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The BVI Introduces New Trade Marks Bill, 2013

2 May 2013

The British Virgin Islands ("BVI") is a well-known and popular jurisdiction for the holding of corporate assets such as real estate investments, securities, jets and ships.  The BVI's intellectual property ("IP") legislation is well established and the BVI is now modernising its trade mark legislation as a step in its initiative to improve its offering in the field of intellectual property holding structures.

The BVI has its own patents and trade marks registry.  In addition, it is also possible to apply for local recordal of patents and trade marks registered with the UK Intellectual Property Office.  Community trade marks and registrations under the Madrid Protocol designating the United Kingdom, however, do not currently have effect in the BVI.

At present, the Trade Marks Act 1887 together with the Trade Marks Rules 1937 govern original applications for the registration of trade marks in the BVI as well as the rights and powers granted following such registration.  The Registration of United Kingdom Trade Marks Act 1946 and the Registration of the United Kingdom Trade Marks Rules 1947 govern the procedure for the registration of United Kingdom trade marks and the rights and powers afforded to the applicant following such registration.

The BVI Trade Marks Bill, 2013 (the "Bill") seeks to repeal the Merchandise Marks Act, Registration of United Kingdom Trade Marks Act and Trade Marks Act and to make new provision with respect to the registration and protection of trade marks in the BVI, and related matters including the assignment and charge of trade marks.  

The Bill is a major rewrite of BVI trade mark law, therefore, the summary below only touches on some of the major points of significance.

Preliminary

Definitions

The Bill introduces a statutory definition of a trade mark, which is "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 includes a certification trade mark and collective trade mark, unless otherwise specifically excepted". 

Collective and certification trade marks are also clearly defined.  A collective trade mark means a sign that is capable of (a) being represented graphically; and (b) 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.  A certification trade mark means a sign that is capable of (a) being represented graphically; and (b) distinguishing, in the course of trade, (i) 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 (ii) services that are certified by any person in respect of quality, accuracy, performance or other characteristic from services that are not so certified.

Signs

For the purpose of the Bill (a) a sign may constitute a trade mark although it is used in relation to a service that is ancillary to the trade or an undertaking and whether or not the service is provided for money or money’s worth; and (b) any use of a sign with respect to goods or services shall be construed to include a reference to the audible use of the sign in relation to those goods or services.

Well-known Trade Marks

References to a well-known trade mark, where a trade mark is entitled to protection under the Paris Convention1 shall be construed as a reference to a mark that (a) is well-known in the BVI; and (b) is the trade mark of a person who: (i) is a national of or is domiciled or ordinarily resident in a Paris Convention country or WTO member; (ii) is a national of, or resident in the BVI; or (iii) has a real and effective commercial or industrial establishment in a Paris Convention country, a WTO member or the BVI, whether or not that person carries on business in the BVI or owns any goodwill in a business in the BVI. 

Infringement

A person infringes a registered trade mark if he uses, in the course of trade, an infringing sign or if the trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the sign, without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark.  As such, a person will be considered to be using an infringing sign if he (a) applies the sign to goods or the packaging of goods; (b) offers or exposes goods for sale under the sign; (c) puts goods on the market under the sign; (d) stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market; (e) offers or supplies services under the sign; (f) imports or exports goods under the sign; or (g) uses the sign on business papers or in advertising.

An infringement of a trade mark is actionable by the owner of the trade mark.  In proceedings for an infringement of a trade mark, all relief by way of damages, injunctions, accounts or otherwise is available to the owner of the trade mark as is available in respect of the infringement of any other property right.  No infringement proceeding may be commenced before the date on which the trade mark infringed is in fact entered in the register.

Application for Registration

Every application for the registration of a trade mark must be made by a registered trade mark agent.

An application to register a trade mark must be in the prescribed form which shall include the following: (a) a request for registration of the trade mark; (b) the name and address of the applicant; (c) a statement of the goods or services in relation to which it is sought to register the trade mark; (d) a representation of the trade mark; and (e) such other information, document or matter as may be prescribed.

