The much anticipated Trade Marks Bill (“the Bill”) was recently circulated to the industry for comments. The Bill, which when enacted will be known as the Trade Marks Act, 2012, promises to introduce much needed change to the trademark industry in the British Virgin Islands and place the jurisdiction in line with other modern jurisdictions. The Bill states that it shall be an Act to make new provision 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 Bill will replace three pieces of legislation that govern trademark registration and use in the BVI, namely the Trade Marks Act, 1887, and the Re-registration of United Kingdom Trade Marks Act, 1946 and the Merchandise Marks Act, the first two being the primary pieces of trade mark legislation.

The Trade Marks Act , 1887, (“TMA”)which has been amended twice, provides, among other things, the procedure for registering trade marks within the British Virgin Islands. This Act was outdated and in need of review and unfortunately often did not meet the needs of our clients. The Bill will repeal the TMA.

The Re-registration of United Kingdom Trade Marks Act, as the name suggests, provides for the manner in which marks registered in the United Kingdom may be re-registered in the British Virgin Islands. The ability to re-register a United Kingdom registered mark in the British Virgin Islands is a feature of British Virgin Islands law which is expected by clients because of the relationship of the jurisdiction with the United Kingdom. The ability to re-register a mark in the jurisdiction is attractive to clients because of the shorter registration process as there is no requirement for advertisement within the BVI.

The Bill in its current form provides a modern approach to trade mark law and introduces many new and welcomed features a few of which we have highlighted below:

Certainty

  • The Bill will allow for the registration of service marks. One of the lacunae in the current law is that it does not provide for the first registration of a service mark in the BVI. Owners of service marks who wish to register their marks in the BVI to protect their interest often sought to get around this difficulty by re-registering a UK registered service mark in the BVI. This manner of registration resulted in much discussion on whether such registration truly provided adequate, if any, protection of the service mark in the BVI. We are pleased to note that the Bill seeks to end such discussions, correct the position and provide certainty by providing for the registration of service marks in the BVI. This we know will be a welcome change to many of the firm’s clients.
  • The Bill also seeks to provide certainty by providing a definition of a trade mark. The TMA does not provide a statutory definition of trademarks but rather sets out the particulars that a trade mark must consist of or contain to be registered under the TMA. Such particulars include an invented word or invented words or a distinctive device, mark, brand, heading label or ticket. The Bill defines a trade mark 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 unless excepted includes a certificate trade mark and collective trademark.

Duration of registration

The duration of a registration of a trade mark will be ten years from the date of registration and may be renewed for additional periods of ten years each. This shortens the period which currently exist under the TMA which is 14 years. UK registered marks which have been reregistered in the BVI are registered for the term of the UK registration.

Priority

The Bill very importantly allows for priority of a trademark that has been registered in a Paris Convention country or WTO member. It is important to note that the application to claim priority must be made within six months of the application in the other country. This right of priority was not afforded under the TMA and will be well received by our clients who often seek to claim priority based on a previous registration.

Electronic filing

The Bill will allow for filings to be done electronically as opposed to physical filings at the Trade Mark Registry. This should allow for a more efficient filing process on the part of both the trade mark agent and Registry.

Licensed Trade Mark Agents

Trade mark agents, which may be an individual, a partnership or a legal person, will be required to be licensed by the British Virgin Islands Financial Services Commission. The criteria for being licensed as a trade mark agent is provided for in the Bill but such agent must be deemed to have an appreciable knowledge of trademark law and be competent to perform the duties having regard to his qualification and experience.

We will keep our clients informed of when the Bill becomes law which we hope to be before the end of 2012.