BRITISH VIRGIN ISLANDS
SWEEPING CHANGES TO TRADEMARKS LEGISLATION
Jamal Smith Thornton Smith
BRITISH V
More than a year aſt er the release of the exposure draſt of the Trade Marks Bill on January 23, 2012, the House of Assembly had the fi rst reading of the bill on February 12, 2013. T e bill represents a major rewrite of the British Virgin Islands (BVI)’s trademark law. It will replace, consolidate and update the current legislation contained in two primary pieces of legislation, the Trade Marks Act, 1887, and the Re-Registration of United Kingdom Trade Marks Act, 1946, both with minor amendments in 1956 and 1991. T e bill is long overdue.
The key features of the bill include the following:
Re-registration of UK trademarks T e Re-Registration of UK Trade Marks Act (Cap. 157) will be repealed and it will no longer be possible for trademarks which have been registered in the UK to be re-registered in the BVI with the rights and privileges in the UK. However, in an attempt to make recognition and registration of trademarks universal as opposed to limited to the UK, it will fi nally be possible for a trademark owner to claim priority based on an application from a Paris Convention country or World Trade Organization (WTO) member once the application in the BVI is made within six months aſt er the application on which priority is claimed has been fi led.
Licensed trademark agents
It is currently necessary only for a person to be resident in the BVI to act as a trademark agent. However, the bill requires BVI trademark agents to be licensed by the Financial Services Commission. A person seeking to be licensed as a trademark agent under the bill must be either:
• An individual who is fit and proper in accordance with the Regulatory Code, 2009, has an appreciable knowledge of trademark law, and is competent to perform the duties of a registered trademark agent having regard to his or her qualifications and experience; or
40 World Intellectual Property Review e-Digest 2013 • A partnership or legal person.
If the trademark agent is a partnership, it must be registered under the Partnership Act, 1996, and have at least one person who in effect must also satisfy the criteria for an individual trademark agent. If the trademark agent is a legal person, it must hold a bank or trust licence under the Banks and Trust Companies Act, 1990, or be a BVI company incorporated for the purpose of performing the functions of a trademark agent, but in either case, it must have at least one individual who meets the requirements of an individual trademark agent.
Definition of trademark
The bill seeks to conform to Article 15.1 of the Agreement on Trade- Related Aspects of Intellectual Property Rights, 1994 (TRIPS), by requiring the graphical representation of a sign that distinguishes the goods or services of one person from those of another person. Under the bill, the particulars of a trademark would be considered a “sign”.
Where the trademark comprises words or numerals other than English words or numerals, the application would have to be accompanied by a certified translation into, or equivalent meaning in, the English language such as a transliteration of Chinese characters into English. Additionally, the protection of any sign would also include protection of the audible use of the sign.
Trademarks for charitable use
T e bill seeks to address the situation where the concept of a trademark relates to use in a commercial sense. It will be possible for charitable organisations to protect their trademarks under the bill where the use of a trademark is in relation to a service which is not provided for money or money’s worth.
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