Trade Mark Registration
On 1 September 2015 the Trade Marks Act, 2013 (the “Act”) and the Trade Marks Rules, 2015 (the “Rules”) became effective and replaced BVI Trademarks Act (Cap 158) and The Registration of United Kingdom Trade Marks Act (Cap 157) which previously governed trade mark registration in the British Virgin Islands (BVI).
The new Act simplifies and modernizestrade mark protection in the BVI by virtue of two key changes.
- Firstly, the adoption of the international classification of goods and services provided by the Nice Agreement (the “Nice Classification”), which is used in more than 150 countries and globally.
- Secondly, providing for service marks to be registered directly in the BVI.
Under the Act when a trade mark is registered it becomes the personal property of the registrant.
The Act defines a trade mark as:
- Any sign that is capable of:
- being represented graphically; and
- distinguishing the goods or services of one person from those of another person (to include a certification trade mark and a collective trade mark).
- The definition of “sign” includes:
- brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word (“numeral” and “word” are construed to include a foreign numeral and foreign script or word); and
- any combination of signs.
Only a registered trade mark agent who must be registered by the BVI Financial Services Commission may apply for the registration of a trade mark.
An application to register a trade mark must be submittedto the BVI Registrar of Trade Marks, Patents and Copyright (the “Registrar”) in the prescribed form. The Registrar then reviews and considers the application for approval subject to the requirements of the Act. Once approved by the Registrar, the date of the filing of the application for registration is considered as the trade mark registration date.
A registered trade mark in the BVI is valid for a period of 10 years initially and it may be renewed thereafter for subsequent 10 year periods. A trademark may be renewed up to 12 months before its expiration date. A grace period of up to 6 months is allowed where upon payment of late fees, an expired trademark may still be renewed.
The Act confers thefollowing rights and remedies on the owner of a trade mark:
- to use the registered trade mark
- to authorize or licence any other person to use the registered trade mark
- to assign or transmit the registered trade mark (either in connection with the goodwill of a business, or otherwise), and
- to give a valid receipt for any consideration for the assignment or transmission of the trade mark.
The owner of a registered trade markis entitled to take action against any person who infringes a trade mark.
Any action to oppose the registration of a trade mark in the BVI must be presented within three months from the date on which the trade mark application is published locally.
Please click here to request an initial consultation or to get more information about the trade mark application process.
- Trademark Registration (1 Class) – $1,250.00
- Each Additional Class – $ 00
- Trademark Search (First Class) – $ 00
- Each Additional Class – $ 80.00