BRITISH VIRGIN ISLANDS
BRITISH VIRGIN ISLANDS
be the requirement to file particulars of the registrable transaction, as opposed to the actual agreements, where it is currently necessary to execute deeds of assignments by both the assignor and the assignee coupled with a notarised declaration by the assignee.
Te bill seeks to protect the bona fide purchaser for value without notice, otherwise known as ‘equity’s darling’, but also captures a person obtaining an interest in a trademark by giſt. Essentially, equity’s darling will not be affected by any registrable transaction that is not registered, and a licensee or sub- licensee cannot institute infringement proceedings unless they are registered.
Although the bill does not prohibit transaction six months after the date of
the registration of a registrable the transaction, unless an
application for registration of the registrable transaction is made in that time frame or with the leave of the High Court, the owner or licensee of the trademark would effectively forfeit its right to damages or an account of profits between the date of the registrable transaction and the date on which the registrable transaction was actually registered. Therefore, it still allows for a registrable transaction to be registered at any time, but there will be consequences for late registration.
Exclusive licences
An exclusive licensee, in addition to the trademark owner, will be allowed to bring an action for infringement subject to the terms of the licence agreement once the particulars of the exclusive licence have been registered within six months after the date of the exclusive licence, or if after six months with the leave of the High Court or if the subject- matter relates to action after it was registered or does not involve the recovery of damages or an account of profits.
This will be a major change from the current law, since the licensee has no standing before the court under current law except against the trademark owner for breach of contract and if the trademark owner is reluctant to commence proceedings, then the exclusive licensee will have to commence proceedings against the trademark owner as a precursor to commencing proceedings against a third party. Therefore, removing this difficulty would be a welcome change.
Comparative advertising
It will become an infringement to use a registered trademark in advertising, including where a publisher, for example, knowingly or negligently applies a trademark in an advertisement. Te bill provides an exemption to the rules governing infringement in the area of comparative advertising as
42 World Intellectual Property Review e-Digest 2013
long as the comparative advertisements do not take unfair advantage of the registered trademark, or are detrimental to the distinctive character or repute of the registered trademark, or are such as to deceive the public.
Geographical indications
The registrar is to maintain a list of geographical indications relating to wines and spirits originating in the territory of a WTO member and protected by the laws of that WTO member.
Well-known trademarks
It will no longer be possible to register a well-known trademark where the use of the well-known trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well- known trademark. A trademark will be considered well-known if, among other things, it is owned by a person who is a national of, or is domiciled or ordinarily resident in, a Paris Convention country or WTO member, or has a real and effective commercial or industrial establishment in a Paris Convention country, a WTO member or the BVI, whether or not that person carries on business in the BVI or owns any goodwill in a business in the BVI.
The Financial Services Commission may publish guidelines which the registrar and the High Court must have regard in determining whether a trademark is well-known.
Electronic filings
It will be possible to file documents electronically in accordance with the rules to be made under the bill. An electronic register of trademarks is also contemplated, either in addition to, or in lieu of, a physical register, which would also facilitate electronic searches.
Jamal Smith is the founder and principal of Thornton Smith. He can be contacted at:
jamal.smith@
thorntonsmith.com
Jamal S Smith previously worked for the largest law firm in the BVI, advising large firms, multinational corporations and banks from financial centres around the world. Smith is the 2012-13 chairman of the INTA Bulletin Subcommittee for Latin America and the Caribbean.
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