Trade Marks Rules (Revised Edition 2020)

Summary

The Trade Marks Rules (Revised Edition 2020) set out the detailed procedural framework for registering, maintaining, opposing, amending and enforcing trade marks in the Virgin Islands under the Trade Marks Act. They govern how applicants, trade mark owners and their agents must interact with the Registrar of Trade Marks (part of the BVI Financial Services Commission), covering the whole lifecycle of a trade mark from filing through renewal, opposition, revocation, rectification and surrender.

• Applications and examination: Prescribes the specified forms (TM1 to TM25), required content (representation of the mark, specification of goods/services under the Nice Classification), and the Registrar's process for identifying deficiencies and requiring compliance.
• Amendment, opposition and division: Sets procedures and timeframes for amending applications, filing notices of opposition and counter-statements, and dividing or merging applications and registrations.
• Registration, renewal and restoration: Governs registration, publication, renewal notices, restoration of lapsed registrations, and alteration or surrender of registered marks.
• Revocation, invalidity, rectification: Establishes procedures for applications to revoke (including for non-use), invalidate, vary, cancel or rectify register entries, including counter-statements and evidence rules.
• Registrable transactions and register access: Covers registering transactions (assignments, licences, security interests), inspection of the register, confidentiality of documents, and supply of copies or searches.
• Proceedings before the Registrar: Details hearings, evidence, representation, case management, costs and decisions in contested matters before the Registrar.
• Trade mark agents: Sets out the process for approval, registration, cancellation/revocation of approval, and resignation notification for trade mark agents.
• Filing, service and fees: Requires an address for service, permits electronic filing, and makes payment of fees a precondition to the Registrar acting on any request.

The Rules are administrative and procedural in nature: they do not impose licensing or prudential requirements but create binding process obligations for anyone dealing with the Registry, including a specific transitional deadline for converting pending applications filed under the repealed trade marks legislation.

Key obligations

• An application for registration of a trade mark must be filed in Form TM1, with a representation and specification of goods/services complying with rules 6 to 8
• An applicant must respond to a Registrar's notice of deficiencies in an application and comply with the identified requirements within any time allowed
• A person must file an address for service with the Registry, failing which specified consequences under rule 99 apply
• Trade mark agents must apply for approval using the specified forms (TM22A/TM22B) and must notify the Registrar of resignation as agent (rule 108)
• Fees must be paid as a precondition to the Registrar acting on any application, request or other matter (rule 116)
• Notice of opposition, counter-statements, and evidence in contested proceedings must be filed using the specified forms within the time allowed under the relevant rules
• A notice for conversion of a pending application under the repealed Act must be filed within six months after the commencement of the Trade Marks Act, 2013 and these Rules, using Form TM25
• Requests for renewal, restoration, alteration, surrender, or rectification of a registered trade mark must be made using the applicable specified forms

Applies to

trade mark applicants, trade mark owners, trade mark agents, persons filing registrable transactions (assignees, licensees, security interest holders), the Registrar/Registry

Deadlines

• six months after the date of commencement of the Trade Marks Act, 2013 and the Trade Marks Rules, 2015: Deadline for filing a Form TM25 notice for conversion of a pending application made under the repealed Trade Marks Act (Cap. 158) that had not been advertised before commencement