advise on amendments and improvements to the law with respect to the registration and protection of intellectual and industrial property in the BVI.
The Government in consultation with the focus group has produced the very dynamic and thorough 2013 Act that will integrate the filing procedures under the TMA and the RUTMA into one application process and provide for proper protection of trade mark rights. The proposed new legislation is in line with trade mark legislation in many of the leading trade mark jurisdictions and in particular the current UK Trade Marks Act.
The bill introducing the 2013 Act sums up the purpose of the Act by stating that 'it shall be an Act to make new provisions for the registration and protection of trade marks, the institution of legal proceedings in trade mark issues and other matters relevant to intellectual and industrial property as they relate to trade marks and for commercial matters'. The 2013 Act is a modern approach to trade mark registration and protection and introduces the following key aspects into BVI trade mark law, which are critical for the BVI to be considered a true intellectual property centre:
Wider definition of trade marks - The 2013 Act has expanded the definition of trade marks to now include, very importantly, service marks, certification trade marks and collective trade marks. A trade mark is defined in this Act as any sign that is capable of
being represented graphically, and
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.
This is a significant change and opens up the BVI Registry to an increasing and varied number of applications as it allows for the registration and protection of marks and logos connected with services, which have proven to be valuable commercial property.
Significant Enhancements in the 2013 Act
Registration of well known trade marks - The 2013 Act has also introduced into the BVI, the registration of well known marks. This is an important step in trade mark protection in the BVI since the Paris Convention (which provides for the protection of well known trade marks, among other things) was never extended to the BVI. As such, a well known trademark could not previously be protected in the BVF . The 2013 Act has addressed this issue by including a well known trade mark under the Paris Convention in the definition of an 'earlier trade mark' and also by specifically providing for protection to an owner of a trade mark that is protected under the Paris Convention as a well know trade mark.
The 2013 Act has therefore adopted provisions of the Paris Convention as a means of circumventing the shortcomings resulting from the Convention not being extend to the jurisdiction and defines a well known trade mark as follows:
'A reference in this Act to a trade mark that is entitled to protection under the Paris Convention as a well-known trade mark shall be construed as a reference to a trade mark that
is well known in the Virgin Islands; and
is the trade mark of a person who
is a national of, or is domiciled or ordinarily resident in, a Paris Convention country or WTO member;
is a belonger or resident in the Virgin Islands; or
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.'
Priority - The 2013 Act allows for priority of a trademark that has been registered in a Paris Convention country or WTO member, for a period of six months from the date of filing of the first application. This means that a trade mark owner who has registered his trade mark in a country that is a party to the Paris Convention or is a WTO member will receive protection for that trade mark under BVI law for 6 months from the date of filing. The protection is automatic so that the trade mark is not required to file anything in the BVI to obtain that 6-month protection. The ability to claim priority and the protection, which this affords, is critical to trade mark owners but is not available under the current legislation.
Trade mark classification - the 2013 Act provides for the BVI Financial Services Commission, which is the statutory body with responsibility for the Trade Mark Registry, to develop a classification system for goods and services for the purpose of registering marks for goods and services. This new classification system will replace the former domestic classification system, which only provided for marks in respect to goods. In the event that the Commission does not establish its own classification system, then the Nice classification as established by the 1957 Nice Agreement will be applied.
Revocation and Invalidity proceedings - Under the current legislation a person aggrieved by the registration of a trademark cannot apply to have the trademark revoked or invalidated once the mark was registered. The aggrieved party would have to have knowledge of the application to register the contested mark and oppose the registration prior to the registration process being completed. Under the 2013 Act, the party will now have the option to apply to revoke or invalidate the registration before the Registrar or High Court.
Regulated trade mark practitioners - The 2013 Act will regulate the trade mark industry by requiring trade mark agents to be licensed by the Financial Services Commission. An agent may be an individual, a partnership or a legal person but must meet certain criteria laid out by the Act. The licensing of agents is an important step in creating and maintaining accountability and professionalism within the industry; characteristics that are necessary in creating a leading intellectual property centre.
Electronic filing - The registration process is expected to become more efficient and timely with the introduction of an electronic filing system under the 2013 Act.
The 2013 Act, which should significantly change the industry and allow the BVI to attract new registration, will only instill confidence in its users if it is supported by an efficient, reliable and sound judicial and legal system. The BVI legal and judicial system, it is fair to say, is equal to if not better than many of its competitors in the intellectual property arena. The High Court in the BVI, which is a part of the Eastern Supreme Court, is the court that adjudicates disputes on intellectual property and will continue to do so under the 2013 Act. The Commercial Division of the High Court which was established in 2009 to hear commercial matters valued at over $500,000 has proven itself to be a court of substance and one which will no doubt continue to provide the critical support to the industry as it emerges as a leading intellectual property centre.
The regime that will be created when the new trade mark legislation comes into force marks a significant step forward in the intellectual property arena for the BVI. The new legislation ushers in many welcome and important changes for the BVI and is expected to result in many new registrations for the BVI and will make the BVI trade mark sector a true partner of trade mark owners and users.
Reproduced with permission from Oyster Global Marketing Group. This article was first published in Business BVI (2014 edition) Managing editor: Russell Harrigan. For further information please visit www.oysterbvi.com.