Trade Marks Rules, 2015 (SI 2015 No. 17)

Summary

These Rules implement the Trade Marks Act, 2013 by setting out the detailed procedures for filing, examining, opposing, registering, renewing, amending, and cancelling trade marks (including defensive, certification and collective marks) in the Virgin Islands, along with the prescribed forms (TM1 to TM25) used for each step.

• Application and examination: Sets requirements for filing an application (Form TM1), specifying goods/services by Nice Classification, representing the mark, and the Registrar's process for identifying and notifying deficiencies.
• Opposition, amendment, withdrawal, division and merger: Establishes procedures and forms for opposing an application, amending it, withdrawing it, or dividing/merging applications or registrations.
• Registration, renewal and restoration: Governs registration, publication, renewal notices, renewal requests, and restoration of lapsed registrations.
• Revocation, invalidity, variation and cancellation: Provides procedures for applications to revoke (for non use or other grounds), invalidate, vary or cancel a registration, including counter statements and evidence.
• Registrable transactions and register maintenance: Covers registering transactions such as licences and security interests, rectifying or correcting the register, and inspecting register records.
• Proceedings before the Registrar: Sets rules for hearings, evidence, representation, costs, case management conferences and decisions.
• Trade mark agents: Establishes a process for approval, registration, cancellation/revocation of approval, and resignation notice for trade mark agents.
• Transitional conversion of pending applications: Allows holders of applications made under the repealed Trade Marks Act (Cap. 158) that were not yet advertised to give notice (Form TM25) converting them to be treated under the 2013 Act.

The Rules are primarily procedural, prescribing timeframes, forms and evidentiary requirements for each stage of the trade mark lifecycle, and give the Registrar authority to specify forms, permit electronic filing, and issue guidelines.

Key obligations

• An applicant who receives a Registrar's notice of deficiency under rule 9(1) must comply with the identified requirements within sixty days, computed from the day after the date prescribed in the notice, or the application (or relevant part of it) is treated as abandoned or, in some cases, deemed never made.
• Holders of pending applications made under the repealed Trade Marks Act that were not advertised prior to commencement of the 2013 Act must file a Form TM25 notice of conversion within six months after the commencement date if they wish the registrability of the mark to be determined under the 2013 Act.
• Applications for registration of a trade mark, including defensive, certification and collective marks, must be filed using Form TM1 with the required representation and specification of goods or services.
• Fees must be paid as a precondition to the Registrar taking any action on a matter under the Rules.
• Persons wishing to oppose, amend, revoke, invalidate, vary, cancel, or register transactions against a trade mark must use the specified corresponding forms (e.g. TM8, TM9, TM13, TM14) and follow the associated procedural steps and time limits set by the Registrar.

Applies to

trade mark applicants, trade mark owners/registrants, trade mark agents, parties to opposition, revocation, invalidity, variation or cancellation proceedings, holders of pending applications under the repealed Trade Marks Act

Deadlines

• 60 days after the day following the date prescribed in the Registrar's deficiency notice: Applicant must comply with requirements identified as not satisfied in a notice issued under rule 9(1), or the application (or relevant part) is treated as abandoned.
• within six months after the commencement date of the Trade Marks Act, 2013 and the Trade Marks Rules, 2015: Holders of pending applications under the repealed Trade Marks Act (not yet advertised) must file Form TM25 to have registrability determined under the new Act.
• on the date the Trade Marks Act, 2013 is brought into force: Commencement of the Trade Marks Rules, 2015.