British Virgin Islands - New Trade Marks Act now in force

The Trade Marks Act, 2013 came into force in the British Virgin Islands on 1 September 2015. The new Act replaces the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946. Most significantly, there is no longer an option for UK-based registrations.

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: 

  • Independent and UK-based registrations filed before 1 September 2015, will remain valid under the new law
  • Independent and UK-based applications which were pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
  • The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)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 has also been introduced.

Please contact us for further information about the new law.

Date published: 2015/09/01
Author: Spoor & Fisher

Tags: british virgin islands trade mark trade marks act