British Virgin Islands - A new Trade Marks Act and a last chance to file UK-based applications

Major changes are about to take place in the IP regime of the BVI, when the Trade Marks Act, 2013 (passed by the House of Assembly on 30 April 2013) comes into force on 1 September 2015.

The new Act will replace the antiquated Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946. Most significantly, it will do away with the present “dual” registration system, under the provisions of which an application may either be filed independently or based on a UK registration.

For trade mark owners to benefit from the existing provision that permits the “fast-track” extension of a UK national right to the BVI, a UK-based application should be filed in good time before the present legislation is repealed and that option ceases to exist. All that we would require is a certified copy of the UK registration and a simply signed power of attorney.

The main features of the new law include:

  • Provision for service marks
  • Provision for defensive marks, series marks, certification and collective marks
  • Adoption of the 10th Edition of the Nice classification
  • Provision for multi-class registration
  • Protection for well-known marks
  • Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
  • Priority may be claimed under the provisions of the Paris Convention
  • Renewal period revised from 14 to10 years
  • Provision for removal after three years’ non-use
  • Provision for recordal of licences
  • Provision for recordal of assignments without goodwill
  • Compulsory preliminary searches (under review)

Transitional provisions:

  • Existing independent and UK-based registrations will remain valid under the new law
  • Existing independent and UK-based applications which are still pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
  • The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
  • Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)

A new scale of official fees is being introduced. This is currently under review, and should be in place by the time the new law takes effect. We will send a further communication on this once more detailed information is available.

Date published: 2015/07/06
Author: Spoor & Fisher

Tags: british virgin islands trade mark trade marks act