Member Article

Known worldwide for its robust shipping registry, trusts, funds, and corporate law sectors, the British Virgin Islands is emerging as a globally competitive jurisdiction for registering and protecting intellectual property, thanks to the enactment of the highly anticipated Trade Mark Act, 2013. The Act, which clarifies, protects, and streamlines the trademark processes, institutes beneficial legal proceedings and conditions for the welfare of intellectual and industrial properties in the BVI. It ushers in welcome changes for the one million-plus companies registered in the BVI, as well as independent brand owners that want to register and protect their intellectual property in the BVI.

The major rewrite of BVI trademark law that came into effect 1 September 2015 includes a new requirement that a licensed trademark agent submit all trademark applications to the BVI Trade Mark Registry. With over 1,000 trademarks under management for reputable clients in every Continent as well as the Caribbean, the law firm of O’Neal Webster has a solid track record as a leading trademark administrator and maintains an excellent working relationship with the Registry. In light of the new requirements, the firm has expanded its capabilities, announcing the formation of OW Services, Ltd., a BVI licensed trademark agent.

“OW Services Ltd. is authorized to address all BVI trademark services,” says Vanessa King, O’Neal Webster Head Partner of Intellectual Property Law. “Through the agency, we will continue to offer a premium level of service and responsiveness that O’Neal Webster trademark clients are accustomed to receiving – from initial filings, renewals, and assignment recordings, to change of ownership, license agreements, change of address, oppositions and infringement, and other trademark matters involved in mergers and acquisitions.”

Feroza Kartick, a certified paralegal with over 15 years BVI-experience and a specialty certification in intellectual property matters, explains, “O’Neal Webster continues to monitor and deploy global best practices in intellectual property registration and management for the benefit of our clients. Together with OW Services Ltd. we are well prepared to meet the demands of the global stage. As a member of the International Trademark Association’s Leadership Committee and having recently attended the Intellectual Property Owners Association Annual Meeting in Chicago, I welcome the modernization of the Act’s legislative framework, which keeps pace with established best practice standards and current developments.”

Ms. Kartick adds that among the benefits of the new Act are certainty by way of registration of service marks, clarity, priority, filing of applications under the NICE Classification System, and electronic filing.

Certainty in respect of Service Marks

The Act not only allows for the registration of goods, but also for the registration of services. One of the lacunae in the former Trademarks Act, or TMA, is that it did not provide for the first registration of service marks in the BVI. Owners of service marks who wished to register their marks in the BVI to protect their interest often sought to get around the difficulty by extending a UK registered service mark in the BVI. This manner of registration resulted in much discussion on whether such registration truly provided adequate, if any, protection of service marks in the BVI. The Act corrects the position and provides certainty by allowing for the registration of service marks in the BVI. This we know is a welcome change to many of the firm’s trademark clients.

Clarity

The Act also provides clarity in the definition of a trademark. The TMA did not provide a statutory definition of trademarks, but rather set out the particulars that a trademark must consist of or contain to be registered under the TMA. The new Act now defines a trademark as 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, unless excepted includes a Defensive Trade Mark, Collective Trade Mark, and Certificate Trade Mark.

The term “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,” and in this regard shall be construed to include a foreign numeral and foreign script or word; and (b) any combination of signs.

Priority

The Act, very importantly, allows for priority of a trademark that has been registered in a Paris Convention country or WTO member. It is important to note that the application to claim priority must be made within six months of the application in the other country. Further, the protection of a trademark that is entitled to protection under the Paris Convention as a well-known mark is provided for under the Act.

NICE Classification System

In addition, filing of multi-class applications under the NICE classification system is now allowed under the Act.

Electronic filing

The Act allows for filing to be made electronically, as opposed to physical filing at the Trade Marks Registry. This provides a more efficient process for both the trademark agent and the Registry.

Registration

Requirements of registration have been amended with the new Act. An application to register a trademark must be in the prescribed form which shall include the following: (a) a request for registration of the trademark; (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 trademark; (d) a representation of the trademark; and (e) such other information, document, or matter as may be prescribed.

The application must state whether (a) the trademark is being used by the applicant or with his consent in relation to the goods or services in respect of that 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 filing date of an application for registration of a trademark is the date on which documents containing all necessary statutory requirements are filed with the Registrar, and where documents are filed on different dates, the date of filing is the last date.

Duration

Finally, the duration of registration is ten years from the date of registration and may be renewed for additional periods of ten years each.

As a registered BVI trademark agent, OW Services, Ltd. is ready and able to expedite filings for time sensitive, complex, and special transactions including assignments, mergers, oppositions and infringement. Both OW Services and the law firm of O’Neal Webster welcome your enquiries. Please contact us directly at +1(284) 494-5808 or by email to [email protected] or [email protected].