By Gabriela Bodden, Eproint Partner

How will the new legislation impact my current TM registrations?

UP TO INTERNATIONAL STANDARDS:

A new Trademarks Act was passed by the British Virgin Islands on the 30th of April 2013. Two years and four months later this Act will come into effect, as of September 1st, 2015.

The above essentially entails the substitution of the aged legislation, namely, ‘Trademarks Act (Cap. 158)’ which dated back to 1887 and will also replace the UK ‘Trademarks Act (Cap. 157)’ of 1946.

The main changes introduced by this new legislation is that it ended

the dual registration system that enabled applicants up to yesterday to file both local/national trade mark applications and the extension of UK registered trade marks.

KEY CHANGES:

Important aspects of the new legislation to be considered are:

  • It is possible to file multi-class applications
  • Service marks, defensive marks, series marks, certification and collective marks can be registered
  • The 10th edition of the Nice classification is now applicable.

For trade marks registered before the Trade Marks Act, 2013, their existing classification will continue in the same manner as they were classified before 1 September 2015. The registrar of BVI can send the trade mark proprietor a notice proposing amendments to the classification once the new Act comes into effect, and in this instance the classification will necessarily need to be amended. The trade mark proprietor will have two (2) months from the date of the notice to file written objections to the proposals for reclassification. After this the amended classification will be published for opposition purposes giving third parties a time frame of two (2) months to file a notice of opposition in Form TM8 and send a copy to the trade mark owner.

It is of essence that extreme care be exercised when reclassifying in order to ensure that the reclassification does not affect earlier trade mark rights or to give trade mark proprietors more rights than they had before 1 September 2015.

  • Paris Convention priority can be claimed
  • Well-known marks are awarded protection
  • If a registration is not used in commerce in BVI it can be removed from the Register after 3 years of non-use. Good use in this jurisdiction can be demonstrated over the internet where the sellers offer the possibility of international shipping to the BVI.
  • Renewal period is now 10 years (and not 14 as under the old legislation)
  • New provision for the recordal of licences and assignments without goodwill
  • Use of ”R” symbol, of the word ”registered” or any other word or symbol implicating that the trade mark is registered in BVI is an offence under the new Act and makes the person/company liable to a fine of up to Five Thousand USD (US$5,000.00). Based on this, if a trade mark is not registered in BVI it should be indicated within the package or to the contrary it should indicate where the trade mark is registered.

EProint possesses important expertise in prosecution/ligitation matters in BVI.

If you would like to learn more about what actions to take in relation to your current registered trade mark rights please contact us immediately.