British Virgin Islands: Complete Trademark Law Overhaul to go into Effect on September 1, 2015

On May 22, 2015, the British Virgin Islands published a Proclamation setting the date of September 1, 2015 for implementation of sweeping changes to the local trademarks regime. This is the final in a series of steps taken by the local government to implement new trademark laws, replacing the current dual registration system with a unified and modernized local trademark registration system.

After a year of drafting and review, the Cabinet of the British Virgin Islands passed the new Trade Marks Rules, 2015 on April 15, 2015. These Rules have been pending since 2014. The Rules were drafted pursuant to the Trade Marks Act, 2013, which was passed in April 2013. Fees have not yet been set but should be determined before the September 1st implementation date.

The new laws unify the trademark application system into a single process, doing away with the existing dual filing system. Under the existing laws, trademark owners may file an application in one of two ways. First, mark owners who already have a UK registration for the mark of interest may file a UK-based application on the basis of the existing UK registration, for which protection of goods and services is available for the same goods and services that are protected by the UK registration. The pros of the UK-based system include quicker processing, lower costs, and coverage for goods and services according to the international classification system. The primary con is that owning a UK registration is a prerequisite.

The second route is to file an application within the local system, for which protection is available for goods only and all goods must be classified according to the old British classification system. The primary pro of the local system is that anyone can apply on this basis – no UK registration is necessary. The cons are more significant, and include registration only for goods, difficulty fitting modern goods into the clunky and outdated British classes, and slower processing. The current failure to protect service marks locally is something that has long been lamented by trademark owners and practitioners alike.

Under the new laws, there will be a single path to filing a new application, and protection will be available for both goods and services according to the international classification system.

All existing registrations will be automatically transferred to the new register. There is no need to reclassify the UK-based registrations as they are already classified according to the international classification system. On the other hand, the new laws provide the Registrar with discretion to reclassify the specification of a local registration classified according to the old British system after giving notice to the mark owner.

Until the Act is formally put into force, the dual application process remains in place. Mark owners with an existing UK registration may wish to take advantage of the expedited filing process while it is still available – after September 1st, it will no longer be possible to rely on an existing UK registration as a fast track to registration in BVI.

On the other hand, mark owners without an existing UK may wish to hold out until September to file locally within the new modernized system.

For any questions, please contact us at Katherine@Caribbean-IP.com.