The application must state whether (a) the trade mark is being used by the applicant or with his consent, in relation to the goods or services in respect of which it is sought to be registered; or (b) the applicant honestly intends to use the mark or to allow it to be used, in relation to the goods or services concerned.

The date of filing of an application for registration of a trade mark is the date on which documents containing all necessary requirements, stipulated by section 36 of the Bill, are filed with the BVI Registrar of Trade Marks, Patents and Copyright (the "Registrar").

The Registrar will then determine whether the requirements for registration have been satisfied and if so he must, subject to any condition he thinks fit to impose, accept the application. 

If the Registrar considers that the requirements have not been met then he will notify the applicant not less than 14 days and not more than 60 days from the date of the notice within which the applicant must meet the outstanding requirements.

When an application is accepted by the Registrar he will issue a certificate of registration to the applicant and cause a notice to be published in the Gazette confirming the registration of the trade mark.

A trade mark is registered for a period of 10 years from the date of registration and may be renewed for further periods of 10 years in accordance with section 59 of the Bill.

Refusal to Register

There a number of reasons why the Registrar may refuse to register a trade mark.  General grounds include, but are not limited to: (a) a sign that is not a trade mark; (b) a trade mark that is devoid of any distinctive character; (c) a trade mark that consists exclusively of a sign or indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services; (d) a trade mark that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of trade; (e) a trade mark if or to the extent that the use of the trade mark is prohibited in the BVI by virtue of any enactment or rule of law or would otherwise be disentitled to protection in any court; and (f) a trade mark if the application to which it relates is, in the opinion of the Registrar, made in bad faith.

Administrative Provisions

A register of trade marks will be kept and maintained by the Registrar.  The register will contain the following information: (a) particulars relating to pending applications for registration of trade marks, including the filing dates and dates of priority; (b) particulars relating to registered trade marks, including the names and addresses of owners of the trade marks; (c) assignments and transmissions; (d) the names and addresses of all licensees, including sub-licensees; (e) disclaimers and any conditions required or attached to any matter; (f) notices issued pursuant to the requirements of the Bill or the trade mark rules; (g) transactions, instruments or events affecting the rights in or under registered trade marks and applications for registration; and (h) such other matters as the Registrar considers fit.

Registrable Transactions

The Bill provides for registrable transactions including assignments and licenses.  If the Registrar receives an application from (a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or (b) any other person claiming to be affected by a registrable transaction, the Registrar will enter in the register the prescribed particulars of the transaction.

The following constitutes a registrable transaction: (a) an assignment of a trade mark or any right in it; (b) the grant of a licence under a registered trade mark; (c) the granting of any security interest, whether fixed or floating, over a registered trade mark or any right in or under it; (d) the making of a personal representative of an assent in relation to a registered trade mark or any right in or under it; and (e) an order of a court, or any authority recognised by the BVI Financial Services Commission as a competent authority, transferring a registered trade mark or any right in or under it.

Security over Trade Marks

The Bill expressly provides that a registered trade mark may be the subject of a charge in the same way as other personal or moveable property.  Under the Bill, an assignment of a registered trade mark, including an assignment by way of security, will not be effective unless it is (a) made in writing; and (b) signed by or on behalf of the assignor or his personal representative.  The granting of any security interest, whether fixed or floating, over a registered trade mark or any right in or under it will be registrable by the Registrar.

Existing Trade Marks

From the commencement date of the new legislation once the Bill is passed into law as the Trade Marks Act, existing registered trade marks registered under the Registration of United Kingdom Trade Marks Act, 1946 or the Trade Marks Act, 1887; (a) shall be deemed to be transferred to the new register and subject to Schedule 4 of the Act (when in force) shall be deemed to be similarly registered in the new register; and (b) that were registered as a series under section 7 of the repealed Act shall be deemed to be similarly registered under the new register.

The Bill remains subject to industry consultation and when enacted will further improve the position of the BVI as a tax neutral jurisdiction for the holding of IP.

For further information, please speak with your usual Maples and Calder contact or one of the individuals listed above.

1Paris Convention for the Protection of Industrial Property. http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html


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