BRITISH VIRGIN ISLANDS
TRADEMARKS IN THE BRITISH VIRGIN ISLANDS
Jamal Smith Thornton Smith
BRITISH V
There have, for a long time, been calls to reform this British Overseas Territory’s century-old trademark laws. These calls resulted in the recent release of the exposure draft of the Trade Marks Bill by the Financial Services Commission, which will be a major re-write of the trademark law.
More than 400,000 companies are registered in the British Virgin Islands (BVI), which also have major presences in China and other Asian markets, and the jurisdiction has won favour with many international bodies as the world’s corporate domicile of choice. The need to protect brand perception is increasing as approximately 350,000 people visit the British Overseas Territory annually who, according to statistics from the World Tourism Organization, have positioned the BVI in the top 10 tourist markets in the Caribbean consistently over the last decade.
There are two primary pieces of legislation regulating trademarks in the territory: the Trademarks Act, 1887, and the Registration of United Kingdom Trademarks Act, 1946. The latter allows a UK registered trademark (but not a UK registered service mark) to be re-registered in the BVI and to remain so registered with all the rights and privileges attached to it in the UK, as long as it remains registered in the UK. However, if the trademark is not registered in the UK, because the BVI is not a signatory to any international trademark treaty, including the Madrid Protocol, the best means of protecting a global trademark in the BVI is by registering it under the Trademarks Act.
Primary deficiencies
Although a trademark does not need to be in use in the Territory before registration, and merely having an intention to use the trademark is sufficient for purposes of registration, there are several limitations to registration in the BVI. The most significant limitation is that service marks are not registrable in the BVI.
64 World Intellectual Property Review e-Digest 2012
When making an application for registration the applicant must indicate, among other things, the goods to which the trademark applies. However, because every country may have its own system of classification this is a major obstacle for global trademark owners who may wish to register trademarks in several jurisdictions. Therefore, the Nice Agreement Concerning the International Classification of Goods and Services was adopted and entered into force on April 8, 1961, with two subsequent revisions. By 1992, 134 jurisdictions around the world were either parties to the Nice Agreement or otherwise adopted the Nice Agreement for use as their national classification system.
However, the BVI is not a party to the Nice Agreement, nor has the international classification established under it been incorporated into its law. The BVI continues with its own classification system of goods.
The BVI’s classification system consists of a list of classes which is unaccompanied by any explanatory notes, and there is no alphabetical list of goods. However, the list of classes describes in very broad terms the nature of goods contained in each of the 50 classes of goods. For instance, the heading of class 9 (musical instruments) implies quite naturally that all musical instruments such as saxophones, violoncellos, banjos, etc, are placed in that class. Since there are no explanatory notes, related goods that might give rise to doubt as to their correct classification are not given any consideration. However, such goods may be referred to the registrar for determination and the registrar’s decision is final.
Well-known trademarks
Neither the Registration of United Kingdom Trademarks Act nor the Trademarks Act protects the proprietor of a trademark which, although not registered, is well-known. Therefore, unless the owner of the well-known trademark is prepared to register the trademark, the only protection available is under the tort of passing off. Although the
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