New BVI Trade Marks Legislation Now in Effect
The British Virgin Islands ("BVI") is a well-known and popular jurisdiction for the holding of corporate assets, including real estate investments, securities, jets and ships.
The BVI Trade Marks Act, 2013 (the "Act"), and the Trade Marks Rules, 2015 ("Rules"), came into effect on 1 September 2015 and make new provisions 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 Act and the accompanying Rules are a major rewrite of BVI trade mark law, replacing a regime which had largely been in place for over a century. Our summary below highlights the major points coming out of the new legislation.
The Act 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.
Under the Act, a sign includes (a) a brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word, and "numeral" and "word" in this regard are construed to include a foreign numeral and foreign script or word; and (b) any combination of signs.
For the purpose of the Act (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 Convention for the Protection of Industrial Property 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.
Defensive Trade Marks
Under the Act, a registered trade mark that has been used in relation to all or any of the goods or services for which it has become exceptionally well known in the BVI and, as a result, its use in relation to other goods or services would be likely to detract from its distinctive character with regard to the goods or services for which it has been so used, the trade mark may, on the application of the owner of the registered trade mark made to the BVI Registrar of Trade Marks, Patents and Copyright (the "Registrar"), be registered as a defensive trade mark in respect of any or all of those goods and services.
Accordingly, a trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the owner of the registered trade mark does not use or intend to use the trade mark in relation to those goods or services; or the trade mark is already registered (otherwise than as a defensive trade mark) in the name of the applicant in respect of those goods or services.
Where a trade mark has been registered as a defensive trade mark in respect of particular goods or services, it may be subsequently registered (otherwise than as a defensive trade mark) in the name of the owner of the registered trade mark in respect of the same goods or services.
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 in the BVI must be made by a registered trade mark agent.
An application to register a trade mark must be in the prescribed form and 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 Act are filed with 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 of a period of not less than 14 days and not more than 60 days from the date of such notification, 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 BVI 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 Act.
However, where a trade mark (except for a defensive trade mark) is registered and has not, since its registration, been used in relation to the goods and services for which it is registered, for a continuous period of at least three (3) years by the owner or another with the owner's consent, it may be revoked for non-use if no valid reason for non-use exists.
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.
Claim to Priority
The Act now provides that a person who has duly filed an application for the registration of a trade mark in a Paris Convention country or WTO member, or his successor in title, has a right of priority, for the purposes of registering the same trade mark under the Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application.
The Act 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.
Each of 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 Registrar as a competent authority, transferring a registered trade mark or any right in or under it.
A register of trade marks (the "Register") 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 Act or the 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.
Security over Trade Marks
The Act 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 Act, an assignment of a registered trade mark, including an assignment by way of security, will not be effective unless it is made in writing and 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 1 September 2015, existing registered trade marks registered under the Registration of United Kingdom Trade Marks Act, 1946 or the Trade Marks Act, 1887 (now repealed): (a) shall be deemed to be transferred to the Register and subject to Schedule 4 of the Act shall be deemed to be similarly registered in the 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 Register.
The Act will further improve the position of the BVI as a modern tax neutral jurisdiction for the holding of intellectual property.