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Trade Marks Act 2013 and Trade Marks Rules 2015 to come into force on 1 September 2015

The Trade Marks Act (Cap.158) of the Laws of the Virgin Islands (Trade Marks Act (Cap.158)) and the Registration of United Kingdom Trade Marks Act (Cap. 157) of the Laws of the Virgin Islands (Trade Marks Act (Cap.157)) will be repealed and replaced by the Trade Marks Act 2013 (Trade Marks Act) and the Trademarks Rules 2015 (Trade Marks Rules) on 1 September 2015.

The Trade Marks Act and the Trade Marks Rules brings the British Virgin Islands (BVI) registration and protection of trade marks in line with other jurisdictions across the world and once in force marks a significant step forward for the BVI in the intellectual property arena.

What are the key changes under the Trade Marks Act and Trade Marks Rules?

• Abolishment of the dual filing system: Under the current legislation, trademark owners may file an application in one of two ways namely: (1) re-register a United Kingdom mark registration pursuant to the Trade Marks Act (Cap. 157) for which protection is available for both goods and services; or (2) file a fresh application in the BVI pursuant to the Trade Marks Act (Cap.158) for which protection is available for goods only. The Trade Marks Act and Trade Marks Rules will allow for a single path to filing a new application in the BVI and protection will be available for both goods and services. This is possibly the most significant change as from 1 September 2015 it will no longer be possible to register marks in the BVI on the basis of an existing United Kingdom registration.
• Trademark classification: Pursuant to Trade Marks Act (Cap.158) all goods must be classified according to an antiquated British classification system. The Trade Marks Act and the Trade Marks Rules alters this significantly by providing protection in relation to goods or services in accordance with the International Classification of Goods adopted under the Nice Agreement.
• Wider definition of trademarks: Under the Trademark Act a trademark is defined 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, and includes a certification trade mark and collective trade mark, unless otherwise specifically excepted". The new definition of trademarks has been expanded to include service marks, certification of trademarks and collective trademarks. A sign will include 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 include a foreign numeral and foreign script or word. The new definition will allow the registration of and protection of marks and logos connected with services which are not permitted under the current legislation.
• Registration of well-known trademarks: A well-known trademark is a trade mark that is defined in the Trade Marks Act as a mark that "(a) is well known in the Virgin Islands; 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 belonger or resident in the Virgin Islands; or (iii) has a real and effective commercial or industrial establishment in a Paris Convention country, a WTO member or the Virgin Islands, whether or not that person carries on business in the Virgin Islands or owns any goodwill in a business in the Virgin Islands." This is an extremely significant change in trademark protection in the BVI as a under the current legislation a well-known trademark cannot be protected in the BVI.
• Registration by Trade mark agent: Under the Trade Marks Act an application for the registration of a trade mark may only be made by a registered trade mark agent. This differs from the current position where an application may be made by or on behalf of any person claiming to the owner of a trade mark.
• Priority: The Trade Marks Act will allow for priority of a trademark that has been registered in a Paris Convention country or WTO member, for a period of six (6) months from date of fling of the first application. This essentially means that a trademark owner who has registered his mark in a country that is a party to the Paris Convention or is a WTO member will receive protection for that trademark under BVI law for six (6) months from the date of filing. The ability to claim priority and the protection that this affords is not available under the current legislation.