Trade Marks (Filing) Guidelines, 2018

Summary

These Guidelines, issued by the Registrar of Trade Marks, Patents and Copyright under the Trade Marks Rules 2015, set out administrative and procedural requirements for filing trade mark applications, forms and related documents with the BVI Registry. They apply to applicants, trade mark owners and registered Trade Mark Agents dealing with the Registry, and are intended to guide processing so as to avoid delays or rejection of filings.

• Business hours and filing dates: The Registry is open 8:30 a.m. to 4:00 p.m. on business days; filings or requests made after 4:00 p.m. receive a filing date of the next business day.
• Address format: All addresses on forms must include street or postal address, city, postal/zip code and country in the standard format for that country, or the form may be treated as incomplete.
• Completion and irrelevant information: Irrelevant information on forms must be struck out; failure to do so may result in the form being treated as incomplete.
• Incomplete forms: Forms not completed per the Guidelines will not be processed; the Registry will issue a notice of deficiency.
• Amendments: Amendments to Form TM 1 must use Form TM 2; other amendments require a written request to the Registrar explaining the change and reason, with applicable fees.
• Stamp duty: Stamp duty must be paid on conveyances, assignments and other registrable transactions before filing, with proof of payment submitted or the application is treated as incomplete.
• Registrable transactions, mergers and other operations of law: Applicants who are not the registered proprietor or Agent must search the Register before applying; schedules with inaccurate registration details will be rejected; Agents must give written notice if excluding certain registrations from a multi-registration transaction; multiple same-day transactions against one mark require separate forms with a cover letter indicating order.
• Fees for changes: Fees under the Financial Services (Trade Marks Fees) Regulations 2015 apply per change made to each individual trade mark registration (e.g. separate fees for address and name changes).
• Trade mark representations: Electronic copies of the trade mark representation (jpg or png) and goods/services specification (word format) must be submitted to the Registry's designated email upon filing Form TM 1, or the application is treated as incomplete.
• Descriptions of marks: Applications (other than marks consisting exclusively of letters) must include a detailed description; colour claims require colour and configuration details; 3-dimensional marks require dimension details and distinguishing documentation.
• Reclassification proposals: A registered Trade Mark Agent may propose reclassification of a mark not yet reclassified, by written proposal to the Registrar with the prescribed fee.
• Post-registration deficiencies: Post-registration Notices of Deficiency must be addressed within 2 months of the notice date, or the filing or request is treated as abandoned; fees paid are non-refundable in that case, though a new application may be filed.
• Former UK registrations: Trade marks originally registered under the Registration of United Kingdom Trade Marks Act (Cap. 157) are identified with a UK prefix, which applicants must use in all correspondence with the Office.

The Guidelines took effect on 3 December 2018 and are to be read alongside the Trade Marks Act 2013 and the Trade Marks Rules 2015. The Registrar may amend the Guidelines as needed and should be consulted where any filing requirement is unclear.

Key obligations

• Applicants must ensure all addresses on forms include street/postal address, city, postal or zip code and country in the standard format for the relevant country.
• Applicants must strike out irrelevant information on forms or risk the form being treated as incomplete.
• Amendments to Form TM 1 must be made using Form TM 2; other amendments require a written request to the Registrar with reasons and payment of the requisite fee.
• Stamp duty must be paid and proof of payment submitted on all conveyances, assignments and other registrable transactions before filing.
• Applicants who are not the registered proprietor or Agent must search the Register before filing a registrable transaction, merger or other transaction.
• Agents must provide written notice to the Registrar if a Transaction schedule referencing multiple BVI trade mark registrations is not intended to apply to all of them.
• Applicants recording multiple registrable transactions against the same mark on the same date must file separate forms with a cover letter indicating the order of registration.
• Applicants must submit an electronic jpg or png copy of the trade mark representation and a word-format specification of goods/services to the Registry's designated email upon filing Form TM 1.
• Applications for marks other than those consisting exclusively of letters must include a detailed description; colour claims and 3-dimensional marks require additional specified details.
• A registered Trade Mark Agent proposing reclassification must submit a written proposal to the Registrar with the prescribed fee.
• Recipients of a post-registration Notice of Deficiency must address the deficiency within 2 months of the notice date or the application/request will be treated as abandoned.
• Applicants must use the UK prefix when referring in correspondence and forms to trade mark registrations originally re-registered under Cap. 157.

Applies to

trade mark applicants, trade mark owners, registered Trade Mark Agents

Deadlines

• 3rd December 2018: Commencement date of the Trade Marks (Filing) Guidelines, 2018
• within 2 months of the date of the notice of deficiency: Deadline to address a Post-Registration Notice of Deficiency, after which the application or request is treated as abandoned
• after 4:00 p.m. on a business day: Filings or requests submitted after this time receive a filing date of the following business day