Member Article

A registered trademark in the British Virgin Islands is transmissible in the same way as other personal or moveable property. Transmission can be completed by assignment, testamentary disposition, or operation of law.

When a trademark is assigned, the owner’s right, title, and interest with respect to the trademark is transferred to the new owner.

In general, prompt recording of assignment is important in order to secure your rights to the registered trademark and put the public on notice.

Partial vs. Complete Trademark Assignment

Under BVI law, a registered trademark may be partially assigned or completely assigned.

In a complete assignment, the trademark owner transfers all the trademark rights to the new owner.

In a partial assignment, the transfer is restricted to specific rights. A partial assignment may be limited to:

• some but not all of the goods or services for which the trademark is registered; or,
• use of the trademark in a particular manner or a particular locality.

For example, a company that has proprietary rights for clothing and cosmetics might transfer proprietary rights in respect of cosmetics only and retain the rights in respect of clothing.

Goodwill Assignment

BVI legislation also provides for the assignment of a registered trademark either in connection with the goodwill of a business, or independently.

The goodwill of a trademark relates to the inherent value of the mark—the benefit and advantage of the good name and reputation of the mark. When a trademark is assigned with goodwill, the assignee inherits a well-known brand as opposed to having to build a fresh reputation, independently.

Assigning a Trademark in the BVI

To record a trademark assignment in the BVI, the Trademark Registry requires an original Deed of Assignment executed by the assignor and assignee in the presence of a witness and notary public. A search of the trademark should be conducted in the BVI prior to preparing the Deed to ascertain the details of the mark on the Register.

Multiple trademarks may be included on one Deed of Assignment, provided that the name and address of the proprietor of each trademark is identical.

In addition, the Applicant is required to:

1. confirm that the new owner is an individual or entity that is legally capable of holding assets in its own name;
   
   
2. provide the date of assignment; and
   
   
3. provide, for partial assignment only, a description of the right transferred if the change of ownership is in respect of a right in or under the application(s) or registration(s).
   
   

In the event that a trademark is co-owned, a co-owner may not assign his or her share in a trademark without obtaining the legal consent of the other co-owner or co-owners.

O’Neal Webster, Registered Trademark Agents

Registering a trademark in the BVI is fairly straightforward, however, to ensure consistency and legitimacy, all applications and assignments must be conducted through a registered BVI trademark agent. O’Neal Webster is a registered trademark agent, recognized by the BVI Trade Mark Registry.

We administer a large portfolio of intellectual property assets for clients, globally, including prominent brand owners and law firms, as well as for start-up and emerging brands and smaller enterprises. We have expertise in recording multiple transactions involved in mergers and assignments of our clients’ entire BVI trademark portfolios. Our experienced staff is highly regarded for their attention to detail, responsive communications, and quick turnaround. Additionally, our litigation team, under the leadership of Paul Dennis, QC, has been highly successful in handling various types of enforcement cases for our trademark clients in the BVI.

Should you have trademark assignment or registration needs in the BVI, we invite you to contact the author, Feroza Kartick, O’Neal Webster intellectual property paralegal, directly at [email protected] or +1 284-393-5800.