Trade Marks, Patents & Copyright Unit FAQs - October 2022 Meeting

Summary

This document records the questions and answers from the BVI Financial Services Commission's Office of Trade Marks, Patents and Copyright's October 2022 meeting with registered trade mark agents. It is informational guidance clarifying existing practice under the Trade Marks Act and related procedures rather than a new rule or amendment.

• Restoration of expired marks: A mark not removed from the Register after expiry can still be restored by paying the renewal, restoration and penalty fees, even though marks are technically subject to removal from one day after expiration.
• Patents and SPCs: There are no originating patents in the BVI; EU and UK patents and their Supplementary Protection Certificates are re-registered in the BVI rather than independently registered.
• Trade mark descriptions: For non-word marks, the applicant/owner (not the Office) bears responsibility for ensuring the mark description is adequate, and is advised to seek legal advice.
• Reclassification notices: Where a mark's classification changes, the Office issues a Notice of Proposed Change of Classification to the proprietor via their agent, including a footnote if the class is split.
• Digital filings and forms: The Office plans full digitisation by 2024 and has finalised new PDF fillable application forms for release on the Commission's website; hard copies are not required once documents are filed electronically unless specifically requested.
• Partnership agents: A partnership can only be approved as a registered trade mark agent if it is formed or registered under the Partnership Act, 1996; approving an unregistered partnership would be ultra vires under section 34(3)(a) of the Trade Marks Act.
• No bulk address changes: There is currently no provision under the Trade Marks Fees Legislation for bulk filings, so an agent's address change is not automatically applied across all marks they represent.

The FAQ does not amend the Trade Marks Act, Patents Act or associated fees legislation; it restates and clarifies how existing provisions operate in practice for agents and applicants.

Key obligations

• Trade mark agents restoring an expired but un-removed mark must pay the renewal, restoration, and penalty fees to effect restoration.
• A partnership seeking approval as a registered trade mark agent must be formed or registered under the Partnership Act, 1996.
• Owners/agents submitting non-word marks must provide an adequate description of the mark, as the Office will not dictate sufficiency.
• Trade mark design applications must include a high-quality JPEG image and description of the mark, with any colour protection claims specified.

Applies to

trade mark agents, patent agents, trade mark applicants/owners, patent and SPC holders, partnerships seeking registration as trade mark agents