Trade Mark Agent Guidelines

Summary

These guidelines from the BVI Financial Services Commission explain how individuals, partnerships and legal persons can apply for approval and registration as a trade mark agent under the Trade Marks Act, 2013, which requires all trade mark registrations to be filed through an approved agent. They set out the application process, the fit and proper assessment, and the ongoing obligations of registered agents.

• Application: Individuals apply using Form TM22-A and partnerships or legal persons using Form TM22-B, accompanied by a non-refundable US$350 application fee; applications without the fee will not be processed.
• Supporting evidence: Applicants must submit certified identification documents, proof of qualifications or entity registration/incorporation, and any other evidence of qualification and experience.
• Appreciable knowledge requirement: A partnership or legal person must identify at least one individual with appreciable knowledge of trade mark law, who must also meet the fit and proper criteria.
• Fit and proper test: All applicants (individual, partnership or legal person, and identified individuals) must satisfy the Commission's fit and proper criteria under Schedule 1A of the Regulatory Code, 2009, covering honesty, integrity, competence, capability and financial soundness.
• Ongoing notification duty: A registered trade mark agent, or an identified individual, who ceases to be fit and proper must immediately notify the Commission in writing; failure to do so can result in suspension, cancellation or revocation of registration.
• Resignation from a client: A trade mark agent wishing to resign from representing an owner must give at least 60 days written notice to the owner and simultaneously notify the Registrar; resignation takes effect on the specified date (not less than 60 days from Registrar's receipt) or, if unspecified, 60 days after receipt.
• Annual renewal fee: A renewal fee is payable each year on the anniversary of registration, with a grace period of up to one month; failure to pay results in automatic de-registration.
• Non-transferability: Registration as a trade mark agent is personal and cannot be transferred or used by another person; doing so will be treated as a fit and proper failure.
• Withdrawal and cancellation: Applicants may withdraw an application before a decision is made, and registered agents may apply (via Form TM23) to cancel or revoke their own registration, subject to satisfying the Commission that no pending trade mark matters will be prejudiced.

Refusal decisions are communicated in writing with reasons, and applicants may appeal to the Financial Services Appeal Board. Approval as a trade mark agent does not guarantee future approval if the person later ceases to act and reapplies.

Key obligations

• Applicants for trade mark agent approval must submit Form TM22-A (individuals) or Form TM22-B (partnerships/legal persons) with the non-refundable US$350 application fee.
• Partnerships and legal persons must identify at least one individual with appreciable knowledge of trade mark law and provide supporting attestation and documentation.
• All applicants and identified individuals must satisfy the Commission's fit and proper criteria under Schedule 1A of the Regulatory Code, 2009.
• A registered trade mark agent or identified individual who ceases to be fit and proper must notify the Commission in writing immediately.
• A trade mark agent resigning from representing an owner must give at least 60 days written notice to the owner and notify the Registrar at the same time.
• A trade mark agent must pay the annual renewal fee on the anniversary of registration, with a maximum one-month grace period, or face de-registration.
• A trade mark agent must not transfer or allow another person to use its registration to act as a trade mark agent.
• An agent seeking to cancel or revoke its own registration must apply using Form TM23 with reasons and confirmation regarding any pending trade mark matters.

Applies to

trade mark agents, individuals applying to be trade mark agents, partnerships applying to be trade mark agents, legal persons applying to be trade mark agents

Deadlines

• 1st September, 2015: Commencement date of the Trade Mark Agent Guidelines.
• at least 60 days before intended resignation: A trade mark agent must notify the trade mark/patent/copyright owner in writing before resigning.
• 60 days from Registrar's receipt of notification (if no date specified): Default effective date of a trade mark agent's resignation if no date is specified in the notification.
• annually on the anniversary of registration: Renewal fee is payable each year on the anniversary of registration as a trade mark agent.
• up to one month from renewal fee due date: Grace period allowed by the Commission for payment of the annual renewal fee before de-registration.