Trade Marks Act (Revised Edition 2020)

Summary

This is the consolidated Trade Marks Act of the Virgin Islands (BVI), as revised to 1 January 2020, incorporating Act 9 of 2013 and Act 18 of 2015. It repealed and replaced the former Trade Marks Act (Cap. 158) and sets out the complete regime for registering, protecting, licensing, assigning and enforcing trade marks, certification marks and collective marks in the BVI, administered by the Registrar of Trade Marks, Patents and Copyright under the Financial Services Commission.

• Registrability and refusal grounds: Defines when ordinary, certification and collective trade marks may be registered, and sets out grounds for refusal (descriptiveness, public policy, geographical indications, state emblems, conflicting earlier marks, etc).
• Application and examination process: Governs filing, classification, priority claims, examination, publication, opposition, withdrawal and rescission of applications, and appointment/qualification of registered trade mark agents.
• Registration, renewal and variation: Covers duration and renewal of registration, alteration, division, merger, cancellation, revocation and declarations of invalidity, plus disclaimers and defensive trade marks.
• Ownership, assignment and licensing: Provides rules on co-ownership, assignment, charging, registrable transactions, trusts, and licensing (including exclusive licences and sub-licences) of registered trade marks.
• Enforcement and proceedings: Sets out infringement actions, remedies (delivery-up orders, injunctions), proceedings before the Registrar and the Court, appeals, and customs seizure/forfeiture procedures for infringing goods imported into the BVI.
• Administration and offences: Establishes the register, Registrar's powers, fees, an Intellectual Property Advisory Committee, rule-making and regulation-making powers, and offences/penalties for trade mark violations.
• Transitional provisions (Schedule 4): Preserves rights and continues processing of applications, oppositions, alterations, revocations and rectifications pending under the repealed Act at commencement, and allows conversion of certain pending applications to the new Act's regime.

The Act commenced on 1 September 2015. Anyone holding, applying for, licensing, or dealing in BVI trade marks, or acting as a trade mark agent, is affected, as are Customs authorities handling suspected infringing imports.

Key obligations

• Owners and applicants must comply with the registration, renewal, and disclosure requirements set out in the Act to obtain and maintain a registered trade mark (e.g. duty to register, renewal before expiry under sections 58 and 59).
• Persons acting on behalf of applicants for trade mark registration must be appointed and qualified as registered trade mark agents under section 33 and 34.
• Where an application for registration under the repealed Act had not been advertised before the commencement date (1 September 2015), the applicant could give notice to the Registrar claiming determination under the new Act, in the prescribed form, with the prescribed fee, no later than six months after the commencement date.
• Parties with trade mark applications, oppositions, alterations, revocation or rectification proceedings pending under the repealed Act at commencement must continue those proceedings under the repealed Act until concluded, with resulting entries made in the new register.
• Persons importing goods bearing infringing signs are subject to notice, investigation and determination procedures by the Comptroller of Customs, and affected goods may be forfeited to the Crown.

Applies to

trade mark applicants, trade mark owners, registered trade mark agents, collective associations (owners of collective trade marks), licensees and sub-licensees of registered trade marks, Registrar of Trade Marks, Patents and Copyright, Commissioner of Customs, importers of goods bearing marks

Deadlines

• 1 September 2015: Commencement date of the Trade Marks Act.
• six months after the commencement date: Deadline for an applicant with a pending, unadvertised application under the repealed Act to give notice to the Registrar claiming determination of registrability under the new Act.